DETAILED ACTION
Applicant’s reply, filed 20 August 2025 in response to the non-final Office action mailed 20 May 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-2, 4, 7, 18 and 20-21 are pending, wherein: claims 1-2, 4, 7 and 18 have been amended, claims 20-21 are new, and claims 3, 5-6, 8-17 and 19 have been cancelled by this and/or previous amendment(s).
Claim Objections
Claim 20 is objected to because of the following informalities: i) “An” should be –The--; and ii) “said item” should instead be –the item--. Appropriate correction is required.
Claim 21 is objected to because of the following informalities: “An” should be –The--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 21 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, there is a lack of antecedent basis for “a thermochromic composition” in the as-amended claim. It is not clear if the claim intended to recite -thermochromic compound- or if the claim was intending to recite that the coating or the functional decorative layer further comprises.
Regarding claim 21, the claim appears to be an incomplete sentence.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4, 7, 18 and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nam et al. (JP 2008239882 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 1, 7 and 20-21, Nam teaches anti-bacterial fluororesin compositions suitable for making antibacterial members, including containers, tubes, sheets, films, rods, fibers, coatings and laminates (pg4; pg7), which are applicable to cooking utensils, kitchen appliances, electrical appliances, building materials, etc. (pg7; pg12)(instant item of small-scale home heating equipment). Nam teaches the composition comprises a fluororesin (instant binder; instant fluorocarbon resin), antibacterial fine particles, and optional electrolytes or inorganic salts, organic additives, solvents, and surfactants or emulsifiers, as well as further optional additives including antioxidants, light stabilizers, fluorescent brighteners, colorants, and layered silicon compounds including mica and clay, etc. (pg4-7). Notably Nam teaches a layered laminate structures including A/B, B/A, A/B/A, etc. of layers of a layer (A) comprising the antibacterial composition and a layer (B) a resin layer not comprising the antibacterial fine particles (pg7).
Nam teaches the antibacterial fine particles preferably includes silver halide fine particles (pg5)(instant thermochromic compound). Nam teaches silver halide but does not specifically teach the instant reversible optical and/or colorimetric properties as claimed. It is noted that the instant specification demonstrates that a silver halide compound, and further a composition comprising a binder and a silver halide compound, will have the claimed reversible optical and/or colorimetric properties (instant specification, examples). Furthermore, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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 either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claim 4, Nam teaches the articles as set forth above and further teaches inclusion of different kinds of antibacterial particles, in addition to the primary particles, including gold, copper, cobalt, bismuth, nickel, etc. (pg5) and teaches optional inclusion of light stabilizers, fluorescent brighteners and colorants (pg7).
Regarding claim 18, Nam teaches the articles as set forth above and further teaches the fluororesins include PTFE, TFEPAVE copolymers, TFE/HFP copolymers, TFE/HFP copolymers, etc. (pg4).
Claim Rejections - 35 USC § 103
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nam et al. (JP 2008239882 A; using Clarivate Analytics machine translation for English language citations).
Nam teaches the articles as set forth above and further teaches the antibacterial fine particles include silver halides (see above). Nam does not specifically teach silver bromide or silver iodide. However, one of ordinary skill in the art would have found it obvious to select from one of the four common, commercially available and known forms of silver halide (i.e. silver bromide, silver chloride, silver iodide or silver fluoride) and arrive at the instant invention with a reasonable expectation of success, absent evidence to the contrary.
Claims 1-2, 4, 7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fioratti (US PGPub 2008/0221251) in view of Nam et al. (JP 2008239882 A; using Clarivate Analytics machine translation for English language citations).
Regarding claims 1-2 and 20, Fioratti teaches resin compositions comprising a fluid hardenable resin and at least one toning component suitable for changing its color or shade depending on the type of energy applied, including heat (abstract; [0001]; [0010]). Fioratti teaches the resin component includes thermosetting resins ([0011]) and teaches the toning component is silver bromide or iodide ([0012]). Fioratti further teaches the resin composition is applied to blocks or slabs of building material to partially or fully cover them ([0008]; instant functional decorative layer (claim 1)).
Fioratti further teaches examples of compositions comprising polyester resin, liquid hardener, and silver bromide (example 12, [0039]-[0040]) or silver iodide (example 13, [0041]-[0042]). Fioratti further teaches application of energy is either UV radiation, where the material lacking UV radiation has one PANTONE hue and when subjected to UV radiation has a different PANTONE hue, or heat, where the material at a temperature of about 20°C has one PANTONE hue and the material at a temperature of about 45°C has a different PANTONE hue (examples) (45°C being a temperature falling between the claimed cold temperature range and the claimed hot temperature range).
It is further noted that the instant specification demonstrates that a composition comprising a binder and AgBr or AgI will have the claimed reversible optical and/or colorimetric properties (instant specification, examples). Furthermore it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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 either anticipation or obviousness has been established.”; MPEP 2112.01)).
Fioratti teaches the resin compositions are primarily compositions applicable to building materials ([0001]; [0007]-[0008]) and as such is silent to an item of small-scale home heating equipment (claim 1), including a cooking utensil (claim 20). However, Nam teaches similar resin compositions comprising a resin and silver halide antibacterial fine particles (abstract; pg1; pg5) and teaches such compositions are suitable or a variety of end-uses and applications including cooking utensils, kitchen utensils, electrical appliances, as well as building materials (pg7; pg12). Nam and Fioratti are analogous art and are combinable because they are concerned with the same field of endeavor, namely resin compositions comprising a resin and a silver halide which may be utilized in building material applications. At the time of filing a person having ordinary skill in the art would have found it obvious to utilize the composition of Fioratti in forming an article of a cooking utensil, kitchen utensil or electrical appliance as taught by Nam and would have been motivated to do so as Nam teaches building material applications is an equivalent and suitable end use for such resin compositions as cooking utensils, kitchen utensils and electrical appliances (MPEP 2144.06).
Regarding claim 4, Fioratti in view of Nam render obvious the articles as set forth above. Fioratti further teaches the optional inclusion of filler materials including talc, calcium carbonate, etc. ([0015]) which are materials readable over the instant at least one thermostable pigment.
Regarding claim 7, Fioratti in view of Nam render obvious the articles as set forth above. Fioratti further teaches the thermosetting resin is selected from phenolic resins, amidic resins, epossidic resins, polyurethanic resins, unsaturated polyester resins, silicone resins and alkylic resins ([0011]) which comprise materials readable at least over the instant resin adhesives.
Response to Arguments/Amendments
The objections to claims 2, 7, 10, 13 and 18-19 are withdrawn as a result of Applicant’s filed claim amendments and/or claim cancellations.
The 35 U.S.C. 112(b) rejections of claims 4 and 12 is maintained with respect to claim 4 and withdrawn with respect to now-cancelled claim 12.
The 35 U.S.C. 102(a)(1) rejection of claims 1-2, 4, 7, 9-10, 12-13, 15 and 17 as anticipated by Fioratti (US PGPub 2008/0221251) is withdrawn as a result of Applicant’s filed claim amendments. Note the new rejections as set forth above as necessitated by said amendments.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767