DETAILED ACTION
Response to Amendment
Applicant's amendment filed 5/21/2026 has been entered. Currently, claims 1-3, 5-12, 18-23 and 26-29 are pending, claims 4, 13-17, 24 and 25 are canceled and claims 12 and 28 are withdrawn.
Claim Rejections - 35 USC § 103
Claims 1-3, 7-9, 11, 18-23, 26, 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Caillier et al. (WO 2017/153698) of which US 2019/0099780 is the US national stage and will be used as a translation.
With regard to claims 1, 3, 8, 11, 18-20, 22 and 29, Caillier et al. disclose a heat-stable coating on a substrate, which reads on applicants’ coated household article [0011]-[0013]. The heat-stable coating can be multiple layers and can comprise a binder that may be formed from a metal alkoxide sol-gel coating, which reads on applicants’ coating obtained from a sol-gel composition [0014], [0061] and [0091]. In Example 14, there can be a first printed layer having bismuth vanadate applied directly to a substrate, which reads on applicants’ decoration (a), and a second printed layer having iron oxide pigment, which reads on the temperature reference pigment of applicants’ decoration (b), that is printed to at least partially cover the first layer, which reads on the partially overlapping decorations [0227]-[0232]. Bismuth vanadate has a formula of BiVO4 and is thermochromic [0084]. There can also be included a primer layer or a protective layer, which reads on applicants’ finish coat [0099]; however, Caillier et al. does not specifically teach a sol-gel coating as the binder in Example 14.
It would have been obvious to one having ordinary skill in the art to have substituted a sol-gel binder for the binder materials of Example 14. This would have been a simple substitution of binder materials as Caillier et al. recognizes it as equivalents for fluorocarbon resins at [0062]. Also, there would have been a reasonable expectation of success in forming a working heat-stable coating with these materials as Caillier et al. teaches that they can be used.
With regard to claim 2, Caillier et al. teach that both the first layer and the second layer in the Example 14 are printed [0227]-[0232]; however, they do not specifically teach that the first and second layer are non-overlapping.
It would have been obvious to have printed the first and second printed layers of Caillier et al. in a non-overlapping manner depending on the desired appearance of the layers. This is a mere design choice on how one wanted the colors and decorations to appear in the final product.
With regard to claim 7, Caillier et al. teaches that the binder should be 30 to 70% by dry weight of the composition for forming the heat-stable coating [0021]; however, they do not specifically teach the weight percent of BIVO4 in their first printed layer.
It would have been obvious to one having ordinary skill in the art to have mixed in the BIVO4 in any amount of the remaining weight percent of the layer that was not the binder, including making the BiVO4 be from 0.1 to at least 30 weight % of the dried coating. It would have been obvious to have mixed in enough BIVO4 to have the layer possess the desired color when mixed with cobalt blue, while not adding so much as to waste money.
With regard to claim 9, the Examiner notes that this claim has product-by-process limitations. It has been held that “even 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.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The structure of the final product of the first and second printed layers of Caillier et al. will be the same as the structure of the final product resultant from the product-by-process limitations.
With regard to claim 21, the sol-gel binder is formed from metal alkoxides, which reads on applicants’ precursors including a metal alkoxide [0068]. The bismuth vanadate in the coating reads on the metal oxide claimed.
With regard to claims 23 and 26, the substrate can be a frying pan with the coating on the inner face, which reads on applicants’ cookware with the coating on the food receiving face, or an iron with the coating on the soleplate [0104]-[0108].
With regard to claim 27, Caillier et al. also teach that the coating can be placed on one of the heating plates of a straightening iron, which reads on applicants’ hair straightener [0109]; however, they do not specifically teach placing the coating on multiple plates of the straightening iron.
It would have been obvious to one having ordinary skill in the art to have placed the heat-stable coating on multiple plates of the straightening iron so as to provide the thermochromic effect on both plates, which would allow a user to know when the straightening iron was hot.
Claims 5, 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Caillier et al. (WO 2017/153698) in view of Xu (CN 201822599 U), machine translation included.
Caillier et al. disclose all of the limitations of claim 1 above; however, they do not specifically teach the ΔE* and the crystal structure of the BiVO4.
Xu teaches a pot for cooking that has a thermochromic layer that includes BiVO4 [0021]. The thermochromic BiVO4 goes through a color change of yellow (room temperature) to orange (120 C) to red (200 C) [0011].
Since Caillier et al. and Xu are both drawn to thermochromic BiVO4 for cooking pots, it would have been obvious to one having ordinary skill to have used the BiVO4 of Xu as the BiVO4 of Caillier et al. The results of such a substitution would have been predictable to one having ordinary skill. The rationale to use this pigment is to determine the temperature of cooking oils so that one cooks at the correct temperature [0014] and [0015].
The color change of the BiVO4 of Xu has the exact same color progression as that disclosed by applicants in their specification (page 18). As such, the BiVO4 of the Caillier et al. in view of Xu will intrinsically possess the same monoclinic scheelite structure and the ΔE* at 150 and 200 C relative to room temperature as claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 5/21/2026, with respect to the 112(b) rejection has been fully considered and are persuasive. The relevant rejection has been withdrawn.
The current action is being made a non-final as the previous action did not properly meet the limitations of “at least a thermochromic pigment composition in the form of particles consisting of” the bismuth/vanadium oxide-based pigment claimed, wherein this phrase is defined at page 8, lines 4-6 of applicants’ specification. This definition would exclude the composite pigments disclosed in Le Bris et al. (US 2012/0052265), and therefore the previous rejections based on Le Bris et al. was not proper.
Applicant's arguments filed 5/21/2026 have been fully considered but they are not persuasive.
Applicants argue on page 8 of their Remarks that the rejection based on Caillier et al. is improper as sol-gels are not functional equivalents to fluorocarbon resins.
The Examiner respectfully disagrees and notes that these are functional equivalents in that they are both recognized as “binder” materials for the digital printing composition, which is admitted by applicants in their Remarks. The fact that both materials are recognized as binder materials for the printing composition means that they are both known for the same purpose in the same field of invention and would have been seen as obvious equivalents as binders. The materials are not merely listed as alternatives in a Markush group; rather, their purpose is known to be the same as a binder, and that is the reason the Examiner came to the conclusion to substitute one binder material for another with predictable results.
Also, the fact that the fluorocarbon binder and the sol-gel binder do not cure at the same temperature does not constitute a teaching away for the substitution of binder materials. One of ordinary skill is not an automaton and would understand how to form printing compositions with the sol-gel binder and to subsequently cure the printing compositions given the disclosure of Caillier et al. at least at [0091]-[0096], where the specific curing conditions are taught.
Applicants argue that the entire multilayer architecture would have to be re-engineered, and therefore there was no rationale to use the sol-gel binder.
The Examiner respectfully disagrees and notes that the reference teaches that sol-gel can be the binder material for the printing composition. They also teach that the sol-gel binder can be cured “at a temperature greater than 150 C” [0093]. Substituting the fluorocarbon binder with the sol-gel binder would not be a re-engineering of the multilayer architecture as the structure of the layers would remain and only the binder material of the layers would be substituted as was set forth in the rejection. The layers may be made in the same manner as taught at [0091], i.e. application of each layer, followed by drying each layer and then cured after application of the final layer. The curing temperature of the sol-gel resin is taught at [0092], and therefore applicants’ argument is unpersuasive.
Applicants argue on page 9 of their Remarks that the Examiner relied upon hindsight rationale.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The prior art teaches the structure of layers claimed and teaches the same binder material claimed in their printing composition for forming the heat-stable coating. It is not hindsight to form the printed layers from one of the binders taught in the reference as the reference explicitly suggests it at [0062].
Applicants argue on pages 9-10 that there is no reasonable expectation of success in forming the printed structure using a sol-gel binder.
The Examiner respectfully disagrees and notes that [0062] teaches using sol-gel for the binder of the printing composition. Example 14 teaches a specific structure using multiple layers and [0091]-[0093] teaches how to form multiple layers in the heat-stable coating using any of the binders. All of these teachings would lead one of ordinary skill in the art to conclude there was a reasonable expectation of success in forming a multiple sol-gel printed layers as the reference teaches how one would form said layers, and therefore applicants’ arguments are not persuasive.
Applicants argue on page 11-12 that the 132 Declaration filed 5/21/2026 overcome the inherency assertion.
The Declaration under 37 CFR 1.132 filed 5/21/2026 is insufficient to overcome the rejection of claims 5, 6 and 10 based upon Caillier et al. in view of Xu as set forth in the last Office action because Applicants are not comparing the closest prior art, the claims are not commensurate in scope with the evidence and the opinion evidence of applicants is not persuasive.
First, applicants have manufactured a new comparative BiVO4 at section 10 of the Declaration. It is unclear whether this comparative BiVO4 would have the same structure as the closest prior art BiVO4 of Xu, or if the comparative BiVO4 would be closer subject matter than the applied prior art, please see MPEP 716.02(e). Applicants have the burden to explain their results and how it compares with the closest prior art.
Regardless, this comparative BiVO4 is closer subject matter than the Bayferrox 130 as shown in the Declaration. In Table 1 at section 11 of the Declaration, applicants show that this comparative BiVO4 has a ΔE* greater than 11 at 150 C and greater than 15 at 200 C as well as the fact that it has values greater than Bayferrox 130. However, they do not compare this comparative BiVO4 in the examples of Table 2 at section 16 of the Declaration. This comparative BiVO4 is closer subject matter because it performs better than Bayferrox, and therefore this Declaration is not persuasive as applicants have not compared the closer subject matter.
Second, applicants’ claims are not commensurate in scope with the evidence provided as the two inventive examples show ΔE* of 15.6 and 17.6 at 150 C and 23.4 and 25.4 at 200 C, which would not provide unexpected results for entirety of the ranges of claims 5 and 6. Additionally, the way claims 5 and 6 are phrased is broad enough such that it can refer to either the ΔE* of the pigment by itself or the ΔE* of the coating. This can be made commensurate by amending the claims to state that “wherein the coating has a ΔE*.
Third, applicants opine/suggest at sections 19-21 of the Declaration that since Bayferrox 130 is similar to the comparative BiVO4, the comparative BiVO4 would not fall within the ΔE* claimed.
The Examiner respectfully disagrees because given the performance of the comparative BiVO4 in powder form, which is better than Bayferrox 130, the Examiner would expect the comparative BiVO4 to have a ΔE* greater than 11 at 150 C and greater than 15 at 200 C when present as a pad printed decoration, and therefore the Declaration is not persuasive as this comparative example would provide further evidence that the ranges claimed would not exhibit unexpected results.
Applicants argue on pages 10-12 that inherency cannot be established by probabilities; further, applicants argue on page 12 of their Remarks and opine at section 22 of the Declaration that the color progression argument is not sufficient as the comparative BiVO4 in powder form and the inventive examples have dramatically different ΔE*’s.
The Examiner respectfully disagrees and notes that the color change will be directly related to the ΔE* of the pigment as it is heated. The ΔE* is the change in the CIELAB color space, which includes the change in color hues. Given the fact that the color progression is the same as applicants’ pigments, the Examiner concluded by the preponderance of the evidence that the pigment of Xu would have the ΔE* and crystal structure claimed.
As such, the Examiner has provided “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.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Also, based on the rationale noted above concerning sections 19-21 of the Declaration, the Examiner would expect the comparative BiVO4 to have a ΔE* greater than 11 at 150 C and greater than 15 at 200 C when present as a pad printed decoration. If applicants’ argument is that this comparative BiVO4 of the Declaration is similar to the pigment of Xu, then the Declaration has not provided evidence that the pigment of Xu would not possess the ΔE* claimed.
Lastly, the comparative BiVO4 has the same crystal structure of claim 10 according to the Declaration. If applicants’ argument is that this comparative BiVO4 of the Declaration is similar to the pigment of Xu, then the Declaration has provided evidence that the pigment of Xu has the crystal structure claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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