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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 30, 2025 has been entered.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed June 18, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Nakatani et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite narrower ranges for a mass ratio of a dispersing agent to a silane coupling agent and a mass ratio of a total amount of a silane coupling agent and a dispersing agent having a basic adsorptive group to titanium dioxide fine particles. However, amended ranges do not fall outside of the ranges disclosed by Nakatani for amounts of the corresponding components.
As noted in the previously mailed Office Action:
Nakatani also teaches various exemplary compositions in accordance with the invention that range in amounts of alkoxysilane from 1 part by mass (Example 1, [0106]) to 10 parts by mass alkoxysilane ([0118], Example 7). These values are construed to be embraced by the ranges disclosed in mass% with respect to solid content of the black paint as described in para. [0013]. As such, a person having ordinary skill in the art would consider all possible values within these ranges as suitable values for use within the technical examples of Nakatani.
Example 2 of Nakatani includes 35 parts by mass titanium dioxide and 1.88 parts by mass of Dispersant B used as a 40 mass% solution in methyl isobutylketone ([0104]) (i.e., 0.752 parts by mass of the dispersing agent) ([0113]). As noted above, Nakatani teaches values for the alkoxysilane component from 1 part by mass (Example 1, [0106]) to 10 parts by mass ([0118], Example 7). These values are construed to be embraced by the ranges disclosed in mass% with respect to solid content of the black paint as described in para. [0013]. As such, a person having ordinary skill in the art would consider all possible values within these ranges as suitable values for use within the technical examples of Nakatani, such as 5 parts by mass of alkoxysilane which yields a mass ratio overlapping with the claimed range (see rejection below for full calculation).
Applicant’s arguments and amendments are considered fully responded to within the response above and rejections below.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Nakatani et al. (JP2012158664, English translation provided for citations, hereinafter referred to as “Nakatani”) as evidenced by Kobayashi et al. (US20210261803, hereinafter referred to as “Kobayashi”).
As to Claim 1: Nakatani teaches a paint comprising a non-black inorganic pigment being titanium dioxide ([0013]), which may be fine-particle titanium dioxide ([0032]), a solvent ([0017]) which may be an organic solvent ([0089]), an alkoxysilane compound ([0013]), which may be 3-methacryloxypropyltrimethoxysilane ([0103]), (which reads on the claimed silane coupling agent according to the instant specification para. [0021]), and a Dispersant B ([0090]), which may be “SOLSPERSE24000” manufactured by Lubrizol Japan Co., Ltd ([0104]), for which Kobayashi provides evidence that “SOLSPERSE24000” has an amine value of 41.6 mgKOH/g ([0032] of Kobayashi), which reads on the claimed dispersing agent having a basic adsorptive group according to the instant specification para. [0021].
Example 2 of Nakatani includes 35 parts by mass titanium dioxide and 1.88 parts by mass of Dispersant B used as a 40 mass% solution in methyl isobutylketone ([0104]) (i.e., 0.752 parts by mass of the dispersing agent) ([0113]). Nakatani also teaches various exemplary compositions in accordance with the invention that contain 1 part by mass alkoxysilane (Example 1, [0106]) and as much as 10 parts by mass alkoxysilane ([0118], Example 7). These values are construed to be embraced by the ranges disclosed in mass% with respect to solid content of the black paint as described in para. [0013]. As such, a person having ordinary skill in the art would consider all possible values within these ranges as suitable values for use within the technical examples of Nakatani, such as 5 parts by mass of alkoxysilane which yields a mass ratio overlapping with the claimed range:
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Furthermore, Example 2 comprising 5 parts by mass of alkoxysilane also meets the claimed limitation of “wherein a mass ratio of the dispersing agent to the silane coupling agent is 15 mass% to 70 mass%.”
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In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the filing to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Nakatani suggests, that the overlapping portion is a useable range for amounts of a fine particle titanium dioxide, alkoxysilane (i.e., silane coupling agent), and dispersing agent having a basic adsorptive group within a particle dispersion amenable for coating composition formed thereof.
As to Claim 3: Nakatani teaches the organic solvent dispersion of claim 1 (supra).
Nakatani further teaches that the titanium dioxide may be coated with alumina (i.e., an oxide of aluminum) ([0035]).
As to Claim 4: Nakatani teaches the organic solvent dispersion of claim 1 (supra).
Nakatani further teaches that the titanium dioxide may have a rutile crystal form ([0027]).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakatani et al. (JP2012158664, English translation provided for citations, hereinafter referred to as “Nakatani”) as evidenced by Kobayashi et al. (US20210261803, hereinafter referred to as “Kobayashi”).
As to Claim 11: Nakatani teaches a paint comprising a non-black inorganic pigment being titanium dioxide ([0013]), which may be fine-particle titanium dioxide ([0032]), a solvent ([0017]) which may be an organic solvent ([0089]), an alkoxysilane compound ([0013]), which may be 3-methacryloxypropyltrimethoxysilane ([0103]), (which reads on the claimed silane coupling agent according to the instant specification para. [0021]), and a Dispersant B ([0090]), which may be “SOLSPERSE24000” manufactured by Lubrizol Japan Co., Ltd ([0104]), for which Kobayashi provides evidence that “SOLSPERSE24000” has an amine value of 41.6 mgKOH/g ([0032] of Kobayashi), which reads on the claimed dispersing agent having a basic adsorptive group according to the instant specification para. [0021].
Example 2 of Nakatani includes 35 parts by mass titanium dioxide and 1.88 parts by mass of Dispersant B used as a 40 mass% solution in methyl isobutylketone ([0104]) (i.e., 0.752 parts by mass of the dispersing agent) ([0113]). Nakatani also teaches various exemplary compositions in accordance with the invention that contain 1 part by mass alkoxysilane (Example 1, [0106]) and as much as 10 parts by mass alkoxysilane ([0118], Example 7). These values are construed to be embraced by the ranges disclosed in mass% with respect to solid content of the black paint as described in para. [0013]. As such, a person having ordinary skill in the art would consider all possible values within these ranges as suitable values for use within the technical examples of Nakatani, such as 5 parts by mass of alkoxysilane which yields a mass ratio overlapping with the claimed range:
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Example 2 comprising 5 parts by mass of alkoxysilane also meets the claimed limitation of “wherein a mass ratio of the dispersing agent to the silane coupling agent is 15 mass% to 70 mass%.”
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In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the filing to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Nakatani suggests, that the overlapping portion is a useable range for amounts of a fine particle titanium dioxide, alkoxysilane (i.e., silane coupling agent), and dispersing agent having a basic adsorptive group within a particle dispersion amenable for coating composition formed thereof.
As to Claim 12: Nakatani teaches the organic solvent dispersion of claim 11 (supra).
Nakatani further teaches that the titanium dioxide may be coated with alumina (i.e., an oxide of aluminum) ([0035]).
As to Claim 13: Nakatani teaches the organic solvent dispersion of claim 11 (supra).
Nakatani further teaches that the titanium dioxide may have a rutile crystal form ([0027]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767