DETAILED ACTION
Summary
Applicant’s amendment dated 18 May 2026 is acknowledged. Claims 1-7 are pending.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
New grounds of rejection are necessitated by the amendment dated 18 May 2026. For this reason, this action is properly made final.
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 .
Claim Rejections - 35 USC § 102
Claims 1 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YONEZAWA (JP-2011037994-A).
The YONEZAWA (JP-2011037994-A) reference is in the IDS dated 24 August 2023. The English translation in the IDS is not legible. A translation is provided in this office action.
Regarding Claim 1, YONEZAWA teaches a composite composition in which metal oxide particulates are dispersed in a polymerizable monomer using a surface modifier (Abstract). The surface modifier can be characterized as a dispersant as it is used to disperse the particles in the polymerizable monomer. YONEZAWA teaches that its metal oxide can be zirconium oxide and that its particles have a nano-level average particle size of 30 nm or less, more preferably 2-10 nm ([0012]). The more preferably range satisfies the requirement that the metal oxide particles have an average particle diameter of 20 nm or less. YONEZAWA generally teaches that its surface modifying dispersant has a structure of R1-X-R2-Y ([0006]), where R1 is a linear alkyl groups of 1-22 carbon atoms, R2 is a linear alkylene group of 1-10 carbon atoms, X is -O- or -S-, and Y is a functional group ([0006]). YONEZAWA teaches several preferable functional groups, including a phosphoric acid group ([0013]). This overlaps with the structure recited in formula (1) where R1 is an alkyl group of 1-7 carbons, X is O, R2 is ethylene and Y is a phosphate group. In Example 9, YONEZAWA teaches an example including zirconium oxide ([0037]), pentaerythritol ethoxylate (PEEL) as the polymerizable monomer ([0037],[0019]) and the following surface modifying dispersant ([0035]):
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This structure satisfies formula (1) as recited by the claim where R1 is n-hexyl (C6), k=1, and M is H. YONEZAWA does not teach a silane coupling agent which satisfies the requirement that the silane coupling agent is included in less the 30 parts per 100 parts of silane coupling agent plus the formula (1) compound.
Regarding Claim 6, YONEZAWA teaches the invention of Claim 1. YONEZAWA teaches curing its resin composition to form a transparent plastic ([0038])
Regarding Claim 7, YONEZAWA teaches the invention of Claim 1 where YONEZAWA teaches in Example 9 a surface-modifying dispersant that satisfies formula (1) where R1 is n-hexyl (C6) ([0035]).
Claim Rejections - 35 USC § 103
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over YONEZAWA (JP-2011037994-A).
Regarding Claim 4, YONEZAWA teaches the invention of Claim 1. YONEZAWA teaches that its surface-modifying dispersant is compatible with the polymerizable monomer when included in higher ratios such as 0.2 g of the recited surface modifier to 0.8 g of the PEEL monomer ([0038]). When coupled with the equivalent amount of m-XDI monomer, 0.8*2.7/1.9 ≈ 1.14 g, which calculates to amounts of surface modifier in the polymerizable as high as 0.2/(0.8+1.14) ≈ 9.36 parts per 100 parts of surface modifier and resin and still have the surface modifier be compatible with the resin. Since YONEZAWA teaches small loadings of nano-sized zirconia of 0.006 g ([0038], [0018]), this does not change the upper bound of the ratio 0.2/(0.8+1.14+0.006) ≈ 9.36 parts per 100 parts of zirconia particles, surface modifier and resin. Examiner calculates that YONEZAWA exemplifies 0.53 parts of surface modifying dispersant per 100 parts by mass of solid content which is outside the recited range, but it would be obvious to one of ordinary skill in the art to modify the examples of YONEZAWA and include amounts of surface-modifying dispersant that are within the ranges taught in its specification as being compatible with the polymerizable resin that are also within the range recited by the claim.
Allowable Subject Matter
Claims 2-3 and 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, KUBO (US-20170101538-A1), cited in the previous office action, teaches zirconium oxide particles with the recited size in a polymerizable resin. While KUBO teaches a dispersant with a phosphoric acid ester structure similar to what is recited, the dispersants taught by KUBO teach R1 alkyl groups having 8-13 carbon atoms which is outside the 1-7 carbon atoms recited by Claim 1. YONEZAWA (JP-2011037994-A), cited in the rejections above, teaches zirconium particles with the recited size in a polymerizable resin with a surface-modifying dispersant in having a structure which satisfies Claim 1, but YONEZAWA only teaches embodiments with polymerizable resin having small amounts of nano-sized zirconia particles and high dispersant to zirconia ratios. One would not be motivated to modify the invention of YONEZAWA to obtain amounts of zirconia as high as the 70 wt% of solids recited by Claim 2, ratios of dispersants to zirconia as low as what is recited by Claim 3, or amounts of polymerizable resin as a fraction of the solid content as low as is recited by Claim 5.
Response to Arguments
Applicant’s arguments with respect to Claims 1-6 and the new Claim 7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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