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 .
Response to Amendment
Upon entry of the amendment filed on 01 October 2025, Claim(s) 1, 6, 9, 10, 13 and 15 is/are amended; Claim(s) 6, 9-10, 12-16 and 18-20 is/are withdrawn; Claim(s) 21-26 is/are added and Claim(s) 2, 3, 7, 8, 11, 16 and 17 are cancelled. The currently pending claims are Claims 1, 4-6, 9-10, 12-15 and 18-26.
Based on applicants’ remarks and amendments (e.g. the specific solvent):
the 112 rejections are withdrawn;
the rejections based on Gormathi, Kim and Sakakibara are withdrawn;
however, they are not found persuasive regarding the Jung reference and the rejections are maintained and updated as necessitated by the amendments.
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Examiner’s Remarks
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.
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) 1,4-5 and 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US-20220204837-A1, cited in the IDS)
Claims 1, 4, 23 and 25-26: Jung discloses metal oxide nanoparticles with an oleic acid ligand to facilitate the dispersion in a mixture of non-polar solvents such as cyclohexylbenzene, hexadecane and anisole (abs, claims 1-12 and ¶44-66, 73). Further, Jung discloses the ink implementation (¶62 and claims 1-12). The Jung 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 Jung 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, 21 and 22: Jung discloses ZnO and MgZnO (claims 1, 10-12).
Claim 24: Jung discloses the claimed viscosity, vapor pressure and loading amount ranges (¶63-65 and examples).
Response to Arguments
Applicant’s arguments, see pg. 6-8, filed 01 October 2025, with respect to the 112 rejections and the Gormathi, Kim and Sakakibara references have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments filed 01 October 2025 regarding the Jung reference have been fully considered but they are not persuasive.
Applicant argues that Jung does not disclose the solvent mixture comprising cyclohexylbenzene and the volume loading ratios (pg. 8).
The examiner respectfully disagrees and notes that Jung discloses a mixture of non-polar solvents such as cyclohexylbenzene, hexadecane and anisole (abs, claims 1-12 and ¶44-66, 73). Further, Jung discloses the ink implementation (¶62 and claims 1-12). It is noted that the claimed volume ratio is construed as a result-effective variable, i.e., a variable which achieves a recognized result of achieving a stable dispersion of the nanoparticles in ink solvents. Given that the Jung reference discloses a similar composition with the claimed solvents such as cyclohexylbenzene, hexadecane and anisole , it would have been obvious to one of ordinary skill in the art at the time of the invention to select the instantly claimed components and ranges through process optimization such as the selection and 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.
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 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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