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 .
Response to Amendment
This Office Action is in response to the amendment filed on 03/10/2026. After entry of this amendment, claims 1-11, 13-21, 23-25, 27-28, 32 and 33 are currently pending in this Application with claims 15-21, 23-25, 27-28, and 32 being withdrawn from further examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "semiconductor and/or dielectric pigment" in lines 1 to 2. There is insufficient antecedent basis for this limitation in the claim. Claim 10 depends from claim 1, and claim 1 does not provide support for semiconductor and/or dielectric “pigment”. In fact, according to the recitation of claim 1, a pigment is a non-conductive composite comprising “a semiconductor and/or dielectric” and “ a metal” which is dispersed and/or on the semiconductor and/or dielectric.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-11 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over
U.S. Patent Application Publication No. 2008/0318012 to Domnick et al. (hereinafter
Domnick) submitted in the IDS filed on 01/09/2023.
With respect to claim 1, Domnick teaches a plateletlike color effect pigment
comprising a metallic reflective core, a spacer layer, and an all in all semitransparent
absorber layer comprising, in essence, discrete metal particles that have an average
diameter of 1-100 nm (Domnick, abstract, [0032]-[0033]). Domnick teaches their pigment have a ratio of the average longitudinal dimension to the average thickness of from 10 to 7000 (Dominick, [0040]), and wherein the space layer is disclosed to be of dielectric material (Domnick, Figures 1 and 2, [0032], [0041]-[0054]). The disclosed discrete metal particles are taken to read on the claimed "a metal dispersed in and/or on the semiconductor and/or dielectric"; Domnick teaches in a preferred embodiment, the discrete metal particles are enveloped by a dielectric matrix and/or embedded in the overall semitransparent absorber layer (Domnick, [0049]). The disclosed range of 10-7000 for the aspect ratio overlaps with the claimed range of "at least" 5. MPEP 2144.05 states "In the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Although as stated above, the spacer layer is disclosed to be of a dielectric
material (Domnick, [0032]), some of the materials disclosed for the spacer layer, such as silicon carbide and a few more (see Domnick, [0041]), read on the materials
disclosed in the original specification of the present Application under examination, as semiconductor materials (see specification of the present Application, page 5, [0019]). Thus, the disclosed spacer layer is taken to read on, not only, the claimed
"dielectric" but also the claimed "semiconductor".
The disclosed spacer layer which may read on either semiconductor layer or the dielectric layer and disclosed layer of discrete metal particles are, thus, taken to render "a non-conductive composite" obvious because the cumulative disclosure contains all the elements and layers of such a claimed non-conductive composite. Additionally, this is because the reference does not disclose the disclosed structure is conductive.
With respect to the new limitation to claim 1, from previous claim 12, i.e. “the non-conductive composite has a resistivity of at least 1 Ohm.cm as measured according to a four-point probe at ambient temperature”, it is noted that this characteristic, as claimed, is attributed to the claimed pigment comprising a non-conductive composite comprising a semiconductor and/or a dielectric and a metal dispersed in and/or on the semiconductor and/or dielectric, wherein the pigment has an aspect ratio of at least 5, and wherein the aspect ratio is an average lateral size of the pigment divided by an average thickness of the pigment. Considering the fact that all these elements, layers, and size are taught or rendered obvious by Domnick, the newly added characteristic of resistivity of at least 1 Ohm.cm is also expected to follow from the composite pigment of Domnick motivated by the fact that substantially similar materials/products cannot have mutually exclusive characteristics.
With respect to claim 2, Domnick renders a non-homogenous mixture for the
non-conductive composite obvious because the reference teaches the discrete metal particles on the spacer layer, wherein the spacer layer is on a metallic reflector core. It is important to note that according to the original disclosure of the present Application under examination, by "non-homogenous" (see specification of the present Application under examination, page 4, [0016]), it is meant that the metal remains phase segregated within the matrix, i.e. the medium in which the metal is dispersed, and is not solubilized in the matrix.
The metal particles as disclosed by Domnick are disclosed to be "discrete" metal particles on the spacer layer; thus, they are not solubilized in any other material.
With respect to claim 3, even though the reference may not literally disclose an amount based on weight of the metal compared to the total amount of the non-
conductive composite, the reference is taken to render the claimed "an amount of 1wt% to 50wt of metal based on the total weight of the non-conductive composite" obvious because the reference teaches a thickness of 10-1000 nm for the core, a thickness of 20-1000 nm for the spacer layer, and an average diameter of 10-25 nm for the metal particles, with the protective layer being optional. Thus, the ratio of the thickness of the metal particles, which is taken to correspond to the average diameter considering the fact that there is one layer of metal particles, compared to the total thickness of the combined layers, in percentage, is obtained to be approximately 1.23% to 22%. Although this calculation is based off of thickness values, the higher a thickness of a layer, the more material is expected to be present within that layer, and the lower a thickness of a layer, the less material is expected to be present in said layer. Therefore, this calculated range of the percentage of the thickness of the metal particle layer based off of the total thickness is taken to render the claimed amount range of 1-50 wt% obvious.
If considering the combined spacer layer (i.e. claimed "semiconductor and/or
dielectric") and discrete metal particles layer to render the claimed "non-conductive
composite" obvious, then based on a thickness of 20-1000 nm for the spacer layer and average diameter of 10-25 nm for the discrete metal particles layer, with protective layer being optional, a ratio of the thickness of the discrete metal particles layer to the total thickness of the spacer and metal particles layer, when calculated based on percentage, results in a range of about 1.44% to 33.3%. As noted above, although this calculation is based off of thickness values, the higher a thickness of a layer, the more material is expected to be present in that layer, and the lower a thickness of a layer, the less material is expected to be present in said layer. Therefore, this calculated range of the percentage of the thickness of the metal particle layer based off of the total thickness is taken to render the claimed amount range of 1-50 wt% obvious.
With respect to claim 4, because Domnick renders the claimed structure for the claimed pigment, including the material for the claimed structure obvious, the claimed characteristic of "an average reflectance of at least 60% across a visible wavelength range of 400 nm to 700 nm as measured using an integrating sphere
spectrophotometer averaging the reflectance values over the visible wavelength range of 400 to 700 nm for both the specular component included (SCI) mode and the specular excluded (SCE) mode, and then subtracting the average reflectance in the SCE mode from the average reflectance in the SCI mode" is expected to drawn from the disclosed pigment and pigment structure of Domnick absence evidence proving the contrary. It is noted that substantially similar structures and/or materials cannot have mutually exclusive characteristics, and the claimed characteristic of claim 4 is attributed to the pigment claimed in claim 1.
With respect to claim 5, Domnick teaches an average diameter for the discrete metal particles of from 10 to 25 nm ([0051]), which falls within the claimed range of 0.5 to 100 nm. MPEP 2144.05 states "In the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, because Domnick teaches the discrete metal particles are applied to and attached to the spacer layer which can be of dielectric or semiconductor material, the reference is seen to render the dispersion of the metal particles in an inorganic material obvious. It is noted according to claim 1, the metal is dispersed " in and/or on" the semiconductor and/or dielectric layer. Thus, the phrase "the metal is dispersed in" any of the claimed materials of claim 5 is taken to mean that the metal is not necessarily embedded within another material but that it may be on another material.
With respect to claim 6, Domnick teaches an average thickness of 15-1000 nm for the metallic reflective core, average thickness of about 20-1000 nm for the spacer layer, and an average diameter of 10-25 nm for the metal particles (Domnick, [0039], [0041], [0051]); due the fact that there is one layer of metal particles applied onto the spacer layer, the average diameter of the metal particles is taken to correspond to the average thickness of the metal particles layer. The protective layer is disclosed to be optional (Domnick, abstract, [0038]).
With respect to claim 7, Domnick teaches material such as gold, silver, copper, nickel, and titanium for the discrete metal particles (Domnick, [0046]).
With respect to claim 8, as noted above, under the rejection of claim 1, although Domnick discloses dielectric material for the spacer layer, the reference, also, discloses the materials for the spacer layer are such as silicon carbide, aluminum nitride, titanium dioxide, and in general metal nitrides and metal (Domnick, [0041]). These examples have, also, been claimed as materials known as semiconductor materials in claim 8 and the present Application under examination; thus, the spacer layer renders a semiconductor material as claimed in claim 8 obvious as well.
With respect to claim 9, Domnick discloses the spacer layer can be produced
from organic materials (Domnick, [0041]); thus, claim 9 is rendered obvious as well.
With respect to claim 10, the disclosure of Domnick discloses some of the very same materials for the spacer layer, as those claimed and disclosed in the original disclosure of the present Application, for the claimed semiconductor and/or dielectric; therefore, it is expected of the spacer layer of Domnick to be resistant to melting as well because the very same compounds/materials cannot have mutually exclusive characteristics.
With respect to claim 11, Domnick teaches an average thickness of from about 20 to 1000 nm for the spacer layer, and an average diameter of 10 to 25 nm for the discrete metal particles (Domnick, [0040] and [0051]). Considering the fact that there is one layer of discrete metal particles applied onto the surface of the spacer layer, the average diameter of the metal particles implies the thickness of the layer of metal particles. The ratio of the thickness of the spacer layer to the thickness of the discrete metal particles layer is approximately 0.8-40, which clearly reflects the fact that there is more of the spacer layer material present in the pigment than the material of the discrete metal particles. Considering the range of the obtained ratio, i.e. 0.8-40, the claimed ratio of 1:1 to 9:1 of the semiconductor and/or dielectric to the metal, even though in weight, is rendered obvious again because the higher thickness of the spacer layer compared to the layer of metal particles reflects the fact that there is more material of the spacer layer, i.e. claimed semiconductor and/or dielectric layer, compared to the material of the discrete metal particles layers. Additionally, considering the fact that the thickness of the spacer layer and the thickness of the discrete metal particles can be the same, due to the fact that both disclose an average thickness (and average diameter, for the metal particles) of 10-20nm, then the amount of the material in the spacer layer and the metal particles is expected to include a ratio of roughly the same amount of materials of each, which would render the claimed ratio of 1:1 obvious as well.
With respect to claim 13, Domnick teaches discrete metal particles on the
surface of the pigment, as detailed out above. The reference is, also, open to optionally having a protective layer, which imparts protection to the pigment (Domnick, abstract) and prevent detachment and/or corrosion of the discrete metal particles (Domnick, [0038]). Thus, the reference is seen to render claim 13 obvious; it is noted that the claim recites the general limitation of "surface functionality that imparts a property to the pigment" without clarifying what the claimed surface functionality or what property it imparts to the pigment.
With respect to claim 14, the composite pigment of Domnick is not disclosed to comprise any thermoplastic resin or be/comprise a material that is predominantly
amorphous carbon; thus, the reference renders claim 14 obvious.
With respect to claim 33, Domnick teaches an average diameter for the discrete metal particles to be from 10 to 25 nm ([0051]) which overlaps with the claimed range of “0.5 nm to 100 nm”. MPEP 2144.05 states "In the case where the 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 03/10/2026 have been fully considered but they are not persuasive.
Applicant has again traversed dependent claims 21 and 23 on the restriction request, and requested the rejoinder of them with claims 1-11 and 13-14. Applicant has asserted while they agree with the statement of “a coating composition or a film are different from one another and from a pigment used in said coating composition or said film”, they called it a general concept, and further asserted one can have a coating or a film without pigment, and that one can have a pigment that is not yet included in a coating or film, but that Applicants did not claim them independently (Remarks, page 8). Applicant has asserted they, i.e. coating and film, are dependent on the inclusion of the pigment as claimed, and as such, Applicant has requested the removal of finality of the rejection of Applicant’s prior traversal as to claims 21 and 23 (Remarks, page 8).
The examiner disagrees, and respectfully submits that the dependency of claims 21 and 23 on claim 1 does not justify the rejoinder of them in the examination of claims because, as had been pointed out before, a coating or film are different, not only from each other, but from pigment. A pigment is part of the claimed coating composition and film, but a “pigment” does not read on the claimed film nor does it read on the claimed “coating composition”; they are different inventions which require different status in the art, and/or field of search and/or different classification. As such, claims 21 and 23 stand restricted.
Applicant has asserted the amendment to claim 1, a resistivity of at least 1 Ohm.cm for the non-conductive composite as measured according to a four-point probe at ambient temperature, emphasizes not just the non-conductive aspect of the composite, but also provides specific measurement parameters (Remarks, page 9). Applicant has provided a table in pages 9 through 11 of the Remarks, showing resistivity and conductivity at 20˚C for a number of metals, and some non-metal materials, and asserted based on the table, that the low resistivity equates to high conductivity (Remarks, page 9). Applicant has, also, asserted Domnick, the reference, is incapable of suggesting even an overlapping level of resistivity of its pigment given that the pigment of Domnick outlines that it has a “metallic reflector core”, and that the dielectric spacer layer surrounding the metallic reflector core is merely applied on the core with additional metallic particles positioned on the dielectric spare layer (Remarks, page 11). Applicant has, additionally, asserted the core of Applicant’s pigment, by contrast, is a non-conductive in that it is a relatively continuous matrix of semiconductor and/or dielectric material, whose continuity is only interrupted by dispersed metal particles of limited aspect ratio within the homogeneous dielectric matrix (Remarks, page 11). Applicant has asserted they measured the pigment resistivity which showed greater than at least 1 Ohm.cm, and that, as argued by Applicant, this value far exceeds by many orders of magnitude what would be expected for a fully metallic core with outer metallic particles that are bound to an intermediate dielectric spacer layer, as taught throughout Domnick (Remarks, page 11). Applicant has, further, asserted one of ordinary skill in the art would not expect the small dielectric spacer layer taught in Domnick to have an appreciable effect to position the pigment of Domnick to have resistivity of 1 Ohm.cm to greater (Remarks, page 11). Applicant has asserted they can find no teaching in Domnick suggesting any reasoning or parameters pointing toward such a result or any suggestion of modifying the pigment of Domnick to achieve such a result (Remarks, page 11). Applicant has then, concluded claim 1 and dependent claims are in condition for allowance (Remarks, page 11).
The examiner, respectfully, submits that the language of claim 1 utilizes the open phrase “comprising”; thus, the existence of a metallic core in the teachings of Domnick is not seen to teach away from the claimed invention. Furthermore, and more importantly, the claimed characteristic of non-conductive composite having a resistivity of at least 1 Ohm.cm as measured according to a four-point probe at ambient temperature is claimed to be a characteristic of the claimed non-conductive composite pigment comprising the claimed semiconductor and/or dielectric and a metal being on top of any of said materials or dispersed therein; all of these features and limitations in terms of elements, layers, and aspect ratio, have been taught by Domnick. Therefore, it is reasonable to conclude that the claimed resistivity characteristic, as now has been amended to claim 1 but was previously in the language of claim 12, is expected to follow from the teachings of Domnick. Additionally, it is difficult to envision how the metallic particles in Domnick would further assist in making the pigment of the reference conductive, as implied by Applicant, but the same metals, as claimed in claim 1, do not impart any conductivity effect on the claimed pigment. Moreover, the pigment taught by Domnick does not consist of, only, the materials listed in the table provided by Applicant in the Remarks; thus, the table does not provide any evidence proving the pigment of Domnick to be conductive.
Applicant’s argument that the dielectric spacer layer of Domnick is small and cannot have any appreciable effect on the resistivity value is not found persuasive because this is merely a statement without any tangible evidence. In addition, Domnick teaches the embodiment of Figure 2 in which even the metal particles, surrounding the spacer layer, are within another layer; thus, there is more teachings in Domnick to show that the effect of metallic materials can be controlled more than what Applicant has attempted to portray in the Remarks. Applicant is suggested to consider amending claim 1 by reciting specific materials or layers, if any has support in the original disclosure of the present Application under examination, for the claimed semiconductor and/or dielectric which have not been disclosed by Domnick, or to include other elements or even sizes which may not have been taught by Domnick to be further distance the claimed limitations from the teachings of the reference. Nevertheless, it is again, emphasized that because the claimed materials, orders of materials, and aspect ratio are taught by the reference, any claimed characteristic is, naturally, expected to follow from the teaching of the reference because substantially similar materials/products cannot have mutually exclusive characteristic.
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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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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