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 Arguments
In their response dated 10/22/2025 applicants added new claims 16-19 and argued following:
The applicants extensively argued the reference of Guo which was an evidentiary reference, utilized only to support examiner’s position. The reference was not utilized to reject any claim limitations. The rejection of claims 1-19 is over Rueger in view of Schmid and in view of evidence in Guo article. Such arguments are not pertinent to overcoming rejection of record.
Applicants further argued that prior art of Schmid does not teach amorphous carbon. In the argument the applicants stated that Schmid creates carbon coating on the luster pigment by decomposing carbon containing compounds.
First it should be noted that Schmid is a secondary reference not primary. Having said that the way Schmid forms carbon coating is well known method for making amorphous carbon. For example, US 5,952,249 to Gibson discloses such method and specifically states that the method provides amorphous carbon. The substrate is immersed in a solution of carbon source which impregnates and/or deposits onto the surface of the substrate (in instant case these are luster pigments), the substrate is then heated which results in removal of solvent and charring (carbonizing) the carbon source. Therefore, while Schmid does not explicitly utilize term “amorphous” it does not mean the carbon layer formed on a luster pigment is not present. One of ordinary skill in the art reading the teachings of Schmid would readily understand what type of carbon will be formed using solution and immersion in the process of making carbon coating. This happens specifically, because such deposition results in a coating not having any particular ordered structure. AS such carbon coating of Schmid is an amorphous carbon.
Applicants further argued that the carbon coating of Schmid utilizes carbon source that comprises metals such as Al, Cr, Ce or Zr including their mixture. Additionally, low and high molecular sugar and polyoxymethylene can be thermally decomposed on the surface of substrate particles.
While applicant’s claims do not disclose use of metal compounds such is encompassed by term “comprising” and therefore claims alone are not limited to amorphous carbon alone. While Schmid discloses also of polyoxymethylene and sugars, the applicants stopped short from indicating that these compounds are also uses as carbon containing materials and therefore are also a source which allows formation of amorphous carbon. (see col. 3, l. 13-15).
Applicants further argued reference ending in ‘396. It is not clear which reference applicants are referring to because none of the references applied in the rejection end in such number.
With respect to the teachings of Rueger, applicants argue that the prior art can only with carbon layer, whereas in pending claim 3 the pigments are coated with at least one interference layer and at lease one carbon layer. While that is true, independent claim 1 does not require presence of middle layer and to reject claim 3 the examiner the examiner utilized Schmid reference teaching titanium oxide coated mica wherein both mica and titania are disclosed on page 6 of the instant invention.
Applicants further argue that Rueger does not comprise 100% of carbon and that carbon layer comprises foreign constituents.
Again, the independent claims do not require for the coating to be 100% carbon by virtue of term “comprising”. Claim 1 of Rueger, as depicted by the applicants comprises at least 95% of crystalline carbon, which clearly encompasses 100%. It should also be noted that cited by the applicants [0026] of Rueger is directed to comparison of industrially available carbon black vs. utilized in the patented reference graphitic or crystalline carbon black. As such industrial carbon black is not Rueger’s invention. The examiner never relied on comparative compounds, and while the applicants view disclosed in [0026] carbon black, the carbon black in this paragraph is not the amorphous carbon of Schmidt. The two are made in entirely different manner.
Consequently, the prior art of record as applied against instant claims has been considered in its entirety. Cited by the applicants case law of W.I. Gore vs. Garlock which refers to stretchability of the TEFLON tape and how fast the stretching can be accomplished. The case was denied because in 1966 the New Zealand Cropper created a machine for producing stretched TEFLON tape which machine was sold to Budd with secrecy agreement and the action against the defendant was for infringement based on “public use”. Contrary to the case law applied the two references of Rueger and Schmid are both directed to making luster pigments which are used in polymeric compositions ([0020-0021] of Rueger; col. 2, l. 20-22; col. 4, l. 8-10 of Schmid both of which references specifically mention paints coatings and inks).
While applicants argue there is no obviousness because reference teaches away and person of ordinary skill in the art would be discouraged from following the path set out in the reference.
First, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicants argued Schmid alone and Rueger alone, but never indicated why the combination of references is improper. Additionally, what applicants view as teaching away in Rueger is no more than distinguishing commercially available carbon black from the crystalline graphitic carbon of Rueger’s reference. It is also unclear as to why applicants refer to partially carbonized carbon black as amorphous carbon. While partially carbonized carbon black may contain some amorphous carbon, it is primarily composed of graphitic structures that do not exhibit the same characteristics as fully amorphous carbon taught in Schmid. While classification of carbon black can vary based on its production and presence of other carbon structures, it is not considered amorphous carbon black.
The grounds of rejection in the FOAM dated 8/14/2025 stated following:
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The grounds of rejection as to obviousness of utilizing mixture of amorphous and crystalline carbon black as proposed in the rejection of Rueger in view of Schmid have not been addressed. While Guo which is utilized evidentiary reference may be viewed by the applicants as generic disclosure, it is a research article which is directed to tailoring and/or enhancing IR absorption properties of carbon. As such applicant’s reference to this article as generic, is viewed by the examiner as indication that Guo teaches a knowledge well established in the art, further strengthening examiner’s grounds of rejection.
Consequently, the rejection of record are not overcome and are restated below.
Claim Interpretation
Claim 19 requires that the carbon layer is homogeneous layer. This is viewed as problematic since the applicant’s independent claims disclose ratio of amorphous carbon to crystalline carbon to be in a range of 5:95 to 95:5.
By definition term “homogeneous” in terms of chemical composition refers to a mixture where the components are evenly distributed throughout and there are no distinct areas or clumps of different substances. As such the mixture is the same regardless of where it is sampled and it typically exists in a single phase of matter.
Consequently, claim 19 is viewed as containing 50:50 mixture of amorphous carbon and crystalline carbon, since this is the only range at which the mixture of the two carbons can be uniform. Excess of one renders term “homogeneous” unsupported. Additionally, the amorphous and crystalline carbon do not exist in the same phase. They are distinct forms of carbon with different chemical properties. Amorphous carbon is free reactive carbon with no crystalline structure while crystalline carbon has well-defined crystal structure. The two can coexist in materials but they are not the same phase.
Consequently, the mixture of amorphous carbon and crystalline carbon as suggested in the rejection stated in the FOAM dated 8/14/2025 at 50:50 ratio (as suggested in the rejection) will meet the same structural limitations as that of the instant invention since, as indicated in the FOAM Rueger requires uniform distribution of carbon layer.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rueger (US 2017/0321058) in view of Schmid (US 5,501,731) and in view of evidence of Guo article.
With respect to claims 1-4, Rueger discloses interference pigments which are an additive to compositions for coatings , packaging, or molded articles [0002]. The luster pigment of Rueger is titanium oxide coated mica which is then coated with crystalline graphite or graphene (Abstract).
With respect to enhancing IR absorption, such property is viewed as inherent and a common knowledge. One of ordinary skill in the art would know that while graphene, graphite and amorphous carbon can all absorb IR radiation. Graphene, however, due to its layered structure offers unique advantages in terms of tailoring and enhancing IR absorption and tunning its electrical properties (see Guo article). As such the carbon will absorb within the spectrum of instant claim 2.
(“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”).
While Rueger teaches coating of the mica filler with crystalline carbon, he does not disclose use of combination of crystalline and amorphous carbon as the outermost layer.
Schmid discloses coating compositions comprising titanium oxide coated mica with amorphous carbon in its outermost layer as it was explained in the first office action on the merits dated 2/4/2025. The pigments of Schmid are luster pigments such as mica coated with metal oxides having highly refractive index such as titanium dioxide. Interference, reflection and absorption phenomena result in multiplicity of an angle dependent color and lightness effects depend on the thickness of the metal oxide layer. Schmid further states in col. 3, starting l. 41 that it is known that the delicate interference and mass tone colors of pearl luster pigments in particular can be distinctly strengthen by application of non-selectively absorbing materials such as carbon.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time of the instant invention to combine amorphous and crystalline carbon to coat interference pigments. Such combination would allow one of ordinary skill in the art to fine tune the absorption of IR radiation and tailor the properties of the pigment based on intended use.
It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). This is because both Rueger and Schmid add carbon material as the outermost layer of interference pigments, to tailor absorption properties and arrive at the same type of coating, for example for security coatings.
The combination of two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to for a third composition that is to be used for the very same purpose may be prima facie obvious. In re Susi, 440 F.2d 442, 445, 169
With respect to the ratio of amorphous carbon and nanocrystalline carbon, the cited prior art does not expressly disclose the claimed ratio. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, prior art discloses amorphous carbon and nanocrystalline carbon as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine amorphous carbon and crystalline carbon in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
With respect to claims 5 and 6, Interference pigments in the examples have particle size between 10-60 microns and the carbon coating is in a range of 1-5 nm [0078].
With respect to claims 7 and 8, the pigments of the prior art are utilized with thermoplastic or thermosetting polymer and are utilize to color the polymer [0086-0087].
With respect to claim 9, 10, 13 and 14, Rueger does not teach using infrared source. Schmid teaches using Xenon lamp which generates infrared radiation and applied the light to polymer composition comprising pigments (see examples). As such the xenon light source with is also source of heat will not only dry the composition but depending on the nature of the polymers and additives, cure the composition.
With respect to claim 11, Rueger teaches acrylates, methacrylates, polyesters, polyurethane, phenolic resins, melamine resins, polyamides and the like [0085].
With respect to claim 12, pigments are utilized in amount of 2-8 wt.% [0087].
With respect to claims 15-19, the pigments of Rueger are thermally conductive, presence of carbon coating as it was depicted above by virtue of graphene being a layered and amorphous carbon being porous will increase the absorption properties and IR source of Schmid as it was mentioned above will dry and cure the composition. Rueger discloses, that depending on the final product in addition to paints and coatings [0085] the pigments can be used in making films which require thermal conductivity [0085]; form pellets, granules or chips [0087] in binder composition which as one of ordinary skill in the art would readily know that pelletizing is molding composition into pellets. Other articles include decorative surfaces due to good hiding power of the luster pigments [0088]. Ratios and thickness of the carbon layer were addressed above (see claims 1, 4-6).
With respect to claim 19, applicants claim that the carbon layer which comprises crystalline carbon and amorphous carbon is a homogeneous layer. Rueger in [0031] discloses deposition of carbon layer is characterized by Raman spectroscopy to confirm the presence of crystalline graphite, wherein the peaks in Figure 1 show presence of nanocrystalline carbon, amorphous carbon and tetrahedral carbon. Rueger further teaches that the outermost layer has homogeneous material composition [0045].
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 February 9, 2026