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 .
Election/Restriction
The examiner acknowledges the election of group I without traverse.
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 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Re claim 1, the language {“at least one selected from”} is not an acceptable Markush group listing. One acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being "selected from the group consisting of A, B and C." See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925). Suitable language to include would be “wherein the X are selected from the group consisting of”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6, and 8 are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by US 2021/0047518 to Tsunematsu et al.
Re claim 1, Tsunematsu teaches the claimed invention to an infrared absorbing fine particle dispersion, i.e. antimold emulsion coating material, [37, 145] of tungsten oxide fine particles with their surfaces coated with a coating layer containing at least one selected from hydrolysis product of a metal chelate compound, polymer of hydrolysis product of a metal chelate compound, hydrolysis product of a metal cyclic oligomer compound, and polymer of hydrolysis product of a metal cyclic oligomer compound [26], and resin dispersed in a liquid medium, i.e. resin emulsion [39, 176, 181].
Re claim 2, the [30] thickness range is exact as claimed.
Re claim 3, the metal compound contains the elements as claimed. See [31-49].
Re claim 4, see [32].
Re claim 6, see [33], Ti and In.
Re claim 8, see Fig. 1, and [66, 74] to the particles.
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.
Claims 5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0047518 to Tsunematsu et al.
Tsunematsu is relied upon above.
Re claims 5 and 7, see [33, 81, 83] and to the overlapping range and result effective variable of the x/y and z/y inequality relationship for effecting infrared absorbance efficiency.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of x/y/z in the formula of claimed rare earths for at least infrared absorbance efficiency taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claim 9, the particle size is taught within overlapping ranges. See [95] (800 nm or less overlaps the claimed range) for effecting light shielding.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of size as claimed for effecting light shielding taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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