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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 10, 12-13, 15-17, 19, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Auweter (US 20030177943) in view of Henglein (US 20090264575) and Trummer (US 20080249209).
Regarding Claims 1, 19, and 24-26, Auweter teaches a method of making pigments, comprising: forming a first slurry including a first solvent, a substrate, and a polymer (Example 5, THF, polycarbonate and Primacor 59801, and Pigment Blue); forming a first functional solvent including a second solvent and a functional component (Example 5, water and fluorosurfactant); and combining the first slurry and the functional solvent so that the substrate is encapsulated by the polymer to form a first coating (Example 5, abstract). Auweter teaches the first and first functional solvents are miscible ([0010]). Auweter teaches the pigments are special effect pigments (metal effect pigments, pearl luster pigments, interference pigments, [0027-0028]; optical properties, such as the refractive index, of the particles can be optimized to the end use [0095]).
Auweter does not explicitly teach the first slurry including a colorant wherein the first coating is a colored coating comprising the polymer and the colorant; however, Henglein teaches polymer coating pigment particles to produce colored effect pigments ([0081]) wherein the polymer coating includes a colorant additive pigment (Henglein, Claims 1, 4-5, 35, and 37). Henglein teaches inorganic and organic pigments, titanium dioxide, and iron oxide ([0081]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Auweter to include a colorant additive in the coating solution and coating, as suggested in Henglein, in order to obtain a resultant pigment particle having a desired color for the end use application.
Auweter teaches different solvents, polymers, and colorants. Auweter does not explicitly teach repeating the process to form a second coating; however, Trummer teaches metallic effect pigments having multiple coating layers of different compositions ([0124-0129]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Auweter to include multiple layers, as taught in Trummer, because metallic effect pigments having multiple coating layers are known in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving coated pigments of Auweter having desirable end properties with multiple layers as suggested by Trummer.
Auweter teaches metal effect pigments ([0028]). Auweter is silent as to the composition of the metal effect pigments; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine suitable compositions for the metal effect pigments. Trummer teaches metallic effect pigments being platelet shaped aluminum or copper ([0107-0108]). It would have been prima facie obvious to one of ordinary skill in the art to modify the metal effect pigments of Auweter to be metallic effect pigments, as taught in Trummer, because they are known pigments in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coated pigments of Auweter with a pigment as taught in Trummer.
Regarding Claim 2, Auweter teaches the polymer provided as a solution of the polymer in a first solvent selected depending on the solubility of the polymer used ([0010-0013]).
Regarding Claim 3-4 and 22-23, Auweter teaches acetates, acetones, ketones, glycol, glycol derivatives, alcohols, esters, and heterocyclic solvents ([0013]).
Regarding Claim 10, Auweter teaches the polymer is insoluble in the water ([0010]). Regarding Claims 12, Auweter teaches embodiments where both the first and second solvent are organic solvents ([0016]). Auweter teaches examples of solvents including acetones and cyclohexane ([0013-0016]). Auweter teaches the second solvent selected so that the polymer is insoluble in the second solvent and the second solvent is miscible with the first solvent ([0010]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the second solvent of Auweter to be acetones or cyclohexanes, as suggested in Auweter, in order to achieve a mixture of first and second organic solvents wherein the second solvent is miscible with the first solvent and does not dissolve the polymer.
Regarding Claim 13, Auweter teaches the functional component includes a surfactant ([0134]).
Regarding Claims 15-16, Auweter teaches continuously mixing the aqueous phase with the solvent phase and teaches the substrate being encapsulated (Example 5, abstract). Auweter teaches the first and second solvents being miscible ([0010]) and the polymer directly precipitates when its solubility is exceeded during the mixing of the solvents ([0097]). Auweter does not explicitly teach in the mixing the first slurry breaking into droplets dispersed in the functional solvent or the first solvent being drawn into the functional solvent to dry the polymer into a coating; however, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of inherency has been established, In re Best, 195 USPQ 430, 433 (CCPA 1977). With regard to the limitation that the mixing breaks the first slurry into droplets dispersed in the functional solvent and draws the first solvent into the functional solvent, when the structure recited in the prior art is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112. In this situation, the prior art exemplifies the applicant's claimed materials and method, so the claimed function relating to mixing of the materials are present in the prior art. Absent an objective evidentiary showing to the contrary, the addition of the physical properties to the claim language fail to provide patentable distinction over the prior art of record.
Regarding Claim 17, Auweter teaches mixing continuously 209 grams (2+1+200+5+0.5+0.5) at a rate of 72 g/min with 2000.66 grams (0.66+2000) at a rate of 500 g/min, i.e. combining for a time of about 4 minutes.
Regarding Claim 21, Auweter teaches the first and second solvent is acetates, acetones, ketones, glycol, glycol derivatives, alcohols, esters, and heterocyclic solvents ([0013]). Auweter teaches the second solvent is water ([0015]). Auweter teaches the pigment particles present in the solution of first and/or second solvent prior to mixing ([0011]), i.e. the first and second solvent are interchangeable.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Auweter (US 20030177943) in view of Henglein (US 20090264575) and Trummer (US 20080249209) as applied to claims 1-4, 10, 12-13, 15-17, 19, and 21-26 above, and further in view of Bartsch (US 3669922).
Regarding Claim 7, Auweter teaches wherein the polymer includes polystyrene, polyvinyl acetate, polymethyl methacrylate, and mixtures thereof ([0119]). Auweter does not explicitly teach cellulose acetate butyrate; however, Bartsch teaches polymer-pigment particles wherein cellulose acetate butyrate is recognized as an equivalent polymer to those of Auweter (col. 4 ln. 68-col. 5 ln. 24). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the polymer of Auweter to include cellulose acetate butyrate, as taught in Bartsch, because it is a known polymer for colored particles in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the particles of Auweter with cellulose acetate butyrate, as in Bartsch.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Auweter (US 20030177943) in view of Henglein (US 20090264575) and Trummer (US 20080249209) as applied to 1-4, 10, 12-13, 15-17, 19, and 21-26, and further in view of Corwin (Corwin, Introductory Chemistry: Concepts and Critical Thinking, Worked Example Exercise 14.1-14.11, 6th Edition, Pearson Education, 2011, pg. 1-17).
Regarding Claim 14, Auweter teaches dissolving the surfactant in the water (Example 5). Auweter does not explicitly teach the dissolving including agitating; however, stirring increases the rate that solvent molecules come in contact with solute (Corwin, 14.5). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Auweter to include stirring, as taught in Corwin, in order to achieve an increased rate of dissolving.
Claim(s) 27 is rejected under 35 U.S.C. 103 as being unpatentable over Auweter (US 20030177943) in view of Henglein (US 20090264575), Trummer (US 20080249209), and Bartsch (US 3669922) as applied to claim 7 above, and further in view of Horiguchi (US 4171987).
Regarding Claim 27, Bartsch teaches polymer-pigment particles wherein cellulose acetate butyrate is recognized as an equivalent polymer to those of Auweter (col. 4 ln. 68-col. 5 ln. 24), as discussed above.
Auweter teaches the first and second solvent is acetates, acetones, ketones, glycol, glycol derivatives, alcohols, esters, and heterocyclic solvents ([0013]). Auweter teaches the second solvent is water ([0015]). The combined references do not explicitly teach the first solvent is methyl isobutyl ketone and the second solvent is heptane; however, Horiguchi teaches a method of coating a cellulose ester solution wherein methyl isobutyl ketone is a known ketone solvent for cellulose acetate butyrate and heptane is a known alternative to water as a non-solvent for cellulose acetate butyrate (col. 2 ln. 20-45, col. 3 ln. 14-25). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include a methyl isobutyl ketone first solvent and heptane second solvent, as suggested by Horiguchi, because they are a known solvent/non-solvent in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the particles of the combined references with solvent/non-solvent as in Horiguchi.
Response to Arguments
Applicant’s arguments, see amendment to Claim 7, filed 7/28/2025, with respect to the previous prior art rejection(s) of claim(s) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as discussed above.
Applicant's other arguments filed 7/28/2025 have been fully considered but they are not persuasive.
Applicant argues Auweter teaches the polymer to modify the surfaces of the pigment particles and there is no teaching of suggestion in Auweter of using a second colorant combined in the polymer coating. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). A colorant combined in the polymer coating is suggested by Henglein.
Applicant argues the teachings of Auweter make the use of a second coating unpredictable because the pigment substrate serves as a seed onto which the polymer is precipitated. In response to applicant’s argument, Auweter teaches various organic and inorganic cores suitable for use with the invention and Trummer teaches metallic effect pigments having multiple coating layers of different compositions applied by solution coating methods ([0124-0129]). One of ordinary skill in the art considering the teachings of Auweter and Trummer would have had a reasonable expectation of predictability in modifying the solution based method of Auweter to include a repeated coating process and multiple layers.
Applicant argues the process of Henglein is a very different mechanism than Auweter. Applicant argues the ability to use a separate colorant in the coatings of Henglein is not predictive of the ability to use a colorant in the liquid solvent precipitated coatings of Auweter. In response to Applicant’s argument, Henglein and Auweter both teach methods for applying a polymer coating layer onto a pigment particle. Contrary to Applicant’s argument, both Auweter and Henglein teach solution precipitated coatings and there is no suggestion in the art that a colorant would not be suitable for use in a solution precipitated coating.
Applicant argues the rejection ignores the express teachings of Auweter that the pigment serves as a seed and that the polymer enrobed pigment particles will generally contain only one pigment particles as core. Applicant argues one of ordinary skill in the art would not expect the encapsulating coating used to enrobe a single finished pigment particle of Auweter to include pigments other than the single pigment that is being enrobed and would have been dissuaded from attempting to combine the colorants of Henglein into the polymer coatings of Auweter because Auweter teaches the process results in a single pigment being enrobed. In response to Applicant’s arguments, the coated pigments of Henglein and Auweter are both enveloped with polymer for the purpose of improved stability. Applicant argues that one of ordinary skill in the art would not combine the pigments of Henglein in the polymer coatings of Auweter; however, Henglein teaches the pigment colorant in a polymer coating on a pigment core particle. Henglein ([0143]) and Auweter ([0142]) both teach the product pigments useful in printing ink applications. Contrary to Applicant’s argument, there is no teaching or suggestion in the references that a colorant included in the polymer coating would be unpredictable. Auweter teaches mixtures of coating materials used wherein thermal, mechanical, and optical properties of the particles can be optimized to the end use. Including a pigment colorant as one of the coating materials of Auweter would predictably allow for additional modification of the optical properties of the product particles for end use optimization.
Applicant argues Corwin does not overcome the above-described deficiencies; however, this is not convincing as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 TABATHA L PENNY whose telephone number is (571)270-5512. The examiner can normally be reached M-F 8:00-5:00.
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, Michael Cleveland can be reached on 5712721418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TABATHA L PENNY/Primary Examiner, Art Unit 1712