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 . Claims included in the prosecution are claims 1-11, 17 and 20-28.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/07/2026 has been entered.
Applicants' arguments, filed 01/07/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities: “wherein all layers of the layers A’ and B’ of the multilayer material are alternated” should be recited as --- wherein each layer of layer A’ is alternated with each layer of layer B’ ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “when there is more than layer of thickness x’” should be recited as wherein there is more than one layer of thickness x’ ---. Appropriate correction is required.
Claims 20 and 27 are objected to because of the following informalities: “differ” should be recited as --- differing ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “x’” in “x’ of at least one outer layer or up to ± 15%” should be bolded. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11, 17 and 20-28 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 wherein “y’ is the thickness of at least one of an intermediate inner layer αx adjacent to an inner layer or the thickness of an outer layer.”
The claim is indefinite since it is unclear how to tell whether an inner layer within the multilayer material would be an intermediate inner layer αx or an inner layer such that one would know which thickness an inner layer should have.
The claim is also indefinite since it is unclear whether the inner layer that is adjacent to the intermediate inner layer αx the same as inner layer y.
The claim is further indefinite since if y’ is the thickness of an outer layer, it is unclear if the outer layer with thickness y’ is the same as outer layer x with a thickness x’.
Claim 1 recites “α’ = 2 or up to ± 15% of 2. The terms “up to” and “±” are contradictory.
Claim 1 recites “at least one intermediate inner layer αx, when present, has a thickness that is double the thickness x’ of at least one outer layer or up to ± 15% of double the thickness x’ of an outer layer.”
The claim is indefinite since it is unclear when intermediate inner layer αx would be present since the multilayer material will have an inner layer and it is unclear how to tell whether the inner layer is inner layer or intermediate inner layer αx.
The claim is also indefinite since x’ is the thickness of an outer layer. Therefore, it is unclear how x’ is the thickness of at least one outer layer.
The claim is further indefinite since it is unclear how the thickness is up to ± 15% of double the thickness x’ of an outer layer. The terms “up to” and “±” are contradictory.
Claim 1 recites wherein when there is more than one layer of thickness x’ or y’, one layer has a thickness x’ or y’, and each additional layer has a thickness x’ or y’, or up to ± 15% of the thickness x’ or y’, respectively.
The claim is indefinite since if there is more than one layer of thickness x’ or y’, that means that each layer of the more than one layer has a thickness x’ or y’, respectively. As such, it is unclear how there is one layer with thickness x’ or y’ and another layer with a different thickness.
The claim is also indefinite since it is unclear how the thickness is up to ± 15% of the thickness x’ or y’. The terms “up to” and “±” are contradictory.
Claim 1 recites wherein when there is more than one layer of thickness α’x’ one layer has a thickness α’x’ and each additional layer has a thickness α’x’ or up to ± 15% of the thickness α’x’.
The claim is indefinite since it is unclear which layer has a thickness α’x’. The claim recites wherein α’ is an integer or fraction and x’ is the thickness of at least one of an outer layer x or an inner layer y.
The claim is indefinite since if there is more than one layer of thickness α’x’, that means that each layer of the more than one layer has a thickness α’x’. As such, it is unclear how there is one layer with thickness α’x’ and another layer with a different thickness.
The claim is also indefinite since it is unclear how the thickness is up to ± 15% of the thickness α’x’. The terms “up to” and “±” are contradictory.
Claim 1 recites wherein adjacent to each outer layer is an inner layer of thickness y’.
The claim is indefinite since y’ is already the thickness of the intermediate inner layer or an outer layer. Therefore, the scope of what y’ represents is unclear. It is also unclear if the inner layer with thickness y’ is different from the inner layer with thickness x’.
Claims 6-9, 20 and 27 recite “the layers A’”, “the layers B’”, “layer A’” and/or “layer B’.” The claims are indefinite since claim 1 recites at least one layer A’ and at least one layer B’ and it is unclear whether the claim limitation applies to one, some, or all of the at least one layer A’ or at least one layer B’.
Claims 21 and 22 recite a chart. The claims are indefinite because the claims recite wherein there may be between 3 and 17 layers and the chart does not encompass all layers between 3 and 17 such that one would be able to determine the thickness of each of the layers between 3 and 17.
Claims 23 and 25 recite a transmittance-to-wavelength slope of greater than 2.5x10-3 nm-1. The claims are indefinite since it is not clear what parameters are used to measure the various variables within the slope equation such that one would be able to solve the slope equation. The graph in the claims do not help to determine the parameters since the graph does not show any values.
Claim 27 recites “which is free of a substrate.” The claim is indefinite since it is unclear what is free of a substrate.
Claim 28 recites “particularly between 50 and 500 nm.” The scope of the term “particularly” is unclear. It is unclear whether the claimed thickness is optional or is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
1. Claims 1, 3, 4, 6-11, 17, 20-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2014/0261084, Sep. 18, 2014) (hereinafter Jones).
Jones discloses a pigment including a platy substrate coated with an odd number of layers of from 3 to 23 alternating layers of high or low refractive index material, wherein each layer has a refractive index that differs from adjacent layers by at least 0.2; wherein each layer of high refractive index material has a thickness of 10-40 nm; and each layer of low refractive index material has a thickness of 20-80 nm. In an embodiment of the pigment, the high refractive index material comprises at least one of TiO2, strontium titanate, cubic zirconia, or zinc oxide; and the low refractive index material comprises at least one of SiO2, Al2O3, or MgF2 (i.e., inorganic materials/compounds) (¶ [0007]). A “platy substrate” refers to a particle (¶ [0043]). The length of the platy substrate can range from an average of about 5 to about 500 µm (¶ [0044]). The length of the platy substrate may also be referred to as the diameter (¶ [0043]). The pigments can find application in paints, plastics, cosmetics, glass, printing inks, and glazes (abstract).
Jones differ from the instant claims insofar as not disclosing wherein the thickness of each layer obeys the claimed mathematical expression.
However, dependent claim 28 recites wherein the thickness of each layer of the claimed invention is between 5 and 500 nm. Accordingly, a multilayer material wherein the thickness of each layer is between 5 and 500 nm would obey the claimed mathematical expression. Therefore, since Jones discloses wherein the high refractive index material layer has a thickness of 10-40 nm and the low refractive index material has a thickness of 20-80 nm, the claimed invention’s thickness is obvious in view of the teachings from Jones.
In regards to instant claim 24 reciting wherein the particles have a size between 20 and 400 µm, the claimed particle size would have been obvious from Jones et al. disclosing wherein the platy substrate has a diameter of about 5 to about 500 µm, the high refractive index material layer has a thickness of 10-40 nm and the low refractive index material has a thickness of 20-80 nm, and wherein there are 3 to 23 alternating layers of high or low refractive index material.
In regards to instant claims 23 and 25 reciting wherein the material has a transmittance-to-wavelength slope of greater than 2.5x10-3 nm-1, the instant specification discloses in Tables 7 and 9 wherein ML1, a 5-layer material comprising alternating layers of TiO2 and SiO2, wherein the thickness of each layer ranges between 21-42 nm has a transmittance-to-wavelength slope of greater than 2.5x10-3 nm-1. As discussed above, Jones disclose a material that may be 5 layers with alternating layers of TiO2 and SiO2, wherein the thickness of each layer may range between 21-42 nm. As such, the material of Jones would necessarily have the same transmittance-to-wavelength slope of greater than 2.5x10-3 nm-1 as the claimed invention.
2. Claims 2 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2014/0261084, Sep. 18, 2014) (hereinafter Jones) in view of Hancer-Adeuwagun et al. (US 2012/0256333, Oct. 11, 2012) (hereinafter Hancer-Ademuwagun).
The teachings of Jones are discussed above. Jones does not disclose wherein there is no substrate.
However, Hancer-Ademuwagun discloses a process for manufacturing stand-alone multilayer thin films (abstract). The production of multilayer thin films on substrates is well known. For example, multilayer thin films produced on metals, semiconductors, oxides, and the like for protection of an underlying substrate, enhancement of surface properties for a component, aesthetic purposes, etc., are known. However, processes for producing multilayer thin films that are not attached to a substrate, that is stand-alone multilayer thin films, are not well known. In addition, known processes for producing such multilayer thin films require corrosive processes which disturb the optical and color properties of the multilayer thin films. Therefore, a process that allows for the manufacture of stand-alone multilayer thin films would be desirable (¶ [0003]). The stand-alone multilayer thin films have utility for the production of pigments (¶ [0010]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the multilayer pigment of Jones without a substrate since a stand-alone multilayer pigment is desirable in the art as taught by Hancer-Ademuwagun.
3. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2014/0261084, Sep. 18, 2014) (hereinafter Jones) in view of Howell et al. (US 2015/0190332, Jul. 9, 2015) (hereinafter Howell).
The teachings of Jones are discussed above. Jones does not disclose wherein at least one of the layers comprises an organic compound.
However, Howell discloses a cosmetic composition which is capable of forming an immiscible multi-layered composition (abstract). Polystyrene has a refractive index of greater than or equal to about 1.40 (¶ [0078]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. It would have been prima facie obvious to one of ordinary skill in the art to have incorporated polystyrene into at least one of the layers of the pigment of Jones since each layer comprises a material having a refractive index and polystyrene is a known material having a refractive index as taught by Howell.
Response to Arguments
Applicant argues that Jones fails to render obvious the present invention since Jones does not disclose or suggest that layer thicknesses must comply with the claimed mathematical expression.
The Examiner does not find Applicant’s argument to be persuasive. As discussed above, dependent claim 28 recites wherein the thickness of each layer of the claimed invention is between 5 and 500 nm. Accordingly, a multilayer material wherein the thickness of each layer is between 5 and 500 nm would obey the claimed mathematical expression. Therefore, since Jones discloses wherein the high refractive index material layer has a thickness of 10-40 nm and the low refractive index material has a thickness of 20-80 nm, the claimed invention’s thickness is obvious in view of the teachings from Jones.
Furthermore, the composition of Jones meets the claimed thickness since Applicant discloses an exemplary embodiment in Table 7 of the specification, wherein layer 1 has a thickness of 21 nm, layer 2 has a thickness of 37 nm, layer 3 has a thickness of 32 nm, layer 4 has a thickness of 37 nm and layer 5 has a thickness of 21 nm. Jones discloses a composition comprising 3 to 23 layers, wherein each layer has a thickness of 10-40 nm or 20-80 nm. Thus, the claimed thickness overlaps with the thickness disclosed by Jones. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. MPEP 2144.05 A. As such, Applicant’s argument is unpersuasive.
Applicant argues that that the present invention, as mentioned in the specification, for instance on page 21, makes it possible to model the thickness of the layers to optimize the optical properties.
The Examiner does not find Applicant’s argument to be persuasive. Mere conclusory statements in the specification, unsupported by objective evidence, are entitled to little weight when the PTO questions the efficacy of those statements. In re Greenfield, 571 F.2d 1185, 197 U.S.P.Q. 227, 229 (C.C.P.A. 1978). Applicant has not shown with objective evidence wherein the claimed thickness parameters affect optical properties. As such, Applicant’s argument appears to merely be an allegation and is unpersuasive.
Applicant argues that Jones discloses discusses at length the “platy substrate” and refers to the “platy substrate” about 141 times therein and uses the “platy substrate” in all embodiments. Accordingly, eliminating the substrate from Jones would be contrary to the disclosure and is nonobvious.
The Examiner does not find Applicant’s argument to be persuasive. Jones disclosing “platy substrate” multiple times and in all embodiments does not mean that the “platy substrate” of Jones cannot be modified without a “platy substrate.” Especially since Jones does not disclose wherein the platy substrate should not be removed, it was known in the art as taught by Hancer-Adeuwagun that a multilayer pigment can be formulated without a substrate and Hancer-Adeuwagun discloses how, and Hancer-Adeuwagun discloses wherein stand-alone multilayer thin films are desirable. Applicant has not shown wherein removing the platy substrate of Jones would make the pigment of Jones nonfunctional or ineffective. As such, Applicant’s argument is unpersuasive.
Applicant argues that Howell fails to cue the above discussed deficiencies of Jones.
The Examiner submits that arguments regarding Jones have been addressed above and are unpersuasive. Therefore, the rejection with Howell is maintained.
Conclusion
Claims 1-11, 17 and 20-28 are rejected.
Claims 14-16, 18 and 19 have been withdrawn.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614