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
Claims 9-12 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/5/26.
Applicant’s election without traverse of Group I in the reply filed on 2/5/26 is acknowledged.
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.
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.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US 2016/0170094).
Claims 1-3 and 7: Nakayama teaches an application liquid for treating an optical member (Abst.), comprising: silica particles having a size of 12-60 nm (¶ 0028); a silicate hydrolysis condensate (¶ 0038) and a mixture of solvents (¶ 0063), wherein the mixture of solvents is selected from a list of solvents including methanol and diglyme (¶ 0063). Thus, because Nakayama teaches that the solvent can be a mixture of multiple solvents including methanol and diglyme, it would have been obvious to one of ordinary skill at the time of filing to have selected methanol and diglyme as the mixture of solvents.
Claim 4: Diglyme has a higher boiling point (162˚C) than methanol (148˚C).
Claim 6: Nakayama teaches that the silica particles are chain particles (¶ 0033).
Claim 8: Nakayama teaches that the content of the condensate in the final product of 5-40 wt% (¶ 0040). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included 5-20 wt% condensate in the application liquid with the predictable expectation of success.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nakayama in light of Akihito et al. (JP 2013203774, machine translation).
Claim 5: Nakayama is silent regarding the ratio of first solvent to second solvent. Akihito teaches an application liquid for treating an optical member (Abst.) which includes silica chain particles, a silicate condensate and a mixture of solvents, such as an alcohol and a glycol ether (Abst.; p. 2). Akihito further explains that suitable mixtures of these solvents can range of 20-80 wt% glycol ether (Abst.). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 20-30 wt% diglyme in the liquid of Nakayama with the predictable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712