DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 12/23/2025.
3. Claims 17-23, 25, 27-32 are pending. Claims 17-23, 25, 27-32 are under examination on the merits. Claims 17-18, 23, 25, 27-28, 30-31 are amended. Claims 24, 26 are cancelled. Claims 1-16 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive, thus claims 17-23, 25, 27-32 stand rejected as set forth in Office action dated 10/03/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 17-23, 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 17 recites “wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group, and the silane compounds of the secondary component are present in a range of 8:4:1 to 8:8:5”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited ratio is based on the parts by mass% or weight% or mole%, thus claim 17 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 18-23, 25 being depended on claim 17 are rejected as well.
8. Claims 27-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 27 recites “wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group, and the silane compounds of the secondary component are present in a range of 8:4:1 to 8:8:5”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited ratio is based on the parts by mass% or weight% or mole%, thus claim 27 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 28-29 being depended on claim 27 are rejected as well.
9. Claims 30-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 30 recites “wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group, and the silane compounds of the secondary component are present in a range of 8:4:1 to 8:8:5”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited ratio is based on the parts by mass% or weight% or mole%, thus claim 30 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 31-32 being depended on claim 30 are rejected as well.
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 17-23, 25, 27-32 are rejected under 35 U.S.C. 103 as being unpatentable over Itaru Hayakawa (JP 2008-194563 A, machine translation, hereinafter “’563”) in view of Nakayama et al. (US Pub. No. 2021/0070961 A1, hereinafter “’961”), and Masuda et al. (US Pub. No. 2016/00 90511 A1, hereinafter “’511”).
Regarding claims 17-19: ‘563 teaches a transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), comprising: a film-forming binder comprising a primary component of a reaction product of an alkoxysilane having an epoxy group such as glycidoxypropyl group and an alkoxysilane having an amino group with an active hydrogen such as an aminopropyl group-containing alkoxysilane (Page 3/27, Claim 1; Example of 1st embodiment, [0072]; Page 23/27, [0073]), wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group are present in a range of 0.23:0.18 (i.e., a ratio of 1.28; Page 23/27, [0073]), an acid catalyst such as boron trifluoride piperidine (Page 23/27, [0074]), and a near-infrared shielding material such as WO3 as precursor is utilized for the synthesis of Cs0.33WO3 (Page 22/27, [0072], Example of 1st embodiment). ‘563 does not expressly teach i) the film-forming binder further comprises a secondary component of silane compounds selected from tri- or dialkoxysilane, monoalkoxysilane, glycidesilane or combinations of any two or more thereof, and ii) the acid catalyst is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid.
Referring to i), however, ‘961 teaches a near-infrared absorbing material fine particle dispersion (Page 2, [0054]), comprising, composite tungsten oxide fine particles, and a silane compound, in an acrylic resin (Page 12, Claim 1), wherein the silane compound is one or more selected from a silane coupling agent, an alkoxysilane compound, and a silicone resin (Page 12, Claim 2) such as methyltrimethoxy silane, methyltriethoxy silane or ethyltrimethoxy silane (Page 3, [0077]-[0078]), wherein the addition amount of the silane compound is preferably 1 part by mass or more and 200 parts by mass or less with respect to 100 parts by mass of the near-infrared absorbing material fine particles (Page 3, [0066]) with benefit of providing de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well (Page 3, [0064]).
Referring to ii),’ 511 teaches silicone coating composition (Page 1, [0011]) comprising
curing catalyst which may be any of curing catalysts commonly used in silicone coating compositions. Specifically curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate are useful. Examples include acidic compounds such as p-toluenesulfonic acid and trichloroacetic acid (Page 10, [019]) or organophosphorus compounds (Page 10, [0115]-[0116]) with benefit of providing the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant (Page 10, [0110]).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the film-forming binder by ‘563, so as to further include a secondary component of silane compounds as taught by ‘961, and would have been motivated to do so with reasonable expectation that this would result in de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well as suggested ‘961 (Page 3, [0064]).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the acidic catalyst by ‘563, so as to include acid catalyst which is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid as taught by ‘511, and would have been motivated to do so with reasonable expectation that this would result in curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate or the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant as suggested ‘511 (Page 10, [0110]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
acid catalysts) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 20: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the tungsten trioxide is present in an amount ranging from 0.1% by weight to 20% by weight of the total composition (Page 4/27, Claim 2).
Regarding claim 21: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the tungsten trioxide has a particle size of less than 200 nm (i.e., overlapping ranges; Page 3/27, Claim 1; Page 10/27, [0021]).
Regarding claim 22: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the tungsten trioxide is uniformly dispersed in the form of nanoparticles in a solvent (Page 11/27, [0023]; Page 12/27, [0026]).
Regarding claim 23: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the solvent used for dispersing is propylene glycol monoethyl ether [Page 23/27, [0073]).
Regarding claim 25: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), further comprising a mixture of additives selected from an ultraviolet-absorbing agent, an infrared-reflecting agent or infrared-absorbing agent, a dye and/or pigment, a stabilizing agent and a photo-stabilizing agent (Page 19/27, [0059).
Regarding claim 27: ‘563 teaches a transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), comprising: a film-forming binder comprising a primary component of a reaction product of an alkoxysilane having an epoxy group such as glycidoxypropyl group-containing alkoxysilane and an alkoxysilane having an amino group with an active hydrogen such as an aminopropyl group-containing alkoxysilane (Page 3/27, Claim 1; Example of 1st embodiment, [0072]; Page 23/27, [0073]), wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group are present in a range of 0.23:0.18 (i.e., a ratio of 1.28; Page 23/27, [0073]), an acid catalyst such as boron trifluoride piperidine (Page 23/27, [0074]), and a near-infrared shielding material such as WO3 as precursor for Cs0.33WO3 (Page 22/27, [0072], Example of 1st embodiment). ‘563 does not expressly teach i) the film-forming binder further comprises a secondary component of silane compounds selected from tri- or dialkoxy silane, monoalkoxy silane, glycidesilane or combinations of any two or more thereof, and ii) the acid catalyst is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid.
Referring to i), however, ‘961 teaches a near-infrared absorbing material fine particle dispersion (Page 2, [0054]), comprising, composite tungsten oxide fine particles, and a silane compound, in an acrylic resin (Page 12, Claim 1), wherein the silane compound is one or more selected from a silane coupling agent, an alkoxysilane compound, and a silicone resin (Page 12, Claim 2) such as methyltrimethoxy silane, methyltriethoxy silane or ethyltrimethoxy silane (Page 3, [0077]-[0078]), wherein the addition amount of the silane compound is preferably 1 part by mass or more and 200 parts by mass or less with respect to 100 parts by mass of the near-infrared absorbing material fine particles (Page 3, [0066]) with benefit of providing de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well (Page 3, [0064]).
Referring to ii),’ 511 teaches silicone coating composition (Page 1, [0011]) comprising
curing catalyst which may be any of curing catalysts commonly used in silicone coating compositions. Specifically curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate are useful. Examples include acidic compounds such as p-toluenesulfonic acid and trichloroacetic acid (Page 10, [019]) or organophosphorus compounds (Page 10, [0115]-[0116]) with benefit of providing the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant (Page 10, [0110]).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the film-forming binder by ‘563, so as to further include a secondary component of silane compounds as taught by ‘961, and would have been motivated to do so with reasonable expectation that this would result in de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well as suggested ‘961 (Page 3, [0064]).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the acidic catalyst by ‘563, so as to include acid catalyst which is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid as taught by ‘511, and would have been motivated to do so with reasonable expectation that this would result in curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate or the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant as suggested ‘511 (Page 10, [0110]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
acid catalysts) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claims 28-29: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the near-infrared shielding material such as WO3 as precursor for Cs0.33WO3 (Page 22/27, [0072], Example of 1st embodiment).
‘961 teaches the near-infrared absorbing material fine particle dispersion (Page 2, [0054]), wherein the near-infrared shielding material such as WO3 as precursor is utilized for the synthesis of for Cs0.33WO3 (Page 4, [0081]).
Regarding claim 30: ‘‘563 teaches a method for producing a near-infrared shielding coating, comprising the steps of: preparing a film-forming binder comprising a reaction product of an alkoxysilane having an epoxy group and an alkoxysilane having an amino group with an active hydrogen, preparing a dispersion of a near-infrared shielding material by dispersing thereof in a solvent, followed by addition of a mixture of additives thereinto, mixing the film-forming binder with the dispersion in the presence of an acid catalyst to form a transparent film-forming composition, applying the film-forming composition on a pre-treated surface of a substrate, and curing the film-forming composition to form the near-infrared shielding coating (Page 22/27, [0072], Solar Radiation Shielding Film to Page 23/27, [0075]), wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group are present in a range of 0.23:0.18 (i.e., a ratio of 1.28; Page 23/27, [0073]). ‘563 does not expressly teach i) the film-forming binder further comprises a secondary component of silane compounds selected from tri- or dialkoxysilane, monoalkoxysilane, glycidesilane or combinations of any two or more thereof, and ii) the acid catalyst is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid.
Referring to i), however, ‘961 teaches a near-infrared absorbing material fine particle dispersion (Page 2, [0054]), comprising, composite tungsten oxide fine particles, and a silane compound, in an acrylic resin (Page 12, Claim 1), wherein the silane compound is one or more selected from a silane coupling agent, an alkoxysilane compound, and a silicone resin (Page 12, Claim 2) such as methyltrimethoxy silane, methyltriethoxy silane or ethyltrimethoxy silane (Page 3, [0077]-[0078]), wherein the addition amount of the silane compound is preferably 1 part by mass or more and 200 parts by mass or less with respect to 100 parts by mass of the near-infrared absorbing material fine particles (Page 3, [0066]) with benefit of providing de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well (Page 3, [0064]).
Referring to ii), ’511 teaches silicone coating composition (Page 1, [0011]) comprising
curing catalyst which may be any of curing catalysts commonly used in silicone coating compositions. Specifically curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate are useful. Examples include acidic compounds such as p-toluenesulfonic acid and trichloroacetic acid (Page 10, [019]) or organophosphorus compounds (Page 10, [0115]-[0116]) with benefit of providing the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant (Page 10, [0110]).
In an analogous art of the method for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the film-forming binder by ‘563, so as to further include a secondary component of silane compounds as taught by ‘961, and would have been motivated to do so with reasonable expectation that this would result in de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well as suggested ‘961 (Page 3, [0064]).
In an analogous art of the method for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the acidic catalyst by ‘563, so as to include acid catalyst which is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid as taught by ‘511, and would have been motivated to do so with reasonable expectation that this would result in curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate or the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant as suggested ‘511 (Page 10, [0110]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
acid catalysts) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claims 31-32: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the method of the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the near-infrared shielding material such as WO3 as precursor for Cs0.33WO3 (Page 22/27, [0072], Example of 1st embodiment).
‘961 teaches the near-infrared absorbing material fine particle dispersion (Page 2, [0054]), wherein the near-infrared shielding material such as WO3 as precursor is utilized for the synthesis of for Cs0.33WO3 (Page 4, [0081]).
12. Claims 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Itaru Hayakawa (JP 2008-194563 A, machine translation, hereinafter “’563”) in view of Nakayama et al. (US Pub. No. 2021/0070961 A1, hereinafter “’961”), and Masuda et al. (US Pub. No. 2016/00 90511 A1, hereinafter “’511”) as applied to claim 1 above, and further in view of Song et al. (KR 10-2019-0015912 A, machine translation, hereinafter “’912”).
Regarding claims 18-19: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches a transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the near-infrared shielding material such as WO3 as precursor for Cs0.33WO3 (Page 22/27, [0072], Example of 1st embodiment). This rejection is applied in the interest of advancing prosecution in the event it can be shown that ‘563 does not expressly teach the near-infrared shielding material used is tungsten trioxide.
However, ‘912 teaches a paint composition for blocking infrared rays, which has the improved visibility and solar blocking rate (Page 5/10, DESCRIPTION OF THE ART, lines 1-3). The paint composition comprises a film-forming binder (Page 6/10, Solutions for Solving Problems, lines 43-47 to Page 7/10, lines 1-2), a metal oxide including 20 to 30 wt% of antimony tin oxide and 70 to 80 wt% of tungsten oxide (Page 3/10, Claim 1) such as WO3 (Page 6/10, Solutions for Solving Problems, lines 19-21) with benefit of providing a heat-shielding paint composition that has good visibility and solves a problem of surface roughness of a coating film while excellently blocking infrared rays passing through glass (Page 6/10, Solutions for Solving Problems, lines 10-12).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the near-infrared shielding material by ‘563, so as to include tungsten trioxide as the near-infrared shielding material as taught by ‘912, and would have been motivated to do so with reasonable expectation that this would result in providing a heat-shielding paint composition that has good visibility and solves a problem of surface roughness of a coating film while excellently blocking infrared rays passing through glass as suggested ‘912 (Page 6/10, Solutions for Solving Problems, lines 10-12).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
the near-infrared shielding compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 20: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the tungsten trioxide is present in an amount ranging from 0.1% by weight to 20% by weight of the total composition (Page 4/27, Claim 2; Page 23/27, [0073]).
Regarding claim 21: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the tungsten trioxide has a particle size of less than 200 nm (i.e., overlapping ranges; Page 3/27, Claim 1; Page 10/27, [0021]).
Regarding claim 22: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the tungsten trioxide is uniformly dispersed in the form of nanoparticles in a solvent (Page 11/27, [0023]; Page 12/27, [0026]).
Regarding claim 23: The disclosure of ‘563 in view of ‘961 and ‘511 is adequately set forth in paragraph above and is incorporated herein by reference. ‘563 teaches the transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), wherein the solvent used for dispersing is propylene glycol monoethyl ether [Page 23/27, [0073]).
‘912 teaches the paint composition for blocking infrared rays, which has the improved visibility and solar blocking rate (Page 5/10, DESCRIPTION OF THE ART, lines 1-3), wherein the solvent used for dispersing is water (Page 6/10, Solutions for Solving Problems, line 8).
Response to Arguments
13. Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that ’56 does not teach. among other things, the invention in dependent claims 24 or 26.
The Examiner respectfully disagrees. The new rejection is based on the combination of ‘563 in view of ‘961 and ‘511. ‘563 teaches a transparent film-forming composition for producing a near-infrared shielding coating (Page 6/27, [0001]; Page 21/27, [0065]-[0066]), comprising: a film-forming binder comprising a primary component of a reaction product of an alkoxysilane having an epoxy group such as glycidoxypropyl group and an alkoxysilane having an amino group with an active hydrogen such as an aminopropyl group-containing alkoxysilane (Page 3/27, Claim 1; Example of 1st embodiment, [0072]; Page 23/27, [0073]), wherein the alkoxysilane having an epoxy group, the alkoxysilane having an amino group are present in a range of 0.23:0.18 (i.e., a ratio of 1.28; Page 23/27, [0073]), an acid catalyst such as boron trifluoride piperidine (Page 23/27, [0074]), and a near-infrared shielding material such as WO3 as precursor is utilized for the synthesis of Cs0.33WO3 (Page 22/27, [0072], Example of 1st embodiment). ‘563 does not expressly teach i) the film-forming binder further comprises a secondary component of silane compounds selected from tri- or dialkoxysilane, monoalkoxysilane, glycidesilane or combinations of any two or more thereof, and ii) the acid catalyst is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid.
Referring to i), however, ‘961 teaches a near-infrared absorbing material fine particle dispersion (Page 2, [0054]), comprising, composite tungsten oxide fine particles, and a silane compound, in an acrylic resin (Page 12, Claim 1), wherein the silane compound is one or more selected from a silane coupling agent, an alkoxysilane compound, and a silicone resin (Page 12, Claim 2) such as methyltrimethoxy silane, methyltriethoxy silane or ethyltrimethoxy silane (Page 3, [0077]-[0078]), wherein the addition amount of the silane compound is preferably 1 part by mass or more and 200 parts by mass or less with respect to 100 parts by mass of the near-infrared absorbing material fine particles (Page 3, [0066]) with benefit of providing de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well (Page 3, [0064]).
Referring to ii),’ 511 teaches silicone coating composition (Page 1, [0011]) comprising
curing catalyst which may be any of curing catalysts commonly used in silicone coating compositions. Specifically curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate are useful. Examples include acidic compounds such as p-toluenesulfonic acid and trichloroacetic acid (Page 10, [019]) or organophosphorus compounds (Page 10, [0115]-[0116]) with benefit of providing the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant (Page 10, [0110]).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the film-forming binder by ‘563, so as to further include a secondary component of silane compounds as taught by ‘961, and would have been motivated to do so with reasonable expectation that this would result in de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well as suggested ‘961 (Page 3, [0064]).
In an analogous art of the transparent film-forming composition for producing a near-infrared shielding coating, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the acidic catalyst by ‘563, so as to include acid catalyst which is selected from sulphuric acid, nitric acid, organophosphorus compounds and p-toluenesulfonic acid as taught by ‘511, and would have been motivated to do so with reasonable expectation that this would result in curing catalysts capable of promoting condensation reaction of condensable groups such as silanol and alkoxy groups in the hydrolytic condensate or the coating composition loaded with this catalyst becomes shelf stable while remaining curable and crack resistant as suggested ‘511 (Page 10, [0110]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
acid catalysts) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Furthermore, with regard to the ratio of the alkoxysilane having an epoxy group, the alkoxysilane having an amino group, and the silane compounds of the secondary component are present in a range of 8:4:1 to 8:8:5, it is submitted that ‘563 teaches the alkoxysilane having an epoxy group, the alkoxysilane having an amino group are present in a range of 0.23:0.18 (i.e., a ratio of 1.28; Page 23/27, [0073]). Also, ‘961 teaches the addition amount of the silane compound is preferably 1 part by mass or more and 200 parts by mass or less with respect to 100 parts by mass of the near-infrared absorbing material fine particles (Page 3, [0066]). ‘961’s disclosure would have indicated to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of the silane coupling agent such as secondary component (variables) by melt-kneaded (affect) can effectively de-aggregation of the near-infrared absorbing material fine particles is promoted, and effect of securing the state of dispersion of the near-infrared absorbing material fine particles in the acrylic resin is exhibited as well (Page 3, [0064]), thereby effectively controlling and securing the state of dispersion of the near-infrared absorbing material fine particles (property) (Page 3, [0064]), establishing that the type and amount of the silane coupling agent in melt-kneaded are result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."), and the silane coupling agent in melt-kneaded is recognized as a result-effective variable before determining that optimum ranges of said variable might be characterized as routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
It is noted that the alkoxysilane comprising primary component of a reaction product of an alkoxysilane having an epoxy group and an alkoxysilane having an amino group with an active hydrogen, and silane coupling agent such as secondary component of silane compounds are well known components designed to improve the adhesion of the coating film. Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Aller, 220 F.2d 454, 456 (CCPA 1955). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
14. 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 extension fee 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 date of this final action.
Examiner Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
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/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
01/21/2026
bijan.ahvazi@uspto.gov