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 .
Response to Amendment
Applicant’s amendments, filed 5/21/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to the claims. Claims 20-42 are pending with claims 38-42 withdrawn from consideration.
Response to Arguments
Applicant’s arguments, filed 5/21/2026, have been fully considered and reviewed by the examiner. The examiner notes the arguments are directed to newly added claim requirements that are specifically addressed below and therefore these arguments are moot.
Applicant’s argument related to the WO 467 is noted but not persuasive as initially, the prior art discloses the copper oxide is light absorbing, as a property and thus meets the instant claim requirement. Applicant’s arguments regarding “light reflectance is from 0.4 to 20 microns” is noted but not commensurate in scope with the claim as drafted.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies 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).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/21/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 20-25, 36-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 103547635 A, hereinafter CN 635 as evidenced by Applicant’s Specification and KR 20010098462A, hereinafter KR 462 or WO2019017467, hereinafter WO 467.
Claim 20: CN 635 discloses a pigment comprising chemically converting a first material of a particle (e.g. copper particle, which can reasonably be considered a lamellar as claimed see 0128); and converting the particles with a converted portion (i.e. a coating of the copper particles with an oxide layer, 0128) with a compound of the first material (copper is oxidized to form a layer, 0128) and maintaining the unconverted portion (copper flake, thin layer of copper oxide, 0128-130). CN 635 discloses further coating oxide layer/plastic layer/heat treated layer with as oxide functional coating (see 00130-00133, 0083), including cerium oxide (ceria) or titanium dioxide (titania), which as evidenced by the Applicant’s disclosure is a UV absorber (“ the functional coating 710 can be a UV absorber chosen from titania, zinc oxide, ceria”) and also discloses the further coating is plastic layer with UV protection, resulting in a functional layer within the scope of the broadly drafted claim requirement. CN 635 also discloses the plastic layer includes diethylene glycol (0074, “ethoxy diethylene glycol acrylate”) and thus meets the organic compound requirements as broadly claimed.
CN 635 discloses further the oxide functional coating/plastic layer is present in the completed pigment (entire reference 00130-00133, abstract).
CN 635 discloses a copper particle and copper is oxidized to form a layer, as noted above, thus a chemical compound of the first material as claimed. As for the requirement of unconverted portion provides light reflectance in a spectral range and the converted portion absorbs light in a selected region of the spectral range, the examiner cites here KR 462, which illustrates that copper reflects light in a spectral range and copper oxide absorbs light in the spectral range (stating “reflects light from the underlying copper layer. As long as copper oxide is formed thereon, the copper oxide absorbs light. The thicker the copper oxide layer, the greater the absorption and the lower the reflectance measured.”) Additionally, WO 467 provides evidence that the copper and copper oxide layer thereon have the claimed properties (stating “light absorbing layer containing a specific amount of copper oxide on the surface of copper particles (primary particles) constituting copper powder to lower the reflectance of copper particles”, “Commonly used copper powder has a reflectance of about 70% to 80% at a wavelength of 1070 nm. In the present invention, a light absorption layer containing copper oxide is provided on the surface of copper particles so that the reflectance is 60% or less”, “copper particles, as described above, have a high reflectance of 70 to 80% at a wavelength of 1070 nm with pure copper as it is, but by providing a light absorbing layer containing copper oxide on the surface of the copper particles, light absorption is increased, The reflectance at 1070 nm can be reduced to 60% or less.”).
Therefore, as the prior art discloses a copper particle with a copper oxide layer thereon, the prior art meets the requirements unconverted portion provides light reflectance in a spectral range and the converted portion absorbs light in a selected region of the spectral range as copper has a light reflectance in a spectral range, as evidenced by KR 462 or WO 467, and copper oxide has a light absorption as claimed, also as evidenced by KR 462 or WO 467. Each of KR 462 and WO 467 individually discloses the light absorption and light reflection properties of copper oxide and copper are an inherent feature/property of the copper and copper oxide and thus by disclosing copper oxide and copper, the prior are will necessarily meet the claim requirement. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). See MPEP 2112.
Claim 21: CN 635 discloses copper substrate (00128).
Claim 22: CN 635 discloses dimensions with an aspect ratio that reads on the claim as drafted (diameter and thickness, 00152).
Claim 23: CN 635 discloses the plastic layer includes diethylene glycol (0074, “ethoxy diethylene glycol acrylate”) and thus meets the organic compound requirements as claimed.
Claim 24: CN 635 discloses e.g. sol gel (00242)
Claim 25: CN 635 discloses vapor phase (00128).
Claim 36: CN 635 discloses what can reasonably be considered fluidized bed (00128).
Claim 37: CN 635 discloses oxidation through heating (00128).
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.
Claim(s) 20-25, 36-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 635 taken collectively with US Patent Application Publication 20040226480, hereinafter USPP 480.
CN 635 discloses all that is taught above and discloses pigments and while the examiner maintains the position as set forth above, the examiner cites here USPP 480, also in the art of copper pigments carrying an oxide coating (0010) or organic polymers and discloses orientation aids to bind to the pigment surface to “ easily wetted by the binding agent or solvent of the paint or lacquer and which can be well oriented in the liquid film of lacquer and which on the other hand involve an intimate bond with the surrounding binding agent matrix” (0007). USPP 480 discloses using aminopropyl triethoxy silane (0016) and therefore using this agent to bind to the pigment surface as a functional coating would have been obvious to have reaped the benefits of a copper particle carrying an oxide coating that has the desired properties (see 0007).
Claim(s) 20-22, 24-34, 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015129336, hereinafter JP 336 taken with JP 059748A.
Claim 20: JP 336 discloses a pigment comprising chemically converting a first material of a particle (e.g. copper particle, which can reasonably be considered a lamellar as claimed see Figure 1 and accompanying text); and converting the particles with a converted portion (i.e. a coating of the copper particles with sulfide layer, Abstract, description of embodiments) with a compound of the first material (sulfurizing a surface of copper powder . . . forming a copper sulfide coating film 2 on the surface of copper powder, see abstract) and maintaining the unconverted portion (Figure 1 and accompanying text, abstract). JP 336 discloses further resin is present in the completed pigment (see e.g. Resin mixing step) and discloses may contain a solvent, a plasticizer, a lubricant, a dispersant, an antistatic agent, where a dispersant can reasonably read on steric stabilizer as broadly drafted.
JP 336 discloses liquid sulfurization as discussed above. Additionally, JP 748 which discloses sulfiding a metal includes subject the metal to liquid chemical, such as a inorganic sulfide (such as potassium sulfide) or an organic sulfide (such as a mercaptobenzothiazole), see 0002 and 0005, and discloses sulfiding a metal includes chemical conversion of the metal using a liquid chemical bath including the sulfiding agent, water, solvent (see 0002, “aqueous solution”), an oxidizing agent, such as water. JP 748 discloses various components that reads on the broadly drafted and undefined “inhibitor” or “surface modifier” as claimed, see JP 748 disclosing “combination of two or more” at 0005.
Therefore, taking the level of one of ordinary skill in the art at the time of the invention, it would have been obvious to have modified JP 336 to use the known and suitable sulfurization method as set forth by JP 748 because JP 336 discloses treating metal with a sulfurization treatment to convert the metal to a metal sulfide and JP 748 discloses a liquid bath is a known method for such a sulfurization treatment.
JP 336 discloses sulfurizing a surface of copper powder . . . forming a copper sulfide coating film 2 on the surface of copper powder, see abstract, as noted above, thus a chemical compound of the first material as claimed. As for the requirement of unconverted portion provides light reflectance in a spectral range and the converted portion absorbs light in a selected region of the spectral range, the examiner notes the prior art discloses a copper powder with a copper sulfide film thereon. The properties of the materials, i.e. whether they are light absorbing on a spectral range or light reflecting, are a physical property of that material and as evidenced by the applicant’s specification, this will meet the claimed properties, see Example 1, and therefore as the prior art discloses a copper particle with a copper sulfide layer thereon, the prior art meets the requirements unconverted portion provides light reflectance in a spectral range and the converted portion absorbs light in a selected region of the spectral range as copper has a light reflectance in a spectral range, as evidenced by Example 1 of the applicant’s specification, and copper sulfide has a light absorption as claimed. Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
Claim 21: JP 336 discloses copper substrate (abstract).
Claim 22: JP 336 discloses dimensions with an aspect ratio that reads on the claim as drafted (see e.g. abstract relative to the particle, Figure 3 and accompanying text).
Claim 24: JP 336 discloses e.g. incorporation into polymer (see e.g. Resin mixing step)
Claim 25: JP 336 discloses vapor phase (see Copper sulfide coating forming step S4, “contacting the copper powder with a gas such as hydrogen sulfide”).
Claim 26, 28-29: JP 336 discloses a chemical bath including at least one inorganic compound, such as comprising sulfide (see Copper sulfide coating forming step S4 , “the copper powder is immersed in a solution of ammonium sulfide, potassium sulfide, or sodium sulfide”)
Claims 30-31: These are optional, see claim 28, and thus are met by JP 336.
Claim 32 and 33: This claim is addressed above regarding bath composition.
Claim 34: JP 336 discloses various components that reads on the broadly drafted and undefined “inhibitor” or “surface modifier” as claimed (see e.g. see Copper sulfide coating forming step S4 , “the copper powder is immersed in a solution of ammonium sulfide, potassium sulfide, or sodium sulfide”).
Claim 36: JP 336 discloses vapor state and such can reasonably be considered a fluidized bed (see Copper sulfide coating forming step S4 , “contacting the copper powder with a gas such as hydrogen sulfide”).
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 635 or JP 336 with JP 748 each taken with US Patent 4788080 by Hojo et al.
CN 635 or JP 336 with JP 748 each disclose all that is taught above and discloses “a reactant” is in solid state (i.e. particles); however, fails to explicitly disclose a tumbling bed of pre-flakes as claimed. The examiner cites here Hojo which specifically discloses a known method for coating a particle includes a tumbling bed of pre-flakes (see 1 and accompanying text). As such, taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have utilized the known and suitable technique for coating particles as taught by Hojo, that is using the known tumbling bed of flakes, with a reasonable expectation of predictable results. Here the disclosure of Hojo reasonably reads on the claims as broadly drafted as the solid state is defined as a tumbling bed of pre-flake and such is taught by Hojo to be used for particle coating.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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