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
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/19/2026.
Response to Amendment
The amendment filed on 8/13/2026 has been entered. Claim(s) 1 and 7 is/are currently amended. Claim(s) 1-8 is/are pending with claim(s) 8 withdrawn from consideration. Claim(s) 1-7 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 8/13/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the technical field of the primary reference, Ito US '389, is entirely different from that of the present application (i.e., a technology for stably dispersing silica nanoparticles in silicone oil). Ito US '389 merely exemplifies silicone oil as one option for medium 131, and merely exemplifies silica microparticles as one option for a material for imparting thixotropy to the medium. Accordingly, there is no motivation for a person skilled in the art to arrive at the present invention based on Ito US '389, even in combination of the surface-treated silica of the secondary references.
In response, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the present application is related to coating [0015, 0048 pgpub]. Ito is also related to coating [0098]. Therefore, Ito is reasonably in the same field of endeavor. More importantly, the current invention and claims are concerned with inorganic oxide particles (e.g., silica particles) dispersed in silicone oil. Ito is also concerned with dispersing silica fine particles in silicone oil. Therefore, Ito is reasonably pertinent to the particular problem with which the inventor was concerned. The teaching of silica microparticles as one option and silicone oil as one option is sufficient to make the case obvious.
Applicant argued that the secondary references (Otsuka et al. US '016, Tetsuji et al. JP '758, and Tadahiro et al. JP '170) disclose hydrophobizing the surface of silica particles with a silane compound in order to achieve good compatibility and dispersion in silicone. In general, the expression of thixotropy requires the formation of a reversible aggregation structure (network) among particles. If surface treatment is used to improve compatibility, the particles become less likely to form such a network, and thixotropy becomes less likely to be expressed. Thus, combining the secondary references, which are directed to achieving good compatibility and dispersion in silicone, with Ito US '389, which uses silica to impart thixotropy to the medium, would discourage a person of ordinary skill in the art to combine Ito US '389 with the secondary cited art, and would therefore constitute a teaching away.
In response, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965), MPEP 716.01(c). Applicant provided no evidence to show that the surface treated particles of Ito in view of Otsuka, Tetsuji and Tadahiro cannot have thixotropy property. Therefore, the statement “combining the secondary references, which are directed to achieving good compatibility and dispersion in silicone, with Ito US '389, which uses silica to impart thixotropy to the medium, would discourage a person of ordinary skill in the art to combine Ito US '389 with the secondary cited art, and would therefore constitute a teaching away” has no support.
Applicant argued that in general, there are a variety of kinds of silicone oil. There is no specific reason or suggestion for a person skilled in the art to choose a certain type of silicone oil from the Shin- Etsu reference.
In response, the 103 rejection clearly states that the Shin- Etsu reference teaches these silicone oils providing benefits such as colorless and transparent, temperature having little effect on viscosity, low vapor pressure, high flash point, superior thermos-oxidative stability, low freezing point, low surface tension, outstanding lubricity, high resistance to shear, excellent electrical insulative properties, excellent chemical stability, non-corrosive, etc. [P3 Features]. It would have been obvious to one of ordinary skill in the art at the time of filing to select Shin-Etsu KF-96 as the silicone oil in the dispersion of Ito in view of Otsuka, Tetsuji and Tadahiro, for the aforementioned benefits.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 20190004389 A1) in view of Otsuka et al (US 20130211016 A1), Tetsuji et al (JP2005170758, machine translation is referenced herein), Tadahiro et al (JP 2002256170, machine translation is referenced herein) and Shin-Etsu (“Silicone Fluid KF-96”, 5/2014).
Regarding claims 1-7, Ito teaches silica fine particles dispersed in silicone oil [0037]. This meets the claimed dispersion comprising a silicone oil and inorganic oxide particles because silica is silicon dioxide, an inorganic oxide.
Ito does not teach that the silica fine particles are surface modified with a surface modifier represented by the claimed formula (1).
Otsuka in view of Tetsuji and Tadahiro teaches the recited inorganic oxide particles in claims 1-6, as stated in the 103 rejection of 9/16/2024 on claims 2-4 and 6-8 for application 17433265. The inorganic oxide particles are dispersed in a hydrophobic solvent (Otsuka [abstract], Tetsuji [abstract and P1L7-8]). It would have been obvious to one of ordinary skill in the art at the time of filing to use the modified silica particles taught by Otsuka in view of Tetsuji as the silica fine particles in Ito’s composition, since Otsuka and Tetsuji teaches that compatibility and dispersibility are improved for the surface modified silica particles in hydrophobic solvents (Otsuka [0006-0007], Tetsuji [P1L34-45]); and Tadahiro teaches that a trimethylsilyl group at 0.3 to 20 groups/nm2 on a surface of the silica particles improves stability of the surface modifier (Tadahiro [P3 overview and 0060]). Silicone oil is art recognized as a hydrophobic solvent.
Ito in view of Otsuka, Tetsuji and Tadahiro does not teach that the silicone oil is a dimethyl silicone oil, a methyl phenyl silicone oil, or a methyl hydrogen silicone oil having a viscosity of 100 centistokes to 5,000 centistokes.
Shin-Etsu teaches a silicone oil KF-96 (dimethylpolysiloxane) having a viscosity of 100 centistokes to 5,000 centistokes (KF-96 100cs, KF-96 200cs, KF-96 300cs, KF-96 350cs, KF-96 500cs, KF-96 1,000cs, KF-96 3,000cs, and KF-96 5,000cs) [P2 General characteristics], meeting the claimed dimethyl silicone oil with the recited viscosity. These silicone oils provide benefits such as colorless and transparent, temperature having little effect on viscosity, low vapor pressure, high flash point, superior thermos-oxidative stability, low freezing point, low surface tension, outstanding lubricity, high resistance to shear, excellent electrical insulative properties, excellent chemical stability, non-corrosive, etc. [P3 Features]. It would have been obvious to one of ordinary skill in the art at the time of filing to select Shin-Etsu KF-96 as the silicone oil in the dispersion of Ito in view of Otsuka, Tetsuji and Tadahiro, for the aforementioned benefits.
The viscosities of 100 centistokes to 5,000 centistokes of these silicone oils meet the claimed range of 100-5,000 centistokes in claim 1. The viscosities of KF-96 100cs, KF-96 200cs, KF-96 300cs, KF-96 350cs, KF-96 500cs, KF-96 1,000cs meet the claimed range of 100-1,000 centistokes in claim 7.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
