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 of Group I in the reply filed on August 04, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 08, 2026.
Status of the Claims
By amendment filed August 04, 2026, claims 1, 2 and 4 have been amended, claim 3 has been cancelled and claims 12 through 20 are new. Claims 8 through 11 were previously withdrawn. Claims 1, 2 and 4 through 20 are currently pending.
Response to Arguments
Applicant's arguments filed August 04, 2026, have been fully considered but they are not persuasive. Applicant argues that Yoshida does not specifically teach that the polymerizable monomer was added a portion at a time with each portion being added at a mass ratio of 1/5 or more relative to a toral amount of the titanium oxide particles. As was discussed in the previous Office Action, Yoshida taught adding the polymerizable monomer at an amount within the range of a mass ratio of 1/5 or more relative to a total amount of the titanium oxide particles. Furthermore, as argued by applicant, Yoshida teaches that the polymerizable monomer was added a portion at a time in a dropwise manner for the purposes of controlling polymerization (Column 20 Lines 48-59). Yoshida does not, however, teach that each added portion of polymerizable monomer was added at a mass ratio of 1/5 or more relative to a toral amount of the titanium oxide particles.
However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal amount for each portion of the polymerizable monomer added to the aqueous titanium oxide dispersion of Yoshida in order to control polymerization of the monomer.
Applicant’s argument that the claimed results produced unexpected results over the prior art is not persuasive because applicant has not provided any objective evidence to show unexpected results. Applicant cited example dispersion 8-R of the specification to show that adding the polymerizable monomer dropwise produced inferior results to adding the monomer in multiple stages. However, it is not clear how adding the monomer dropwise is different from adding the monomer in multiple portions, especially since new claims 19 and 20 require that the monomer is added in a dropwise manner. Furthermore, the dispersion of example 8-R is not the same as the dispersion used in the examples which allegedly show unexpected results and are not commensurate with the scope of the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP section 716.02(d). Furthermore, applicant has not provided any comparison between the claimed invention and that taught by Yoshida to show unexpected results. See MPEP section 716.02(e).
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 12-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claim 12 is indefinite because it is not clear if the “first portion of the polymerizable material” is different from or the same as the “portion of the polymerizable monomer” of parent claim 1. Furthermore, it is not clear if the “second portion of the polymerizable monomer” is the same as or different from the “another portion of the polymerizable monomer” of parent claim 1. For the purposes of this examination “first portion of the polymerizable material” will be considered to be the same as the “portion of the polymerizable monomer” and the “second portion of the polymerizable monomer” will be considered the same as the “another portion of the polymerizable monomer”.
Claim 13 is indefinite because it is not clear if the “first portion of the polymerizable material” is different from or the same as the “portion of the polymerizable monomer” of parent claim 1. Furthermore, it is not clear if the “second portion of the polymerizable monomer” is the same as or different from the “another portion of the polymerizable monomer” of parent claim 1. For the purposes of this examination “first portion of the polymerizable material” will be considered to be the same as the “portion of the polymerizable monomer” and the “second portion of the polymerizable monomer” will be considered the same as the “another portion of the polymerizable monomer”.
Claim 14 is indefinite because it is not clear if the “first portion of the polymerizable material” is different from or the same as the “portion of the polymerizable monomer” of parent claim 1. Furthermore, it is not clear if the “second portion of the polymerizable monomer” is the same as or different from the “another portion of the polymerizable monomer” of parent claim 1. For the purposes of this examination “first portion of the polymerizable material” will be considered to be the same as the “portion of the polymerizable monomer” and the “second portion of the polymerizable monomer” will be considered the same as the “another portion of the polymerizable monomer”.
Claim 15 is indefinite because it is not clear if the “first portion of the polymerizable material” is different from or the same as the “portion of the polymerizable monomer” of parent claim 1. Furthermore, it is not clear if the “second portion of the polymerizable monomer” is the same as or different from the “another portion of the polymerizable monomer” of parent claim 1. For the purposes of this examination “first portion of the polymerizable material” will be considered to be the same as the “portion of the polymerizable monomer” and the “second portion of the polymerizable monomer” will be considered the same as the “another portion of the polymerizable monomer”.
Claim 16 is indefinite because it is not clear if the “first portion of the polymerizable material” is different from or the same as the “portion of the polymerizable monomer” of parent claim 1. Furthermore, it is not clear if the “second portion of the polymerizable monomer” is the same as or different from the “another portion of the polymerizable monomer” of parent claim 1. For the purposes of this examination “first portion of the polymerizable material” will be considered to be the same as the “portion of the polymerizable monomer” and the “second portion of the polymerizable monomer” will be considered the same as the “another portion of the polymerizable monomer”.
Claim 17 is indefinite because it is not clear if the “first portion of the polymerizable material” is different from or the same as the “portion of the polymerizable monomer” of parent claim 1. Furthermore, it is not clear if the “second portion of the polymerizable monomer” is the same as or different from the “another portion of the polymerizable monomer” of parent claim 1. For the purposes of this examination “first portion of the polymerizable material” will be considered to be the same as the “portion of the polymerizable monomer” and the “second portion of the polymerizable monomer” will be considered the same as the “another portion of the polymerizable monomer”.
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.
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, 4-6 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al (U.S. Patent # 11,174,405) in view of Aoki et al (U.S. Patent # 9,376,583).
In the case of claim 1, Yoshida teaches a method for forming an aqueous dispersion in the form of a dispersion of white fine particles comprising titanium oxide particles encapsulated with a polymer/resin (Abstract). The method of Yoshida comprised a first step of mixing titanium oxide particles and a polymer dispersant to obtain a titanium oxide dispersion followed by a second step of obtaining composite/white fine particles of titanium oxide by adding a polymerizable monomer to the titanium oxide dispersion of the first step (Column 11 Lines 13-22). Yoshida teaches that the titanium oxide dispersion was an aqueous dispersion because it comprised water (Column 15 Line 64 through Column 16 Line 24). Yoshida further teaches that in the second step, along with the polymerizable monomer, a polymerization initiator was added to polymerize the monomer (Column 19 Lines 20-53). Furthermore, Yoshida teaches that the mass ratio of polymerizable monomer to the relative amount of titanium particles was not less than 0.2 (Column 20 Lines 28-36) which was within the claimed range of 1/5 or more, which is equal to 0.2 or more.
Yoshida further teaches that the polymerizable monomer was added in multiple portions by being added in a dropwise manner in order to control controlling polymerization (Column 20 Lines 48-59). Yoshida does not, however, teach that a portion of the added portion of polymerizable monomer was added at a mass ratio of 1/5 or more relative to a toral amount of the titanium oxide particles.
However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal amount for each portion of the polymerizable monomer added to the aqueous titanium oxide dispersion of Yoshida in order to control polymerization of the monomer.
As for the limitation that the a portion of the polymerizable monomer contained a polymerizable monomer A which had a solubility in water of 0.5g/100 ml or less at 23 ℃ Yoshida does not specifically teach this. However, Yoshida teaches that the polymerizable monomers were hydrophobic monomers (Column 18 Lines 15-22) and included butyl (meth)acrylate (Column 18 Line 28), styrene and benzyl (meth) acrylate (Column 18 Line 41-47), which according to Page 10 Paragraph 0033 of the specification of the present application as originally filed are all monomer that would have a solubility of water of 0.5g/100 ml or less at 23 ℃.
Furthermore, as was discussed previously, the monomers of Yoshida were hydrophobic monomers comprised of (meth)acrylate.
Aoki teaches an aqueous ink composition comprising polymer particles and color material which included titanium oxide (Abstract and Column 3 Lines 1-4). Aoki teaches that the polymer particles included a hydrophobic polymer formed from a hydrophobic monomer comprising (meth)acrylate wherein hydrophobic meant having a water solubility of 0.3 g/100 ml or less at 20 ℃ (Column 5 Line 30 through Column 6 Line 7).
Based on the teachings of Aoki, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have had the monomers of Yoshida have a water solubility of 0.3 g/100 ml or less at 20 ℃ because this was a known water solubility range in the art for hydrophobic monomers. Furthermore, the range of 0.3 g/100 ml or less at 20 ℃ was within or overlapped with the claimed range of 0.5 g/100 ml or less at 23 ℃. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
As for claim 4, Yoshida teaches that the hydrophobic monomer/polymerizable monomer A was present in the amount of not less than 80% by mass (Column 16 Line 63 through Column 17 Line 5), which was within the claimed range of 30% by mass or more.
As for claim 5, Yoshida teaches that the titanium oxide particles were surface treated with alumina (Column 7 Lines 57-62 and Column 11 Lines 27-30).
As for claim 6, Yoshida teaches that the dispersant comprised a salt-forming monomer (Column 12 Lines 23-34) which included acid groups (Column 12 Line 63 through Column 13 Line 27).
As for claims 12-17, as was discussed previously, Yoshida teaches having added the polymerizable monomer in multiple portions and that it would have been obvious to have determined an optimal amount for each portion through routine experimentation in order to control polymerization.
Yoshida does not however, teach that the polymerization initiator was added in multiple portions. However, the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP section 2144.04.IV.C.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have added the polymerization initiator of Yoshida in view of Aoki in multiple portions in order to control polymerization of the added monomer.
As for claim 18-20, as was discussed previously, Yoshida teaches having added the polymerizable monomer in a continuous dropwise manner.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al in view of Aoki et al as applied to claim 1 above, and further in view of Xue et al (U.S. Patent # 6,756,437).
The teachings of Yoshida in view of Aoki as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 2, Yoshida does not teach that the composite particles were a “raspberry-like” composite particles comprising resin particles covering the surface of the titanium oxide particles. However, as was discussed previously, the process of Yoshida formed a composite particle comprised of a titanium particle encapsulated with a polymer formed through emulsion polymerization of a monomer.
Xue teaches a process for preparing an aqueous dispersion of a composite particle comprised of a polymer matrix covering a finely divided inorganic solid formed by emulsion polymerization of a monomer in the presence of the finely divided inorganic solid (Abstract). Xue teaches that the finely divided inorganic solids included titanium oxide (Column 5 Lines 53-64) and that the monomer includes acrylates (Column 10 Lines 48-56). Xue teaches that the composite particles were “raspberry-like” composite particles comprising the finely divided solid particles enveloped in a polymer matrix (Column 13 Line 61 through Column 14 Line 14) wherein the polymer matrix comprised resin/polymer particles in the form of coils of intertwined polymer chains (Column 1 Lines 17-24).
Based on the teachings of Xue, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the composite particles of Yoshida in view of Aoki to be “raspberry-like” particles comprising resin particles covering the titanium oxide particles because this was a known composite particle configuration in the art for titanium oxide particles covered with a polymer.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al in view of Aoki et al as applied to claim 1 above, and further in view of Bazan et al (U.S. Patent # 8,044,225).
The teachings of Yoshida in view of Aoki as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 7, Yoshida does not teach that the polymerization initiator contained a zwitterionic structure. However, as was discussed previously, the monomer of Yoshida comprised (meth)acrylates and styrenes.
Bazan teaches a method for polymerizing olefin monomers with a zwitterionic initiator/catalyst wherein the olefin monomers included acrylates and styrenes (Abstract, Column 1 Lines 15-17 and Column 1 Line 59 through Column 2 Line 3).
Based on the teachings of Bazan, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used as a polymerization initiator in the method of Yoshida in view of Aoki an initiator having a zwitterionic structure because it was known in the art to polymerize acrylates and styrenes with a zwitterionic initiator/catalyst.
Conclusion
Claims 1, 2, 4 through 7 and 12 through 20 have been rejected. Claims 8 through 11 were previously withdrawn. No claims were allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
