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 Preliminary Amendment
The preliminary amendment submitted on 22 November 2023 has been entered. After entry of the amendment claims 1-18 are currently pending in the application.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 (or as subject to pre-AIA 35 U.S.C. 102) 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 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.
Claims 1-5, 7-9, 11-13, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by China Patent Specification No. CN 112678861 A.
The reference teaches a rutile titanium dioxide powder that is suitable for copper clad sheets, wherein the spheroidization rate is at least 95%, the D50 particle size is 2-8 µm, the relative permittivity is 100-120, the dielectric loss is 0.0005-0.002, and the content of TiO2 in the rutile titanium dioxide is at least 98 wt% (claims, paragraph [0001]).
Example 1 teaches a spheroidal titanium dioxide wherein the D50 particle size was 3.452 µm, the relative permittivity was 112, the dielectric loss was 0.0008, the content of rutile titanium dioxide was 99.5%, the chemical components were TiO2: 99.50% and Al2O3: 0.03%, and the specific surface area was 0.927 m2/g.
Example 2 teaches that said titanium dioxide of Example 1 was mixed with PTFE to produce a resin composition. See also figures 1-3.
Comparative Example 9 and Figures 13-15 teaches a spheroidal titanium dioxide wherein the D50 particle size was 3.012 µm, the relative permittivity was 113, the dielectric loss was 0.0009, the content of rutile titanium dioxide was 99.56%, the chemical components were TiO2: 99.51% and Al2O3: 0.02%, and the specific surface area was 1.12 m2/g.
Comparative Example 10 and Figures 16-18 teaches a spheroidal titanium dioxide wherein the D50 particle size was 3.050 µm, the relative permittivity was 95, the dielectric loss was 0.008, the content of rutile titanium dioxide was 99.56%, the chemical components were TiO2: 96.50% and Al2O3: 0.03%, and the specific surface area was 1.01 m2/g.
Comparative Example 17 and Figures 25-27 teaches a spheroidal titanium dioxide wherein the D50 particle size was 3.068 µm, the relative permittivity was 102, the dielectric loss was 0.0003, the content of rutile titanium dioxide was 99.54%, the chemical components were TiO2: 98.03% and Al2O3: 0.16%, and the specific surface area was 1 m2/g.
Comparative Example 18 and Figures 25-27 teaches a spheroidal titanium dioxide wherein the D50 particle size was 3.094 µm, the relative permittivity was 115, the dielectric loss was 0.0009, the content of rutile titanium dioxide was 99.54%, the chemical components were TiO2: 99.52% and Al2O3: 0.05%, and the specific surface area was 0.906 m2/g.
The instant claims are met by the reference.
As for claim 1, the reference teaches an inorganic oxide powder having the claimed properties (see the examples and comparative examples discussed above).
As for claim 2, based on the spheroidal rate of at least 95% it would therefore possess an average circularity that meets the claimed limitation.
As for claim 3, the reference teaches average particle diameters that fall within the claimed range (see the examples and comparative examples discussed above).
As for claim 4, the reference teaches a specific surface area that meets the claimed limitation (see the examples and comparative examples discussed above).
As for claim 5, the reference teaches a spheroidization rate of at least 95% which meets the claimed limitation (see the claims).
As for claim 7, based on the amount of Al2O3 present in the examples and comparative examples, the limitations recited in the claim are met.
As for claim 8, this is met as example 2 teaches that the material of example 1 is mixed with a PTFE resin.
As for claim 9, the reference teaches a PTFE resin which is a thermoplastic resin.
As for claim 11, the reference teaches average particle diameters that fall within the claimed range (see the examples and comparative examples discussed above).
As for claim 12, the reference teaches a specific surface area that meets the claimed limitation (see the examples and comparative examples discussed above).
As for claim 13, the reference teaches a spheroidization rate of at least 95% which meets the claimed limitation (see the claims).
As for claim 15, based on the amount of Al2O3 present in the examples and comparative examples, the limitations recited in the claim are met.
As for claim 16, the is met as example 2 teaches that the material of example 1 is mixed with a PTFE resin.
As for claim 17, the reference teaches a PTFE resin which is a thermoplastic resin.
Claims 1 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korea Patent Specification No. KR 101763357 B1.
The reference teaches, in paragraph [0013], a rutile titanium dioxide powder characterized in being spherical nanoparticles with purity being 99-99.99%, the rutilization rate being at least 90%, and the average particle size being in the range of 400-600 nm (claims), and also indicates that the rutile titanium dioxide powder can further be coated with SiO₂, Al2O3, ZnO, etc., and the amount of coating agent added is 0.3-3 weight% with respect to the total weight of solids (paragraphs [0055] and [0069]-[0071]).
The instant claims are met by the reference.
As for claim 1, the reference teaches an inorganic oxide powder having the claimed properties (see paragraph [0013]).
As for claim 6, the reference teaches that the TiO2 can further be coated with SiO₂, Al2O3, ZnO, etc. (paragraph [0070]).
As for claim 7, the amount falls within the claimed range (paragraph [0071]).
As for claim 8, the claim is drawn to an intended use and as the material is capable of being added as a filler to a plastic, the claim is met. Note also the paragraph [0002] teaches that the powder can be used as a filler in plastics and that it can be used in plastics without additional processing (paragraph [0022]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Korea Patent Specification No. KR 101763357 B1.
The reference was discussed previously, above.
The instant claim is obvious over the reference.
As for claim 7, the reference teaches that the average particle size is in the range of 400-600 nm and this size range overlaps the claimed size range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over
China Patent Specification No. CN 112678861 A in view of Korea Patent Specification No. KR 101763357 B1.
CN 112678861 A and KR 101763357 B1 were discussed previously, above. Further KR 101763357 B1 teaches, in paragraph [0055] that it is known to coat TiO2 powders with SiO2 or Al2O3 to prevent moisture absorption and increase dispersibility.
The instant claim is obvious over the combination of references.
As for claim 14, CN 112678861 A teaches the claimed inorganic oxide powder however if fails to teach that it is surface coated. As KR 101763357 B1 teaches that it is known to coat TiO2 powders to prevent moisture adsorption and increase dispersibility it would have been obvious to coat the TiO2 powders of CN 112678861 A to provide these properties to the powders of the reference without producing any unexpected results absent evidence showing otherwise.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations of the claims of the copending application and therefore are rendered obvious by said claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/563,782 in view of Hanaor eta l “Review of the anatase to rutile phase transformation”.
This is a provisional nonstatutory double patenting rejection.
Hanaor et al is relied on to show that TiO2 exhibits three poly morphs: rutile, anatase, and brookite and that rutile is the stable phase and both anatase and brookite are metastable (see page 1, column 2).
The claims of the copending application do not recite the phase of the TiO2 powder. However as it is known in the art that TiO2 in rutile form is the stable phase it would be obvious that the TiO2 of the copending application could be one in rutile form and thus the claims of the copending application would render obvious the instant claims. The other properties recited in the instant dependent claims are also found in the claims of the copending application.
Information Disclosure Statement
Reference AG on the IDS was cited incorrectly as the wrong patent number was listed. It should be CN 112678867 not CN 112378867. It is noted that applicant did submit a copy of CN 112678867. The reference has been cited correctly on the Notice of References Cited.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg February 27, 2026