DETAILED ACTION
An Office Action was mailed 07/28/2025.
Applicant filed a response on 11/14/2025, amended claims 1, 17 and 20, and cancelled claim 18.
Claims 1-17 and 19-20 are pending. Claims 1-16 and 20 are rejected. Claims 17 and 19 are withdrawn from consideration.
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 .
Information Disclosure Statement
Examiner acknowledges the size fee assertion on page 3 of the information disclosure statement filed 07/17/2025. The IDS has been considered.
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.
Claims 1, 10-14, 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delst et al, US 10,597,538 B2 (Delst).
Regarding claims 1, 10-14 and 16, Delst discloses all-dielectric pigment flakes having one or more dielectric layers (Delst; col. 2, lines 27-32; col. 3, lines 49-50; and col. 5, lines 37-40).
The dielectric material making up the dielectric layers may be a high-index dielectric material having a refractive index greater than about 1.65, or a low-index dielectric material having a refractive index less than about 1.65 (Delst; col. 3, lines 51-59). High-index dielectric materials include titanium dioxide, and low-index dielectric materials include silicon dioxide (Delst; col. 3, lines 60-62 and col. 4, lines, lines 16-17).
One or more dielectric layers are deposited onto a substrate using a deposition technique such as physical vapor deposition (PVD). The multi-layer coating is then stripped from the substrate and ground or milled to form all-dielectric pigment flakes (Delst; col. 6, lines 18-28).
In Example 1, all-dielectric pigment flakes 100 as illustrated in Fig 1 were produced (Delst; col. 8, lines 39-42). The diffractive pigment flake 100 of Fig. 1 comprises a seven layer stack of alternating layers, i.e., four H layers 110 and three L layers 120. The four H layers 110 are composed of TiO2 and the three L layers 120 are composed of SiO2 (Delst; col. 8, lines 27-32 and Fig. 1).
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The seven dielectric layers were sequentially deposited onto a substrate by vacuum evaporation (i.e., physical vapor deposition). The seven layer coating was stripped from the substrate and ultrasonically agitated to yield all-dielectric pigment flakes having an average size of 25µm (i.e., a radius of 25µm/2 = 12.5µm) (Delst; col. 8, lines 51-62).
Delst therefore anticipates:
a dielectric pigment flake comprising a plurality of alternating layers of dielectric materials including a first layer formed of a first dielectric material having a first refractive index in the visible spectrum range (i.e., SiO2) and a second layer disposed adjacent to the first dielectric layer and formed of a second dielectric material having a second refractive index in the visible spectrum range that is different than the first refractive index (i.e., TiO2), wherein the dielectric pigment is formed by physical vapor deposition (claim 1);
wherein the flake has a radius of 12.5µm, i.e., from about 10 to about 25µm (claim 10);
wherein the dielectric materials are selected from the group of semi-conductor materials, i.e., TiO2 and SiO2 (claim 11);
wherein the dielectric materials are selected from the group of metal oxides, i.e., TiO2 and SiO2 (claim 12);
wherein the first dielectric material includes SiO2 and the second dielectric material includes TiO2 (claim 13);
wherein the plurality of alternating layers of dielectric materials are alternating layers of SiO2 and TiO2 (claim 14); and
wherein the plurality of alternating layers of dielectric materials is seven, i.e., from about 5 to about 15 layers (claim 16).
Regarding claim 20, Delst discloses all-dielectric pigment flakes having one or more dielectric layers (Delst; col. 2, lines 27-32; col. 3, lines 49-50; and col. 5, lines 37-40). The dielectric material making up the dielectric layers may be a high-index dielectric material having a refractive index greater than about 1.65, or a low-index dielectric material having a refractive index less than about 1.65 (Delst; col. 3, lines 51-59). One or more dielectric layers are deposited onto a substrate using a deposition technique such as physical vapor deposition (PVD), the multi-layer coating is stripped from the substrates and ground or milled to form all-dielectric pigment flakes (Delst; col. 6, lines 18-28).
In Example 1, all-dielectric pigment flakes 100 as illustrated in Fig 1 were produced (Delst; col. 8, lines 39-42). The diffractive pigment flake 100 of Fig. 1 comprises a seven layer stack of alternating layers, i.e., four H layers 110 and three L layers 120. The four H layers 110 are composed of TiO2 and the three L layers 120 are composed of SiO2 (Delst; col. 8, lines 27-32 and Fig. 1).
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The seven dielectric layers were sequentially deposited onto a substrate by vacuum evaporation (i.e., physical vapor deposition). (Delst; col. 8, lines 51-62).
The all-dielectric pigment flakes were dispersed in a paint vehicle, i.e., a coating comprising one or more resins (Delst; col. 8, lines 64-66).
Delst further discloses pigment mediums comprising a binder or resin, and optional carriers or solvents (Delst; col. 7, lines 42-56).
Although Delst does not explicitly disclose that the dielectric pigment flakes have “a metallic appearance,” the pigment flakes of Delst comprise the claimed alternating layers of SiO2 and TiO2 produced via a PVD as claimed.
Given that the layered dielectric pigment flake of Delst is substantially identical to the dielectric pigment as used in the present invention, as set forth above, it is clear that the layered flake of Delst would inherently have a metallic appearance as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, while there is no disclosure that the layered dielectric pigment flake of Delst is “for a radar compatible coating,” or that the coating of Delst is “radar compatible” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for a radar compatible coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claims 2-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated Delst as applied to claim 1 above, and further taken in view of evidence by Shiono et al, US 2025/0199219 A1 (Shiono).
Regarding claims 2-4, Delst is relied upon as disclosing the limitations of claim 1 as discussed above, wherein pigment flakes have alternating layers of TiO2 and SiO2. As is evidenced by Shiono, TiO2 has a refractive index of 2.467 at 500nm, which falls within the claimed second refractive index of from about 2.0 to 3.0 (claim 2), and from about 2.25 to about 2.75 (claim 3), at a wavelength of 500nm, i.e., from about 400 to about 700nm (claim 4) (Shiono; [0143]).
SiO2 has a refractive index of 1.483 at 500nm, which falls within the claimed first refractive index of from about 1.25 to 2.0 (claim 2), and from about 1.25 to about 1.75 (claim 3), at a wavelength of 500nm, i.e., from about 400 to about 700nm (claim 4) (Shiono; [0143]).
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, 11-14, 16 and 20 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 over Yasuda et al, “Structural colors from TiO2/SiO2 multilayer flakes prepared by sol-gel process” (Yasuda).
Regarding claims 1, 11-14 and 16, Yasuda discloses the preparation of TiO2/SiO2 multilayer flakes which exhibited structural colors, and could be used in paint films. The coreless TiO2/SiO2 flakes were formed by detaching multilayer films from their substrates. (Yasuda; Abstract). See also Yasuda; “2. Experimental,” para 2 on pages 1122-1123 wherein Yasuda discloses spin coating TiO2/SiO2 layers onto a substrate, followed by detaching from the substrate.
The sol-gel coating of TiO2 and SiO2 were used as high and low refractive index layers for interference effects (Yasuda; page 1122, “2. Experimental,” 1st sentence).
In Fig. 1, Yasuda exemplifies a seven-layer flake with alternating layers of TiO2 and SiO2 (Yasuda; page 1123, col. 1, Fig 1):
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Yasuda therefore anticipates:
a pigment flake comprising a plurality of alternating layers of dielectric materials including a first layer formed of a first dielectric material having a first refractive index in the visible spectrum range (i.e., SiO2) and a second layer disposed adjacent to the first dielectric layer and formed of a second dielectric material having a second refractive index in the visible spectrum range that is different than the first refractive index (i.e., TiO2) (claim 1);
wherein the dielectric materials are selected from the group of semi-conductor materials, i.e., TiO2 and SiO2 (claim 11);
wherein the dielectric materials are selected from the group of metal oxides, i.e., TiO2 and SiO2 (claim 12);
wherein the first dielectric material includes SiO2 and the second dielectric material includes TiO2 (claim 13);
wherein the plurality of alternating layers of dielectric materials are alternating layers of SiO2 and TiO2 (claim 14); and
wherein the plurality of alternating layers of dielectric materials is from about 5 to about 15 layers, i.e., seven layers (claim 16).
Although Yasuda does not explicitly disclose a “dielectric pigment having a metallic appearance,” the pigment flakes of Yasuda comprise the claimed alternating layers of SiO2 and TiO2. Further, the instant application at [0034-0035] teaches forming the claimed pigment flakes by forming a plurality of alternating layers of dielectric material over a substrate, followed by removing the substrate from the plurality of alternating layers of dielectric materials to form the dielectric pigment flakes.
Given that the layered flake of Yasuda is substantially identical to the dielectric pigment as used in the present invention, as set forth above, it is clear that the layered flake of Yasuda would inherently be dielectric and have a metallic appearance as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, while there is no disclosure that the layered flake of Yasuda is “for a radar compatible coating” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for a radar compatible coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Although Yasuda does not explicitly teach “wherein the dielectric pigment is formed by physical vapor deposition (PVD)” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Yasuda meets the requirements of the claimed product, Yasuda clearly meets the requirements of the present claim.
Regarding claim 20, Yasuda discloses the preparation of TiO2/SiO2 multilayer flakes which exhibited structural colors, and could be used in paint films. The coreless TiO2/SiO2 flakes were formed by detaching multilayer films from their substrates. (Yasuda; Abstract). See also Yasuda; “2. Experimental,” para 2 on pages 1122-1123 wherein Yasuda discloses spin coating the layers onto a substrate, followed by detaching from the substrate.
The sol-gel coating of TiO2 and SiO2 were used as high and low refractive index layers for interference effects (Yasuda; page 1122, “2. Experimental,” 1st sentence).
In Fig. 1, Yasuda exemplifies a seven-layer with alternating layers of TiO2 and SiO2 (Yasuda; page 1123, col. 1, Fig 1):
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Yasuda therefore discloses a pigment flake comprising a plurality of alternating layers of dielectric materials including a first layer formed of a first dielectric material having a first refractive index in the visible spectrum range (i.e., TiO2), and a second layer disposed adjacent to the first dielectric layer and formed of a second dielectric material having a second refractive index in the visible spectrum range that is different than the first refractive index (i.e., SiO2).
To demonstrate the use of the flakes, a paint film (i.e., coating) was made comprising acrylic resin (i.e., one or more resins) (Yasuda; page 1124, para 4). Examiner notes that the additional claimed components are optional.
Although Yasuda does not explicitly teach a “radar compatible” coating comprising “dielectric pigments” having a “metallic appearance,” the decorative paint of Yasuda comprises pigment flakes having alternating layers of SiO2 and TiO2 as claimed. Further, the instant application at [0034-0035] teaches forming the claimed pigment flakes by forming a plurality of alternating layers of dielectric material over a substrate, followed by removing the substrate from the plurality of alternating layers of dielectric materials to form the dielectric pigment flakes.
Given that the layered flake of Yasuda is substantially identical to the dielectric pigment as used in the present invention, as set forth above, it is clear that the layered flake of Yasuda would inherently be dielectric and metallic as presently claimed. Further, given that the decorative paint of Yasuda is substantially identical to the coating as used in the present invention, as set forth above, it is clear that the paint of Yasuda would inherently be radar compatible as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Although Yasuda does not explicitly teach “wherein the dielectric pigment is formed by physical vapor deposition (PVD)” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Yasuda meets the requirements of the claimed product, Yasuda clearly meets the requirements of the present claim.
Claims 2-4 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 over Yasuda as applied to claim 1 above, and further taken in view of evidence by Shiono et al, US 2025/0199219 A1 (Shiono).
Regarding claims 2-4, Yasuda is relied upon as disclosing the limitations of claim 1 as discussed, wherein pigment flakes have alternating layers of TiO2 and SiO2. As is evidenced by Shiono, TiO2 has a refractive index of 2.467 at 500nm, which falls within the claimed second refractive index of from about 2.0 to 3.0 (claim 2), and from about 2.25 to 2.75 (claim 3), at a wavelength of 500nm, i.e., from about 400 to about 700nm (claim 4) (Shiono; [0143]).
SiO2 has a refractive index of 1.483 at 500nm, which falls within the claimed first refractive index of from about 1.25 to 2.0 (claim 2), and from about 1.25 to about 1.75 (claim 3), at a wavelength of 500nm, i.e., from about 400 to about 700nm (claim 4) (Shiono; [0143]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code are included in the above 35 USC § 102/103 rejection.
Claims 8-9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Delst.
Regarding claims 8-9 and 15, Delst is relied upon as disclosing the limitations of claim 1 as discussed above. Delst teaches when the pigment flakes include a plurality of dielectric layers, the dielectric layers may be formed from different dielectric materials and may have the same or different physical thicknesses. Typically, the thickness of the one or more layers ranges from about 30 nm to about 1000 nm (Delst; col. 4, lines 55-62). 30nm to 1000nm overlaps in scope with the claimed layer thickness of about 30 to about 200nm.
Based on the thickness of the individual layers taught by Delst, wherein the flakes may comprise one or more layers, it is clear that the thickness of the pigment flakes of Delst overlap in scope with claimed thickness range of from about 500nm to about 10200nm (claim 8), and from about 500nm to about 1000nm (claim 9).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Delst as applied to claim 1 above, and further in view of Gumsheimer et al, WO 2022/064018 A1 (Gumsheimer).
The U.S. equivalent of Gumsheimer, US 2023/0340282 A1, is referenced in the below rejection.
Regarding claims 5-7, Delst is relied upon as disclosing the limitations of claim 1 as discussed above. The dielectric flake pigments comprise a flake which may comprise alternating layers of high- and low-index materials, wherein typically the dielectric material is substantially transparent (Delst; col. 3, lines 49-59). Preferred high-index dielectric materials include, e.g., zirconium dioxide, titanium dioxide, diamond-like carbon, iron oxides and tin oxide (Delst; col. 3, line 51-col. 4, line 6). Preferred low-index dielectric materials include, e.g., SiO2 and Al2O3 (Delst; col. 3, lines 16-18). In some instance, the dielectric material is an absorbing material such as titanium suboxides and iron oxides (Delst; col. 4, lines 41-49).
The pigments may be used in paints for motorized vehicles (Delst; col. 7, lines 57-60).
Delst does not explicitly teach wherein the dielectric materials each have a corresponding dielectric constant of about 10 or less in a radar frequency range of from about 76 to about 81 GHz (claim 5); wherein the dielectric materials each have a corresponding dielectric constant of about 1.5 to about 8 in a radar frequency range of from about 76 to about 81 GHz (claim 6); and wherein the dielectric materials each have a corresponding permittivity of about 15 or less in a radar frequency range of from about 76 to about 81 GHz (claim 7).
With respect to the difference, Gumsheimer teaches a metal effect radar-compatible coating comprising a first layer of absorbent pigments, and a second layer comprising flake-form effect pigments having absorbent properties (Gumsheimer; [0014-0016]). Suitable flake pigments include, e.g., iron oxide, titanium oxide, titanium suboxide or a layer of carbon. One or more transparent layers may be located on the flake form material (Gumsheimer; [0036-0038]). Suitable further transparent layers include, e.g., tin oxide, titanium dioxide, zirconium oxide, silicon dioxide and aluminum oxide (Gumsheimer; [0040]). The flake form support materials can be, e.g., SiO2, TiO2, and Al2O3 (Gumsheimer; [0041]).
“Radar compatible” means a coating which has a “permittivity” or “dielectric constant” of ˂30 on exposure to electromagnetic waves having a peak frequency of 76.5 GHz (Gumsheimer; [0065] and [0118]). In Table 4, the tested pigment layers have permittivity or dielectric constant values of 5.8 to 9.8 (Gumsheimer; [0118] and Table 4). These “permittivity” or “dielectric constant” ranges falls within the claimed ranges about 10 or less (claim 5), about 1.5 to about 8 (claim 6), and about 15 or less (claim 7).
The radar compatible coatings are used for vehicles (Gumsheimer; [0001] and [0011]). Typical metallic paints, which contain aluminum-based metal effect pigments, can reflect, attenuate or absorb the radar waves, which are usually in the frequency range of 76-81GHz (Gumsheimer; [0003]). With the increase in vehicles that enable autonomous driving, it is necessary to integrate radar devices, generally installed behind bumpers, to enable distance measurement to other vehicles or traffic obstacles, and to enable the measurement of the speed of traffic participants into the corresponding automobile parts (Gumsheimer; [0002]).
Gumsheimer is analogous art as it teaches metallic radar compatible coatings comprising pigment flakes.
Based on the teachings of Gumsheimer, one of ordinary skill in the art would expect that the dielectric flake pigments of Delft would be radar compatible given that the flakes are made of the same layered materials, e.g., SiO2, TiO2, and Al2O3. Therefore, those skilled in the art would have had a reasonable expectation of success in using the metal-effect pigment flakes of Delft in radar compatible coatings as claimed.
In light of the motivation provided by Gumsheimer, it would have been obvious to one of ordinary skill in the art to use the pigment flakes of Delft in automotive, radar compatible coatings in order to solve the problem of typical metallic paints which can reflect, attenuate or absorb the radar waves found in today’s automobiles. Because Gumsheimer teaches that pigment flakes comprising the same dielectric materials as Delft are radar compatible, and that “radar compatible” means having “permittivity” or “dielectric constant” of ˂30 on exposure to electromagnetic waves having a peak frequency of 76.5 GHz, preferably in a range of about 5.8 to 9.8 as exemplified, those skilled in the art would have been motivated to adjust the permittivity and dielectric constants of the dielectric pigments of Delft, including over the presently claimed, in order to obtain the most effective paints and coatings for motorized vehicles.
“[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Claims 1, 8-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Pfaff et al, US 2013/0164356 A1 (Pfaff).
Regarding claims 1 and 11-13, Pfaff teaches effect pigments based on flake-form substrates, including metallic effect pigments (i.e., a flake pigment having a metallic appearance) (Pfaff; [0001-0002]). Preferred substrates include SiO2 flakes and TiO2 flakes, with very preferred substrate flakes including natural or synthetic mica flakes and SiO2 flakes (Pfaff; [0010]). The substrate flakes are coated with at least one high refractive index layer (Pfaff; [0024]). Multilayer pigments having at least three layers of alternating high and low refractive index layers are preferred, such as a flake having a TiO2 - SiO2 - TiO2 three-layer coating (Pfaff; [0029]).
High refractive index means n≥1.8, preferably n≥2.0, and includes, e.g., TiO2 (Pfaff; [0026-0027]). TiO2 is a second dielectric material having a second refractive index (claims 1 and 13), a semiconductor material (claim 11), and a metal oxide (claim 12).
Low refractive index means n˂1.8, and includes, e.g., SiO2 (Pfaff; [0026] and [0031]). SiO2 is a first dielectric material having a first refractive index (claims 1 and 13), a semiconductor material (claim 11), and a metal oxide (claim 12).
The coating may be carried out, e.g., in a fluidized-bed reactor by gas-phase coating (Pfaff; [0040]).
Although Pfaff does not explicitly teach a “dielectric pigment,” the pigment flakes of Pfaff comprise the same alternating layers of SiO2 and TiO2 as claimed.
Given that the layered flake of Pfaff is substantially identical to the dielectric pigment as used in the present invention, as set forth above, it is clear that the layered flake of Yasuda would inherently be dielectric as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, while there is no disclosure that the effect pigments of Pfaff are “for a radar compatible coating” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for a radar compatible coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Although Pfaff does not explicitly teach “wherein the dielectric pigment is formed by physical vapor deposition (PVD)” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Pfaff meets the requirements of the claimed product, Pfaff clearly meets the requirements of the present claim.
Regarding claims 8-9, Pfaff is relied upon as teaching the limitations of claim 1 as discussed above. The substrate flakes have a thickness of 0.2-0.6µm, i.e. 200-600nm (Pfaff; [0012]). The thickness of the high refractive index layer is preferably 40-350nm (Pfaff; [0030]). The thickness of the low-refractive index layer is preferably 20-80nm (Pfaff; [0032]). Therefore, the pigment flakes of Pfaff have total thickness range which overlaps in scope with about 500 nm to about 1200nm (claim 8), and about 500nm to about 1000nm (claim 9). For example, the preferred three layer-coated pigments of Pfaff (Pfaff; [0029]) would result in pigment flakes having a thickness range of 300-1380nm (200+40+40+20=300; 600+350+350+80=1380).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10, Pfaff is relied upon as teaching the limitations of claim 1 as discussed above. The preferred substrate flakes have a particle size distribution of 5-60µm, preferably 5-40µm (i.e., 5000-40000nm), and a circular form factor of 1.2-2 (Pfaff; [0011-0012] and [0017]). Therefore, based on a calculation as shown above, three-coat pigment flakes would have particle size/diameter ranging from 5100-40780nm, or 5.1 to 40.78µm. The radius (radium = diameter/2) of such particles would be 2.55 to 20.39µm. Therefore, it is clear that the pigment flakes of Pfaff have radius sizes which overlap in scope with the claimed range of from about 5 to about 25µm.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, Pfaff is relied upon as teaching the limitations of claim 1 as discussed above. Multiplayer pigments having at least three layers of alternating high and low refractive index layers are preferred, such as a flake having a TiO2 - SiO2 - TiO2 three-layer coating (i.e., alternating layers of SiO2 - TiO2 as claimed) (Pfaff; [0029]). See also [0037] wherein Pfaff exemplifies SiO2 - TiO2 alternating layers.
Regarding claim 15, Pfaff is relied upon as teaching the limitations of claim 1 as discussed above. The thickness of the high refractive index layer is preferably 40-350nm (Pfaff; [0030]). The thickness of the low-refractive index layer is preferably 20-80nm (Pfaff; [0032]). These thicknesses overlap with the claimed range of about 30 to about 200nm as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 16, Pfaff is relied upon as teaching the limitations of claim 1 as discussed above. Pfaff teaches various alternating layer combinations, including coatings comprising 5, 6 and 7 layers, which fall within the claimed about 5 to about 15 layers (Pfaff; [0037]).
Regarding claim 20, Pfaff teaches effect pigments based on flake-form substrates, including metallic effect pigments (i.e., a flake pigment having a metallic appearance) (Pfaff; [0001-0002]). Preferred substrates include SiO2 flakes and TiO2 flakes, with very preferred substrate flakes including mica flakes and SiO2 flakes (Pfaff; [0010]). The substrate flakes are coated with at least one high refractive index layer (Pfaff; [0024]). Multiplayer pigments having at least three layers of alternating high and low refractive index layers are preferred, such as a flake having a TiO2 - SiO2 - TiO2 three-layer coating, (Pfaff; [0029]).
The coating may be carried out, e.g., in a fluidized-bed reactor by gas-phase coating (Pfaff; [0040]).
The effect pigments can be used with be multiplicity of color systems including paints and coatings comprising, for example, a multiplicity of binders, fillers such a melamine resins, and binder systems (Pfaff; [0060], [0067] and [0073]). The pigments may be used, e.g., in automotive paints (Pfaff; [0075] and [0109]).
Although Pfaff does not explicitly teach a “dielectric pigment,” the pigment flakes of Pfaff comprise the same alternating layers of SiO2 and TiO2 as claimed.
Given that the layered flake of Pfaff is substantially identical to the dielectric pigment as used in the present invention, as set forth above, it is clear that the layered flake of Yasuda would inherently be dielectric as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Further, while there is no disclosure that the coatings and paints of Pfaff are “radar compatible” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for a radar compatible coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Although Pfaff does not explicitly teach “wherein the dielectric pigment is formed by physical vapor deposition (PVD)” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Pfaff meets the requirements of the claimed product, Pfaff clearly meets the requirements of the present claim.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Pfaff et al, US 2013/0164356 A1 (Pfaff) as applied to claim 1 above, and further taken in view of evidence by Shiono et al, US 2025/0199219 A1 (Shiono).
Regarding claims 2-4, Pfaff is relied upon as set forth above as teaching pigment flakes comprising alternating layers of high- and low-refractive index coatings, wherein said high- and low-refractive index coatings comprise TiO2 and SiO2 (Pfaff; [0029]).
As is evidenced by Shiono, TiO2 has a refractive index of 2.467 at 500nm, which falls within the claimed second refractive index of from about 2.0 to 3.0 (claim 2), and from about 2.25 to about 2.75 (claim 3), at a wavelength of 500nm (claim 4) (Shiono; [0143]).
SiO2 has a refractive index of 1.483 at 500nm, which falls within the claimed first refractive index of from about 1.25 to 2.0 (claim 2), and from about 1.25 to about 1.75 (claim 3), at a wavelength of 500nm (claim 4) (Shiono; [0143]).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Pfaff et al, US 2013/0164356 A1 (Pfaff) as applied to claim 1 above, and further in view of Gumsheimer et al, WO 2022/064018 A1 (Gumsheimer).
The U.S. equivalent of Gumsheimer, US 2023/0340282 A1, is referenced in the below rejection.
Regarding claims 5-7, Pfaff is relied upon as teaching the limitations of claim 1 as discussed above. The flake pigments of Pfaff comprise a flake-form substate which may be coated with alternating layers of high- and low-refractive materials (Pfaff; [0010], [0026] and [0029]). Preferred flake substrates include SiO2 flakes, TiO2 flakes, natural or synthetic mica flakes, and Al2O3 flakes (Pfaff; [0010]).
Preferred high- and low-refractive index coatings include various metal oxides such as TiO2, ZrO2, SiO2, and Al2O3 (Pfaff; [0027] and [0031]).
The pigments may be used automotive paints (Pfaff; [0002], [0075] and [0109]).
Pfaff does not explicitly teach wherein the dielectric materials each have a corresponding dielectric constant of about 10 or less in a radar frequency range of from about 76 to about 81 GHz (claim 5); wherein the dielectric materials each have a corresponding dielectric constant of about 1.5 to about 8 in a radar frequency range of from about 76 to about 81 GHz (claim 6); and wherein the dielectric materials each have a corresponding permittivity of about 15 or less in a radar frequency range of from about 76 to about 81 GHz (claim 7).
With respect to the difference, Gumsheimer teaches a metal effect radar-compatible coating comprising a first layer of absorbent pigments, and a second layer comprising flake-form effect pigments having absorbent properties (Gumsheimer; [0014-10016]). Suitable flake pigments include interference pigments such as metal oxides (Gumsheimer; [0036]). The flake form support materials can be SiO2, TiO2, natural or synthetic mica, and Al2O3 (Gumsheimer; [0041]). Transparent layers can be formed on the flake support, wherein said layers can be metal oxides such as titanium dioxide, zirconium oxide, silicon dioxide and aluminum oxide (Gumsheimer; [0040]).
“Radar compatible” means a coating which has a “permittivity” or “dielectric constant” of ˂30 on exposure to electromagnetic waves having a peak frequency of 76.5 GHz (Gumsheimer; [0065] and [0118]). In Table 4, the tested pigment layers have permittivity or dielectric constant values of 5.8 to 9.8 (Gumsheimer; [0118] and Table 4). These “permittivity” or “dielectric constant” ranges falls within the claimed ranges about 10 or less (claim 5), about 1.5 to about 8 (claim 6), and about 15 or less (claim 7).
The radar compatible coatings are used for vehicles (Gumsheimer; [0001] and [0011]). Typical metallic paints, which contain aluminum-based metal effect pigments, can reflect, attenuate or absorb the radar waves, which are usually in the frequency range of 76-81GHz (Gumsheimer; [0003]). With the increase in vehicles that enable autonomous driving, it is necessary to integrate radar devices, generally installed behind bumpers, to enable distance measurement to other vehicles or traffic obstacles, and to enable the measurement of the speed of traffic participants into the corresponding automobile parts (Gumsheimer; [0002]).
Gumsheimer is analogous art as it teaches metallic radar compatible coatings comprising pigment flakes.
Based on the teachings of Gumsheimer, one of ordinary skill in the art would expect that the metal-effect pigments of Pfaff would be radar compatible given that they are made of the same substrates, i.e., flakes of SiO2, TiO2, natural or synthetic mica, and Al2O3, and metal oxide coatings. Therefore, those skilled in the art would have had a reasonable expectation of success in using the metal-effect pigment flakes of Pfaff in radar compatible coatings as claimed.
In light of the motivation provided by Gumsheimer, it would have been obvious to one of ordinary skill in the art to use the metal-effect pigment flakes of Pfaff in automotive, radar compatible coatings in order to solve the problem of typical metallic paints which can reflect, attenuate or absorb the radar waves found in today’s automobiles. Because Gumsheimer teaches that pigment flakes comprising the same substrates and coatings as Pfaff are radar compatible, and that “radar compatible” means having “permittivity” or “dielectric constant” of ˂30 on exposure to electromagnetic waves having a peak frequency of 76.5 GHz, preferably in a range of about 5.8 to 9.8 as exemplified, those skilled in the art would have been motivated to adjust the permittivity and dielectric constants of the metal-effect pigments of Pfaff, including over the presently claimed, in order to obtain the most effect automotive coating compositions and paints for automotives.
“[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
Response to Arguments
1). Applicant's arguments filed 11/24/2025 with respect to the U.S.C. § 102(a)(1)/103 rejection over Yasuda, have been fully considered but they are not persuasive.
Applicant primarily argues:
“Applicants respectfully submit that Yasuda does not anticipate claim 1 as amended as there is no teaching or suggestion within Yasuda to form the layers in the disclosed pigment by physical vapor deposition (PVD).”
“More specifically, Yasuda teaches the formation of the flakes using a sol-gel process and not PVD (see Yasuda page 1122). The sol-gel process is a wet chemical process used to form layers of dielectric material. … As set forth in the accompanying Affidavit under 37 CFR 1.132, unlike sol-gel processes, the PVD process provides for very precise control of the layers thickness. The PVD method is distinct from the sol-gel method because the sol-gel method does not offer the same precision capability as PVD.”
Remarks, pages 6-7.
Examiner respectfully traverses because as set forth on pages 13-14 of the above rejection over Yasuda, the present claims are drawn to a product and not drawn to a method of making. Therefore, absent a showing of criticality of the process, the claims are anticipated by Yasuda.
The statement in the Affidavit filed 11/24/2025, that “pigments formed through physical vapor deposition (herein referred to as “PVD”) exhibit distinct physical features and observable differences compared to dielectric pigments formed through sol-gel processes,” appears to be a conclusory statement. Applicant has not provided any sufficient evidence, i.e., data, to support that the structure of the dielectric pigments would be physically distinct and observably different as compared to dielectric pigments formed through sol-gel processes.
2). Applicant further argues:
“Applicants further respectfully submit that using PVD to form dielectric pigments, in accordance with amended claims 1 and 20, enable performance to be achieved that is not possible with sol-gel processes. … As set forth in the accompanying Affidavit under 37 CFR 1.132, the pigments formed by each respective process can be distinguished by the uniformity of the layer thickness within the dielectric pigment. The sol-gel process offers far less control over the thickness of the layers compared to the layers formed by the PVD process. … The high degree of uniformity that may be achieved from the precise and uniform layer thicknesses of PVD formed dielectric pigments may enable a non-hue shifting metallic finish that cannot be realized with pigments formed by sol-gel processes. As set forth in the Affidavit under 37 CFR 1.132, PVD formed dielectric pigments are distinguishable from the sol-gel formed dielectric pigments. The differences can be evaluated by a scanning electron microscopy (SEM) cross section to determine whether the dielectric pigments were formed by PVD or sol-gel.”
Remarks, page 7.
Examiner respectfully traverses because there is no evidence of record, i.e., data, which demonstrates a distinction between the layer thickness and/or uniformity of flake pigments prepared via a sol-gel process vs. PVD-process, nor is there evidence of a difference in the performance.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
Given applicant has not provided any argument regarding the 35 U.S.C. 103 rejections of record over Pfaff being erroneous, the 35 U.S.C. 103 rejections of record over Pfaff are proper and therefore maintained as set forth on pages 22-34 above.
Further, upon updating the search with respect to the amended claims, a new grounds of rejection is made over Delst.
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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732