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 August 11, 2025.
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on January 27, 2025 is acknowledged.
The previous 112b rejection of claim 6 is withdrawn due to Applicant’s amendment.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 27, 2025.
Claims 1-11 are currently pending.
This Office Action is a SECOND Nonfinal.
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 § 102
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 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 1-3, 6-7, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dorbath et al. (US 5252522).
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 and step i). 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].
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. teach the suspension is heated is heated to 60°C [col 5, line 40-58], thereby reading on temperature heating.
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 claim 10, Dorbath et al. teach the colored material is formed in Example 2, thereby reading on the instant claim.
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 4-5 and 8-9 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 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, 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 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.
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.
Applicant’s arguments, see page 5-10, filed August 11, 2025, with respect to the rejection(s) of claim(s) 1-11 under 35 U.S.C 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 Dorbath et al. (US 5252522).
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763