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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/3/2026 has been entered.
Response to Amendment
Applicant’s amendments, filed 2/3/2026, 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 Claims 20-42 are pending with claims 38-42 withdrawn from consideration.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 2/3/2026, 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.
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 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) and also discloses the further coating is heat treated layer (see 0278-0282, see e.g. increase temperature), resulting in a heat treated layer within the scope of the broadly drafted claim requirement. CN 635 discloses further the oxide functional coating/heat treated 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 a heat treated layer within the scope of the broadly drafted claim requirement.
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) 26-34 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 coating with functional coating (see e.g. Resin mixing step). JP 336 discloses heat treating (abstract) to form a heat treated layer and thus includes a heat treated layer as claimed. JP 336 discloses further resin is present in the pigment (see e.g. Resin mixing step).
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 23: JP 336 discloses further resin is present in the completed pigment (see e.g. Resin mixing step)
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 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7, 11-17 and 19-26 of copending Application No. 16734188 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims of Copending Application No. 16734188 discloses each and every feature of the instant claims, including the conversion of the laminar particle using a sulfide and depositing a functional coating thereon and as such anticipates or makes obvious the instant claims as drafted. Properties are inherent for the reasons set forth above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims have been allowed but have not issued as a patent, upon issuance this rejection will no longer be provisional.
Conclusion
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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/DAVID P TUROCY/Primary Examiner, Art Unit 1718