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
In the reply filed 5/5/25, applicant elected Group I, drawn to the method, and Species (1), the composite (the substrate and coating) does not comprise a carbon-containing black pigment.
The Examiner notes that claim 19 recites “wherein the carbon-containing black pigment is present in the substrate and wherein the coating does not comprise a carbon-containing black pigment.”
Therefore, newly added claims 19 & 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 layered composite having a dark or black color comprising a substrate and a coating on the substrate (a black card is the substrate, col. 7, lines 55-67, and with a pigmented clear coating in which the pigment is an essentially transparent pigment, col. 1, lines 40-45), 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; the Examiner notes that Fe3O4 is a black pigment – applicant admitted prior art).
‘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 (applicant admitted prior art).
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.
Thus ‘205 teaches a card coated with an Fe3O4 coating followed by a pigmented clear coating wherein the pigment is Fe3O4 coated interference pigment – i.e. the coating comprises a black pigmented coated pigment which inherently provides a black hue/tint to the underlying layer by the presence of the Fe3O4.
Therefore it is apparent that the black color of the composite of ’205 is at least in part due to the coating comprising the Fe3O4 coated interference pigment applied.
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 4/31/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that the black color of ‘205 is due to the substrate and not the coating as recited; the Office does not find this argument convincing because the limitation does not require that the black color be solely or exclusively due to the coating but instead that the color is due to the coating and thus only requires that the coating must provide at least some black or dark color to the composite and given that the pigment of ‘205 is a Fe3O4 coated pigment it is apparent that the pigment will have a black hue or tint which it will inherently impart to the composite even though the underlying layers are black because it is disposed on top of the underlying layers of the composite.
In regards to applicant’s argument that newly added claims 19 & 20 are allowable over ‘205; applicant is advised that this argument is moot because claims 19 & 20 are withdrawn in light of the election of species made by applicant on 5/5/25 as noted above.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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
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