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 .
Election/Restrictions
Applicant's election with traverse of claims 1-5 and 11-14 in the reply filed on 02/09/2026 is acknowledged. The traversal is on the ground(s) that the withdrawn claims will be amended to depend on Group I claims upon allowance thereof. This is not found persuasive because the arguments to not appropriately address the grounds of restriction set forth in the restriction requirement mailed on 12/12/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-2, 5 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yabuki et al. (U.S. App. Pub. No. 2010/0286322).
Regarding claim 1, Yabuki et al. discloses a method of making surface treated zinc oxide particle wherein the zinc oxide particles are coated with an organosilicon material in the form of a silicone resin. (Abstract, par. [0063]-[0066]). Yabuki et al. teaches a primary particle diameter of the 19.0 nm in an isopropyl alcohol dispersion and an average particle diameter of 100 nm after coating. (par. [0100] and [0103]). The average particle diameter would therefore overlap with the claimed median size range. 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).
While Yabuki et al. does not disclose that the primary particle is measured via transmission electron micrograph or a median size measured according the isopropyl alcohol charging process, the process involved in measuring the particle size would not impart any meaningful structural features to the claimed product such that the particles of Yabuki et al. would be expected to have substantially the same values for primary and average particle diameters when measured according to the claimed process.
Regarding claim 2, the claim is rejected for substantially the same reasons as claim 1 above. The method of measuring the particle diameter would not impart any meaningful structural features to the claimed product such that the particles of Yabuki et al. would be expected to have substantially the same values for primary and average particle diameters when measured according to the claimed process.
Regarding claim 5, Yabuki et al. discloses a primary particle diameter in the range of 19-41 nm (par. [0055]) and an average particle diameter after coating of 100 nm or less. (par. [0077]). Therefore the ratio of average particle diameter to primary particle diameter would include values of 4 or less as claimed (eg. 100/41 = 2.44).
Regarding claims 11-14, the zinc oxide particles of Yabuki et al. are disclosed to be used in a dispersion medium and resin composition. (Abstract and par. [0034]). The compositions would meet the limitations of a “heat dissipating filter” and “cosmetic preparation” in the preambles of claims 11 and 13 since these do not inherently impart additional structural features to the claim. (see MPEP 2111.02).
Claims 3 are rejected under 35 U.S.C. 103 as being unpatentable over Yabuki et al. (U.S. App. Pub. No. 2010/0286322) in view of Sueda et al. (U.S. App. Pub. No. 2014/0044971).
Yabuki et al. is relied upon as described in the rejection of claim 1, above.
Yabuki et al. does not disclose the apparent density of the zinc oxide particles.
Sueda et al. is directed to a zinc oxide particles having excellent dispersibility having a primary particle diameter of 0.1 micrometers (Abstract) and which may be surface modified with an organosilicon compound. (par. [0068]-[0069]). Sueda et al. teaches that the zinc oxide particles should have an apparent density of 0.26 ml/g or more, overlapping with the presently claimed range, in order to improve the amount of powder that can be transported at a time as well as improving the handling thereof. (par. [0044]).
It would have been obvious to one of ordinary skill in the art to optimize the apparent density of the zinc oxide particles of Yabuki et al. in view of the teachings of Sueda et al.
One of ordinary skill in the art would have found it obvious to optimize the apparently density of the zinc oxide particles in view of the teachings in Sueda et al. that the property improves the transportation efficiency and handling properties of the powder. Therefore, the prior art suggests that the property has a result effective nature which would have motivated one of ordinary skill in the art to improve to obtain an overall better product.
Claims 4 are rejected under 35 U.S.C. 103 as being unpatentable over Yabuki et al. (U.S. App. Pub. No. 2010/0286322) in view of Suma et al. (U.S. App. Pub. No. 2023/0218488).
Yabuki et al. is relied upon as described in the rejection of claim 1, above.
Yabuki et al. does not disclose silicon content of the coated zinc oxide particles.
Suma et al. teaches surface modified zinc oxide particles and liquid dispersion including the zinc oxide particles, wherein the surface modification is due to a silane coupling agent having alkoxy groups on the surface thereof. (i.e. an organosilicon compound). (Abstract). Suma et al. teaches that the content of the organosilicon compound should be in the range 1-20% with respect to the silane coated zinc oxide particles. (par. [0101]). Examples of silane treatment agents include octyltriethyoxysilane (see Example 1, par. [0207]) wherein Si accounts for about 10% of the overall molecular weight of the compound (MW of Si / MW of octyltriethyoxysilane x100 ; 28.085/276.49 x 100 = 10.1%). Therefore, the content of Si on the surface of the modified zinc oxide particles would lie in the range of 0.1-2% of the particles, overlapping with the presently claimed range.
It would have been obvious to one of ordinary skill in the art to apply a coating content of 1-20% for the organosilicon materials taught in Yabuki et al. in view of the teachings of Suma et al., which would result in an Si content for the coated zinc oxide particles which would overlap with the presently claimed range.
One of ordinary skill in the art would have found it obvious to select a coating amount as disclosed in Suma et al. in view of the teaching in the secondary reference that the disclosed amount would be a suitable amount for providing a coated zinc oxide nanosized particles. One of ordinary skill in the art would therefore have a reasonable expectation of success that using the disclosed in amount in Suma et al. for the zinc oxide particles in Yabuki et al. would produce particles having suitable commercial utility.
Claims 1-2, 4-5 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Suma et al. (U.S. App. Pub. No. 2023/0218488).
Regarding claim 1, Suma et al. teaches surface modified zinc oxide particles and liquid dispersion including the zinc oxide particles, wherein the surface modification is due to a silane coupling agent having alkoxy groups on the surface thereof. (i.e. an organosilicon compound). (Abstract). Suma et al. teaches that the coated particles having primary particle diameters in the range of 0.02-0.05 micrometers (par. [0052]) and average particle diameter in the range of 0.08 or less (par. [0051]) which overlaps with the presently claimed range.
While Suma et al. does not disclose that the primary particle is measured via transmission electron micrograph or a median size measured according the isopropyl alcohol charging process, the process involved in measuring the particle size would not impart any meaningful structural features to the claimed product such that the particles of Suma et al. would be expected to have substantially the same values for primary and average particle diameters when measured according to the claimed process.
Regarding claim 2, the claim is rejected for substantially the same reasons as claim 1 above. The method of measuring the particle diameter would not impart any meaningful structural features to the claimed product such that the particles of Yabuki et al. would be expected to have substantially the same values for primary and average particle diameters when measured according to the claimed process.
Regarding claim 4, Suma et al. teaches that the content of the organosilicon compound should be in the range 1-20% with respect to the silane coated zinc oxide particles. (par. [0101]). Examples of silane treatment agents include octyltriethyoxysilane (see Example 1, par. [0207]) wherein Si accounts for about 10% of the overall molecular weight of the compound (MW of Si / MW of octyltriethyoxysilane x100 ; 28.085/276.49 x 100 = 10.1%). Therefore, the content of Si on the surface of the modified zinc oxide particles would lie in the range of 0.1-2% of the particles, overlapping with the presently claimed range.
Regarding claim 5, the relative ratio of average particle diameter to primary particle diameter in Suma et al. would fall in the range of 0.08/0.05 = 1.6 to 0.08/0.02 = 4, overlapping with the presently claimed range.
Regarding claims 11-14, Suma et al. teaches using the zinc oxide particles in a resin composition and dispersion. (par. [0159]). The compositions would meet the limitations of a “heat dissipating filter” and “cosmetic preparation” in the preambles of claims 11 and 13 since these do not inherently impart additional structural features to the claim. (see MPEP 2111.02).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Suma et al. (U.S. App. Pub. No. 2023/0218488) in view of Sueda et al. (U.S. App. Pub. No. 2014/0044971).
Suma et al. is relied upon as described in the rejection of claim 1, above.
Sumaet al. does not disclose the apparent density of the zinc oxide particles.
Sueda et al. is directed to a zinc oxide particles having excellent dispersibility having a primary particle diameter of 0.1 micrometers (Abstract) and which may be surface modified with an organosilicon compound. (par. [0068]-[0069]). Sueda et al. teaches that the zinc oxide particles should have an apparent density of 0.26 ml/g or more, overlapping with the presently claimed range, in order to improve the amount of powder that can be transported at a time as well as improving the handling thereof. (par. [0044]).
It would have been obvious to one of ordinary skill in the art to optimize the apparent density of the zinc oxide particles of Suma et al. in view of the teachings of Sueda et al.
One of ordinary skill in the art would have found it obvious to optimize the apparently density of the zinc oxide particles in view of the teachings in Sueda et al. that the property improves the transportation efficiency and handling properties of the powder. Therefore, the prior art suggests that the property has a result effective nature which would have motivated one of ordinary skill in the art to improve to obtain an overall better product.
Conclusion
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 04/01/2026