DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner and an initialed copy is attached.
Priority
Receipt is acknowledged of the certified copies of papers required by 37 CFR 1.55.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
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.
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshii (WO-2020017277-A1, a translation is provided).
Claim 1: Yoshii discloses a process of making a dispersed silica-monomer composition comprising the steps of mixing basic silica in a water-based solvent, adding a silane coupling agent and a polymerizable monomer and removing the solvent (abs, pg. 4-12 and examples). Further, Yoshii discloses the solvent having a ratio of 0.5 organic solvent to 10 water (pg. 10-12).
Claims 2-4: Yoshii discloses the di(meth)acrylate monomer and the acryloyloxy containing silane (pg. 4-12 and examples).
Claims 6 and 7: Yoshii discloses the colloidal silica and sodium ion (pg. 4, 11 and 12 & examples).
Claims 8 and 9: Yoshii discloses the distillation and various heating temperatures such as 100 0C (pg. 9-12 and examples).
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deguchi (US-6063830A).
Claim 1: Deguchi discloses a process of making a dispersed silica-monomer composition comprising the steps of mixing basic silica stabilized in aqueous sodium (Snowtex – see attached chemical composition from Snowtex website), adding a silane coupling agent and a polymerizable monomer and removing the solvent (abs, col 4/1 to col 7/40). The Deguchi reference discloses the claimed invention with the claimed components and steps but does not disclose the process with the claimed components and steps enough specificity to anticipate the claimed invention. It is noted that Deguchi is motivated to optimize the components and steps to gain the benefit of enhanced dispersion and stability. Nevertheless, given that Deguchi discloses a process with each of the steps and components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught steps and components since Deguchi teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that additional components are disclosed would not have made any of them less obvious. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 440 (Bd of App 1959). Here, Deguchi discloses each of the claimed components and steps and there is no evidence nor teaching that the selection optimization of the claimed components and steps would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 2-4: Deguchi discloses the di(meth)acrylate monomer and the acryloyloxy containing silane (col 4/1-6/36 and examples).
Claim 5: The Deguchi reference discloses the claimed invention but does not explicitly disclose the claimed pH range. It is noted that the claimed pH range is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Deguchi reference discloses a similar process with similar components, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the pH, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the pH, since the reference also discloses a similar process and is motivated to optimize the components to achieve enhanced dispersion and stability. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claims 6 and 7: Deguchi discloses the colloidal silica and sodium ion (col 2/39-57, col 4/1-10, col 11/4-25 & examples).
Claims 8 and 9: Deguchi discloses the distillation and various heating temperatures such as 120 0C (col 6/36 to col/40 and examples).
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US-20080242759-A1).
Claim 1: Wu discloses a process of making a dispersed silica-monomer composition comprising the steps of mixing basic silica stabilized in aqueous sodium (Nalco 2329), adding a silane coupling agent and a polymerizable monomer and removing the solvent (abs, ¶54-66, 86-89 and examples). The Wu reference discloses the claimed invention with the claimed components and steps but does not disclose the process with the claimed components and steps enough specificity to anticipate the claimed invention. It is noted that Wu is motivated to optimize the components and steps to gain the benefit of enhanced dispersion and stability. Nevertheless, given that Wu discloses a process with each of the steps and components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught steps and components since Wu teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that additional components are disclosed would not have made any of them less obvious. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes, see Ex parte Rubin, 128 USPQ 440 (Bd of App 1959). Here, Wu discloses each of the claimed components and steps and there is no evidence nor teaching that the selection optimization of the claimed components and steps would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 2-4: Wu discloses the di(meth)acrylate monomer and the acryloyloxy containing silane ( ¶63-66, Table 1 and examples).
Claim 5: The Wu reference discloses a pH of 9 (Table 1 with accompanying text).
Claims 6 and 7: Wu discloses the colloidal silica and sodium ion (¶ 21, Table 1 with accompanying text & examples).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshii.
The Yoshii reference discloses the claimed invention but does not explicitly disclose the claimed pH range. It is noted that the claimed pH range is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Yoshii reference discloses a similar process with similar components, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the pH, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the pH, since the reference also discloses a similar process and is motivated to optimize the components to achieve enhanced dispersion and stability. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Conclusion
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/TRI V NGUYEN/ Primary Examiner, Art Unit 1764
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