DETAILED ACTION
Status of the Claims
Claims 1, 4-5, 7-16 and 19 are pending in the instant application. Claims 9-13 have been withdrawn based upon Restriction/Election as discussed below. Claims 1, 4-5, 7-8, 14-16 and 19 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All rejections and/or objections not explicitly maintained in the instant office action have been withdrawn per Applicants’ claim amendments and/or persuasive arguments.
Priority
The U.S. effective filing date has been determined to be 09/20/2019, the filing date of the document EPO 19198681.9.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/13/2026 was filed after the mailing date of the first office action on the merits subsequent to the above discussed request for continued examination, however Applicant has indicated the appropriate fees have been paid. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a New Matter rejection.
Scope of the Claimed Invention:
Applicant claims “The pigment of claim 1, wherein the pigments have a specific powder resistance in the range of > 1x106 ohm*cm.” (instant claim 19).
Disclosure of the Instant Application:
The examiner finds no disclosure of any “specific powder resistance” in the as-filed Application.
Discussion:
Applicant’s arguments filed 03/12/2026 fail to point to any support for the amendment or indicate that no new matter has been added (Remarks, p. 7, top). The examiner finds no disclosure of any “specific powder resistance” in the as-filed Application, therefore the claim is properly rejected as failing to comply with the written description requirement for the addition of new matter.
The examiner notes that the above rejection was raised in the Final Rejection dated 03/26/2025, (claim 18 therein)(see pp. 3-7 therein), and in the response filed 08/25/2025 claim 18 cancelled.
Claim Rejections - 35 USC § 112(a)
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 1, 4-5, 7-8, 14-16 and 19 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.
Claim 1 recites the limitation "the further coating" in line 8. There is insufficient antecedent basis for this limitation in the claim. Claims 4-5, 7-8, 14-16 and 19 inherit this issue and are rejected for the same.
Claim 19 recites the limitation "the pigments" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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, 4-5, 7-8, 14-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over RUEGER (US 10,240,045; published March, 2019) in view of PFAFF (US 2013/0164356 A1; published June, 2013);
and as evidenced by ARGOITIA (US 2013/0045338; published February, 2013) and SHERMAN (US 5,876,793; published March, 1999).
Applicants Claims
Applicant claims a pigment comprising coated particles wherein the particles are coated with at least one layer which consists of a mixture of amorphous carbon (a-C) and nanocrystalline graphite (nc-graphite), wherein the at least one layer has a weight ratio of a-C/nc-graphite in the range of 80:20, to 90:10 and wherein said pigment does not contain single crystalline carbon domains, wherein the at least one layer [which consists of a mixture of amorphous carbon (a-C) and nanocrystalline graphite (nc-graphite)] has a thickness of 1 – 10 nm, and wherein the thickness of the further coating with at least one metal oxide and/or metal is 100-800 nm, including the a-C/nc-graphite layer(s) (instant claim 1).
Applicant further claims the pigments have the following combination of coating layers: substrate + TiO2 + a-C/nc-graphite layer (instant claim 7). Applicant claims the substrate is natural or synthetic mica flakes (i.e. platelet-shaped)(instant claims 4-5). Applicant further claims the at least one layer has a thickness is 1 to 10 nm (instant claim 3).
Applicants have elected the following species in the reply filed 01/30/2022: (a) a species of pigment particle with specificity to (i) a substrate material and shape, and (ii) a species of layer package is (a)(i) mica flakes, and (a)(ii) substrate + TiO2 + a-C/nc-graphite layer; and (b) a species of composition of the pigment of claim 1 is a cosmetic composition.
Determination of the scope
and content of the prior art (MPEP 2141.01)
RUEGER teaches that: “The present invention relates to non-metallic interference pigments having metallic properties, in particular flake-form interference pigments, which have a thin high-refractive index layer and an outermost layer which comprises crystalline carbon in the form of graphite and/or graphene on a support, to a process for the preparation of such pigments, and to the use of the pigments prepared in this way.” (see whole document, particularly col. 1, 1st paragraph). RUEGER teaches that: “Metal-effect pigments have been employed for many years in coatings in order to produce metallic effects, for example in printing inks or in metallic paints for automobiles. Classical metal-effect pigments consist of flake-form metal particles whose optical effect is based on the directed reflection of incident light at the ideally flat and planar surface of the metal particles, which are aligned parallel to the surface in the respective application medium.” (col. 1, 2nd paragraph). RUEGER teaches that: “The types of metal-effect pigment worldwide that are most frequently employed consist of aluminum […].” (col. 1, lines 34-35), however “In general, the use of metal-effect pigments, in particular of aluminum pigments, requires particularly high attention to fire and explosion protection owing to their combustibility.” (col. 1, lines 61-64).
RUEGER teaches that: “The object of the present invention is to provide effect pigments having a metallic appearance and very high hiding power […], are chemically stable and are safe from a health point of view and can easily be processed in application media such as surface coatings, printing inks and plastics. In addition, it is also an object of the present invention to provide a simple process for the preparation of the pigments described above. A further object of the present invention consists in indicating the use of pigments of this type.” (col. 3, lines 37-48).
RUEGER teaches that: “The present invention relates to a non-metallic, electrically conductive, flake-form interference pigment having a metallic appearance which is based on a non-metallic flake form support and has been coated with one or more nonmetallic high-refractive-index layers having a low overall layer thickness and an outermost layer, where the outermost layer of the pigment consists of at least 95% by weight, based on the weight of this layer, of carbon and comprises crystalline carbon in the form of graphite and/or graphene.” (col. 4, lines 14-22)(instant claim 1, “at least one layer which consists of a mixture of amorphous carbon (a-C) and nanocrystalline graphite (nc-graphite).”).
RUEGER teaches that: “This outermost, crystalline carbon-containing layer surrounds the support flake or the layer(s) located beneath this outermost layer on the support flake and is preferably compact and formed as a continuous layer. It has a geometrical thickness in the range 0.5-5 nm, in particular 1-3 nm. In the lower layer-thickness range from 0.5 to 3 nm, this corresponds to a single graphene layer or graphite which is composed of very few (<10) carbon layers.” [emphasis added](col. 4, lines 31-38)(instant claim 1, “wherein the at least one layer has a thickness of 1-10 nm”). MPEP §2144.05(I) makes clear that: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
RUEGER teaches that: “Surprisingly, the inventors of the present invention have now succeeded in preparing non-metallic effect pigments having a metallic appearance in which the presence of graphene or graphite crystals in an outermost layer essentially consisting of carbon (layer of graphitic carbon) on a flake-form support material can be demonstrated. […] The carbon layer is characterised by means of Raman spectroscopy. […] A carbon layer is essentially described with two peaks which occur in the corresponding Raman spectra owing to sp2 -hybridised carbon atoms. The G peak (graphite) at a wavenumber of 1580 to 1600 cm-1 results from stretch vibrations of sp2 hybridised carbon atoms in rings and chains. The D peak (disorder), by contrast, is in a wavenumber range from 1360 to 1400 cm-1 and results from centre-symmetrical stretch vibrations. In pure crystalline graphite, this vibration is forbidden and therefore only occurs in subordinate systems. If the wavenumber of the peaks obtained and the intensity ratio I(D)/I(G) of the material to be characterised is determined from the Raman spectrum obtained, a distinction can be made in accordance with the diagram according to FIG. 1 between graphite, NC graphite (nanocrystalline graphite), a-C (amorphous carbon) and ta-C (tetrahedral amorphous carbon). In this way, the presence of nanocrystalline graphite in the pigments according to the invention is confirmed.” (col. 5, 3rd paragraph; Figure 1). The examiner notes that Figure 1 clearly shows the NC-Graphite and the a-C overlap in scope as demonstrated by the I(D)/I(G) ratio in Figure 1. Accordingly the range of a-C/nc-graphite in the range of 80:20 90:10 is fully embraced by this description.
REUGER teaches production of a carbon coated pigment particle by use of a fluidized bed apparatus as a reactor, the pigments being fluidized by the flow of a carrier gas against the pigment bed; the reaction temperature being in the range of from 500 °C to 700 °C (400-900 °C - Broad - col. 11, lines 43-49), the carbon being deposited reaction of volatile carbon-containing compound (carbon precursor) which is fed into the reactor with the carrier gas, and the reaction time is between 30 and 120 minutes (col. 15, Example 1, 1st paragraph). More specifically, REUGER teaches that interference pigment Irodin® 111 Rutile Fine Satin, TiO2 on mica (silver interference color) was introduced into the fluidized bed apparatus, and fluidized with the carrier gas nitrogen, and the carbon-source acetone, reacted at a temperature of 500 °C to 700 °C for 30, 60, 90 and 120 minutes (col. 15, Example 1, 2nd paragraph, Table 1)(instant claims 4-7, species of substrate (mica) + TiO2 + a-C/nc-graphite layer). REUGER teaches that: “The pigments obtained exhibit a silver interference colour, high metallic lustre and a strongly increasing hiding power with increasing carbon content. Even at a carbon content of only 0.5% by weight, silver-coloured interference pigments having high hiding power and good electrical conductivity are obtained.” (paragraph bridging cols. 15-16)(instant claim 8). Given that the crystalline carbon layer in the pigments of REUGER are produced using the same fluidized bed process, the same carbon precursor (acetone in N2 gas) and the same temperatures ~500 °C, and CVD process time (~60 minutes), the results would have more likely than not been the same as instantly claimed a-C/n-C coated pigment particles. It appears that Applicant are using a lower temperature (Example 4 using 490 °C), however this temperature is clearly within the scope of the prior art REUGER teaching a broad temperature of 400 °C to 900 °C (col. 11, lines 43-49). Additionally, REUGER does not disclose the fluidization velocity, however the clearly teach that: “To this end, the flake-form support particles must be adequately fluidised during the reaction.” It would have been within the ordinary skill in the art to understand the basic technical operation of a fluidized bed reactor consistent with the disclosure of REUGER and therefore the fluidization velocity would have more likely then not been the same, or alternatively, within the ordinary level of skill to achieve (MPEP §2112 & §2144.05).
Further regarding the fluidization velocity, the examiner cites ARGOITIA teaching manufacture of diffractive pigments by fluidized bed chemical vapor deposition, the same process used by REUGER, including “The fluidizing conditions allow for providing uniform and highly-conforming encapsulation layers.” (title, abstract, see whole document). ARGOITIA teaches that: “Within the fluidized bed, the flow is turbulent allowing for good mass and heat transfer in between particles which is very important for uniform encapsulation by chemical vapor deposition of pigment flakes.” [emphasis added]([0057]). And that: “Fluidization conditions can be changed based on visual observation of the bed by adjusting the flow rates using flow controllers.” ([0059]).
Further regarding the fluidization velocity, the examiner cites SHERMAN teaching fine powders and method for manufacture including Geldhard class C substrate powders coated with metal, binder or sintering aid (title, abstract, see whole document). SHERMAN teaches that: “The chemical vapor deposition coating operation is accomplished, for example, in a heated reaction zone within the fluidized bed. A gas stream is directed upwardly through the bed at a velocity which is generally at least sufficient to operate the bed in the turbulent fluidization flow regime, and may be in excess of the terminal velocity of the particulates in the gas stream. This velocity is generally high enough so that any agglomerates which be formed tend to be broken up by the turbulence and high particle impact velocities within the bed.” (col. 2, lines 48-57). And that: “As will be understood by those skilled in the art, sampling and statistical measurements may be utilized to determine the proper number of cycles required to achieve the desired average particle coating, and the operating parameters of the system adjusted to achieve the desired degree of coating.” (col. 3, lines 25-30). And further that: “When the first bed is operated in the fast-fluidization regime the velocity of the gas or vapor stream is in excess of the terminal velocity of the particles in that stream. The particles are thus quickly carried through the reaction zone and into the collection zone.” (col. 3, lines 47-51).
REUGER teaches that: “However, the said support particles may also, before the coating with the outermost, crystalline carbon-containing layer, be coated with one or more high-refractive-index layers by means of the conventional coating methods which are generally customary for effect pigments. Both wet chemical and also CVD, PVD or sol/gel processes, all of which are usually used in the coating of effect pigments, can be employed here.” (col. 10, lines 25-35).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of RUEGER is that RUEGER does not expressly teach the inclusion of their coated particles in a cosmetic composition.
PFAFF teaches effect pigments which are based on flake-form substrates having a circular form factor, and are coated with at least one high-refractive-index layer, and the used thereof in cosmetic formulations (title, abstract, see whole document, particularly [0061])(instant claim 14, a cosmetic composition). PFAFF teaches that: “Suitable base substrates for the effect pigments according to the invention are […] phyllosilicates, such as, for example, natural or synthetic mica, […].” ([0010]). PFAFF teaches that: “If the substrate flakes are coated with one, two or more high-refractive-index layers directly on the surface of the substrate, the coating is preferably a layer of TiO2, […].” ([0028]). And that: “The thickness of the high-refractive-index layer is generally 20-500 nm, preferably 30-400 nm and in particular 40-350 nm.” ([0030])(instant claim 1, wherein the thickness of the further coating with at least one metal oxide and/or metal is 100-800 nm, including the a-C/nc-graphite layer(s)). PFAFF teaches effect pigments including substrate flake + TiO2 (anatase) and substrate flake + SnO2 + TiO2 (rutile) ([0036] & [0037]).
PFAFF teaches that: “The effect pigments according to the invention are
generally prepared by suspending the roundish substrate flakes in water and adding one or more hydrolysable metal salts at a pH which is suitable for precipitation and which is selected in such a way that the metal oxide or metal oxide hydrate is deposited directly onto the flakes without significant secondary precipitations occurring.” ([0039]). And that: “In order additionally to increase the light, water and
weather stability, it is frequently advisable to subject the finished effect pigment to post-coating or post-treatment, depending on the area of application.” ([0042]). PFAFF teaches that: “the effect pigments according to the invention are distinguished by a very high hiding power” ([0056]).
PFAFF teaches that: “cosmetic formulations such as lipsticks, nail varnishes, compact powders, shampoos, soaps, loose powders and gels. The concentration of the pigment in the application system to be pigmented is generally between 0.1 and 70% by weight, preferably between 0.1 and 50% by weight and in particular between 0.5 and 10% by weight, based on the total solids content of the system. It is generally dependent on the specific application.” ([0061]). And further that: “The effect pigments according to the invention can also advantageously be employed in decorative and care cosmetics. The use concentration extends from 0.01 % by weight in shampoo to 100% by weight in the case of loose powders.” ([0065])(instant claim 15).
PFAFF teaches that: “The effect pigments according to the invention can
furthermore be mixed with commercially available fillers.” ([0067]). And that: “It is of course also possible for the effect pigments according to the invention to be combined in the formulations with cosmetic raw materials and assistants of any type. These include, inter alia, oils, fats, waxes, film formers, preservatives and assistants which generally determine the applicational properties, such as, for example, thickeners and rheological additives, such as, for example, bentonites, hectorites, silicon dioxides, Ca silicates, gelatines, high-molecular weight carbohydrates and/or surface-active assistants, etc.” ([0068])(instant claim 16).
Specifically regarding instant claim 19, the examiner argues that one of ordinary skill in the art would have not considered electrical conductivity as particularly relevant to cosmetic formulation, and therefore produced pigments having a specific powder resistance in the range of > 1 x 106 ohm*cm (instant claim 19).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the non-metallic pigments having metallic appearance and with high hiding power, as taught by RUEGER, in a cosmetic composition such as a nail varnish or lip gloss, as suggested by PFAFF, because RUEGER clearly suggests that their non-metallic pigments of which PFAFF teaches as useful in a cosmetic composition. Furthermore, the process described by RUEGER is identical/substantially identical to the process of the instant claims, including the temperature (from 400 to 900 °C) the fluidized bed fluidization velocity being clearly taught as adjustable from a minimum fluidization velocity to a maximum (fast-fluidization regime the velocity) to remove the particles from the device, and the “Fluidization conditions can be changed based on visual observation of the bed by adjusting the flow rates using flow controllers.” (ARGOITIA - [0059]).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because RUEGER teaches that their effect pigments having a metallic appearance and very high hiding power, are chemically stable and are safe from a health point of view and can easily be processed in application media such as surface coatings, as well as providing examples of making their pigments. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Claims 1, 4-5, 7-8, 14-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over PHILLIPS (US 2003/0137737; published July, 2003) in view of RUEGER (US 10,240,045; published March, 2019); PFAFF (US 2013/0164356 A1; published June, 2013); ARGOITIA (US 2013/0045338; published February, 2013) and SHERMAN (US 5,876,793; published March, 1999).
Applicants Claims
Applicant claims a pigment comprising coated particles wherein the particles are coated with at least one layer which consists of a mixture of amorphous carbon (a-C) and nanocrystalline graphite (nc-graphite), as discussed above.
Applicants have elected the following species in the reply filed 01/30/2022: (a) a species of pigment particle with specificity to (i) a substrate material and shape, and (ii) a species of layer package is (a)(i) mica flakes, and (a)(ii) substrate + TiO2 + a-C/nc-graphite layer; and (b) a species of composition of the pigment of claim 1 is a cosmetic composition.
Determination of the scope
and content of the prior art (MPEP 2141.01)
PHILLIPS teaches color shifting carbon containing interference pigments and foils (title, see whole document), and particularly that: “A color shifting multilayer interference film is provided which may be used to produce foils or flakes for use in pigment compositions and colorants having color shifting properties. The flakes can be interspersed into a pigment medium to form paints, inks, or cosmetic preparations which can subsequently be applied to objects, papers, or people. Three and five layer designs of the interference film include alternating layers of a dielectric material and carbon in various configurations. The dielectric layers are formed to have an optical thickness at a design wavelength that provides a color shift as the angle of incident light or viewing angle changes.” [emphasis added](abstract)(instant claim 14).
PHILLIPS teaches that “Referring to the drawings, wherein like structures are provided with like reference designations, FIG. 1 depicts one embodiment of a three layer coating design in the form of an interference film 10 having color shifting characteristics. The film 10 is formed on a web 12 of a flexible material such as a polyester material (e.g., polyethylene terephthalate or PET). The film 10 has a first carbon layer 14, a first dielectric layer 16 on carbon layer 14, and a second carbon layer 18 on dielectric layer 16. Each of these layers of film 10 will be discussed in further detail below.” ([0037]). PHILLIPS teaches that: “The first dielectric layer 16 is then formed on carbon layer 14 by a conventional deposition process such as PVD, or by an SiO2 Sol-gel process […].” ([0042]).
PHILLIPS teaches that: “Various forms of carbon can be utilized in the present invention, including but not limited to, graphitic, carbonaceous, and amorphous carbon; vitreous carbon; diamond-like carbon; amorphous hydrogenated carbon such as amorphous hydrogenated diamond-like carbon; carbon compounds; various combinations thereof, and the like. Other forms of carbon with different optical properties resulting from the method of deposition can also be utilized, such as arc evaporated carbon, ion assisted carbon I, ion assisted carbon II, and the like.” [emphasis added]([0034]).
PHILLIPS teaches that: “The first carbon layer 14 of interference film 10 is deposited on web 12 by a conventional deposition process such as electron beam evaporation, sputtering, or by hydrocarbon CVD reactions to form a layer of carbon. The carbon layer 14 is formed to have a suitable physical thickness from about 25 to about 1000 Angstroms (A.), […].” ([0039], claim 3). 25 to 1000 angstroms is 2.5 to 100 nanometers (nm)(instant claim 3).
PHILLIPS includes platelet-shaped pigments ([0057]), including dielectric layers such as titanium dioxide (TiO2), among others ([0046])(instant claim 7, substrate+TiO2).
PHILLIPS discloses a paint including 25 wt-% of the pigment to form a paint ([0069])(instant claim 15).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of PHILLIPS is that PHILLIPS does not expressly teach (1) a specific combination of amorphous carbon (a-C) and nanocrystalline graphite (nc-graphite) including the claimed a-C/nc-graphite ratio range of 80:20 to 90:10 (instant claim 1); (2) the substrate is mica; (3) the relative layer weight (instant claim 8); or (4) a cosmetic formulation/composition including cosmetic ingredients (instant claim 16).
RUEGER teaches that: “The present invention relates to non-metallic interference pigments having metallic properties, in particular flake-form interference pigments, which have a thin high-refractive index layer and an outermost layer which comprises crystalline carbon in the form of graphite and/or graphene on a support, to a process for the preparation of such pigments, and to the use of the pigments prepared in this way.”, as discussed above and incorporated herein by reference.
Further regarding the fluidization velocity, the examiner cites SHERMAN teaching fine powders and method for manufacture including Geldhard class C substrate powders coated with metal, binder or sintering aid (title, abstract, see whole document). SHERMAN teaches that: “The chemical vapor deposition coating operation is accomplished, for example, in a heated reaction zone within the fluidized bed. A gas stream is directed upwardly through the bed at a velocity which is generally at least sufficient to operate the bed in the turbulent fluidization flow regime, and may be in excess of the terminal velocity of the particulates in the gas stream. This velocity is generally high enough so that any agglomerates which be formed tend to be broken up by the turbulence and high particle impact velocities within the bed.” (col. 2, lines 48-57). And that: “As will be understood by those skilled in the art, sampling and statistical measurements may be utilized to determine the proper number of cycles required to achieve the desired average particle coating, and the operating parameters of the system adjusted to achieve the desired degree of coating.” (col. 3, lines 25-30). And further that: “When the first bed is operated in the fast-fluidization regime the velocity of the gas or vapor stream is in excess of the terminal velocity of the particles in that stream. The particles are thus quickly carried through the reaction zone and into the collection zone.” (col. 3, lines 47-51).
PFAFF teaches effect pigments which are based on flake-form substrates having a circular form factor, and are coated with at least one high-refractive-index layer, and the used thereof in cosmetic formulations (title, abstract, see whole document, particularly [0061])(instant claim 14, a cosmetic composition). PFAFF teaches that: “Suitable base substrates for the effect pigments according to the invention are […] phyllosilicates, such as, for example, natural or synthetic mica, […].” ([0010]). PFAFF teaches that: “If the substrate flakes are coated with one, two or more high-refractive-index layers directly on the surface of the substrate, the coating is preferably a layer of TiO2, […].” ([0028]). And that: “The thickness of the high-refractive-index layer is generally 20-500 nm, preferably 30-400 nm and in particular 40-350 nm.” ([0030])(instant claim 1, wherein the thickness of the further coating with at least one metal oxide and/or metal is 100-800 nm, including the a-C/nc-graphite layer(s)). PFAFF teaches effect pigments including substrate flake + TiO2 (anatase) and substrate flake + SnO2 + TiO2 (rutile) ([0036] & [0037]).
PFAFF teaches that: “The effect pigments according to the invention are
generally prepared by suspending the roundish substrate flakes in water and adding one or more hydrolysable metal salts at a pH which is suitable for precipitation and which is selected in such a way that the metal oxide or metal oxide hydrate is deposited directly onto the flakes without significant secondary precipitations occurring.” ([0039]). And that: “In order additionally to increase the light, water and
weather stability, it is frequently advisable to subject the finished effect pigment to post-coating or post-treatment, depending on the area of application.” ([0042]). PFAFF teaches that: “the effect pigments according to the invention are distinguished by a very high hiding power” ([0056]).
PFAFF teaches that: “cosmetic formulations such as lipsticks, nail varnishes, compact powders, shampoos, soaps, loose powders and gels. The concentration of the pigment in the application system to be pigmented is generally between 0.1 and 70% by weight, preferably between 0.1 and 50% by weight and in particular between 0.5 and 10% by weight, based on the total solids content of the system. It is generally dependent on the specific application.” ([0061]). And further that: “The effect pigments according to the invention can also advantageously be employed in decorative and care cosmetics. The use concentration extends from 0.01 % by weight in shampoo to 100% by weight in the case of loose powders.” ([0065])(instant claim 15).
PFAFF teaches that: “The effect pigments according to the invention can
furthermore be mixed with commercially available fillers.” ([0067]). And that: “It is of course also possible for the effect pigments according to the invention to be combined in the formulations with cosmetic raw materials and assistants of any type. These include, inter alia, oils, fats, waxes, film formers, preservatives and assistants which generally determine the applicational properties, such as, for example, thickeners and rheological additives, such as, for example, bentonites, hectorites, silicon dioxides, Ca silicates, gelatines, high-molecular weight carbohydrates and/or surface-active assistants, etc.” ([0068])(instant claim 16).
Specifically regarding instant claim 19, the examiner argues that one of ordinary skill in the art would have not considered electrical conductivity as particularly relevant to cosmetic formulation, and therefore produced pigments having a specific powder resistance in the range of > 1 x 106 ohm*cm (instant claim 19).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a platelet-form color shifting multilayer interference pigment including carbon layers, for use in cosmetics, as taught by PHILLIPS, the carbon layers including a-C and nc-graphite, as suggested by RUEGER, and including the same in a cosmetic composition such as a nail varnish or lip gloss, as suggested by PFAFF, because the carbon layers of REUGER would have produce a high hiding power for a cosmetic of PHILLIPS Furthermore, the process described by RUEGER is identical/substantially identical to the process of the instant claims, including the temperature (from 400 to 900 °C) the fluidized bed fluidization velocity being clearly taught as adjustable from a minimum fluidization velocity to a maximum (fast-fluidization regime the velocity) to remove the particles from the device, as suggested by SHERMAN, and the “Fluidization conditions can be changed based on visual observation of the bed by adjusting the flow rates using flow controllers.” (ARGOITIA - [0059]).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because PHILLIPS teaches interference pigments having dielectric and carbon-containing layers, and RUEGER teaches that their interference pigments having a metallic appearance and very high hiding power, are chemically stable and are safe from a health point of view and can easily be processed in application media such as surface coatings, as well as providing examples of making their pigments. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Response to Arguments:
Applicant's arguments filed 08/25/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the particle size of the pigments (Remarks, p. 7) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that: “Furthermore, [REUGER] teaches (see e.g., Claim 1) that the flake-form non-metallic support has a coating comprising one or more successive layers of a colorless material having a refractive index n of n 2: 1.8. The layer thickness of this coating is limited to 70 nm.” And that: “With regard to color properties, the pigments according to the current application require that the coated particles are further coated with at least one metal oxide and/or metal having a layer thickness in total of 2: 100 nm. From the teachings of US 2017/0321057 it is not obvious that the layer thickness of the further coating combined with the defined carbon layer of a-C/nc-graphite is responsible for the metallic dark blue/green pearlescent effects.” (p. 7, last paragraph through p. 8, 1st paragraph).
In response the examiner argues that REUGER teaches that: “However, the said support particles may also, before the coating with the outermost, crystalline carbon-containing layer, be coated with one or more high-refractive-index layers by means of the conventional coating methods which are generally customary for effect pigments. Both wet chemical and also CVD, PVD or sol/gel processes, all of which are usually used in the coating of effect pigments, can be employed here.” [emphasis added](col. 10, lines 25-35). And that PFAFF teaches such a wet chemical method (PFAFF – [0039]) that results in thicker coating layers, as compared to CVD/PVD deposition methods. Therefore, one of ordinary skill in the art would have recognized that thicker coatings such as 100-800 nm, as now claimed would have been within the broader scope of the teachings/disclosure of REUGER (MPEP §2144.01 & 2123).
Applicant further argues that: “If one skilled in the art were to modify the teachings of [RUGER] to pursue the an embodiment which falls within the scope of the current claims, one would clearly lose/destroy these advantageous properties from [REUGER] and get a product that is different in principle from that taught by [REUGER].” And “Thus, [REUGER] teaches away from the use of thicker layers of at least one metal oxide and/or metal combined with the defined carbon layer of a-C/nc-graphite. One skilled in the art, reading [REUGER], would understand that it is only directed to providing silver pigments with a high electrical conductivity for the use in decorative surfaces with an antistatic finish or floor covering. [REUGER], is not directed to and actually discourages one skilled in the art from modifying its teachings to develop pearlescent pigments with colored metallic shades from dark
blue to dark green which show a very low electrical conductivity and high hiding power and increased flowability compared to pearlescent pigments which are] commercially available.” (p. 8, last paragraph through p. 9, 1st full paragraph).
In response the examiner argues that REUGER clearly teaches non-metallic effects pigment which are conventionally utilized in cosmetic formulations. For example REUGER teaches that: “The object is furthermore achieved by the use of the electrically conductive, non-metallic interference pigments described above in paints, coatings, printing inks, coating compositions, security applications, plastics, ceramic materials, glasses, paper, films, in heat protection, in floor coverings, for laser marking, in dry preparations or pigment preparations.” (col. 4, lines 7-13). And PFAFF teaches that: “The effect pigments according to the invention are compatible with a multiplicity of color systems, preferably from the area of paints, coatings and printing inks. For the preparation of printing inks for, for example, gravure printing, flexographic printing, offset printing, offset overprint varnishing, a multiplicity of binders, in particular water soluble grades, is suitable, […]. The printing inks can be water-based or solvent-based. Furthermore, the effect pigments according to the invention are also suitable for the laser marking of paper and plastics, and for applications in the agricultural sector, for example for greenhouse sheeting, and, for example, for coloring tarpaulins.” ([0060]). And that: “The effect pigments according to the invention can be used for pigmenting surface coatings, printing inks, plastics, agricultural sheeting, seed coatings, food colorings, button pastes, medicament coatings or cosmetic formulations, such as lipsticks, nail varnishes, compact powders, shampoos, soaps, loose powders and gels.” ([0061]). Therefore, one of ordinary skill in the art would have clearly recognized that non-metallic interference pigments described by REUGER could have been utilized in cosmetic compositions such as a lipstick or a nail varnish, and in such an application the electrical conductivity would not have been particularly relevant.
Applicant argues that: “In the current application the claims and the [REUGER] reference are clearly going in different non-overlapping directions. The above MPEP citations all agree that the there is no proper reason for one skilled in the art to arrive at the claims from the teachings of the cited prior art. The above arguments relate to why one skilled in the art would not combine the cited prior art to arrive at the claims of the current application. Further to this discussion, applicants note that Erker reference teaches the use of aluminum pigments in cosmetics which combines well with [REUGER] desire for silver pigments but only magnifies the teaching away from the claims of the current application by the combined teachings of the art. The claims are not directed to silver pigments and indeed the embodiments of the claims will not be silver. They will instead be neutral dark grey, dark blue, dark green or dark colored metallic shades. The claims are not directed to coated particles which show the silver color tone of aluminum pigments.” (p. 9, last two paragraphs).
In response the examiner maintains that the non-metallic effects pigments described by REUGER would have been considered by one of ordinary skill to be applicable to cosmetic compositions/formulations and including those conventionally coated by wet chemical processes as described by PFAFF.
Applicant further argues that: “In addition to the above, applicants note that the carbon layers described by Phillips do not need to be specific (composition or types/forms of carbon) nor do they need to exhibit certain properties; see paragraph (0034) of Phillips. It can be everything from amorphous hydrogenated carbon to diamond-like-carbon which shows a crystallinity of 100% or any combinations thereof. Phillips discloses various carbon layers for one pigment, whereas for the present application there is only one carbon layer per pigment.” (p. 10, 3rd paragraph).
In response the examiner argues that instant claim 1 includes “a pigment comprising coated particles wherein the particles are coated with at least one layer which consists of a mixture of amorphous carbon (a-C) and nanocrystalline graphite (nc-graphite), wherein the at least one layer has a weight ratio of a-C/nc-graphite in the range of 80:20, to 90:10 and wherein said pigment does not contain single crystalline carbon domains […] (instant claim 1). The instantly rejected are directed to a pigment comprising – MPEP §2111.03 – “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” And the rejected claim includes “at least one layer” which clearly is not limited to “only one carbon layer per pigment”.
In response the examiner argues that the instant claims are not limited by color, and the claims of REUGER are also not limited by color. 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).
Conclusion
Claims 1, 3-8 and 14-16 are pending and have been examined on the merits. Claim 19 is rejected under 35 U.S.C. 112(a); claims 1, 4-5, 7-8, 14-16 and 19 are rejected under 35 U.S.C. 112(b); and claims 1, 4-5, 7-8, 14-16 and 19 are rejected under 35 U.S.C. 103. No claims allowed at this time.
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 IVAN A GREENE whose telephone number is (571)270-5868. The examiner can normally be reached on M-F, 8-5 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J. Blanchard can be reached at (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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