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 Group I (claims 1-7) in the reply filed on 5/19/2026 is acknowledged. The traversal is on the ground(s) that (1) there are overlapping or related technical features among the two groups of claims and (2) there would be no undue burden on the Examiner to examine both groups of claims. This is not found persuasive because the restriction is based on Group I-IV lacking unity of invention as stated in the office action of 4/28/2026, and inventions I and II would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
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) 1-6 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) and Tadahiro et al (JP 2002256170, machine translation is referenced herein).
Regarding claims 1-6, 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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Otsuka, Tetsuji and Tadahiro as applied to claim 1 above, further in view of Shin-Etsu (“Silicone Fluid KF-96”, 5/2014).
Regarding claim 7, Ito in view of Otsuka, Tetsuji and Tadahiro teaches the dispersion of claim 1 as stated above. 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.
Conclusion
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
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