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 07/15/2026.
3. Claims 1-2, 4-5, 9-24 are pending. Claims 1-2, 4-5, 9-24 are under examination on the merits. Claims 1-2, 5, 9, 15-16 are amened. Claims 3, 6-8 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive, thus claims 1-2, 4-5, 9-24 stand rejected as set forth in Office action dated 04/19/2019 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-2, 4-5, 9-24 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Pub. No. 2020/0231871 A1, hereinafter “’871”) in view of Yamazaki et al. (US Pub. No. 2013/0116362 A1, hereinafter “’362”).
Regarding claim 1: ‘871 teaches a curable composition (Page 1, [0002]), comprising quantum dots (page 1, [0016]), a polymerizable compound (Page 2, [0035]-[0036]), and two or more light diffusing agents (Page 8, [0132]-[0133]), wherein the light diffusing agents have an average particle diameter (D50) of about 150 nm to about 250 nm (i.e., read on the second light scatterers; Page 8, [0135]), wherein the second light diffusing agents comprise barium sulfate (BaSO4), calcium carbonate (CaCO3), titanium dioxide (TiO2), zirconia (ZrO2), or a combination thereof (Page 8, [0133]) in an amount of about 1 wt % to about 20 wt % based on a total amount of the curable composition (Page 8, [0137]). ‘871 does not expressly teach the first light scatterers comprise a nano-sol comprising an organic-inorganic hybrid sol, the organic-inorganic hybrid sol comprises inorganic particles having an average particle diameter (D50) of less than or equal about 1 nm to about 20 nm, and the nano-sol is comprised in a weight of about 1 to about 5 times a weight of the second light scatterers.
However, ‘362 teaches an inorganic-organic hybrid material which makes it possible to supply an optical material that combines flexibility and a high refractive index, which are inconsistent functions, and that has low yellowness and high transparency (Page 2, [0016]). The metal oxide of the inorganic particles contains at least one member selected from the group consisting of Zr, Ti, Sn, Ce, Ta, Nb, and Zn (Page 2, [0018]; Page 7, [0075]; Page 7, [0078]), and the inorganic particles having a crystallite diameter, as calculated from the half-value width of a crystalline peak determined by X-ray diffractometry, of 1-10 nm (Page 2, [0018]; Page 7, [0080]), wherein the proportion of the inorganic component contained in the inorganic-organic hybrid material of the invention is generally 20% by mass or more, preferably 25% by mass or more, more preferably 30% by mass or more, and is generally 80% by mass or less, preferably 60% by mass or less, more preferably 40% by mass or less (Page 8, [0086]; read on the nano-sol is comprised of the first light scatterers in a weight of about 1 to about 5 times than that of the second light-scattering material) with benefit of providing a transparent inorganic-organic hybrid material which has a high refractive index and flexibility and in which transparent inorganic particles having a high refractive index have been evenly dispersed in order to heighten the refractive index of the radiation-cured resin, and to an inorganic-organic composite composition and an optical material which was produced using the inorganic-organic hybrid material (Page 1, [0001]).
In an analogous art of the curable composition, 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 by the curable composition comprising light diffusing agents by ‘871, so as to include two or more light scatterers different from each other wherein the first light scatterers comprise a nano-sol comprising an organic-inorganic hybrid sol, the organic-inorganic hybrid sol comprises inorganic particles having an average particle diameter (D50) of less than or equal about 1 nm to about 20 nm, and the nano-sol is comprised in a weight of about 1 to about 5 times a weight of the second light scatterers as taught by ‘362, and would have been motivated to do so with reasonable expectation that this would result in providing
a transparent inorganic-organic hybrid material which has a high refractive index and flexibility and in which transparent inorganic particles having a high refractive index have been evenly dispersed in order to heighten the refractive index of the radiation-cured resin, and to an inorganic-organic composite composition and an optical material which was produced using the inorganic-organic hybrid material as suggested by ‘362 (Page 1, [0001]).
Regarding claim 2: The disclosure of ‘871 in view of ‘362 is adequately set forth in paragraph above and is incorporated herein by reference. ‘362 teaches the curable composition, wherein the nano-sol (Page 2, [0017]) has a refractive index of greater than or equal to about 1.600 and a solution transmittance of greater than or equal to about 85% (Page 21, Table 3, Examples 1-3).
Regarding claim 4: The disclosure of ‘871 in view of ‘362 is adequately set forth in paragraph above and is incorporated herein by reference. ‘362 teaches the curable composition (Page 2, [0017]), wherein the inorganic particles comprise titanium, zirconium, silicon, aluminum, tin, cerium, magnesium, zinc, or a combination thereof (Page 2, [0018]; Page 7, [0075]; Page 7, [0078]).
Regarding claim 5: The disclosure of ‘871 in view of ‘362 is adequately set forth in paragraph above and is incorporated herein by reference. ‘362 teaches the curable composition (Page 2, [0017]), wherein the inorganic particles are comprised in an amount of about 50 wt% to about 80 wt% based on a total amount of the organic-inorganic hybrid sol (Page 8, [0086]).
Regarding claim 9: The disclosure of ‘871 in view of ‘362 is adequately set forth in paragraph above and is incorporated herein by reference. ‘871 teaches the second light diffusing agents comprise barium sulfate (BaSO4), calcium carbonate (CaCO3), titanium dioxide (TiO2), zirconia (ZrO2), or a combination thereof (Page 8, [0133]) in an amount of about 1 wt % to about 20 wt % based on a total amount of the curable composition (Page 8, [0137]). ‘362 teaches an organic-inorganic hybrid composition (Page 2, [0017]), wherein the proportion of the inorganic component contained in the inorganic-organic hybrid material of the invention is generally 20% by mass or more, preferably 25% by mass or more, more preferably 30% by mass or more, and is generally 80% by mass or less, preferably 60% by mass or less, more preferably 40% by mass or less (Page 8, [0086]; read on the nano-sol is comprised of the first light scatterers in a weight of about 2.5 to about 3.5 times than that of the second light-scattering material).
Regarding claim 10: ‘871 teaches the curable composition (Page 1, [0002]), wherein the polymerizable compound comprises a compound represented by Chemical Formula 1 as set forth (Page 2, [0036] to Page 3, [0039]; Page 7, [0108]).
Regarding claim 11: ‘871 teaches the curable composition (Page 1, [0002]), wherein the compound represented by Chemical Formula 1 is represented by any one of Chemical Formulas 1-1 to 1-3 (Page 7, [0113]-[0114]).
Regarding claim 12: ‘871 teaches the curable composition (Page 1, [0002]), wherein the quantum dots are surface-modified quantum dots surface modified with any one of compounds represented by Chemical Formulas 2 to 15 or a combination thereof (Page 1, [0016] to Page 2, [0032]).
Regarding claim 13: ‘871 teaches the curable composition (Page 1, [0002]), wherein the quantum dots have a maximum fluorescence emission wavelength at about 500 nm to about 680 nm (Page 2, [0033]; Page 6, [0086]).
Regarding claim 14: ‘871 teaches the curable composition (Page 1, [0002]), wherein the curable composition is a solvent-free curable composition (Page 1, [0010]; Page 2, [0034]).
Regarding claim 15: ‘871 teaches the curable composition (Page 1, [0002]), wherein the quantum dots are comprised in an amount of about 5 wt% to about 70 wt% based on a total weight of the solvent-free curable composition (Page 7, [0104]).
Regarding claim 16: ‘871 teaches the curable composition (Page 1, [0002]), wherein the polymerizable compound is comprised in an amount of about 40 wt% to about 80 wt% based on a total weight of the solvent-free curable composition (Page 2, [0034]; Page 6, [0087]; Page 6, [0091]; Page 7, [0106]).
Regarding claim 17: ‘871 teaches the curable composition (Page 1, [0002]), wherein the curable composition further comprises a polymerization initiator (Page 3, [0041]; Page 8, [0116]).
Regarding claim 18: ‘871 teaches the curable composition (Page 1, [0002]), wherein the curable composition further comprises a solvent (Page 1, [0011]).
Regarding claim 19: The disclosure of ‘871 in view of ‘362 is adequately set forth in paragraph above and is incorporated herein by reference. ‘871 teaches the curable composition (Page 1, [0002]), wherein the curable composition comprises: about 1 wt% to about 40 wt% of the quantum dots (Page 7, 0103]), about 1 wt% to about 20 wt% of the polymerizable compound (Page 2, [0034]; Page 6, [0087]; Page 6, [0091]; Page 7, [0106], about 1 wt% to about 20 wt% of the light diffusing agent (i.e., read on the second light scatterers; Page 8, [0137]), and about 40 wt% to about 80 wt% of the solvent (Page 13, [0187]), based on a total weight of the curable composition. ‘871 does not expressly teach about 10 wt% to about 30 wt% of the first light scatterers different from each other.
`However, ‘362 teaches an inorganic-organic hybrid material which makes it possible to supply an optical material that combines flexibility and a high refractive index, which are inconsistent functions, and that has low yellowness and high transparency (Page 2, [0016]). The metal oxide of the inorganic particles contains at least one member selected from the group consisting of Zr, Ti, Sn, Ce, Ta, Nb, and Zn (Page 2, [0018]; Page 7, [0075]; Page 7, [0078]), and the inorganic particles having a crystallite diameter, as calculated from the half-value width of a crystalline peak determined by X-ray diffractometry, of 1-10 nm (Page 2, [0018]; Page 7, [0080]), wherein the proportion of the inorganic component contained in the inorganic-organic hybrid material of the invention is generally 20% by mass or more, preferably 25% by mass or more, more preferably 30% by mass or more, and is generally 80% by mass or less, preferably 60% by mass or less, more preferably 40% by mass or less (Page 8, [0086]; read on the nano-sol is comprised of the first light scatterers in a weight of about 1 to about 5 times than that of the second light-scattering material) with benefit of providing a transparent inorganic-organic hybrid material which has a high refractive index and flexibility and in which transparent inorganic particles having a high refractive index have been evenly dispersed in order to heighten the refractive index of the radiation-cured resin, and to an inorganic-organic composite composition and an optical material which was produced using the inorganic-organic hybrid material (Page 1, [0001]).
In an analogous art of the curable composition, 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 by the curable composition comprising light diffusing agents by ‘871, so as to include about 10 wt% to about 30 wt% of the two or more light scatterers different from each other as taught by ‘362, and would have been motivated to do so with reasonable expectation that this would result in providing a transparent inorganic-organic hybrid material which has a high refractive index and flexibility and in which transparent inorganic particles having a high refractive index have been evenly dispersed in order to heighten the refractive index of the radiation-cured resin, and to an inorganic-organic composite composition and an optical material which was produced using the inorganic-organic hybrid material as suggested by ‘362 (Page 1, [0001]).
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, where 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.
Regarding claim 20: ‘871 teaches the curable composition (Page 1, [0002]), wherein the curable composition further comprises a polymerization inhibitor, malonic acid, 3-amino-1,2-propanediol, a silane-based coupling agent, a leveling agent, a fluorine-based surfactant, or a combination thereof (Page 3, [0043].
Regarding claim 21: ‘871 teaches a cured layer produced utilizing the curable composition (Page 1, [0012]; Page 3, [0048]).
Regarding claim 22: ‘871 teaches a color filter comprising the cured layer (Page 1, [0013]; Page 3, [0049]).
Regarding claim 23: ‘871 teaches a display device comprising the color filter (Page 1, [0002]; Page 1, [0014])
Regarding claim 24: ‘871 teaches a method of producing a cured layer, the method comprising applying the curable composition on a substrate and curing the applied curable composition (Page 1, [0015]; Page 3, [0050]).
Response to Arguments
8. Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that Yamazaki ‘362 does not teach or suggest the claimed bimodal light scatterer system, and Kim’871 and Yamazaki ‘362 light diffusing agents serve different functions.
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is submitted that that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). It is noted that the claim rejection is based on the combination of Kim ’871” in view of Yamazaki ’362.
‘871 teaches a curable composition (Page 1, [0002]), comprising quantum dots (page 1, [0016]), a polymerizable compound (Page 2, [0035]-[0036]), and two or more light diffusing agents (i.e., read on bimodal light scatterer system, Page 8, [0132]-[0133]), wherein the light diffusing agents have an average particle diameter (D50) of about 150 nm to about 250 nm (i.e., read on the second light scatterers; Page 8, [0135]), wherein the second light diffusing agents comprise barium sulfate (BaSO4), calcium carbonate (CaCO3), titanium dioxide (TiO2), zirconia (ZrO2), or a combination thereof (Page 8, [0133]) in an amount of about 1 wt % to about 20 wt % based on a total amount of the curable composition (Page 8, [0137]). ‘871 does not expressly teach the first light scatterers comprise a nano-sol comprising an organic-inorganic hybrid sol, the organic-inorganic hybrid sol comprises inorganic particles having an average particle diameter (D50) of less than or equal about 1 nm to about 20 nm, and the nano-sol is comprised in a weight of about 1 to about 5 times a weight of the second light scatterers.
However, ‘362 teaches an inorganic-organic hybrid material which makes it possible to supply an optical material that combines flexibility and a high refractive index, which are inconsistent functions, and that has low yellowness and high transparency (Page 2, [0016]). The metal oxide of the inorganic particles contains at least one member selected from the group consisting of Zr, Ti, Sn, Ce, Ta, Nb, and Zn (Page 2, [0018]; Page 7, [0075]; Page 7, [0078]), and the inorganic particles having a crystallite diameter, as calculated from the half-value width of a crystalline peak determined by X-ray diffractometry, of 1-10 nm (Page 2, [0018]; Page 7, [0080]), wherein the proportion of the inorganic component contained in the inorganic-organic hybrid material of the invention is generally 20% by mass or more, preferably 25% by mass or more, more preferably 30% by mass or more, and is generally 80% by mass or less, preferably 60% by mass or less, more preferably 40% by mass or less (Page 8, [0086]; read on the nano-sol is comprised of the first light scatterers in a weight of about 1 to about 5 times than that of the second light-scattering material). ‘362 teaches a transparent inorganic-organic hybrid material has a high refractive index and flexibility and in which transparent inorganic particles having a high refractive index have been evenly dispersed in order to heighten the refractive index of the radiation-cured resin (i.e., read on no aggregation and good light scatterer, Page 5, [0075]; Page 13, [0151]; Page 14, [0166]).
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 it is held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose (i.e., a curable composition comprising light scatterer), in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
In response to the Applicant’s argument that Yamazaki ‘362 further explains that, when the inorganic component has too large a particle size, "it is impossible to ensure transparency because of Rayleigh Scattering”.
The examiner respectfully disagrees. It is well established that the obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Furthermore, “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Each reference cited by the examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. ‘871 teaches a curable composition (Page 1, [0002]), comprising quantum dots (page 1, [0016]), a polymerizable compound (Page 2, [0035]-[0036]), and two or more light diffusing agents (i.e., read on bimodal light scatterer system, Page 8, [0132]-[0133]), wherein the light diffusing agents have an average particle diameter (D50) of about 150 nm to about 250 nm (i.e., read on the second light scatterers; Page 8, [0135]), wherein the second light diffusing agents comprise barium sulfate (BaSO4), calcium carbonate (CaCO3), titanium dioxide (TiO2), zirconia (ZrO2), or a combination thereof (Page 8, [0133]) in an amount of about 1 wt % to about 20 wt % based on a total amount of the curable composition (Page 8, [0137]). ‘871 does not expressly teach the first light scatterers comprise a nano-sol comprising an organic-inorganic hybrid sol, the organic-inorganic hybrid sol comprises inorganic particles having an average particle diameter (D50) of less than or equal about 1 nm to about 20 nm, and the nano-sol is comprised in a weight of about 1 to about 5 times a weight of the second light scatterers.
‘362 teaches an inorganic-organic hybrid material which makes it possible to supply an optical material that combines flexibility and a high refractive index, which are inconsistent functions, and that has low yellowness and high transparency (Page 2, [0016]). The metal oxide of the inorganic particles contains at least one member selected from the group consisting of Zr, Ti, Sn, Ce, Ta, Nb, and Zn (Page 2, [0018]; Page 7, [0075]; Page 7, [0078]), and the inorganic particles having a crystallite diameter, as calculated from the half-value width of a crystalline peak determined by X-ray diffractometry, of 1-10 nm (Page 2, [0018]; Page 7, [0080]). 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 one having ordinary skill would have utilized the 362’s light scatterers particles (i.e., as first light scatterers) comprise a nano-sol comprising an organic-inorganic hybrid sol, the organic-inorganic hybrid sol comprises inorganic particles having an average particle diameter (D50) of less than or equal about 1 nm to about 20 nm in ‘871’s curable composition. It is held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose (i.e., a curable composition comprising light scatterer), in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
In response to the Applicant’s argument that Yamazaki ‘362’s 20-80 mass% inorganic-component disclosure is not the claimed nano-Sol: second light scatterers ratio.
The examiner respectfully disagrees. ‘871 teaches a curable composition (Page 1, [0002]), comprising quantum dots (page 1, [0016]), a polymerizable compound (Page 2, [0035]-[0036]), and two or more light diffusing agents (i.e., read on bimodal light scatterer system, Page 8, [0132]-[0133]), wherein the light diffusing agents have an average particle diameter (D50) of about 150 nm to about 250 nm (i.e., read on the second light scatterers; Page 8, [0135]), wherein the second light diffusing agents comprise barium sulfate (BaSO4), calcium carbonate (CaCO3), titanium dioxide (TiO2), zirconia (ZrO2), or a combination thereof (Page 8, [0133]) in an amount of about 1 wt % to about 20 wt % based on a total amount of the curable composition (Page 8, [0137]).
‘362 teaches an inorganic-organic hybrid material which makes it possible to supply an optical material that combines flexibility and a high refractive index, which are inconsistent functions, and that has low yellowness and high transparency (Page 2, [0016]). The metal oxide of the inorganic particles contains at least one member selected from the group consisting of Zr, Ti, Sn, Ce, Ta, Nb, and Zn (Page 2, [0018]; Page 7, [0075]; Page 7, [0078]), and the inorganic particles having a crystallite diameter, as calculated from the half-value width of a crystalline peak determined by X-ray diffractometry, of 1-10 nm (Page 2, [0018]; Page 7, [0080]), wherein the proportion of the inorganic component contained in the inorganic-organic hybrid material of the invention is generally 20% by mass or more, preferably 25% by mass or more, more preferably 30% by mass or more, and is generally 80% by mass or less, preferably 60% by mass or less, more preferably 40% by mass or less (Page 8, [0086]), thus the ratio of ‘362 over ‘871 encompasses the nano-sol is comprised in a weight of about 1 to about 5 times a weight of the second light scatterers. In cases involving overlapping ranges, the court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness. Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap.
In response to the Applicant’s argument that the proposed combination is based on hindsight rather than a teaching or suggestion in the art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Turning to Applicant’s argument regarding unexpected results (i.e., quantum efficiency and luminance), examiner agrees that Applicant’s proffered evidence of the examples of Tables 2-3 of the Specification, is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). It is submitted that evidence (C-1) ZrO2 or (C-2) TiO2 in Table 1 of the present specification represents only one species with an average particle diameter of 10 nm, and (C-3) TiO2 dispersion with an average particle diameter of 200 nm, where the claim to a sub-genus is being sought. The showing of one species is insufficient to overcome a sub-genus, wherein the organic-inorganic hybrid sol comprises inorganic particles having an average particle diameter (D50) of about 1 nm to about 20 nm, and the second light scatterers have an average particle diameter (D50) of about 150 nm to about 250 nm. In re Shokal 113 USPQ 283 (CCPA 1957). On the other hand the showing of unexpected results does not have to cover every species within the sub-genus. Only a "representative" number need be shown. Ex parte Winters 11 USPQ 2d 1387, 1388 (BPAI 1~89).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., a curable composition) and show the product is actually different from and unexpectedly better than the teachings of the references. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
9. 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
10. 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..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/07/2026
bijan.ahvazi@uspto.gov
