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 .
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 4 and 8 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.
Regarding claim 4, it is not clear whether the “milled silica” is referred to after the first or second milling steps. As such, the metes and bounds of the claim are not clear as drafted.
Regarding claim 8, the ranges here for component b are not possible as it is not possible for there to be 40% of component a, and 90% of component b at the end points. When there is 40% of component a (the lower minimum point), the sum of all remaining components must be less than or equal to 100%.
Likewise, when there is 80% component a, and 20% of component b, there is no additional component allowed to be present. Also, when there is 50% of component c, the end point of either component a or component b is impossible to reach. Thus, the claim contains values that are not possible to be reached.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Frahn et al. (US Patent No. 6,593,393), hereinafter Frahn.
Regarding claims 1-3, Frahn discloses a silica material (1:40-2:2) produced by a ball mill and an air jet mill in two steps (3:33-3:35). According to MPEP 2113, product-by-process claims are not limited by the recited steps, but only the structure implied by the recited steps.
While Frahn discloses two distinct milling steps within a ball mill and an air jet mill (Example 1, 3:33-3:35), and demonstrates that the tapped density increases, and then decreases, the final density would be presumed to be as is claimed, having gone through the same two steps. Additionally or alternatively, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the tapped density of the product changes as it is milled.
Regarding claim 4, Frahn discloses the subject matter of claim 1, and further discloses that the tapped density of the milled silica is 20-100 g/l (specifically 52 g/l in Example 3 at 5:55 in the Table).
Regarding claims 5-6, Frahn discloses the subject matter of claim 5, and further discloses that the silica is silanized or surface modified using a silane, including hexamethyldisilane (1:20-1:23).
Regarding claim 7, Frahn discloses the subject matter of claim 1, and further discloses that the silica includes 10% of the weight (3:66-3:67) within a liquid curable composition.
Regarding claim 8, Frahn discloses the subject matter of claim 7, and further discloses that the composition includes an epoxyacrylate (Example 2, Experiment 1), 10% silica (3:65), 3% photoinitiator (4:32). Components D and F are optional (lower end point of 0%).
Regarding claim 9, Frahn discloses the subject matte rof claim 7, and further discloses depositing a layer of the material (4:31-4:36) and irradiating the material, as well as repeating the depositing (Experiment 3).
Regarding claim 10, Frahn discloses the subject matter of claim 7, and further discloses irradiating the composition (4:31-4:36). A coating is technically three dimensional, as it forms a layer of material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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