RESPONSE TO AMENDMENT
WITHDRAWN REJECTIONS
The 35 U.S.C. §103 rejection of the claims 5 and 15-16 made of record in the office action mailed on have been withdrawn due to Applicant’s amendment in the response filed 12/12/2025.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-3, 7-10 and 13-14are rejected under 35 U.S.C. 103 as being unpatentable over in view of Pschierer (U.S. App. Pub. No. 2015/0257990) in view of ‘261(U.S. App. Pub. No. 2019/0314261), Shimizu et al. (JP 2001-089698) and Galla et al. (U.S. App. Pub. No. 2017/0279202)
Regarding claim 1, Pschierer discloses glitters having a coating of metal, such as aluminum on the surface of a foil. (Abstract). Pschierer discloses that the aluminum layer can be coated onto the surface of the foil via vapor deposition, sprayed application of an aerosol, painting or other ways. (par. [0023]).
Pschierer does not disclose that the foil comprises cellulose.
‘261 discloses a glitter comprising a film which comprises cellulose acetate that is metallized with a layer of aluminum. (Abstract and par. [0022]). ‘261 discloses that cellulose materials and regenerated cellulose as materials usable for the substrate (i.e. foil) that is metallized. (par. [0030]) ‘261 discloses improvements of the lustre and surface coverage when cellulose acetate films are selected. (par. [0026]).
It would have been obvious to one of ordinary skill in the art to use cellulose acetate as the glitter foil material disclosed in Pschierer.
One of ordinary skill in the art would have found it obvious to select cellulose acetate in view of the advantages disclosed in ‘261 regarding lustre and coverage. Furthermore, the selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07. Since ‘261 discloses that cellulose acetate films are known to be useful for forming glitter foil materials, one of ordinary skill in the art would have a reasonable expectation of success in using cellulose acetate as the component of the foil in Pschierer.
Pschierer does not explicitly disclose that metal coating comprises aluminum pigments.
Shimizu et al. teaches a coating/paint composition for forming a metallic appearance on a substrate. (Abstract and par. [0001]-[0002]). Shimizu et al. teaches that the coating composition includes metallic pigments, including aluminum pigments, having particular shapes and diameters for obtaining a better metallic feeling and tone to the coating. (par. [0002]). The coating composition of Shimizu et al. also advantageously has high chemical resistance, adhesion, weather resistance and good appearance. (par. [0008]).
It would have been obvious to one of ordinary skill in the art to form the metallic layer disclosed in Pschierer using a coating/paint composition including aluminum pigments.
One of ordinary skill in the art would have found it obvious to use a composition including aluminum pigments for forming the metallic layer in Pschierer in view of the teachings of the primary reference that a generally known process may be used for forming the metallic layer including paint compositions. (par. [0028]). A paint composition as disclosed in Shimizu et al. would therefore have been suitable for the intended purpose of forming a reflective/metallic appearing coating on the foil for use as a glitter material. Pschierer’s disclosure of several processes for forming the metallic layer including vapor deposition, sprayed application of an aerosol, painting suggests that one of ordinary skill in the art could have substituted any of the techniques with a reasonable expectation of success in obtaining a metallic layer suitable for use in a glitter composition. It is prima facie obvious to substitute a known element or process for another to obtain predictable results. (MPEP 2143).
Furthermore, in view of the advantageous properties disclosed in Shimizu et al. regarding the metallic appearing layer, one of ordinary skill in the art would have been motivated to use the coating composition including the aluminum pigment to obtain a glitter material having improved chemical resistance, interlayer adhesion, weather resistance and appearance, as discussed in the secondary reference.
Pschierer does not specify the amount of aluminum pigment based on the weight of the foil.
Galla et al. discloses that commercially available pigments include plastic substrates and a thin metal sheet of aluminum having a thickness of about 10 to 100 nanometers (i.e. 0.1 micrometers) wherein the metal may comprise less than 1% of the glitter by volume. (par. [0064]).
It would have been obvious to one of ordinary skill in the art to optimize the relative weight and thickness of the aluminum relative to the glitter material.
One of ordinary skill in the art would have found it obvious to optimize the relative thickness and weight of the aluminum layer based on the teachings of Galla et al. of what the composition typical commercially used glitters due to the reasonable expectation of commercial success. Furthermore, controlling the content of aluminum (i.e. thickness and % wt) would allow improvement in the cost-effectiveness of the producing the pigment while maintaining the reflective/shiny effect of the metal layer.
With respect to the limitation “the aluminum pigments are visible in a form of dot-like regions”, the presence of aluminum pigments as the result of the combination of Pschierer, ‘261 and Shimizu et al., on the transparent foil disclosed in Pschierer would result in visible dot-like regions, as presently claimed. Shimizu et al. explicitly refers to the aluminum as “pigments” which are particles and therefore are “dot-like regions” as claimed. The limitation “visible” is interpreted as being able to be seen either through the naked eye or via magnification. Since aluminum has a color that is different from the foil made of cellulose, the difference would be visible due to the difference in the two materials especially under magnification.
Furthermore, Shimizu et al. explicitly teaches uses aluminum pigments in a base paint material to form a metallic layer on the surface substrates having selected shapes or diameters for producing the metallic effect (Abstract and page 6, bottom paragraph to page 7, first three paragraphs) which would therefore be visible as “dot like regions” as claimed either in the paint or the surface of the foil, both of which would be sufficient to meet the present claim limitations.
Regarding claims 2-3, ‘261 disclose that the foil consists of cellulose (more than 99 wt%) (par. [0017]).
Regarding claims 7-10, the glitter material in Pschierer is disclosed to be used in cosmetics, varnishes, pastes etc… (par. [0027]) which would meet the limitations of a “cosmetic”, “adhesive” and “modeling and/or moulding” composition as claimed since varnishes are adhesive and pastes would be moldable.
Regarding claim 13, the combination of Pschierer, ‘261 and Shimizu et al. would have resulted in a metallic coating including aluminum pigments. (see rejection of claim 1, above.)
Regarding claim 14, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Furthermore, Pschierer discloses forming a metallic coating using alternative coating processes that are not vacuum metallization. (par. [0028]).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 12/12/2025 regarding the rejections of claims 5 and 15-16, made of record in the previous office action have been carefully considered but are deemed unpersuasive.
Applicant argues that the limitation of “dot like regions” as presently claimed would no necessarily be inherent in the combination of the prior art references as presently claimed. The Examiner disagrees.
The limitation “visible” must be interpreted using the broadest reasonable interpretation standard (see MPEP 2111) which can be fairly defined as any object that might be seen by the eye either with or without magnification. Furthermore, the limitation “the aluminum pigments are visible in a form of dot-like regions” does not necessarily require the pigments that are present on the coating as claimed to be visible but may include the aluminum pigments prior to be applied on the surface of the foil. So long as the aluminum pigment is at some point, either before coating or after, visible in a dot-like region, the claim limitation is satisfied. Given that aluminum “pigment” as disclosed in the claim rejection over Pschierer, ’261, Shimizu and Gala implies a particle like feature, these would inherently form “dot-like regions” either on or off the foil. Furthermore, under the coated foil would particularly reveal them to be “dot-like regions” due to the difference in contrast between the shiny, metallic aluminum pigments and the relatively transparent foil substrate.
Applicant states that Shimizu’s process of coating is not suitable for coating the cellulose substrates of Pschierer et al. but has not provided evidence to support their conclusion. Arguments presented by applicant cannot take the place of evidence in the record. MPEP 2145 I.
Applicant argues that the disclosure of less than 1% by volume as taught by Gala et al. in the claim rejection above does not necessarily overlap with the claimed range of 0.01-10 wt% as claimed.
However, the Examiner did not rely on inherency to make the prima facie case of obviousness but rather on optimizing fact that one of ordinary skill in the art would have found it obvious to optimize the amount of aluminum relative to the foil, going lower than 1% by volume if needed, in order to obtain the preferred thickness, reflectiveness and cost-effectiveness based on the teaching of the prior art reference. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Applicant has therefore not persuasively argued against the grounds of rejection as set forth above and the claims remain unpatentable over the cited prior art.
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 ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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, Alicia Chevalier can be reached at 5712721490. 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.
/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/08/2026