DETAILED ACTION
An Office Action was mailed on 06/16/2025.
Applicant filed a Response, and amended claim 1, on 09/12/2025.
Claims 1-5 are pending.
Claims 1-5 are rejected.
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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3 and 5 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 Kubo et al, US 20150252153 A1 (Kubo).
Regarding claims 1 and 3, Kubo teaches a colored metallic pigment comprising a metallic pigment, a coloring pigment, a first compound and a second compound (Kubo; [0013]).
The metallic pigment is preferably an aluminum pigment because aluminum is high in reflectance and easy to handle due to its small specific gravity (Kubo; [0029]).
The first compound may be a polymer of an unsaturated carboxylic acid or a dibasic acid (Kubo; [0014]). Dibasic acids include hexanedioic acid, i.e., adipic acid (a dicarboxylic having a carbon chain of 4 carbon atoms between two carboxylic acids) and heptanedioic acid, i.e., pimelic acid (a dicarboxylic having a carbon chain of 5 carbon atoms between two carboxylic acids) (Kubo; [0056]). Hexanedioic acid and heptanedioic (i.e., adipic and pimelic acid) meet the claimed hexanol/water partition coefficient requirements as is evidenced by Applicant’s claim 3.
Kubo teaches that the method for obtaining the aluminum pigment is not limited, and can be a method in which aluminum is vapor-deposited foil, which is obtained by vapor depositing aluminum on a film, is crushed (Kubo; [0037]). The average thickness of the aluminum pigment is preferably 0.02-2µm (Kubo; [0035]).
The components may be mixed in a slurry state in the presence of a solvent in order to disperse or dissolve the components (Kubo; [0086-0087]).
In Example 6, mineral spirit (i.e., solvent) and adipic acid as a first compound were mixed aluminum pigment to obtain a degreased metallic pigment. This pigment is then mixed with mineral spirits (solvent), adipic acid, and a yellow pigment to form a slurry (Kubo; [0114-0115] and [0121]).
Although Kubo does not explicitly teach vacuum metallized aluminum pigments 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 (i.e., VMP) and given that Kubo meets the requirements of the claimed product (i.e., slurries comprising a dicarboxylic acid, a solvent, and an aluminum pigment formed by crushing aluminum vapor-deposited foil), Kubo clearly meets the requirements of the present claims.
Regarding claim 5, Kubo is relied as teaching the limitations of claim 1 as discussed above. Kubo teaches that the resulting pigmented slurries are ultimately used to form paints, inks or molded articles as claimed (Kubo; [0099] and [0125-0127]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo et al, US 20150252153 A1 (Kubo).
Regarding claim 2, Kubo is relied upon as teaching the limitations of claim 1 as discussed above. The amount of the first compound (i.e., the dicarboxylic acid) ranges from 0.1 to 30 parts by mass, preferably 0.5 to 20 parts by mass, with respect to 100 parts of the metallic pigment (Kubo; [0057]). This overlaps in scope with the claimed 1 to 12 parts of dicarboxylic acid based on 100parts of the VMP aluminum pigment. When using less than 0.1 parts of the first compound, the coloring pigment does not effectively adhere thereto, and when using more than 30 parts by mass, the adhering is not improved and is therefore economically disadvantageous (Kubo; [0057]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to vary the amount of first compound (i.e., dicarboxylic acid) based on the amount of VMP aluminum pigment in the compositions of Kubo, including over the presently claimed, in order to obtain optimized adhering of the metallic and colored pigments while maintaining economic feasibility.
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 4, Kubo is relied upon as teaching the limitations of claim 1 as discussed above.
Kubo does not explicitly teach wherein VMP aluminum slurry comprises 0.1% to 1.2% of the dicarboxylic acid, 9.9% to 10.0% of the VMP aluminum pigment, and 88.9% to 89.9% of the solvent, in terms of mass.
Kubo does, however, teach that the first compound (i.e., dicarboxylic acid) is preferably 0.01 to 0.3 parts by mass, more preferably 0.05 to 0.2 parts by mass with respect to 1 part by mass of the metallic pigment. When within these ranges adhesion of the coloring pigment is adequately improved (Kubo; [0088]). The mixing ratio between the metallic pigment and the solvent is not particularly limited, but is preferably 0.1 to 5 parts by mass with respect to the 1 parts by mass of the metallic pigment. When less than 0.1 parts by mass, dispersion or dissolution may be difficult. When more than 5 parts by mass, filtration takes longer resulting in reduced productivity (Kubo; [0092]).
It has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass percents of the dicarboxylic acid, metallic pigment and solvents in the slurries of Kubo, including over the presently claimed, in order to obtain good dispersion or dissolution and adequate adhering of the coloring pigment while maintaining efficient productivity and cost-effectiveness.
Claims 1-5 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kubo et al, US 20150252153 A1 (Kubo) in view of Venturini et al, US 2005/0252416 (Venturini).
Regarding claims 1 and 3, Kubo teaches a colored metallic pigment comprising a metallic pigment, a coloring pigment, a first compound and a second compound (Kubo; [0013]).
The metallic pigment is preferably an aluminum pigment because aluminum is high in reflectance and easy to handle due to its small specific gravity (Kubo; [0029]).
The first compound may be a polymer of an unsaturated carboxylic acid or a dibasic acid (Kubo; [0014]). Dibasic acids include hexanedioic acid, i.e., adipic acid (a dicarboxylic having a carbon chain of 4 carbon atoms between two carboxylic acids) and heptanedioic acid, i.e., pimelic acid (a dicarboxylic having a carbon chain of 5 carbon atoms between two carboxylic acids) (Kubo; [0056]). Hexanedioic acid and heptanedioic (i.e., adipic and pimelic acid) meet the claimed hexanol/water partition coefficient requirements as is evidenced by Applicant’s claim 3.
Kubo teaches that the method for obtaining the aluminum pigment is not limited, and can be a method in which aluminum is vapor-deposited foil, which is obtained by vapor depositing aluminum on a film, is crushed (Kubo; [0037]). The average thickness of the aluminum pigment is preferably 0.02-2µm (Kubo; [0035]).
The components may be mixed in a slurry state in the presence of a solvent in order to disperse or dissolve the components (Kubo; [0086-0087]).
Kubo’s pigments may be used paints, inks, and cosmetics (Kubo; [0099-0100] and [0109]).
In Example 6, mineral spirit (i.e., solvent) and adipic acid as a first compound were mixed aluminum pigment of particle size 16µm to obtain a degreased metallic pigment. This pigment is then mixed with mineral spirits (solvent), adipic acid, and a yellow pigment to form a slurry (Kubo; [0114-0115] and [0121]).
Kubo does not explicitly teach VMP aluminum pigments.
With respect to the difference, Venturini teaches blends comprising an effect pigment and aluminum pigment, for use in, e.g., the paint industry (Venturini; Abstract). Preferably the aluminum pigments are 0.01 to 0.05µm. Such pigments are often referred to as vacuum metallized flakes or VMF aluminum pigments due to their manufacture, namely vacuum metallization or physical vapor deposition on a substrate. These aluminum flakes are considerably thinner than conventional aluminum flakes, and have an extremely smooth surface and thus, a mirror-like appearance (Venturini; [0037]). Such vacuum metallized-aluminum flake can be used in cosmetics to achieve a mirror-like metallic effect and a highly reflective, brilliant finish (Venturini; [0012]).
Venturini is analogous art as it teaches compositions comprising VMP aluminum pigments.
In light of the motivation provided by Venturini, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a VMF pigment in the slurries of Kubo containing a solvent and dicarboxylic acid as claimed, thereby arriving at the claimed invention, in order to obtain a final pigmented paint or cosmetic composition with an extremely smooth surface, a mirror-like metallic appearance, and a highly reflective, brilliant finish. Those skilled in the art would have a reasonable expectation of success upon using VMF aluminum pigments in Kubo’s compositions because Kubo teaches that the aluminum pigment may be obtaining by vapor-deposition on a substrate, and Venturini teaches that this is the method in which VMF aluminum pigments are formed. Further, the VMF pigments of Venturini overlap in size with those of Kubo, and are used for the same applications, e.g., paints and cosmetics.
Regarding claim 2, Kubo in view of Venturini are relied upon as teaching the limitations of claim 1 as discussed above. The amount of the first compound (i.e., the dicarboxylic acid) ranges from 0.1 to 30 parts by mass, preferably 0.5 to 20 parts by mass, with respect to 100 parts of the metallic pigment (Kubo; [0057]). This overlaps in scope with the claimed 1 to 12 parts of dicarboxylic acid based on 100parts of the VMP aluminum pigment. When using less than 0.1 parts of the first compound, the coloring pigment does not effectively adhere thereto, and when using more than 30 parts by mass, the adhering is not improved and is therefore economically disadvantageous (Kubo; [0057]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to vary the amount of first compound (i.e., dicarboxylic acid) based on the amount of VMP aluminum pigment, including over the presently claimed, in order to obtain optimized adhering of the metallic and colored pigments while maintaining economic feasibility.
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 4, Kubo in view of Venturini are relied as teaching the limitations of claim 1 as discussed above.
Kubo in view of Venturini does not explicitly teach wherein VMP aluminum slurry comprises 0.1% to 1.2% of the dicarboxylic acid, 9.9% to 10.0% of the VMP aluminum pigment, and 88.9% to 89.9% of the solvent, in terms of mass.
Kubo does, however, teach that the first compound (i.e., dicarboxylic acid) is preferably 0.01 to 0.3 parts by mass, more preferably 0.05 to 0.2 parts by mass with respect to 1 part by mass of the metallic pigment. When within these ranges adhesion of the coloring pigment is adequately improved (Kubo; [0088]). The mixing ratio between the metallic pigment and the solvent is not particularly limited, but is preferably 0.1 to 5 parts by mass with respect to the 1 parts by mass of the metallic pigment. When less than 0.1 parts by mass, dispersion or dissolution may be difficult. When more than 5 parts by mass, filtration takes longer resulting in reduced productivity (Kubo; [0092]).
It has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass percents of the dicarboxylic acid, metallic pigment and solvents in the slurries of Kubo in view of Venturini, including over the presently claimed, in order to obtain good dispersion or dissolution and adequate adhering of the coloring pigment while maintaining efficient productivity and cost-effectiveness.
Regarding claim 5, Kubo in view of Venturini are relied as teaching the limitations of claim 1 as discussed above. Kubo teaches that the resulting pigmented slurries are ultimately used to form paints, inks or molded articles as claimed (Kubo; [0099] and [0125-0127]).
Response to Arguments
The amendments to claim 1 filed 09/12/2025 have overcome the claim objection previously of record.
Regarding the 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 rejections, Applicant's arguments filed 09/12/2025 have been fully considered, but they are not persuasive for the following reasons.
Applicant primarily argues:
“Kubo is directed primarily to production of a colored metallic pigment, more specifically, direct adhesion of a coloring pigment to the surface of a metallic pigment in the coexistence of another compound (paragraph 0012) … In Kubo, the first and second compounds (including dicarboxylic acid) are used to adhere the coloring pigment to the surface of the metallic pigment.
Unlike the above technical concept of Kubo, the present invention is directed to a VMP aluminum pigment showing excellent adhesion with a resin or base material used in an ink, while maintaining the mirror-surface-like design specific to the VMP (paragraphs 0002 and 0016).”
Remarks, page 5.
Examiner respectfully traverses for the following reasons. In response to applicant's argument that Kubo fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., adhesion with a resin or base material) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Although the claims recite a VMP aluminum pigment, there is no claimed requirement that such pigment are “mirror-like.” Further, there no evidence of record to teach or suggest that the metallic pigments of Kubo are not “mirror-like.” Because the metallic pigments of Kubo appear to be equivalent to VMP aluminum pigments as claimed as set forth above on pages 3-5 of the Office Action, those skilled in the art would reasonably conclude that the “colored metallic” pigments of Kubo have a “mirror-like” effect equivalent to the claimed VMP aluminum pigments.
Applicant further argues:
“Thus, the present invention utilizes a vacuum metallized pigment (VMP) without coating or coloring thereon. Such a raw/uncovered VMP pigment has a significantly smooth surface and thus poor adhesion to a resin or base material of an ink.”
Remarks, page 5.
Examiner respectfully disagrees with this argument because the open claim language “comprising” does not exclude the presence of a colorant or coating on the VMP aluminum pigments as presently claimed. In fact, the instant specification at ¶ [0018] teaches that the VMP aluminum pigments may have a coating. When the coating is inorganic, a metal oxide is used such as titanium dioxide and iron oxide (Applicant’s specification; ¶ [0021]). These inorganic coatings are the same as the coloring pigments of Kudo, i.e., iron oxide and titanium dioxide (Kudo; [0042-0043]). Therefore, it is clear that the claimed VMP aluminum pigments include VMP aluminum pigments having a coating or coloring thereon.
Applicant further argues:
“The present inventors have found that that the poor adhesion problem can be solved by treating the raw VIP pigment surface with a specific ‘dicarboxylic acid having an octanol/water partition coefficient (log Pow) of -1 to 1 and having a carbon chain of 2 to 5 carbon atoms between two carboxy groups’ as recited in claim 1 (see also paragraphs 0014 and working Examples).
Kubo does not explicitly disclose the definition of the claimed acid: ‘a dicarboxylic acid having an octanol/water partition coefficient (log Pow) of -1 to 1.’”
Remarks, page 5.
This argument is not deemed persuasive because although Kudo does not explicitly the define the dicarboxylic acids in the same manner as presently claimed, the dicarboxylic acids of Kubo include dicarboxylic acids which meet the claim limitations, e.g., the preferred adipic acid (Kubo; [0056] and [0121]).
Applicant further argues:
“Kubo produces colored metallic pigments and thus has nothing to do with the above specific material used in the present invention and the solution therefor.”
Remarks, pages 5-6.
Examiner respectfully disagrees because the slurry of Kubo comprises a dicarboxylic acid, a VMP aluminum pigment and a solvent of the claimed invention (Kubo; Examples 1 and 6). The claims do not exclude that the metallic pigment be colored or coated as discussed in items 1) and 2) above. In fact, the VMP aluminum slurry of the claimed invention may be used in coating materials or inks, wherein the coating materials or inks may contain colored pigments (see the instant specification at ¶ [0037]). Such inks and coatings would appear to have the same effect as the colored metallic pigments of Kubo, i.e., a colored metallic effect.
Regarding the solution of the claimed VMP slurries, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant lastly argues:
“The secondary reference, Venturini, is cited as teaching VMP aluminum pigments for a mirror-like appearance (the office action, page 10 and 11). As noted above, however, the primary reference, Kubo, is directed essentially to the VMP pigments coated with other pigments. There is no reasonable reason or motivation to modify the colored metallic pigment disclosed in Kubo to be an uncoated VMP pigment for a mirror-like appearance.”
Remarks, page 6.
Examiner respectfully traverses because, as explained in items 1) and 2) above, the claims do not exclude the presence of coated VMP’s, and the there is no evidence of record which shows that the colored VMP metallic pigments of Kubo do not have the “mirror-like” effect of a VMP.
Further, regarding the alternative 35 U.S.C. 103 rejection over Kubo in view of Venturini, Applicant has not explained why there is no reasonable reason or motivation to use the VMP aluminum pigments of Venturini in the compositions of Kubo.
.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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