DETAILED ACTION
This is an Office action based on application number 18/568,471 filed 8 December 2023, which is a national stage entry of PCT/JP2022/023057 filed 8 June 2022, which claims priority to JP2021-103089 filed 22 June 2021. Claims 1-4 and 6-12 are pending. Claim 5 is canceled.
Amendments to the claims, filed 15 July 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The claim objections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
The 35 U.S.C. §112(b) rejection made of record in the previous Office action is withdrawn due to Applicant’s amendment.
The prior art and double patenting rejections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-4 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsunematsu et al. (WIPO International Publication No. WO2019/093524 A1 with citations taken from English language equivalent US Patent Application Publication No. US 2021/0047518 A1) (US518) in view of Kecht et al. (US Patent Application Publication No. US 2012/0237668 A1) (US668).
Regarding instant claim 1:
US518 discloses infrared absorbing particles coated with a coating layer containing at least one selected from a hydrolysis product of a metal chelate compound, a polymer of a hydrolysis compound of a metal chelate compound, a hydrolysis product of a metal cyclic oligomer compound, and a polymer of the hydrolysis product of a metal cyclic oligomer compound (Claim 1).
US518 does not explicitly disclose that the silicon compound comprised of silica fine particles.
However, US668 discloses solid particles having a silicate coating (Title).
US668 illustrates that the silicate coating are in the form of silica nanoparticles <2> coated on the surface solid particles <1> to form silica-coated solid particles <3> (FIG. 1 and 2; paragraph [0050]).
US668 further discloses that the solids to be coated are inorganic solids that absorb in the infrared range (Claims 32-33).
US668 teaches that such absorbing substances often exhibit low stability toward external influences, such as for example oxygen, moisture, organic solvents and oxidizing or reducing substances; furthermore, such substances exhibit a serious acid sensitivity problem to acids (paragraph [0004]).
US668 further teaches that the disclosed coating protects against external influences, in particular against the action of acidic media (paragraph [0012]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior before him or her, to form the silica nanoparticle coating of US668 on the coated infrared absorbing particles of US518. The motivation for doing so would have been that the silica nanoparticle coating of US668 is readily coatable onto infrared absorbing particles and provides protection against various external influences.
The combination of US668 with US518 produces a silicon compound present on the coating film and/or in the vicinity of the surfaces of the infrared absorbing particles, as required by claim 1.
Therefore, it would have been obvious to combine US668 with US518 to obtain the invention as specified by the claim.
Regarding instant claim 2:
US518 further discloses that the thickness of the coating layer is 0.5 nm or more (Claim 2).
Regarding instant claim 3:
US518 further discloses that the metal chelate compound or the metal cyclic oligomer compound contains at least one metal element selected from Al, Zr, Ti, Si, and Zn (Claim 3).
Regarding instant claim 4:
US518 further discloses that the metal chelate compound or the metal cyclic oligomer compound has at least one selected from an ether bond, an ester bond, an alkoxy group, and an acetyl group (Claim 4).
Regarding instant claim 6:
US518 further discloses that the infrared absorbing particles are represented by the general formula MxWyOz (where M is one or more elements selected from H, He, alkali metal, alkaline earth metal, rare earth metal, Mg, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Os, Bi, I, Yb; W is tungsten; and O is oxygen, satisfying 0.001 ≤ x/y ≤ 1, 2.2 z/y ≤ 3.0). (Claim 5).
Regarding instant claim 7:
US518 further discloses that the carbon concentration is 0.2 mass % or more and 5.0 mass % or less (Claim 7).
Regarding instant claim 8:
US518 further discloses an infrared-absorbing fine particle dispersion liquid, wherein the infrared absorbing fine particles are dispersed in a liquid medium (Claim 8).
Regarding instant claim 9:
US518 further discloses that the liquid medium is at least liquid medium selected from an organic solvent, oil and fat, a liquid plasticizer, a compound polymerized by curing, and water (Claim 9).
Regarding instant claim 10:
US518 further discloses an infrared absorbing fine particle dispersion body wherein infrared absorbing fine particles are dispersed in a solid resin (Claim 10).
Regarding instant claim 11:
US518 further discloses that the solid resin is at least one selected from fluororesin, PET resin, acrylic resin, polyamide resin, vinyl chloride resin, polycarbonate resin, olefin resin, epoxy resin, and polyimide resin (Claim 11).
Regarding instant claim 12:
US518 further discloses an infrared dispersion body which is a dried and solidified product of the infrared absorbing fine particle dispersion (Claim 12).
Claims 1-4, 6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tusnematsu et al. (WIPO International Publication No. WO 2019/216152 A1 with citations taken from English language equivalent US Patent Application Publication No. US 2021/0214273 A1) (US273) in view US668.
Regarding instant claims 1 and 8:
US273 discloses an infrared absorbing fine particle dispersion liquid in which infrared absorbing particles are dispersed in a liquid medium, wherein the each of the infrared absorbing particles is coated with a coating layer containing at least one selected from a hydrolysis product of a metal chelate compound, a polymer of a hydrolysis product of a metal chelate compound, a hydrolysis product metal cyclic oligomer compound, and a polymer of the hydrolysis product of the metal cyclic oligomer compound.
US273 does not explicitly disclose that the silicon compound is silica fine particles.
However, US668 discloses solid particles having a silicate coating (Title).
US668 illustrates that the silicate coating are in the form of silica nanoparticles <2> coated on the surface solid particles <1> to form silica-coated solid particles <3> (FIG. 1 and 2; paragraph [0050]).
US668 further discloses that the solids to be coated are inorganic solids that absorb in the infrared range (Claims 32-33).
US668 teaches that such absorbing substances often exhibit low stability toward external influences, such as for example oxygen, moisture, organic solvents and oxidizing or reducing substances; furthermore, such substances exhibit a serious acid sensitivity problem to acids (paragraph [0004]).
US668 further teaches that the disclosed coating protects against external influences, in particular against the action of acidic media (paragraph [0012]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior before him or her, to form the silica nanoparticle coating of US668 on the coated infrared absorbing particles of US273. The motivation for doing so would have been that the silica nanoparticle coating of US668 is readily coatable onto infrared absorbing particles and provides protection against various external influences.
The combination of US668 with US273 produces a silicon compound present on the coating film and/or in the vicinity of the surfaces of the infrared absorbing particles, as required by claim 1.
Therefore, it would have been obvious to combine US668 with US273 to obtain the invention as specified by the claim.
Regarding instant claim 2:
US273 further discloses that the thickness of the coating layer of the infrared absorbing particles is 0.5 nm or more (paragraph [0115]).
Regarding instant claim 3:
US273 further discloses that the metal chelate compound or the metal cyclic oligomer compound contains at least one metal element selected from Al, Zr, Ti, Si, and Zn (Claim 2).
Regarding instant claim 4:
US273 further discloses that the metal chelate compound or the metal cyclic oligomer compound has at least one selected from an ether bond, an ester bond, an alkoxy group, and acetyl group (Claim 3).
Regarding instant claim 6:
US273 further discloses that the infrared absorbing fine particles are represented by a general formula MxWyOz (where M is one or more elements selected from H, He, alkali metal, alkaline earth metal, rare earth element, G, Z, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Os, Bi, I, Yb; W is tungsten; and O is oxygen satisfying 0.001 ≤ x/r ≤ 1 and 2.0 ≤ z/y ≤ 3.0) (Claim 4).
Regarding instant claim 9:
US273 further discloses that the liquid medium is one or more of an organic solvent, fats and oils, liquid plasticizers, compounds polymerized by curing, and water (paragraph [0145]).
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 1-4 and 6-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. US 11,208,563 B2 (US563) in view of US668.
Regarding instant claim 1:
Claim 1 of US563 recites infrared absorbing fine particles coated with a coating layer containing at least one component selected from the group consisting of a hydrolysis product of a metal chelate compound, a polymer of a hydrolysis product of a metal chelate compound, a hydrolysis product of a metal cyclic oligomer compound, and a polymer of a hydrolysis product of a metal cyclic oligomer compound.
US563 does not claim the recited silicon compound.
However, US668 discloses solid particles having a silicate coating (Title).
US668 illustrates that the silicate coating are in the form of silica nanoparticles <2> coated on the surface solid particles <1> to form silica-coated solid particles <3> (FIG. 1 and 2; paragraph [0050]).
US668 further discloses that the solids to be coated are inorganic solids that absorb in the infrared range (Claims 32-33).
US668 teaches that such absorbing substances often exhibit low stability toward external influences, such as for example oxygen, moisture, organic solvents and oxidizing or reducing substances; furthermore, such substances exhibit a serious acid sensitivity problem to acids (paragraph [0004]).
US668 further teaches that the disclosed coating protects against external influences, in particular against the action of acidic media (paragraph [0012]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior before him or her, to form the silica nanoparticle coating of US668 on the coated infrared absorbing particles of US563. The motivation for doing so would have been that the silica nanoparticle coating of US668 is readily coatable onto infrared absorbing particles and provides protection against various external influences.
The combination of US668 with US563 produces a silicon compound present on the coating film and/or in the vicinity of the surfaces of the infrared absorbing particles, as required by claim 1.
Regarding instant claim 2:
Claim 2 of US563 recites a thickness of the coating layer is 0.5 nm or more.
Regarding instant claim 3:
Claim 1 of US563 recites the metal chelate compound or the metal cyclic oligomer compound contains at least one metal element selected from Al, Zr, Ti, and Zn.
Regarding instant claim 4:
Claim 4 of US563 recites the metal chelate compound or the metal cyclic oligomer compound has at least one selected from an ether bond, an ester bond, an alkoxy group, and an acetyl group.
Regarding instant claim 6:
Claim 5 of US563 recites wherein the infrared absorbing fine particles are represented by the general formula MxWyOz (where M is one or elements selected from H, He, alkali metal, alkaline earth metal, rare earth element, Mg, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Ox, Bi, I, Yb, W is tungsten, O is oxygen satisfying 0.001 ≤ x/y ≤ 1 and 2.2 ≤ z/y ≤ 3.0).
Regarding instant claim 7:
Claim 7 of US563 recites a carbon concentration of 0.2 mass % or more and 5.0 mass % or less.
Regarding instant claim 8:
Claim 8 of US563 recites the infrared absorbing fine particles are dispersed in a predetermined liquid medium.
Regarding instant claim 9:
Claim 9 of US563 recites the liquid medium is at least one liquid medium selected from an organic solvent, oil and fat, a liquid plasticizer, a compound polymerized by curing, and water.
Regarding instant claim 10:
Claim 10 of US563 recites an infrared absorbing fine particle dispersion body wherein the infrared absorbing fine particles are dispersed in a predetermined solid resin.
Regarding instant claim 11:
Claim 11 of US563 recites that the solid resin is at least one resin selected from a fluororesin, PET resin, acrylic resin, polyamide resin, vinyl chloride resin, polycarbonate resin, olefin resin, epoxy resin, and polyimide resin.
Regarding instant claim 12:
Claim 12 of US563 recites an infrared absorbing fine particle dispersion body which is a dried and solidified product of the infrared absorbing fine particle dispersion liquid.
Claims 1-4, 6, and 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. US 11,987,520 B2 (US520) in view of US668. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claims 1 and 8:
Claim 1 of US520 recites an infrared absorbing fine particle dispersion liquid in which infrared absorbing fine particles are dispersed in a liquid medium, wherein the infrared absorbing particles are each coated with a coating layer containing at least one selected from a hydrolysis product of a metal chelate compound, a polymer of the hydrolysis product of the metal chelate compound, a hydrolysis product of a metal cyclic oligomer compound, and a polymer of the hydrolysis product of the metal cyclic oligomer compound.
US520 does not recite silica fine particles.
However, US668 discloses solid particles having a silicate coating (Title).
US668 illustrates that the silicate coating are in the form of silica nanoparticles <2> coated on the surface solid particles <1> to form silica-coated solid particles <3> (FIG. 1 and 2; paragraph [0050]).
US668 further discloses that the solids to be coated are inorganic solids that absorb in the infrared range (Claims 32-33).
US668 teaches that such absorbing substances often exhibit low stability toward external influences, such as for example oxygen, moisture, organic solvents and oxidizing or reducing substances; furthermore, such substances exhibit a serious acid sensitivity problem to acids (paragraph [0004]).
US668 further teaches that the disclosed coating protects against external influences, in particular against the action of acidic media (paragraph [0012]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior before him or her, to form the silica nanoparticle coating of US668 on the coated infrared absorbing particles of US520. The motivation for doing so would have been that the silica nanoparticle coating of US668 is readily coatable onto infrared absorbing particles and provides protection against various external influences.
The combination of US668 with US520 produces a silicon compound present on the coating film and/or in the vicinity of the surfaces of the infrared absorbing particles, as required by claim 1.
Therefore, it would have been obvious to combine US668 with US520 to obtain the invention as specified by the claim.
Regarding instant claim 2:
Claim 1 of US520 recites that the thickness of the coating layer is 0.5 nm or more and 2nm or less.
Regarding instant claim 3:
Claim 2 of US520 recites the metal chelate compound or the metal cyclic oligomer compound contains at least one metal element selected from Al, Zr, Ti, Si, and Zn.
Regarding instant claim 4:
Claim 3 of US520 recites the metal chelate compound or the metal cyclic oligomer compound has at least one selected from an ether bond, an ester bond, an alkoxy group, and an acetyl group
Regarding instant claim 6:
Claim 4 of US520 recites the infrared absorbing fine particles are represented by the general formula MxWyOz (where M is one or more elements selected from H, He, alkali metal, alkaline earth metal, rare earth element, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Sc, Br, Te, Ti, Nb, V, Mo, Ta, Re, Hf, Os, Bi, and I; W is tungsten; and O is oxygen satisfying 0.001 ≤ x/y ≤ 1 and 2.0 ≤ z/y ≤ 3).
Regarding instant claim 9:
Claim 7 of US520 recites the liquid medium is at least selected from aromatic hydrocarbons, ketones, ethers, alcohols, and water, wherein at least the aromatic hydrocarbons, ketones, ethers, and alcohols meet the claimed organic solvent.
Claims 1-4, 6, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of copending Application No. 18/681,709 (App 709) in view of US668.. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claims 1, 3 and 6:
Claim 1 of App 709 recites composite tungsten oxide fine particles whose surfaces are coated with a coating film containing at least one selected from hydrolysis products of metal chelate compounds, polymers of hydrolysis products of metal chelate compounds, hydrolysis products of metal cyclic oligomer compounds and polymers of hydrolysis products of metal cyclic oligomer compounds.
Claim 5 of App 709 further recites that the composite tungsten oxide fine particles are represented by a general formula MxWyOz (where M is at least one element selected from H, He, alkali metals, alkaline earth metals, rare earth elements, Mg, Zr, Cr, Mn, Fe, Ru, Co, Rh, Ir, Ni, Pd, Pt, Cu, Ag, Au, Zn, Cd, Al, Ga, In, Tl, Si, Ge, Sn, Pb, Sb, B, F, P, S, Se, Br, Te, Ti, Nb, V, Mo, Ta, Re, Be, Hf, Os, Bi, I, and Yb; W is tungsten, O is oxygen; 0.001 ≤ x/y ≤ 1; and 2.0 z/y ≤ 4.0).
Though the claims of App 709 do not recite “infrared absorbing fine particles”, the tungsten oxide particles in both claim sets are substantially identical; therefore, the tungsten oxide fine particles of App 709 read on the instantly claimed infrared absorbing fine particles.
Claim 3 of App 709 recites the metal chelate compound or the metal cyclic oligomer contains one or more metal elements selected from Al, Zr, T, Si, and Zn.
App 709 does not claim the recited silicon compound.
However, US668 discloses solid particles having a silicate coating (Title).
US668 illustrates that the silicate coating are in the form of silica nanoparticles <2> coated on the surface solid particles <1> to form silica-coated solid particles <3> (FIG. 1 and 2; paragraph [0050]).
US668 further discloses that the solids to be coated are inorganic solids that absorb in the infrared range (Claims 32-33).
US668 teaches that such absorbing substances often exhibit low stability toward external influences, such as for example oxygen, moisture, organic solvents and oxidizing or reducing substances; furthermore, such substances exhibit a serious acid sensitivity problem to acids (paragraph [0004]).
US668 further teaches that the disclosed coating protects against external influences, in particular against the action of acidic media (paragraph [0012]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior before him or her, to form the silica nanoparticle coating of US668 on the coated infrared particles of App 709. The motivation for doing so would have been that the silica nanoparticle coating of provides protection against various external influences.
Regarding instant claim 2:
Claim 2 of App 709 recites that the coating film has a thickness of 0.5 nm or more.
Regarding instant claim 4:
Claim 4 of App 709 recites the metal chelate compound or the metal cyclic oligomer compound has one or more groups selected from an ether bond, an ester bond, an alkoxy group, and an acetyl group.
Regarding instant claim 10:
Claim 10 of App 709 recites a fine particle dispersion comprising the coated particle dispersed in a solid resin.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered but are unpersuasive. The rejections of record, however, are altered to address Applicant’s amendments.
Applicant submits that claim 1 would not have been obvious to one of ordinary skill in the art based on the teachings of the prior art references. Applicant first discusses the merits of their invention. Specifically, Applicant contends that the silica fine particles strengthen the coating film, suppress a change in solar transmittance after exposure to high temperature, and reduce thermal deterioration of the infrared absorbing performance. Applicant contends that none of the references recognizes the same benefits afforded by the inclusion of the silica fine particles.
Applicant’s argument is unpersuasive. In response to applicant's argument that the inclusion of silica fine particles affords the purported benefits, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, while not added for the same reasons, the prior art teaches that the inclusion of silica nanoparticles coated on the surface of solid particles coating protects against external influences, in particular against the action of acidic media. Therefore, one of ordinary skill looking to further protect the composition of ither Tsunematsu 518 or Tsunematsu 273 would readily include the silica coating disclosed by Kecht.
Applicant further argues that one ordinary skill in the art would not be motivated to modify either Tsunematsu 518 or Tsunematsu 273 based on the teachings of Kecht. Applicant argues that Tsunematsu 518 and Tsunematsu 273 are directed to suppressing deterioration of infrared absorbing particles due to moisture and maintaining infrared performance and their inclusion into a dispersion liquid where stability light transmittance, and haze are also important. Applicant argues that Kecht is directed to protecting acid-sensitive substances by means of a silica coating and is not concerned with the same properties as either Tsunematsu 518 or Tsunematsu 273.
Applicant’s argument is unpersuasive. Tsunematsu 518, Tsunematsu 273, and Kecht are all concerned, at least in part, to coating inorganic solids that absorb in the infrared range, as cited in the rejections above. Therefore, there is motivation to combine the beneficial properties afforded by Kecht to those structures of Tsunematsu 518 and Tsunematsu 273 to produce an improved product possessing the described benefits.
Applicant further argues that one would not have been led to combine Kecht with Tsunematsu 518 or Tsunematsu 273 because of the expected negative impact to the functionality of the coatings sought in either Tsunematsu 518 or Tsunematsu 273. Applicant contends that Kecht forms a silica coating by dispersing the solid particles in a buffer solution, adding a basic silicate solution to the dispersion liquid, and depositing silica in the solution. Applicant contends that if Kecht were to be applied to the surface-treated particles of Tsunematsu 518 or Tsunematsu 273, the metal chelate compound or the like would come into contact with the buffer solution and the basic solution of Kecht, and the exposure would be expected to alter or peel off the coating.
Applicant’s argument is unpersuasive because it is conclusory without support of evidence. If Applicant has evidence showing that the combination of references would lead to inoperability of the structure, Applicant should provide such evidence.
Applicant finally contends that the benefits afforded by their invention are unexpected and not recognized by the prior art combination.
Applicant’s argument is unpersuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d).
In the instant case, the evidence upon which Applicant relies are the examples and comparative examples of their original disclosure. The scope of those examples, however, narrower in scope that the claims (e.g., the examples use a specific infrared absorbing particle, a specific type an amount of surface treatment agent, and a specific amount of silicon compound), whereas the invention of claim 1 is drawn broadly to any infrared absorbing composite fine particles coated with any of the claimed hydrolysis product and any amount of silica fine particles. Therefore, it is not readily apparent that the allegedly critical properties are exhibited by every embodiment encompassed by the scope of the claims.
Applicant’s arguments regarding the nonstatutory obviousness-type double patenting rejections of record are fully considered, but are unpersuasive. The rejections, however, are altered due to Applicant’s amendment.
Applicant traverses the double patenting rejection using similar arguments traversing the prior art rejections of record (i.e., that it would not have been obvious to include the silica fine particle coating of the Kecht reference).
Applicant’s arguments are unpersuasive for the same reasons set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 07/31/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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