DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06 March 2026 has been entered.
Response to Amendment
Upon entry of the amendment filed on 06 March 2026, Claim(s) 1, 5, 6, 9, 14, 15 and 23 is/are amended; Claim(s) 6,9-10,12,14-15 and 18-20 is/are withdrawn; and Claim(s) 2-4,7,8,11,13,16 and 17 is/are cancelled. The currently pending claims are Claims 1,5-6,9-10,12,14-15 and 18-26.
Based on applicants’ remarks and amendments (see the specific ligands), the 103 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Examiner’s Remarks and Claims Interpretations
It is noted that the phrase “for inkjet printing” in the preamble is construed as an intended use of the nanoparticles – thus the instant nanoparticles need only to be capable of being a preform for inkjet printing. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). It is the examiner's position that the preamble does not state any distinct definition of the claimed invention's limitations. Further, the purpose or intended use, i.e. for use in inkjet printing, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention; thus, the prior art structure - which is a composition identical to that set forth in the present claims - is capable of performing the recited purpose or intended use.
Regarding the limitation of the nanoparticles “are dispersible in a mixture of cyclohexylbenzene and at least one other non-polar solvent, wherein a volume ratio of a volume of the cyclohexylbenzene to a total volume of the at least one other non-polar solvent is about 7:3 to about 20: wherein the at least one other non-polar solvent is selected from styrene, anisole, or cyclohexanone” (emphasis added), it is noted that the instant claim is directed to a nanoparticles composition – thus the claimed mixture of solvents is not required. The dispersibility in the mixture of solvent is construed as an expected behavior once the cited reference disclose the same nanoparticles and ligands. For compact prosecution, the claims have been rejected with the claimed solvent mixture where appropriate. Applicant is welcome to provide evidence and/or reasoning that the disclosed nanoparticles composition is exceedingly different thus preventing the claimed dispersion.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5, 21-23, 25 and 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim 218 (US-20210126218-A1).
Claims 1, 5, 21, 25 and 26: Kim 218 discloses an ink comprising zinc oxide nanoparticles with an oleic acid or hexadecylamine ligand (¶51-55, 95, 102-107). In particular, Kim 218 discloses an example with 1 mmol of ZnO and 0.22 mmol of oleic acid (¶159). Regarding the dispersibility property, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 22: Kim 218 discloses a ZnMgO (¶120).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5, 21, 23, 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over UMEMOTO (US-20140319502-A1) .
Claims 1, 23 and 25-26: Umemoto discloses an ink comprising zinc oxide nanoparticles with a stearic acid ligand to facilitate the dispersion in a mixture of solvents such as cyclohexylbenzene, cyclohexanone and anisole (abs, ¶40-48, 63, 105, 140, 184-193, Tables and Figures with accompanying text). The Umemoto reference discloses the claimed invention with all the claimed components but does not disclose the composition with the claimed element with enough specificity to anticipate the claimed invention. Nevertheless, given that Umemoto discloses the zinc oxide nanoparticles, a stearic acid ligand and the mixture of solvents such as cyclohexylbenzene, cyclohexanone and anisole, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Umemoto teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the zinc oxide nanoparticles, a stearic acid ligand and the mixture of solvents such as cyclohexylbenzene, cyclohexanone and anisole, less obvious. Here, Umemoto discloses each of the claimed components and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
The Umemoto reference discloses the claimed invention but does not explicitly disclose the claimed mole ratio and volume ratio. It is noted that the claimed mole/volume ratios are construed as result-effective variables, i.e., variable which achieves a recognized result of achieving a stable dispersion of the nanoparticles in ink solvents. Given that the Umemoto reference discloses a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying amount of the ligand to be attached to the nanoparticles, the selection/loading amounts of the solvents, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the type and loading amounts, since the reference also discloses a similar ink end-product. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Note: Applicant is directed to the previously cited Gomathi and Kim reference to indicate that the claimed mole ratio is known in the art.
Claims 5 and 21: Umemoto discloses ZnO and AlZnO (¶40, 43, 44, 184, 193 and Tables).
Claim Rejections - 35 USC § 103
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim 218 as applied to claim 1 above, and further in view of Jung.
The Kim 218 reference discloses the claimed invention but does not explicitly disclose the feature of the viscosity, vapor pressure and/or loading amount. In an analogous art, Jung discloses the claimed viscosity, vapor pressure and loading amount ranges is well known in the art (¶63-65 and examples). One of ordinary skill in the art would have recognized that applying the known technique of Jung to the teachings of Kim 218 would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced stability, conductivity and coatability. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution and/or optimization would be repugnant to a skilled artisan.
Claim(s) 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umemoto as applied to claim 1 above, and further in view of Jung.
The Umemoto reference discloses the claimed invention but does not explicitly disclose the calcium/magnesium alloy, viscosity, vapor pressure and/or loading amount features. In an analogous art, Jung discloses the magnesium alloy, viscosity, vapor pressure and loading amount ranges is well known in the art (¶63-65, claims and examples). One of ordinary skill in the art would have recognized that applying the known technique and component of Jung to the teachings of Umemoto would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced stability and coatability. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution and/or optimization would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 6-8, filed 06 March 2026, with respect to the Jung reference have been fully considered and are persuasive. The rejections have been withdrawn.
It is noted that Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In particular, it is noted that the Jung reference is now relied upon a secondary reference to teach the calcium/magnesium alloy, viscosity, vapor pressure and/or loading amount features.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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