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 .
Drawings
The Drawings filed 22 May 2024 are approved by the examiner.
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.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 07 January 2026 is acknowledged. The traversal is on the ground(s) that claims of Group I and II comprise similar elements thus there is a lack of undue burden. This is not found persuasive because Groups I-II are directed to specific inventions (i.e. different processes) that require differing search strategies and databases (class/subclass) and/or the search for a particular invention would not necessarily lead to the same and overlapping prior art for the supplementary invention - thus leading to an undue burden on the examiner. The requirement is still deemed proper and is therefore made FINAL.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07 January 2026.
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 1-15 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. The term “substantially pure” in claims 1, 6, 7, 12 and “oversized particle aggregates” in claim 8 are relative terms which render the claim indefinite. The term “substantially pure” and “oversized particle aggregates” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention (what would be the threshold for the vanadium oxide to be “substantially pure” or the size required to be “oversized”?). Claims 2-15 are dependent claims thus inherit the same deficiencies.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-9 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gao (CN-101805134-A, a translation is provided).
Claims 1, 3-6, 14, 15: Gao discloses a process of making an ink/coating composition by mixing 0.001-10 mol/L of vanadium oxide in a solvent, coating a substrate and annealing at a temperature between 250-100 degrees C for up to 20 hours to achieve the desired crystal phase (abs, 2, 6, 26-45 and examples). Gao discloses the claimed invention but does not explicitly disclose the proper sequence of steps – the solvent being added prior to the thermal treatment and the experimental conditions. Nevertheless, it would have been well within the purview of a skilled artisan to arrive at the claimed sequence via routine optimization of a two-steps sequence absence of unexpected results (MPEP 2144.04(IV)(C). Further, given that the Gao reference discloses a temperature range that overlaps with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught temperature and reaction time values, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the temperature and reaction time variables with the benefit gain of achieving the desired crystalline structure and enhancing the optical and electrical and magnetic parameters of the composition. 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/steps would be repugnant to a skilled artisan.
Claims 1, 7-9, 11: Regarding the phase and dispersion conditions, it is noted that Gao discloses similar experimental conditions with similar components – thus the M phase transition and dispersion formation are expected. 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. In particular, Gao discloses optimizing the phase transition as desired in the end-product (¶37-46)
Claims 2 and 4: Gao discloses the vacuum feature (¶30, 65, 80, 90, 100 and claim 7).
Claim 11: Gao discloses the ethanol solvent (¶28).
Claim 12: Gao discloses 0.001-10 mol/L of vanadium oxide (abs, embodiments). Thus, according to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results.
Claim 13: Gao discloses the oleic acid (abs, embodiments).
Claim(s) 1-6, 10-12, 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee (cited in the IDS) in view of Zou (cited in the IDS).
Claims 1-5, 14 and 15: Banerjee discloses the process of making an ink comprising vanadium oxide made via a hydrothermal process and a solvent such as ethanol (abs, ¶35, 54-59, 67-69, 72, 88-91). The Banerjee reference discloses the claimed invention but does not explicitly disclose the feature of vanadium oxide thermal treatment. It is noted that the Banerjee reference discloses a hydrothermal treatment and the claim(s) call(s) for the hydrothermal treatment at various experimental conditions. In an analogous art, the Zou reference discloses the claimed hydrothermal preparation method of vanadium oxide via heating at 180-400 degrees C for various time lengths to achieve the desired crystalline phase is well known in the art (abs, ¶ 4-33 and examples). One of ordinary skill in the art would have recognized that applying the known technique of Zou to the teachings of Banerjee 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 producing the desired crystalline and structural characteristics for vanadium oxide. 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/implementation would be repugnant to a skilled artisan. Regarding the specific temperature and reaction time variables, it is noted that the claimed variables is construed as result-effective variables, i.e., variable which achieve a recognized result. Given that the Banerjee and Zou references disclose a similar method, 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 the heating temperature via a thermostat knob or length of time of a reaction, 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. temperature and reaction time, since the reference also discloses a similar 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/steps would be repugnant to a skilled artisan.
Claims 6 and 10-12: Banerjee and Zou disclose the dispersion, the ethanol solvent, a viscosity range of 0-2000 cp and optimizing the loading amounts of the components (Banerjee: ¶54-59, 66-69, 72, 88-91 and examples) – thus, it would have been well within the purview of a skilled artisan to arrive at the claimed components and values. Here, Banerjee and Zou disclose each of the claimed components and steps and there is no evidence nor teaching that the selection and optimization of the claimed components and steps would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim(s) 7-9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee and Zou (cited in the IDS) as shown in claim 1 and further in view of Zeng (WO-2013137818-A1).
The Banerjee and Zou references disclose the claimed invention but do not explicitly disclose the feature of the oleic component and the agglomeration. It is noted that the Banerjee and Zou references disclose a dispersion of the vanadium oxide in an ink composition to be coated on a substrate and the claim(s) call(s) for a specific oleic component and the non-agglomeration in the dispersion. In an analogous art, the Zeng reference discloses that adding oleic acid to a vanadium oxide dispersion is well known in the art to gain the benefit of preventing aggregation and promote dispersion (abs, pg. 2, 3 and examples). One of ordinary skill in the art would have recognized that applying the known technique of Zeng to the teachings of Banerjee and Zou 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 preventing aggregation and promote dispersion in the coating composition. 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 implementation would be repugnant to a skilled artisan.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Li discloses the effects of the annealing process on the structure and valence state of vanadium oxide.
Seel discloses a hydrothermal process of preparing vanadium oxide.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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