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 .
Election/Restrictions
Applicant's election with traverse of claims 1-9, species (1) in the reply filed on 5/25/25 is acknowledged. The traversal is on the ground(s) that unity of invention is present because the method of claim 1 is specifically adapted to produce the product of claim 10 and that practice of claim 1 will inherently result in the product of claim 10, claims 1 & 10 share the same special technical features. This is not found persuasive because claim 1 is rejected as presented below and therefore there is no shared special technical feature that makes a contribution over the prior art.
Applicant elected claims 1-9 and Species (1), the composite (the substrate and coating) does not comprise a carbon-containing black pigment.
Applicant did not identify the claims readable on the elected species in the reply to the Restriction Requirement.
The examiner notes that claims 1, 2, & 6-9 read on the elected of species.
Claims 3-5 & 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/5/25.
Claim Rejections - 35 USC §§ 102 & 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 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.
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.
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.
Claims 1, 2, & 6-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious Bruckner et al. (US Patent 6,689,205; hereafter ‘205).
Claims 1 & 2: ‘205 discloses a method for increasing the IR reflection of a dark/black layer composite comprising a substrate and a coating on the substrate (a black card is the substrate and the coating is transparent to visible; col. 7, lines 60-67), the method comprising forming the coating to comprise at least on flake-form effect pigment (abstract) that has at least one Fe3O4-containing layer on a flake-form SiO2 support (col. 1, lines 60-70, Example 3, col. 6, lines 25-50 & col. 7, lines 60-67).
‘205 teaches the claimed invention but fails to explicitly teach the claimed L* relation and comparison to substrate not coated with the claimed coating. Since the same flake pigment; it is reasonable to presume the same results will be obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
‘205 does not explicitly state that the black card does not comprise carbon black.
However, ‘205 teaches that the black card can optionally further comprise a coating comprising carbon black (col. 4, lines 55-60).
Thus, it is apparent that ‘205 discloses a black card without carbon black and therefore teaches a black layer composite without carbon black.
If, however, it is not inherent that ‘205 teaches that black card does not contain carbon black.
Iron oxide pigment is an art recognized black pigment.
It would have been obvious to one of ordinary skill in the art at the time of filing to prepare the black card using black iron oxide pigment because it is an art recognized black pigment which would have predictably produced a black card substrate as desired.
Claim 6: The flake-form pigments of ‘205 are polydisperse (i.e. at least two flake-form effect pigments that are different from one another and have flake-form supports that are different from one another are present in the coating; col. 5, lines 25-55 & col. 6, lines 25-50).
Claim 7: The infrared reflection of the layer composite is increased in the near infrared (col. 1, lines 40-45, col. 4, lines 60-65, and col. 7, lines 35-67).
‘205 teaches the claimed invention but fails to explicitly teach the claimed IR reflection in the specified wavelength ranges. Since same IR reflective pigments are used; it is reasonable to presume the same results will be obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 8: The flake-form effect pigment that have a flake-form Al2-O3 support can be employed (see col. 2, lines 1-5).
Claim 9: The substrate is a plate made of composite material (a card is a plate form; col. 7, lines 60-67).
Response to Arguments
Applicant's arguments filed 9/29/25 have been fully considered but they are not persuasive.
In regards to applicant’s position that ‘205 discloses a pigment and not a composite as claimed; the Office does not find this argument convincing because ‘205 teaches the use of said pigment in a coating composition on a substrate as discussed above and thus teaches a composite as claimed.
In regards to applicant’s position that ‘205 teaches an essentially transparent interference pigment and not a dark layer composite as claimed; the Office does not find this argument convincing because as noted by applicant ‘205 teaches a essentially transparent pigment which as discussed above reads on the claimed effect pigment and as further discussed above in the rejection teaches applying a coating comprising the claimed effect pigment on a black card comprising a carbon black coating and thus teaches the claimed black composite.
In regards to applicant’s argument that ‘205 does not teach the claimed CIELAB L*a*,b* values, the Office does not find this argument convincing because ‘205 teaches applying the effect pigment on a carbon black coated card which will inherently have the claimed values as presented above because the same materials are used to make the composite. Applicant has not provided any evidence that the composite of ‘205 does not have the claimed color space and properties. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
In regards to applicant’s argument that the Office improperly combined elements from the abstract and examples in the rejection; the Office does not find this argument convincing because Example 3 is directed towards the production of the pigment and Example 6 is directed towards the use of the pigment produced and thus there is no selecting and combining of unrelated teachings (the document in its entirety).
In regards to applicant’s argument that Example 3 does not teach an Fe3O4- layer on a flake form SiO2 but instead Fe2O3 on mica; the Office does not find this argument teaching because ‘205 teaches that Fe2O3 and Fe3O4 are interchangeable and thus teaches Fe3O4 on SiO2 on a flake substrate which in turn reads on Fe3O4 on a SiO2 flake because the coating of SiO2 on flake mica provides the SiO2 in a flake form and thus reads on the claimed pigment.
In regards to applicant’s argument that a dark or black layer composite is taken to mean a layer composite, consisting of a substrate and coating located on the substrate which comprises the claimed color space properties; applicant is advised that ‘205 teaches a black layer composite (a composition comprising the pigment is coated on a black card comprising a carbon black coating) and it is noted that the features upon which applicant relies (i.e., consisting of only the claimed layers) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In regards to applicant’s argument that ‘205 teaches a transparent substrate; applicant is advised that ‘205 teaches coating a composition comprising the transparent flake pigment on a carbon black coated card and the black card of ‘205 is not transparent. Applicant is advised that ‘205 teaches applying the coating composition to both black and white cards.
In regards to applicant’s argument that the Office has not basis for alleging that the L*15 value is inherent in the disclosure of ‘205; the Office does not find this argument convincing because ‘205 teaches applying a visibly transparent coating composition comprising the claimed flake pigment on a carbon black coated card. Carbon black coated cards have the claimed color space value as argued above. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759