DETAILED ACTION
A Preliminary Amendment was filed 03/21/2024. Claims 8 and 10 were amended. Claims 13-19 were added.
Claims 1-19 are pending.
Claims 1-19 are rejected.
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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 5-8, 10 and 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otsuka et al, US 2014/0272523 A1 (Otsuka).
Regarding claims 1-3, 5-8, 10 and 13-18, Otsuka discloses an electric storage device comprising a protective film, wherein the protective film includes polymer particles that include a repeating unit derived from a fluorine-containing monomer (i.e., a fluororesin) and repeating units derived from an unsaturated carboxylic acid, and a liquid medium (i.e., a composition comprising a base material, wherein the based material comprises a fluororesin of claim 1, and wherein the composition has a film shape of claim 10) (Otsuka; Abstract; [0037]).
The polymer particles are preferably composite particles that include a polymer A that includes a repeating unit derived from a fluorine-containing monomer (i.e., a fluororesin as claimed), and a polymer B that has repeating units derived from an unsaturated carboxylic acid (Otsuka; [0086]). Preferably, polymer A includes a repeating unit derived from vinylidene fluoride in an amount of 50 to 99 parts by mass, and more preferably 80 to 98 parts by mass, based on 100 parts by mass of the polymer A, and a repeating unit derived from hexafluoropropylene in an amount of 50 parts by mass or less, more preferably 1 to 30 parts by mass, and particularly preferably 2 to 25 parts by mass, based on 100 parts by mass of the polymer A (i.e., wherein the fluororesin has vinylidene fluoride and hexafluoropropylene as monomer units of claims 5-6 (Otsuka; [0095]).
The protective film-forming composition includes a liquid medium that includes water (i.e., wherein the base material is in a liquid state at 23oC of claim 8) (Otsuka; [0114]).
Otsuka further discloses a protective film-forming slurry comprising the film-forming composition and inorganic particles (Otsuka; [0116]). Examples of inorganic particles include zirconium oxide (Otsuka; [[0118]). The average particle size (Db) of the inorganic particles is preferably 1 micrometer or less, more preferably 0.1 to 0.8 micrometers (Otsuka; [0119]). The number averages particle size (Db) of the inorganic particles refers to a particle size (D50) at 50% in a cumulative particle distribution measured using a laser diffraction particle size analyzer (Otsuka; [0120]).
Particle sizes D50 of 0.1 to 0.8 micrometers fall within the claimed particle diameter D50 of 10µm or less (claim 1); 0.1 to 10µm (claim 2); and 0.1 to 1.0 µm (claim 3). Particle sizes D50 of 0.1 to 0.8 micrometers overlap in scope with the claimed more than 0.2 µm to 10 µm or less (claim 13); more than 0.2 µm to less than 1 µm (claim 14); and 0.4 to 10 µm (claim 15).
In Example 20, Otsuka exemplifies polymer particles comprising Polymer A, wherein Polymer A comprises 4 parts by mass VDF (vinylidene fluoride) and 1 part by mass HFP (hexafluoropropylene). The dispersion medium is water (Otsuka; page 17, Table 3, Example 20; and [1096-0197]). Because the Polymer particles comprise fluorine-containing monomers, the polymer particles read on the “fluororesins” as claimed. Therefore, Otsuka discloses a composition comprising a base material, wherein the base material comprises a fluororesin (claim 1), wherein the fluororesin has vinylidene fluoride and hexafluoropropylene monomer units (claim 5-6), and wherein the base material is in a liquid state at 23oC as claimed (polymer particles dispersed in water) (claim 8).
The composition of Example 20 also comprises zirconium oxide particles that have a D50 of 0.67 micrometers (Otsuka; page 17, Table 3, Example 20). A particle size D50 of 0.67 micrometers falls within the claimed zirconium oxide particle diameters D50 of 10µm or less of claim 1; 0.1 to 10µm of claim 2; and 0.1 to 1.0 µm of claim 3; more than 0.2 µm to 10 µm or less of claim 13; more than 0.2 µm to less than 1 µm of claim 14; and 0.4 to 10 µm of claim 15.
The amount (parts by mass) of fluororesin polymer particles based on 100 parts by mass of inorganic particles is 5 parts by mass. Therefore, the composition contains 100 parts by mass zirconium oxide particles based on a total 105 parts by mass zirconium oxide particles and fluororesin, equating to 95% by mass zirconium oxide particles based on a total parts by mass zirconium oxide particles and fluororesin (100/105 * 100 = 95%).
95% by mass zirconium oxide particles, based on a total parts by mass zirconium oxide particles and fluororesin, falls within the claimed content of the zirconium oxide particles of 5% by mass or more and less than 100% by mass, based on the total mass of the zirconium oxide particles and the fluororesin (claim 16); 10% by mass or more and less than 100% by mass, based on the total mass of the zirconium oxide particles and the fluororesin (claim 17); and 20% by mass or more and less than 100% by mass based on the total mass of the zirconium oxide particles and the fluororesin (claim 18).
An electric storage device comprising a protective film was produced from the film-forming slurry was produced (i.e., wherein the composition has a film shape of claim 10) (Otsuka; [0168] and [0222]).
While there is no disclosure that the film-forming compositions of Otsuka are compositions “for ultraviolet light reflection” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., for ultraviolet light reflection, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 7, Otsuka is relied upon as disclosing the limitations of claim 5 as discussed above. The polymers particles of Example 20 comprise a Polymer A, wherein Polymer A consists of 4 parts by mass VDF (vinylidene fluoride) and 1 part by mass HFP (hexafluoropropylene) (Otsuka; pages 1718, Table 3, Example 20; [0196] and [0197]). Therefore, Polymer A consists of 80% vinylidene fluoride based on a total mass of the monomer unit of the fluororesin “Polymer A” (4/(4+1) = 0.8 x 100 = 80%). 80% vinylidene fluoride based on a total mass of the monomer units of Polymer A, falls within the claimed range of 70 to 95% by mass vinylidene fluoride based on a total mass of the monomer units of the fluororesin.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka.
Regarding claims 4 and 10, Otsuka is relied as disclosing the limitations of claim 1 as discussed above. Otsuka teaches that the inorganic particles are included in the film-forming slurry to improve the toughness of the resulting protective film, wherein the inorganic particles include zirconium oxide particles of the claimed D50.
Otsuka does not explicitly teach wherein a content of the zirconium oxide particles is 20 to 70% by mass, based on the total mass of the zirconium oxide particles and the fluororesin (claim 4), or wherein a content of the zirconium oxide particles is 10 to 40% by volume (claim 10).
While Otsuka does not explicitly disclose mass and volume percents as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass and volume percent of inorganic zirconium oxide particles, including over the presently claimed, in order to obtain a protective film with improved toughness.
Regarding claim 9, Otsuka is relied as disclosing the limitations of claim 8 as discussed above. The protective film-forming slurry may also include a non-aqueous medium in order to improve applicability of the protective film-forming slurry, wherein the non-aqueous medium includes, e.g., methanol, ethanol, etc. (i.e., the organic solvents of claim 9) (Otsuka; [0125]).
Given that Otsuka discloses film-forming compositions that overlap the presently claimed compositions for ultralight reflection, including compositions wherein the base material further comprises an organic solvent, it therefore would be obvious to one of ordinary skill in the art to use the an organic solvent, which is both disclosed by Otsuka and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 1-6, 10-13 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hebrink et al, WO 2019/130199A1 (Hebrink).
Regarding claims 1-3, 10, 13 and 15 Hebrink teaches passive cooling articles having at least one fluoropolymer, and which reflect light in a solar region of the electromagnetic spectrum, including UV light reflection as claimed (i.e., a composition for ultraviolet light reflection comprising a base material containing a fluororesin as claimed) (Hebrink; [00051]; Example 1 at [000155] and Example 2 at [000156]). The fluoropolymer surface layer may be used in a multi-layer optical film (i.e., the film shape of claim 10) and may comprise inorganic particles or surface structures, dispersed in or disposed on a layer, such as an outer layer, to further improve absorption or emissivity (Hebrank; [0002], [00054] and [000112]). The structures/inorganic particles may comprise zirconia, including nano-zirconia or microbeads. The inorganic particles have an effective D90 particle size of at least 1 micrometer and at most 40 micrometers, in some embodiments at most 10, 9 or 8 micrometers (Hebrink; [000113]).
Given that Hebrink discloses UV light reflective compositions that comprise a fluororesin and inorganic particles that overlap the presently claimed compositions, including those which contain zirconia (zirconium oxide) particles and which are in the shape of a film, it therefore would have been obvious to one of ordinary skill in the art to use UV reflecting film compositions comprising a fluororesin base material and zirconium oxide particles, which is both disclosed by Hebrink and encompassed within the scope of the present claims.
Zirconia particle sizes having a particle size D90 of at least 1 micrometers and at most 8-10 micrometers overlap in scope with the claimed zirconium oxide D50 particle diameters of 10µm or less (claim 1); 0.1 to 10 µm (claim 2); 0.1 to 1.0 µm (claim 3); more than 0.2 µm to 10 µm or less (claim 13); and 0.4 to 10 µm (claim 15).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 4 and 16-18, Hebrink is relied upon as teaching the limitations of claim 1 as discussed above. Hebrink teaches the fluoropolymer layer may include inorganic particles to improve absorption, emissivity and passive radiation cooling, wherein inorganic particles include zirconia particles as claimed (Hebrink; [0002], [00054] and [000113]). Hebrink does not explicitly teach wherein a content of the zirconium oxide particles is 20 to 70% by mass (claim 4); 5% by mass or more and less than 100% by mass (claim 16); 10% by mass or more and less than 100% by mass (claim 17); and 20% by mass or more and less than 100% by mass (claim 18), based on the total mass of the zirconium oxide particles and the fluororesin as claimed.
While Hebrink does not explicitly disclose mass percents as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass percent of inorganic zirconia particles, including over the presently claimed, in order to obtain a passive cooling film with improved absorption, emissivity and/or passive radiation cooling properties, including UV light reflection as claimed.
Regarding claims 5-6, Hebrink is relied upon as teaching the limitations of claim 1 as discussed above. Fluoropolymers include a polymer of tetrafluoroethylene (TFE), hexafluoropropylene (HFP), and vinylidene fluoride (e.g., available under the trade designation“3M DYNEON THV” from 3M Company), and a polymer of TFE, HFP, vinylidene fluoride, and perfluoropropyl vinyl ether (PPVE) (e.g., available under the trade designation“3M DYNEON THVP” from 3M Company) (i.e., wherein the fluororesin has at least one selected from the group consisting of vinylidene fluoride and hexafluoropropylene as a monomer unit of claim 5; and wherein the fluororesin has vinylidene fluoride and hexafluoropropylene as monomer units of claim 6) (Hebrink; [00088]). Hebrink further exemplifies using 3M DYNEON THV221GZ comprising 11 mol% hexafluoropropylene and 50 mol% vinylidene fluoride (Hebrink; [00089] and Examples 1-2, [000155-000156]).
Regarding claims 11 and 19, Hebrink is relied upon as teaching the limitations of claim 10 as discussed above. Hebrink teaches that the film has from 100 to up to 1000 total optical layers (Hebrink; [00079]). The thickness of the optical layers may vary (Hebrink; [00080]). Hebrink exemplifies a multi-layer optical film having 200 layers, each ranging in thickness from 80 to 200nm, designed to reflect ultraviolet and visible light in a range from 350-800nm (Hebrink; [000155]).
The layers of Example 1 have a thickness ranging from 80-200nm (0.08-0.2nm). Although Hebrink exemplifies using 200 layers in this Example, up to 1000 layers may be used (Hebrink; [00079]). If, for example, the number of layers was increased from 200 to 800 in Example 1, the total film thickness would be 64-160 microns (0.08 x 800 = 64 microns; and 0.2 x 800 = 160 microns). A thickness of 60-160 microns overlaps in scope with the claimed thickness ranges of 50-500 microns (claim 11), and 140 microns or more (claim 19).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further, it would have been obvious to one of ordinary skill in the art to vary the numbers of layers and film thickness of each layer, including over the presently claimed, in order to obtain the desired reflectivity and passive cooling effects.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Regarding claim 12, Hebrink is relied upon as teaching the limitations of claim 10 as discussed above. Hebrink teaches the fluoropolymer layer may include inorganic particles to improve absorption, emissivity and passive radiation cooling, wherein inorganic particles include zirconia particles as claimed (Hebrink; [0002], [00054] and [000113]). Hebrink does not explicitly teach wherein a content of the zirconium oxide particles is 10 to 40% by volume.
While Hebrink does not explicitly disclose volume percents as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the volume percent of inorganic zirconia particles, including over the presently claimed, in order to obtain a passive cooling film with improved absorption, emissivity and/or passive radiation cooling.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hu et al, CN 107668868A, discloses an infrared radiation cooling umbrella including a layer comprising 3-15% nano-micro ZrO2 microbeads and 85-95% polyvinyl fluoride film (page 3, lines 22-24 of provided translation).
“3MTM DyneonTM Fluoroplastic Granules THV 221GZ”, discloses that this product is a granular form.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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