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 .
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed April 29, 2026.
Claims 12-15 are withdrawn due to previous restriction requirement.
Claims 1-11 are currently pending.
This Office Action is a THIRD Nonfinal rejection.
Claim Analysis
Summary of Claim 1:
A process for preparing a colored material, said process comprising at least the following steps:
i) a step of heating an aqueous suspension comprising:
at least one gold (+III) salt or at least gold nanoparticles, at least one reducing agent, and at least one micron-scale particulate carrier, to form said colored material in suspension, and
ii) a step of recovering said colored material, said colored material being in the form of gold nanoparticles carried by said micron-scale particulate carrier.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Dorbath et al. (US 5252522).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 1, Dorbath et al. disclose in Example 2 a solution comprising a HAuCl4, SnCl2, and glass frit, is heated to 60°C to form an aqueous suspension, thereby reading on the gold salt, reducing agent, micron-scale particulate carrier. Dorbath et al. teach after the reducing is complete the pigment is filtered off and washed with water, thereby reading on step ii) [col 5, line 40-58].
Dorbath et al. do not disclose in Example 2 the exact step of heating an aqueous suspension comprising at least one gold (+III) salt, at least one reducing agent, and at least one micron-scale particulate carrier as recited in step i) of the instant claim.
However, Dorbath et al. broadly teaches the gold solution is added to the aqueous suspension containing the frit and the reducing agent and adjusted to the necessary pH value with stirring at a temperature of 5° to 100° C [col 4, line 17-33]. If the temperature is higher than 25°C (room temperature), then the aqueous suspension is heated. Therefore, it would have been obvious to heat the aqueous suspension comprising at least one gold (+III) salt, at least one reducing agent, and at least one micron-scale particulate carrier as broadly taught by Dorbath et al.
Dorbath et al. is silent on if the glass frit of example 2 is micron-scale or not as recited in the instant claim.
However, Dorbath et al. teach the micron-scale particulate carrier has a D50 of 0.5 to 50 µm [col 3, line 14-24], thereby lying within the definition of micron-scale particles in view of the instant specification (see Specification, page 5, line 7-10). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Dorbath et al.
Regarding claim 2, Dorbath et al. disclose the gold (+III) salt is HAuCl4, (Example 2, [col 5, line 40-58]). thereby reading on the claim.
Regarding claim 3, Dorbath et al. disclose the suspension is heated is heated to 60°C (Example 2, [col 5, line 40-58]), thereby reading on temperature heating.
Regarding claim 4, Dorbath disclose in Example 2 the reducing agent is SnCl2.
Dorbath et al. do not teach in Example 2 the reducing agent is one listed in the instant claim.
However, Dorbath et al. teach the reducing agent may be hydrazines [col 4, line 17-33]. Therefore, it would have been obvious to one of ordinary skill in the art to replace the SnCl2 in Exampel 2 with a hydrazine since Dorbath et al. teach both are suitable reducing agents.
Regarding claim 5, Dorbath et al. is silent on the size of the micron-scale particulate carrier as recited in the instant claim.
However, Dorbath et al. teach the micron-scale particulate carrier has a D50 of 0.5 to 50 µm [col 3, line 14-24], thereby lying within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Dorbath et al.
Regarding claim 6 and 7, Dorbath et al. disclose in Example 2 the microns-scale particulate carrier is a lead borosilicate frit, thereby reading on the inorganic silicate of instant claim 6 and the particles of instant claim 7.
Regarding claims 8 and 9, Dorbath et al. disclose in Example 2, an aqueous solution comprising the SnCl2 reducing agent is formed, thereby reading on step i0-2), then a gold solution is formed thereby reading on step i0-1), then the micron-particulate carrier is added to the aqueous solution comprising the reducing agent and added to the gold solution.
Dorbath et al. and the instant claim differ in that the Dorbath et al. do not teach the exact order as recited in the instant claim.
However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (selection of any order of mixing ingredients is prima facie obvious.).) Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the process steps set forth in Example 2 of Dorbath et al. in the order recited in claim 1.
Regarding claim 10, Dorbath et al. teach the colored material is formed in Example 2, thereby reading on the instant claim.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dorbath et al. (US 5252522) in view of Kimura et al. (JP 2008063525).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 11, Dorbath et al. teach the colored material produced may be used in a composition such as pigmenting glazes, glass colors, printing inks, and lacquers (abstract).
Dorbath et al. is silent on the colored material dispersed in a solvent.
It is noted that Dorbath et al. disclose that the color material is used to form an ink. Kimura et al. teach that a solvent is used to disperse the pigment to form an ink [0047-0051]. Therefore, it would have been obvious to one of ordinary skill in the art to add a solvent of Kimura et al. to the colored material of Dorbath et al. given that Dorbath et al. teach the colored material may be used as an ink composition.
Response to Arguments
Applicant’s arguments, see pages 3-8, filed April 29, 2026, with respect to the rejection(s) of claims 1-3, 6-7, and 10 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 U.S.C. 103.
Applicant states “On the contrary, the process of present claim 1 is carried out in a reaction medium at a pH which is approximately neutral.”
The examiner directs attention to claim 1, where there is no recitation of a pH in the claim. An aqueous suspension is only defined as a suspension with water as a solvent. There is no limitation for a pH within the definition of an aqueous suspension nor in the instant claim. Claims must be given their broadest reasonable interpretation in light of the specification. (See MPEP 2111).
Applicant states “As such, Dorbath does not have a single step of heating an aqueous suspension of at least one gold (+III) salt or at least gold nanoparticles, at least one reducing agent, and at least one micron-scale particulate carrier, to form said colored material in suspension. Rather in Dorbath's arrangement the heating of the suspension includes heating a prior surface activated micron-scale particulate carrier.”
The examiner agrees and directs attention to the new grounds of rejection above, wherein Dorbath et al. broadly teaches the gold solution is added to the aqueous suspension containing the frit and the reducing agent and adjusted to the necessary pH value with stirring at a temperature of 5° to 100° C [col 4, line 17-33]. If the temperature is higher than 25°C (room temperature), then the method is considered to be heated. Therefore, Dorbath et al. broadly teaches heating an aqueous suspension comprising: at least one gold (+III) salt, at least one reducing agent, and at least one micron-scale particulate carrier as recited in the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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