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 .
Status
Applicant’s response dated 04 December 2025 to the previous Office action dated 30 June 2025 is acknowledged. Pursuant to amendments therein, claims 1-2, 6, 8-11, and 14-21 are pending in the application.
A new rejection under 35 U.S.C. 112 is made herein in view of applicant’s claim amendments.
The rejections under 35 U.S.C. 103 made in the previous Office action are withdrawn in view of applicant’s claim amendments, but new (modified) rejections under 35 U.S.C. 103 are made herein in view of applicant’s claim amendments.
Claim Rejections - 35 USC § 112
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.
Claims 1-2, 6, 8-11, and 14-21 are 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.
Claim 1 has been amended to recite that the pigment does not include bismuth oxychloride (BiOCl), but the specification as filed does not contain any such negative limitation with respect to bismuth oxychloride (BiOCl) being included in the pigment., and the specification does not reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention, with respect to describing that the pigment does not include bismuth oxychloride (BiOCl). Although the specification does recite that examples of the filler particles include bismuth oxychloride (specification paragraph [0010]), such recitation refers to the filler particles rather than to the pigment. As noted in MPEP 2173.05(i), silence in the disclosure will not generally suffice to support a negative claim limitation, and any claim containing a negative limitation which does not have a basis in the original disclosure should be rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Claims 2, 6, 8-11, and 14-21 are rejected as depending upon claim 1 without remedying such deficiency.
Response to Arguments
Applicant’s arguments, see remarks pages 5-7, filed 04 December 2025, with respect to the obviousness rejections made in the previous Office action have been fully considered and are persuasive, in that Anselmann et al. (of record) requires BiOCl. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the prior art cited below.
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.
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) 1-2, 6, 8-11, and 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pfaff et al. (US 6,517,628 B1; issued 11 February 2003) in view of Bauer et al. (WO 93/08237 A1; published 29 April 1993; citations herein to English version US 6,630,018 B2).
Pfaff et al. discloses a pigment mixture comprising a component B as well as a component A comprising a mica flake substrate coated with layers of metal oxide (claims 1-2) of TiO2, Fe2O3, ZnO, or ZrO2 (claim 3) wherein the multilayer pigments are based on platelet-shaped matrix consisting of mica synthetic or natural wherein such matrix substrate is coated with metal oxides and wherein the substrate flakes can be coated as in WO 93/08237 (column 1 line 64 to column 2 line 26) wherein the pigment mixture can be used for seed coatings wherein the concentration of the pigment mixture in the system in which it is to be used for pigmenting is generally from about 0.1 to 70% by weight (column 3 lines 50-60) wherein component B comprises organic color pigments (claim 6) wherein the pigment mixture has component A and component B in a weight ratio of 10:1 to 1:10 (claim 7) wherein the pigment mixture may contain a preservative (Examples 4-5) wherein the pigment mixture may contain water (Examples 6-7) wherein the pigment mixture may contain xanthan gum (Example 6) wherein TiO2-coated mica and Fe2O3-coated mica can also be pear luster pigments (column 3 lines 4-35).
Pfaff et al. does not disclose pigment comprising about 1-30% by weight of the total filler particles as claimed.
Bauer et al. discloses coloured and coated platelike pigments (title) wherein the pigments are based on a platelet-shaped matrix and soluble or insoluble colorants (column 3 lines 52-61) wherein suitable inorganic pigment particles are titanium dioxide, zinc oxide, and iron oxide (column 4 lines 22-33) wherein the soluble or insoluble colorant is present in the uncoated substrate in a proportion of preferably 1-30% by weight (column 5 lines 27-29) wherein the matrix with pigment particles can have a metal oxide layer such as titanium dioxide, zirconium dioxide, zinc oxide, and/or iron oxide (column 6 lines 10-17) wherein the metal oxide layer can be colored (column 7 lines 5-10) wherein the percentage by weight of the incorporated pigment particles relative to the weight of the uncoated substrate is typically between 0.5 and 40% and particular preference is given to pigments comprising titanium dioxide (column 7 lines 35-38).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Pfaff et al. and Bauer et al. by making the pigment mixture of Pfaff et al. as discussed above and coating such on seeds as suggested by Pfaff et al., wherein the pigment mixture is made using the coating process of WO 93/08237 (i.e., Bauer et al.), including wherein the percentage by weight of the incorporated pigment particles relative to the weight of the uncoated substrate is between 0.5 and 40%, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because Pfaff et al. specifically suggests using the coating process of WO 93/08237 (i.e., Bauer et al.), and to use an amount of pigment coated on the substrate that is known in the art to be sufficient for coloring as suggested by Bauer et al. Such amount of 0.5-40 wt% overlaps the claimed amount of about 1-30 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Further regarding claim 1, neither Pfaff et al. nor Bauer et al. require bismuth oxychloride, and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above without bismuth oxychloride, with a reasonable expectation of success.
Regarding claim 2, the mica matrix substrate of Pfaff et al. is platelet shaped, and the matrix substrate and pigments of Bauer et al. are platelet shaped as discussed above.
Regarding claims 6 and 20-21, Pfaff et al. discloses that component B of the pigment mixture comprises organic color pigments (i.e., colorants) as discussed above.
Regarding claim 8, the percentage by weight of the incorporated pigment particles relative to the weight of the uncoated substrate in the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above is between 0.5 and 40%. Such amount of 0.5-40 wt% overlaps the claimed amount of about 5-25 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 9, the percentage by weight of the incorporated pigment particles relative to the weight of the uncoated substrate in the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above is between 0.5 and 40%. Such amount of 0.5-40 wt% overlaps the claimed amount of about 5-15 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 10, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above with preservative (i.e., antibiotic) therein, with a reasonable expectation of success, given that Pfaff et al. suggests including preservative therein as discussed above.
Regarding claim 11, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above with water and xanthan gum therein, with a reasonable expectation of success, given that Pfaff et al. suggests including water and xanthan gum therein as discussed above.
Regarding claim 14, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to make the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above wherein the TiO2-coated mica and/or Fe2O3-coated mica therein are pear luster (i.e., pearlescent) pigments, with a reasonable expectation of success, given that Pfaff et al. suggests that TiO2-coated mica and Fe2O3-coated mica can also be pear luster pigments.
Regarding claim 16, as discussed above, the pigment mixture of Pfaff et al. comprises component A and component B wherein component A comprises the mica flake substrate coated with layers of metal oxide and wherein the pigment mixture has component A and component B in a weight ratio of 10:1 to 1:10, and thus it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Pfaff et al. and to make the pigment mixture of Pfaff et al. in view of Bauer et al. as discussed above with component A (i.e., filler particles and pigment) and component B in a weight ratio of 10:1 to 1:10, with a reasonable expectation of success. Such weight ratio is a concentration of about 9-91 wt% filler particles and pigment in the pigment composition, and such range overlaps the claimed range of about 0.1-25 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 17, the pigment mixture of Pfaff et al. in view of Bauer et al. has a concentration of about 9-91 wt% filler particles and pigment in the pigment composition, and such range overlaps the claimed range of about 3-20 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 18, the pigment mixture of Pfaff et al. in view of Bauer et al. has a concentration of about 9-91 wt% filler particles and pigment in the pigment composition, and such range overlaps the claimed range of about 5-15 wt%, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Conclusion
No claims are allowed.
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 MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617