DETAILED ACTION
Claim Rejections - 35 USC § 112
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.
Claims 4-7 and 9-11 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the limitation "the resulting system" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Please note that claims 5-7 and 9-11 are rendered indefinite as a result of their dependency on claim 4.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12-14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 depends on claim 1 and recite “the nano-zirconia monomer dispersion comprises 55-85 wt% of nano-zirconia and has a refractive index of 1.620-1.720”, while claim 1 recites “the nano-zirconia monomer dispersion comprises 45-75 wt% of nano-zirconia and has a refractive index of 1.420-1.565”. Claims 1 and 12 recite overlapping weight percentage of nano-zirconia comprised in the dispersion, however, the claimed refractive index ranges are different. Thus, claim 12 fails to include all the limitations of the claim upon which it depends.
Claim 13 depends on claim 2 and recite “the nano-zirconia monomer dispersion comprises 55-85 wt% of nano-zirconia and has a refractive index of 1.620-1.720”, while claim 2 recites “the nano-zirconia and has a refractive index of 1.420-1.535 when the nano-zirconia monomer dispersion comprises 45-65 wt% of nano-zirconia and a refractive index of 1.498-1.565 when the nano-zirconia monomer dispersion comprises 65-75 wt% of zirconia”. Claims 2 and 13 recite overlapping weight percentage of nano-zirconia comprised in the dispersion, however, the claimed refractive index ranges are different. Thus, claim 13 fails to include all the limitations of the claim upon which it depends.
Claim 14 depends on claim 3 and recites “the nano-zirconia monomer dispersion comprises 55-85 wt% of nano-zirconia and has a refractive index of 1.620-1.720”, while claim 3 which depends on claim 1 reciting “the nano-zirconia monomer dispersion comprises 45-75 wt% of nano-zirconia and has a refractive index of 1.420-1.565”. Claims 1 and 14 recite overlapping weight percentage of nano-zirconia comprised in the dispersion, however, the claimed refractive index ranges are different. Thus, claim 14 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. (JP 2017025225 A) with reference to the provided machine translation, hereinafter referred to as HASHIMOTO, in view of Kurino et al. (JP 2016079050 A) with reference to the provided machine translation, hereinafter referred to as KURINO, Joly et al. (US 20110126734 A1), hereinafter referred to as JOLY, and Scholz et al. (Surface functionalization of ZrO2 nanocrystallites for the integration into acrylate nanocomposite films. Journal of Colloid and Interface Science, 2008, 323, 84-91), hereinafter referred to as SCHOLZ.
Regarding claim 1, HASHIMOTO teaches a nano-zirconia monomer dispersion (see HASHIMOTO at paragraph 6, p. 5: a dispersion containing metal oxide particles having a refractive index of 1.6 or more and an average primary particle diameter of 30 nm or less and a dispersion medium; and paragraph 8, p. 6: examples of metal oxide include zirconium oxide), characterized in that it is prepared by adding a photocurable resin to a nano-zirconia dispersion (see HASHIMOTO at paragraph 8, p. 18: the dispersion may contain a resin to form a resin composition; examples of the resin include polyamides, polyolefins such as polyethylene and polypropylene; polyesters, polyvinyl acetates; polystyrenes; (meth) acrylic resin based polymers): the nano-zirconia dispersion comprises nano-zirconia particles at an amount of 45-75 wt% (see HASHIMOTO at paragraph 8, p. 11: the concentration of the metal oxide particles in the dispersion is, for example, 20% by mass or more, preferably 40% by mass or more, more preferably 60% by mass or more, and 90% by mass or less, preferably 85% by mass or less), wherein the nano-zirconia particles are surface-grafted with functional groups (see HASHIMOTO at paragraph 3, p. 11: the metal oxide particles are coated with an organic acid and surface-treated with a silane coupling agent).
While HASHIMOTO discloses that the dispersion may contain a resin to form a resin composition (see HASHIMOTO at paragraph 8, p. 18), HASHIMOTO is silent with respect to removing an organic solvent from the dispersion through vacuum distillation. Please note, that the limitation “through vacuum distillation” is not considered further limiting claimed nano-zirconia monomer dispersion. See MPEP §2113(I): “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production”.
However, KURINO discloses a method for producing organic acid-containing zirconia fine particle dispersion and a resin composite composition (see KURINO at paragraph [1]). Similarly to HASHIMOTO, KURINO teaches zirconia surface-modified with organic acid and silane coupling agent (see KURINO at paragraphs [9] and [24]). KURINO also teaches a resin composite composition comprising mixing the surface-modified zirconia fine particle dispersion and a resin material, and then removing the solvent (see KURINO at paragraph [10]).
One of ordinary skill in the art would have anticipated success when modifying the resin composition comprising surface-modified zirconia dispersion by removing solvent as disclosed by KURINO since KURINO explicitly teaches a method of producing a resin composite composition comprising mixing the surface-modified zirconia fine particle dispersion and a resin material, and then removing the solvent (see KURINO at paragraph [10]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have removed solvent from the composition of HASHIMOTO upon addition of a resin as disclosed by KURINO in order to form a resin composition.
HASHIMOTO discloses the metal oxide particles coated with both the organic acid and the silane coupling agent can be obtained by the hydrothermal reaction (see HASHIMOTO at paragraph 5, p. 11). HASHIMOTO teaches a method for producing coated zirconium oxide particles comprising: mixing pure water with 2-ethylhexanoic acid zirconium mineral spirit solution, heating the mixed solution (see HASHIMOTO at paragraph 1, p. 20). HASHIMOTO also teaches that the obtained coated ZrO2 particles 1 had an average particle size (average primary particle size) of 12 nm, further, when the coated ZrO2 particle 1 was analyzed by infrared absorption spectrum, absorption derived from C-H and absorption derived from COOH could be confirmed; it is concluded that ZrO2 particle 1 is coated with a carboxylate derived from ethylhexanoic acid and /or 2-ethylhexanoic acid (see HASHIMOTO at paragraph 2, p. 20). HASHIMOTO teaches that coated ZrO2 particles 1 obtained above were dispersed in methyl isobutyl ketone, followed by addition of 3-methacryloxypropyltrimethoxysilane and water, and heating to reflux at 80 ° C for 1 hour (see HASHIMOTO at paragraph 4, p. 20). While HASHIMOTO is silent with respect to the infrared spectroscopy characterization of the obtained coated zirconium oxide, the IR peak ranges are evidenced from the disclosure of SCHOLZ describing FTIR-spectra of (a) as-synthesized ZrO2 (sample F) and (b) MPTS(methacryloxypropyltrimethoxysilane)-modified ZrO2 particles (see SCHOLZ at Fig. 3). SCHOLZ teaches that the absorption bands at 2949 and 2872 cm-1 are valence vibrations of methyl- and methylene groups; the peak at 1722 cm-1 is caused by the valence vibration of the carbonyl group; the peak at 1639 cm-1 can be attributed to the C=C-group; at 1300 cm-1 the asymmetric deformation vibration of an α,β-unsaturated ester appears, and in the range of 1180-817 cm-1 three peaks can be attributed to vibrations of the Si-CH2-R- (1180 cm-1), Si-O-C- (1070 cm-1) and Si-C-group (817 cm-1); the peak at 966 cm-1 could be attributed to the Si-O-Zr valence vibration, but it is also possible that this peak is caused by Si-OH valence vibrations (see SCHOLZ at 3.3. Surface modification).
According to MPEP § 2111, the proper claim interpretation includes giving claims their broadest reasonable interpretation in light of the specification. Similarly to the Applicant, HASHIMOTO discloses dispersion comprising zirconia nanoparticles surface-functionalized with coated agents as disclosed by the Applicant (organic acid such as methacrylic acid and silane coupling agent such as 3-methacryloxypropyltrimethoxysilane and 3-glycidoxypropyltrimethoxysilane (see HASHIMOTO at paragraph 5, p. 6 and paragraph 9, p. 10). Furthermore, HASHIMOTO teaches dispersion comprising organic solvent such as methyl ethyl ketone (see HASHIMOTO at paragraph 5, p. 10), the concentration of the metal oxide particles in the dispersion is, for example, 40% by mass or more and 85% by mass or less (see HASHIMOTO at paragraph 8, p. 11) and the resin include (meth) acrylic resin-based polymers (see HASHIMOTO at paragraph 8, p. 18). Additionally, it is known in the art that the refractive index of the composition depends on the amount of zirconia, as evidenced from the disclosure of JOLY describing that the extent to which refractive index of the organic matrix can be increased is dependent on the percent loading of zirconia in the organic matrix (see JOLY at paragraph [0003]). Accordingly, one of ordinary skill in the art would have anticipated the dispersion of HASHIMOTO including 45-75 wt% zirconia to comprise the claimed properties such as a refractive index of 1.420-1.565. Moreover, based on the disclosure of HASHIMOTO describing nano-zirconia surface-modified with the coating agents identical to the coated agents disclosed by the Applicant, and considering the FTIR-spectra of MPTS-modified ZrO2 of SCHOLZ, one of ordinary skill in the art would have anticipated the nano-zirconia particles of HASHIMOTO having claimed peak ranges when they are characterized by infrared spectroscopy. See MPEP §2112.01(I): “where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best”.
Regarding claim 2, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 1, but fails to explicitly teach the nano-zirconia dispersion having a refractive index of 1.420-1.535 when the nano-zirconia dispersion comprises 45%-65% of zirconia and a refractive index of 1.498-1.565 when the nano-zirconia dispersion comprises 65%-75% of zirconia. However, HASHIMOTO discloses dispersion comprising zirconia nanoparticles surface-functionalized with coated agents as disclosed by the Applicant (organic acid such as methacrylic acid and silane coupling agent such as 3-methacryloxypropyltrimethoxysilane and 3-glycidoxypropyltrimethoxysilane (see HASHIMOTO at paragraph 5, p. 6 and paragraph 9, p. 10). Furthermore, HASHIMOTO also teaches dispersion comprising organic solvent such as methyl ethyl ketone (see HASHIMOTO at paragraph 5, p. 10), the concentration of the metal oxide particles in the dispersion is, for example, 40% by mass or more and 85% by mass or less (see HASHIMOTO at paragraph 8, p. 11) and the resin include (meth) acrylic resin-based polymers (see HASHIMOTO at paragraph 8, p. 18). Additionally, it is known in the art that the refractive index of the composition depends on the amount of zirconia, as evidenced from the disclosure of JOLY describing that the extent to which refractive index of the organic matrix can be increased is dependent on the percent loading of zirconia in the organic matrix (see JOLY at paragraph [0003]). Accordingly, one of ordinary skill in the art would have anticipated the dispersion of HASHIMOTO including the nano-zirconia dispersion having a refractive index of 1.420-1.535 when the nano-zirconia dispersion comprises 45%-65% of zirconia and a refractive index of 1.498-1.565 when the nano-zirconia dispersion comprises 65%-75% of zirconia (see MPEP §2112.01(I)).
Regarding claim 3, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 1, characterized in that the refractive index of nano-zirconia particles in the nano-zirconia particles in the nano-zirconia dispersion is 2.20-2.60 (see HASHIMOTO at paragraph 5, p. 11: the refractive index of the metal oxide particles is 1.8 or more and 2.4 or less), and the nano-zirconia particles with tetragonal crystal structure accounts for 60-95% of all the nano-zirconia particles (see HASHIMOTO at paragraph 1, p. 7: it is preferable that 50% or more of the entire crystal structure is tetragonal, a higher ratio of tetragonal crystals is preferable because the refractive index can be improved). HASHIMOTO teaches ranges, which overlap and render obvious the claimed ranges. 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. See MPEP §2144.05(I).
Regarding claims 4-5, HASHIMOTO as modified by KURINO and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 1. HASHIMOTO also teaches a method for producing coated zirconium oxide particles comprising: mixing pure water with 2-ethylhexanoic acid zirconium mineral spirit solution, heating the mixed solution (see HASHIMOTO at paragraph 1, p. 20), followed by coated ZrO2 particles 1 obtained above were dispersed in methyl isobutyl ketone, followed by addition of 3-methacryloxypropyltrimethoxysilane and water, and heating to reflux at 80 ° C for 1 hour; followed by adding DISPERBYK-111 and methyl ethyl ketone to of dry particles 2, the mixture was sufficiently stirred until the appearance became uniform, whereby a zirconia nanoparticle dispersion liquid 1 was obtained (see HASHIMOTO at paragraphs 4-5, p. 20). HASHIMOTO teaches that examples of dispersants include Newcol 1000-FCP and DISPERBYK-110, 111, 180 (see HASHIMOTO at paragraph 1, p. 16). Furthermore, HASHIMOTO teaches that the addition amount of the carboxylic acid compound is preferably 2 parts by mass or more and 40 parts by mass or less relative to 100 parts by mass of the metal oxide particles (see HASHIMOTO at paragraph 6, p. 9), the amount of the silane coupling agent is usually 30 parts by mass or less (see HASHIMOTO at paragraph 3, p. 11), and that it is preferable that a dispersing agent is 30 mass% or less with respect to 100 mass% of metal oxide particles, and it is preferable that 0.05-20 mass% is added in an optical use (see HASHIMOTO at paragraph 3, p. 18). HASHIMOTO teaches ranges which overlap and render obvious the claimed ranges. It is noted, that while the synthetic approach disclosed by HASHIMOTO differs from the methodology disclosed by the Applicant comprising adding an organic solvent to an aqueous zirconia solution and uniformly mixing, adding an organic acid and a modifying agent to the resulting system to conduct modification on zirconia particles, than adding an oil-based dispersing aid, removing water by rotary evaporation to obtain the nano-zirconia dispersion (claim 4) and under normal pressure and 50-150°C, adding the organic acid and the modifying agent to the resulting system to conduct the modification on the zirconia particles (claim 5), HASHIMOTO teaches dispersion composition comprising constituents as claimed in present application in overlapping amount ranges. According to MPEP §2113(I) “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Thus, since the claims are drawn to a composition, HASHIMOTO disclosure describing a dispersion wherein the organic acid added is 3-20 wt% relative to the content of nano-zirconia; the modifying agent added is 5-20 wt% relative to the content of nano-zirconia; the oil-based dispersing aid added is 5-20 wt% relative to the content of nano-zirconia, reads on limitations of claims 4-5, as set forth.
Regarding claim 6, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 4, characterized in that the organic solvent is at least one of butanone, methyl isobutyl ketone, propylene glycol methyl ether, and ethylene glycol methyl ether; a volume ratio of the organic solvent added to the aqueous zirconia solution is (3-5):1 (see HASHIMOTO at paragraph 5, p. 10: examples of the solvent include ketones such as methyl isobutyl ketone, benzene, toluene, mineral spirits, usually, it is preferable to perform the substitution reaction in the presence of water; and paragraph 1, p. 20: pure water (268 g) was mixed with mineral spirit solution (782 g)). HASHIMOTO teaches a volume ratio of the organic solvent added to the aqueous zirconia solution of about 3:1.
Regarding claim 7, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 4, characterized in that the organic acid is at least one selected from a saturated or unsaturated monocarboxylic acid, a polycarboxylic acid, and a hydroxycarboxylic acid (see HASHIMOTO at paragraph 1, p. 8: linear carboxylic acids such as butyric acid).
Regarding claim 8, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 7, characterized in that the monocarboxylic acid is at least one selected from formic acid, acetic acid, propionic acid, butyric acid, isooctanoic acid, acrylic acid, and methacrylic acid; the polycarboxylic acid is at least one selected from oxalic acid, malonic acid, succinic acid, phthalic acid, fumaric acid, and maleic acid; the hydroxycarboxylic acid is at least one selected from lactic acid, malic acid, tartaric acid, and citric acid (see HASHIMOTO at paragraphs 1-2, p. 8: butyric acid, (meth)acrylic acids).
Regrading claim 9, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 4, characterized in that the modifying agent is at least one of 3-(methacryloyloxy)propyltrimethoxysilane and 3-glycidyloxypropyltrimethoxysilane (see HASHIMOTO at paragraph 9, p. 10: a silane coupling agent such as 3-methacryloxypropylmethyldimethoxysilane, 3-glycidoxypropyltrimethoxysilane).
Regarding claim 10, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 4, characterized in that the oil-based dispersing aid is at least one selected from an anionic dispersant, a cationic dispersant, a non-ionic dispersant, and a polymeric dispersant (see HASHIMOTO at paragraph 1, p. 15: DISPERBYK-110).
Regarding claims 12-14, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claims 1-3, but fails to explicitly teach the dispersion characterized in that the nano-zirconia monomer dispersion comprises 55-85 wt% of nano-zirconia and has a refractive index of 1.620-1.720. However, HASHIMOTO discloses dispersion comprising zirconia nanoparticles surface-functionalized with coated agents as disclosed by the Applicant (organic acid such as methacrylic acid and silane coupling agent such as 3-methacryloxypropyltrimethoxysilane and 3-glycidoxypropyltrimethoxysilane (see HASHIMOTO at paragraph 5, p. 6 and paragraph 9, p. 10). Furthermore, HASHIMOTO also teaches dispersion comprising organic solvent such as methyl ethyl ketone (see HASHIMOTO at paragraph 5, p. 10), the concentration of the metal oxide particles in the dispersion is, for example, 40% by mass or more and 85% by mass or less (see HASHIMOTO at paragraph 8, p. 11) and the resin include (meth) acrylic resin-based polymers (see HASHIMOTO at paragraph 8, p. 18). Additionally, it is known in the art that the refractive index of the composition depends on the amount of zirconia, as evidenced from the disclosure of JOLY describing that the extent to which refractive index of the organic matrix can be increased is dependent on the percent loading of zirconia in the organic matrix (see JOLY at paragraph [0003]). Accordingly, one of ordinary skill in the art would have anticipated the dispersion of HASHIMOTO including 55-85 wt% zirconia to comprise the claimed properties such as a refractive index of 1.620-1.720 (see MPEP §2112.01(I)).
Regarding claim 15, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 1, characterized in that the photocurable resin is selected from an acrylic or methacrylic monomer containing ester, ethyl carbamate, ether, silicon, halogen and/or phosphorus-containing groups or an oligomer of the acrylic or methacrylic monomer (see HASHIMOTO at paragraph 7, p. 18: the dispersion may contain resin to form a resin composition; examples of the resin include (meth)acrylic resin polymers). But HASHIMOTO fails to explicitly teach an amount of the photocurable resin added being 15-45 wt% relative to the total mass of the zirconia and the photocurable resin.
However, KURINO discloses a method for producing organic acid-containing zirconia fine particle dispersion and a resin composite composition (see KURINO at paragraph [1]). Similarly to HASHIMOTO, KURINO teaches zirconia surface-modified with organic acid and silane coupling agent (see KURINO at paragraphs [9] and [24]), and that the dispersion may further contain a resin raw material such as a liquid resin monomer or a liquid resin oligomer, as the liquid resin monomer, acrylic or methacrylic monomers such as methyl acrylate and methyl methacrylate, epoxy monomers and the like are suitably used (see KURINO at paragraph [31]). KURINO also teaches a resin composite composition prepared by adding 10 g of raw resin material to 50 g of the surface-modified zirconia fine particle dispersion (see KURINO at paragraph [82]). Additionally, KURINO teaches that dispersion contains 10 mass% to 80 mass% of surface-modified zirconia particles (see KURINO at paragraph [32]). Thus, KURINO teaches an amount of the resin added being 20 mass% relative to the total mass of the zirconia and the resin.
MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05(II)(A)). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by KURINO because there is a reasonable expectation of success that adding 20 mass% of resin relative to the total mass of the zirconia and the resin as disclosed KURINO would be suitable.
Regarding claim 16, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 1, characterized in that the photocurable resin is at least one of phenoxybenzyl acrylate, methyl acrylate, and methyl methacrylate (see HASHIMOTO at paragraph 7, p. 18: the dispersion may contain resin to form a resin composition; examples of the resin include (meth)acrylic resin polymers).
Regarding claims 17-20, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches an optical film, characterized in that it is prepared by using the nano-zirconia monomer dispersion according to claims 1-3 and 16 (see HASHIMOTO at paragraph 8, p. 18: these dispersion liquids or resin compositions can be developed for various uses typified by molded products and cured products; applications requiring high dispersibility include, for example, optical applications, coating applications, and adhesive applications, optical lenses, optical film pressure-sensitive adhesives, optical film adhesives, surface coating of optical lens, and optical materials such as optical filters, insulating films for touch sensors).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over HASHIMOTO in view of KURINO, JOLY and SCHOLZ as applied to claim 4 above, and further in view of Umemoto et al. (US 20140319502 A1), hereinafter referred to as UMEMOTO.
Regarding claim 11, HASHIMOTO as modified by KURINO, JOLY and SCHOLZ teaches the nano-zirconia monomer dispersion according to claim 4. While HASHIMOTO discloses the dispersion comprising the dispersant, HASHIMOTO fails to explicitly teach wherein the oil-based dispersing aid is selected from BYK-9076 or BYK-9077.
However, UMEMOTO discloses a coating composition comprising a polysilane compound, a metal oxide, and a solvent (see UMEMOTO at paragraph [0015]). UMEMOTO teaches that metal oxide particles include zirconium oxide, and that the metal oxide particles may be surface-treated; as chemical species to be introduced by the surface treatment, for example, there may be mentioned organic acids such as stearic acid, silicones, and the like (see UMEMOTO at paragraphs [0040-41]). UMEMOTO also teaches that examples of solvent include ketones such as methyl ethyl ketone (see UMEMOTO at paragraph [0045]). Additionally, UMEMOTO teaches that the dispersion may be prepared using the dispersing agent of the carbamate compound; the dispersing agent having a carbamate structure, for example, includes "DisperBYK-9077" and "DisperBYK-9076" (see UMEMOTO at paragraphs [0052-53]).
Both, HASHIMOTO and UMEMOTO disclose dispersion compositions comprising surface-functionalized zirconia, solvent, e.g., methyl ethyl ketone, and dispersant. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified a dispersion composition of HASHIMOTO by selecting a dispersant, e.g., "DisperBYK-9077" and "DisperBYK-9076" taught by UMEMOTO because there is a reasonable expectation of success that dispersants disclosed by UMEMOTO would be suitable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Choppinet et al. (EP 2174966 A1)
Yamaguchi et al. (JP 2013082609 A).
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/ANASTASIA A. KUVAYSKAYA/Examiner, Art Unit 1731
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