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 .
DETAILED ACTION
Claims 1-6 of Y. Liao, et al., US 18/555,306 (10/13/2023) are pending. Claims 1-3 and 6 are withdrawn as drawn to non-elected Groups (I) and (III). Claims 4-5 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the Restriction/Election Requirement, Applicant elected Group (II) (claims 4-5), without traverse, in the Reply filed on 06/02/2026. Claims 1-3 and 6 drawn to non-elected Groups (I) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Election/Restrictions
Pursuant to the Restriction/Election Requirement, Applicant elected Group (II) (claims 4-5), without traverse, in the Reply filed on 06/02/2026. Claims 1-3 and 6 drawn to non-elected Groups (I) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The Restriction Requirement is made as Final.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record
of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning
is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look
to how the claim term is used in the prior art, which includes prior art patents, published
applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
Interpretation of the Translation Phrase “having” in Claim 4
Claim 4 recites the preamble language of “Particles having a structure represented by the following formula (1) on the surface”. Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. MPEP 2111.03. IV.
The specification teaches that the claimed particles can be prepared through two different methods:
the producing method including:
a particle coating step of reacting particles having a hydroxyl group on the surface with a compound represented by the following formula (30) to obtain particles having a structure represented by the formula (1) on the surface,
or
the producing method including:
a first reaction step of reacting particles having a hydroxyl group on the surface with a compound represented by the following formula (4) to obtain particles having a structure represented by the following formula (5) on the surface; and a second reaction step of reacting the particles obtained in the first reaction step with a compound represented by the following formula (6) to obtain particles having a structure represented by the formula (1) on the surface,
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See Specification at page 4-5 [0012]-[0015].
Clearly, the specification does not require the surface of the coated particles only have a hydroxyl groups and/or all of hydroxy groups on the surface of the particle are completely reacts with the formula (30) or the formula (5). Therefore, according the information disclosed in the specification, the transitional term "having” is broadly and reasonably interpreted as an inclusive or open-ended and does not exclude additional, unrecited elements or method steps.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 4-5 are rejected under 35 U.S.C. 102(a)(1)(a) as being anticipated by S. Fujeda, et al, JPS5874060A (1983)(“Fujeda”). Fujeda is published in Japanese, a copy of machine translation is attached as the second part, which results in the full reference has 6 pages, the format for citation of the reference is x/6.
Fujeda teaches a silicon-aluminum ester compound represented by the follows formula.
(R1O)2Al-O-Si(OR2)3
Fujeda at 1/6, left col. line 4.
Fujeda teaches a method for coating the silicon-aluminum ester compound, which involves completely immersing an inorganic filler in a compounding solvent, thoroughly mixing it, passing it through a basin, and drying it in a dryer at 150 to 350 degrees Celsius to obtain a filler for epoxy resin molding materials. Fujeda at page 5/6, left col. the last second paragraph, emphasis added.
Fujeda teaches a working example for coating an inorganic filler with a silicon-aluminum ester compound in a solvent, for example, the preparation of the Filler-A that is prepared by coating of crystalline silica that is a particle with diisopropoxyaluminoxy triethoxylin that has a chemical structure as indicated below (See attached CA abstracts) in isopropyl alcohol. Fujeda at page 6/6, Table 1.
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The Fujeda diisopropoxyaluminoxy triethoxylin maps the formula (30) in the specification as:
R1 is -OCH2CH3 that is an organic group having two carbons,
Both R60 and R70 are -CH2CH3 that also is an organic group having two carbons,
L is Al,
R2 is OR3 wherein R3 is isopropyl group that is an organic group having three carbons; and
n1 is 2, n2 is 0.
The instant specification teaches that particles having hydroxy group on the surface and compound comprising three OR groups (wherein R is an organic group having 1-30 carbon atoms) are hydrolyzed and condensed in a solvent in the absence of a catalyst as indicated in Scheme 5. Specification at page 76-77, [0076]-[0077].
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Thus, while Fujeda does not specify, there is a reasonable anticipation that there is a hydrolysis and condensation between hydroxyl groups on the surface of the crystalline silica and diisopropoxyaluminoxy triethoxylin during the Fujeda process of the coating and the formed Filler A as a structure as indicated below1.
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The Fujeda filler-A maps the formula (1) in claim 4 as:
R1 is -OCH2CH3 that is an organic group comprising two carbons,
L is Al,
R2 is OR3 wherein R3 is isopropyl group that is an organic group having three carbons; and
n1 is 2, n2 is 0.
Which meets each and every limitation of claim 4, therefore, claim 4 is anticipated.
Claim 5 is also anticipated because Fujeda also teaches a dispersion composition comprising the particle filler-A. Fujeda at 6/6, Table-2, Example 1.
Prior Art made of record and not relied upon
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO2015156703A2 discloses functional metallosiloxanes that can be used as crosslinkers in curable composition. WO2015156703A2 teaches specific compounds such as compound in Example 3 that anticipates claim 3.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. Stated differently, when the examiner "has reason to believe" that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the prior art reference. MPEP 2112(V), see also, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Chudik, 674 F. App'x 1011, 1012 (Fed. Cir. 2017) (both citing In re Swinehart, 439 F.2d 210, 212, 58 C.C.P.A. 1027 (C.C.P.A. 1971)).
Prosecution Insights