DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see Page 5, line 7 – Page 8, line 11 of Remarks, filed August 19th, 2026, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of the prior art over the amended claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Shibamoto (JP 2008-308386 A) (the translation provided with the attached original document is referenced below) in view of Koyanagi (JP 2001-155791 A) (the translation provided with the attached original document is referenced below).
Regarding claim 1, Shibamoto teaches particles (Shibamoto, [0014]-[0023]) comprising:
a core (Shibamoto, [0014]); and
a shell formed on the core (Shibamoto, [0014]),
wherein the particles contain approximately from 70.7 to 99.8% by weight titanium oxide in terms of TiO2 and from 0.2 to 29.3% by weight tin oxide in terms of SnO2 (Shibamoto, [0016], tin-added titanium oxide fine particles containing 1 mol% or more and 25 mol% or less of Sn; comparison of the core diameter recited in Paragraph [0017] and the composite particle diameter recited in Paragraph [0018] shows that the composite particle is 2 nm larger than the core particle. Given that both core and shell are rutile TiO2, they would have approximately the same density. For a 20 nm composite particle as recited in Paragraph [0018], the proportion of volume comprising the core would equal 183/203, or 72.9%. The upper bound of tin in Shibamoto’s core composition is 25 mol% SnO2. Considering that the core accounts for 72.9% of the volume of a 20 nm composite particle, the composite particle could have up to 18 mol% SnO2, corresponding to 29.3% by weight in terms of SnO2. For a 3 nm composite particle, the proportion of volume comprising the core would equal 13/33, or 11.1%. The upper bound of titanium in Shibamoto’s core composition is 99 mol% TiO2. The composite particle could have up to 99.88 mol% TiO2, corresponding to 99.8% by weight in terms of TiO2.), which overlap with the claimed amounts of 90% by weight or more titanium oxide in terms of TiO2 and 0.2 to 10% by weight tin oxide in terms of SnO2, respectively,
the core has a rutile-type crystal structure (Shibamoto, [0014]), and includes tin and titanium (Shibamoto, [0016], tin-added titanium oxide fine particles),
a proportion of tin in the core is 1-25 at% (Shibamoto, [0016]), which overlaps with the claimed range of 0.1-6.5 at%,
the shell has a rutile-type crystal structure, and includes titanium (Shibamoto, [0015]), and
a proportion of tin in the shell is approximately 0 at% (Shibamoto, [0015], rutile titanium oxide constitutes the shell, i.e., the shell has no other components).
Shibamoto does not explicitly teach that the particles have a crystallite diameter of 7 nm or more. However, Koyanagi teaches that a titanium oxide-shelled particle with a crystallite size in a range of 5 to 30 nm (Koyanagi, [0029]), which overlaps with the claimed range of 7 nm or more.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected, in Shibamoto’s particles, a crystallite size in a range of 5 to 30 nm because Koyanagi teaches that a titanium oxide crystallite size in this range easily forms a film (Koyanagi, [0029]). Shibamoto’s particles are intended to be used in optical thin films (Shibamoto, [0056]), so a person having ordinary skill in the art would have been motivated to select a crystallite size already known to be appropriate for such an application.
Additionally, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the crystallite sizes, proportions of tin in the core, amounts of titanium oxide by weight in the particles, and amounts of tin oxide by weight in the particles because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
