DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The election was made without traverse in the reply filed June 23, 2025.
Claim Rejections - 35 USC § 103
Claims 1-14 stand rejected under 35 U.S.C. 103 as obvious over FROMENTIN et al (US-2019/0169438) as set forth in the last office action and reiterated herein below.
Claims 1-2: Fromentin teaches a method for the preparation of nanoparticles
comprising: i) preparing nanoparticles of a composite material comprising at least one
light absorbing ("LA") agent in a matrix of a mineral oxide (Fromentin, para. 0050-0051
and 0074); and ii) annealing the nanoparticles obtained in step i) at a temperature
ranging from 40 to 130°C for a period of 5 to 24 hours (para. 0096) which overlaps the
claimed range of 80°C to 300°C for a period of time ranging from 5 min to 120 hours. It
has been held that claims are considered anticipated or in the alternative the subject
matter as a whole would have been obvious to one having ordinary skill in the art at the
time of the invention to have selected the overlapping portion of the range disclosed by
the prior art because overlapping ranges have been held to be a prima facie case of
obvious. See In re Malagari, 182 U.S.P.Q 549. Therefore, the annealing step as
claimed would have been anticipated or would have been obvious in view of In re
Malagari. Fromentin does not mention a "preselected hue"; however, Fromentin
teaches that increasing the dye in the composite material would have increase in
particle size of the nanoparticles (Fromentin, para. 0153) and thus inherently affects the
color of the composite material. Therefore, it has the same effect as the claimed feature
"wherein the temperature and duration of the annealing step are chosen to obtain the
preselected hue", wherein the composite comprising light-absorbing ("LA") additive dispersed in a mineral oxide matrix (Fromentin, para. 0050-0051 and 0074). Although Fromentin does not report the absorbance ratio of aggregate LA to monomeric LA, Aa/Am, Fromentin teaches combining the LA additives in such a way that the resulting light transmittance over a specific range of blue light being lower than 85% or 75% (Fromentin, para. 0053). Therefore, the POSITA would have found it obvious to combine LA additives in various forms to arrive at the light transmittance taught by Fromentin, the combination of which would be expected to result in combination of aggregate and monomeric LA additives within the claimed ratio range. See in particular, Examples 2b-2c and Example 3 of Fromentin and compare those to Examples 1-2 of the instant specification.
Claim 3: Fromentin teaches dispersing the nanoparticles in a polymerizable
composition and polymerizing the polymerizable composition to form a composite
material comprising the nanoparticles dispersed in a polymer matrix (para. 0021-0027).
Claim 4: The nanoparticles in the polymer matrix is 0.05 to 1 wt% (Fromentin,
para. 0083) which is equivalent to 500 to 10,000 ppm which overlaps the claimed range
of less than 1000 ppm, i.e. the range of 500-1000 ppm.
Claim 5: Although the proportion of nanoparticles in the polymer matrix as taught
by Fromentin is higher than the claimed range, it would have been obvious to arrive at a
lower amount of nanoparticles through experimentation, absence of showing unexpected results or absence of teaching away from the lower amount of the prior art.
Claim 6: The nanoparticles have a mean diameter from 1 nm to 5000 nm
(Fromentin, para. 0065) which overlaps the claimed range of 100 to 200 nm.
Claim 7: The light absorbing agent is present from 0.1 to 10 wt% based on a
total weight of the nanoparticles (Fromentin, para. 0061) which overlaps the claimed
range of 0.1 to 3 wt.%.
Claims 8-9: Fromentin teaches pre-treating the nanoparticles by reducing the
nanoparticle size by grinding (Fromentin, 0082, 0132 and 0145).
Claim 10: Fromentin teaches of measuring an absorbance ratio of the
nanoparticles to determine if said the absorbance has the desired value (para. 0031-
0032). The reason for measuring does not amount to patentability.
Claim 11: Fromentin teaches inorganic oxide to include silicon dioxide, titanium
oxide and zirconium oxide (para. 0074).
Claims 12-13: Fromentin teaches LA additives to include phenazines,
phenoxazines, phenothiazine, porphyrins, methylene blue and Nile blue (para. 0054-
0055 & 0059).
Claims 14: Fromentin teaches a solution comprising silica and methylene blue
as the light absorbing agent (para. 0129 to 0134).
.Response to Arguments
Applicant argues that Fromentin does not teach the step of annealing the nanoparticles at a temperature and duration to obtain a preselected hue. Applicant appears to argue motivation to modify the process of Fromentin to meet the claimed features. However, it is not the case here because the temperature and duration taught by Fromentin are within or overlapping the claimed range, and thus by manipulating the temperature and duration of the annealing step within the claimed range, it automatically influences the outcome of the nanoparticle hue whether the hue has been “preselected”. The POSITA would have known when to terminate the annealing process when a desired color is observed and that desired hue would have been deemed “preselected”. The preselected hue would have been naturally flown from the annealing conditions (temperature and duration). The fact that Fromentin teaches a range of temperature and duration that fall within the claimed range is equivalent to choosing annealing conditions that would have met a preselected hue because the color is a direct result effective by the annealing conditions. The burden is on Applicant to show that the process of Fromentin would not result in a “preselected hue”.
Applicant argues that Fromentin makes no correlation between nanoparticle hue and annealing temperature/ duration because the “only variable modified by Fromentin in order to modify nanoparticle outcomes is light absorbing additive concentration”. Just because Fromentin recognizes another solution in influencing the color of the nanoparticles does not negate the process steps that would have the same hue changing effect; i.e. the temperature and duration of the annealing step.
Applicant's arguments filed December 22, 2025 have been fully considered but they are not persuasive for the reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
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