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 .
This office action is in response to the reply filed 7/8/2026.
Election/Restrictions
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/12/2025.
Response to Arguments
All of Applicant’s arguments and the 1.132 declaration of Daisuke Oosaki filed 7/8/2026 have been fully considered.
112 Rejection
In view of the amendments to claim 6, the 112b rejection is withdrawn.
103 Rejection
In summary, Applicant argues that the specification and the declaration, examples 1-8, demonstrate the unexpected advantages in several properties of the invention as claimed.
This is not persuasive as the data presented in not commensurate in scope with the claims. Applicant test 1 specific cationic surfactant (i.e. distearyl dimethyl ammonium chloride) in combination with behenyl or stearyl alcohol; and silica, however, the claims are directed to a much broader genus of cationic surfactant, higher aliphatic alcohol and inorganic powder. It is also noted that all the inventive examples contain a higher amount of alcohol then they do of cationic surfactant or a 1:1 ratio. It is also noted that a proper side by side analysis between the inventive and comparative examples does not appear to have been done. The comparative examples have 2 main changes, in comparative example 2: a) one surface treatment vs two and the single surface treatment is present in amounts much lower than the combined amounts and b) the steps of pulverization was not performed; in comparative example 3 a) one surface treatment vs two; and b) the method of making the composite powder is distinct from the method of making in inventive example 1. Thus, it’s unclear if the differences shown by Applicant are due to the use of the claimed combination of surface treating agents or due simply to the manner in which the powder was made.
Applicant remarks the comparative example 4 represents the actual closest prior art.
This is not persuasive as this example has no surface treatment, the closest prior art would be JP’776 which exemplifies surface treating the silica.
Insufficient data has been provided to ascertain a trend across all the species.
Maintained/Modified 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(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2010059272. JP’272 is cited on the 11/10/2023 IDS.
JP’272 discloses a surface treated inorganic oxide (i.e. main constituent) which is surface treated with a sulfur containing organic silane compound and at least one hydrophobizing agent selected from the groups consisting of fatty acids, higher alcohols, polyether’s and surfactants (Abs). The treatment of the particle surface of the silica allows for excellent dispersibility [0014].
Regarding claim 1: JP’272 teaches the use of silica as the inorganic oxide and teaches that silica has silanol groups on the particles surface and surface treatment with hydrophobic agents helps with dispersibility (which reads on based material powder being an inorganic material) [0002]. The hydrophobic treatment can be at least one of a higher fatty alcohol such as stearyl alcohol (reading on higher aliphatic alcohol) and cationic surfactants [0029-0030]. As JP’272 teaches the use of “at least one” treatment, it would have been prima facie obvious to use two of the treatments taught to be suitable for use, such as stearyl alcohol and a cationic surfactant.
JP’272 teaches using 1-20, preferably 2-10, parts by weight of the hydrophobic agent (i.e. mixture of cationic surfactant and fatty alcohol) based on 100 parts of the silica (i.e. base material). As JP’272 makes obvious using a mixture of agents, it would have been prima facie obvious to use this mixture in a total amounts of 1-20 parts, preferably 2-10parts, based on 100 parts silica and this provides amounts of aliphatic alcohol and cationic surfactant which overlap with the claimed ranges and overlapping ranges are prima facie obvious absent criticality.
Regarding claim 2: Claim 2 recites an emulsion viscosity ratio which appears to be a resultant property of mixing the claimed powder with water under specific conditions. As the prior art makes obvious the claimed composite powder having the same structural limitations (i.e. the same base material with the same surface treatments and overlapping surface treatment to base material powder ratio, see claims below), the powder claimed and the powder of the prior art are expected to have the same properties absent evidence to the contrary. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 3-4: JP’272 teaches that a suitable cationic surfactant for use includes distearyl dimethyl ammonium salt, wherein the salts include bromide and chloride, thus the use of distearyl dimethyl ammonium chloride is prima facie obvious.
Regarding claim 5: As discussed above, JP’272 makes obvious the use of stearyl alcohol (C18).
Regarding claim 6: As discussed above, JP’272 makes obvious the use of silica as the inorganic oxide.
Regarding claims 7-8: JP’272 teaches using 1-20, preferably 2-10, parts by weight of the hydrophobic agent based on 100 parts of the silica (i.e. base material). As JP’272 makes obvious using a mixture of agents, it would have been prima facie obvious to use this mixture in a total amounts of 1-20 parts, preferably 2-10parts, based on 100 parts silica and this provides amounts of aliphatic alcohol and cationic surfactant which overlap with the claimed ranges and overlapping ranges are prima facie obvious absent criticality.
Conclusion
No claims are allowable.
THIS ACTION IS MADE FINAL. 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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613
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