DETAILED ACTION
This is an Office action based on application number 18/573,018 filed 21 December 2023, which is a national stage entry of PCT/KR2021/095080 filed 2 September 2021, which claims priority to KR10-2021-0081987 filed 24 June 2021. Claims 1-4 and 6-13 are pending. Claims 5 and 14 are canceled.
Amendments to the claims, filed 21 November 2025, 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Withdrawn Rejections
The prior art rejections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.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 13 are rejected under 35 U.S.C. 103 as being unpatentable over Santra (US Patent Application Publication No. US 2013/0108702 A1) in view of KR101834397B1 with citations taken from the provided machine translation (KR397) and Liu et al. (A novel approach of chemical functionalization on nano-scaled silica particles) (Liu).
Regarding instant claims 1 and 13:
Santra discloses a copper/silica nanoparticle having a silica core and a copper/silica shell disposed around the silica core (Claim 1).
Santra further discloses a method of forming a silica core and forming a copper/silica shell around the silica core (Claim 7).
Santra further discloses that the composition is used as an antimicrobial agent (paragraph [0041]).
Santra does not disclose the Cu-S-based nanoparticles bound to the surface of the silica particles.
However, KR397 discloses Cu-S nanoparticles that provide near-infrared (NIR) blocking properties, antistatic properties, and antibacterial properties (paragraph [0016]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the Cu-S nanoparticles in the structure of Santra by combining them with or replacing the copper. The motivation for doing so would have been that the Cu-S nanoparticles provide the antibacterial/antimicrobial properties desired by Santra while also providing near-infrared (NIR) blocking properties and antistatic properties.
Santra does not disclose two or more organic functional groups on at least one surface, wherein the two or more organic functional groups are selected from carboxyl, ester, anhydride, and (meth)acrylic.
However, Liu discloses chemical functionalization on nano-scaled silica particles performed through the reaction between silanol groups of silica and the oxirane rings of epoxy compounds, wherein the epoxy compounds are inclusive of glycidyl methacrylate (GMA) (Abstract; FIG. 1).
PNG
media_image1.png
360
586
media_image1.png
Greyscale
Liu teaches that surface functionalization of inorganic fillers is a way of bringing interfacial compatibility to nanocomposites composed a blend of inorganic fillers and polymeric materials (page 813, columns 1 and 2).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to further functionalize the particles of Santra by way of the method suggested by Liu. The motivation for doing so would have been to introduce interfacial compatibility to the silica particles such that they can be utilized to form nanocomposites when blended with polymeric materials.
Therefore, it would have been obvious to combine KR397 and Liu with Santra to obtain the invention as specified by the claims.
Regarding instant claim 2:
Santra further discloses that the silica core has a diameter of about 10 nm to 1 μm (Claim 10), which overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 3:
KR397 further discloses that the size of the Cu-S nanoparticles is from about 10 nm to about 100 nm (paragraph [0031]).
Regarding instant claim 4:
KR397 further discloses that the Cu-S nanoparticle is produced by mixing a copper ion salt and a sulfide salt (paragraph [0041]), which is construed to make copper sulfide nanoparticles.
However KR397 teaches that the atomic ratio of Cu:S controls the near-infrared blocking property, anti-static property, and antibacterial property (paragraph [0051]).
Santra further discloses that there is a desire to reduce the amount of copper of in antimicrobial compositions due to environmental factors (paragraphs [0003; 0041]).
Santra in view of KR397 does not explicitly disclose the claimed ratio.
Since the instant specification is silent to unexpected results, the specific Cu:S is not considered to confer patentability to the claims. As environmental factors, the near-infrared blocking property, anti-static property, and antibacterial property are properties that can be modified, among others, by adjusting the atomic ratio of Cu:S, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the atomic ratio Cu:S in Santra to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claims 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over KR20200112651A with citations taken from the provided machine translation (KR651) in view of Santra and KR397 and Liu.
Regarding instant claims 6 and 10-11:
KR651 discloses a coating composition comprising a resin binder and copper sulfide nanoparticles (paragraph [0011]).
KR651 further discloses the resin is a UV-curable resin (paragraph [0026]) (i.e., photo-curable).
KR651 further discloses that a film is manufactured by applying the coating composition to a base film and curing it with ultraviolet rays (paragraph [0030]).
KR651 further discloses that said film is used in glass products such as architectural glass and automobile windows (paragraph [0043]).
KR651 does not explicitly disclose the particles of claim 1.
However, Santra in view of KR 397 and Liu discloses the particles comprising Cu-S-based nanoparticles bound to the surface of silica particles as cited in the rejection of claim 1, above.
Santra teaches that the increase in using copper for its biocidal properties may pose a threat to the environment; therefore, there is a need to reduce the amount of copper than can be introduced into the environment (paragraph [0003]). Santra teaches that an advantage of its structure is that it is effective as an antimicrobial agent but the amount of copper is substantially reduced (paragraph [0041]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the particles comprising Cu-S-based nanoparticles bound to the surface of silica particles as the copper sulfide in the coating composition of KR651. The motivation for doing so would have been to reduce the amount of copper for the sake of environmental concerns while still maintaining those benefits provided by copper.
As Santra in view of KR397 and Liu discloses antimicrobial/antibacterial particles, those coating compositions and coatings formed therefore are construed to be antibacterial.
Said films used in glass products such as architectural glass and automobile windows are construed to meet the claimed optical film/substrate recited by claim 11
Therefore, it would have been obvious to combine Santra in view of KR397 with KR651 and Liu to obtain the invention as specified by the instant claims.
Regarding instant claim 7:
KR651 further discloses that the UV-curable resin is selected from at least one of a multifunctional acrylate monomer, polyester acrylate, epoxy acrylate, and urethane acrylate (paragraphs [0026-0027]).
Regarding instant claim 8:
KR 651 further discloses that the resin comprises a photoinitiator (paragraph [0023]).
Regarding instant claim 9:
KR 651 further discloses that the coating composition comprises 20 to 800 parts by weight resin per 100 parts of copper sulfide nanoparticles (paragraph [0011]), which includes the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 12:
KR 651 further discloses that coating has a thickness of 0.1 μm to 100 μm (paragraph [0022]), which includes the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are moot due to the new grounds of rejection. Specifically, the new grounds of rejection rely on Liu to disclose the claimed organic group functionalization.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 02/06/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788