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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/08/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 01/08/2026.
Claims 1-3 and 6-9 are presently pending and under examination; claims 4-5 are canceled; claims 1 is amended; claim 9 is new.
The 35 U.S.C. 103 rejection of claims 1-3 and 6-8 over KUBO is maintained; the rejection of claims 4-5 is moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 9 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 9 recites the limitation "the at least one resin that penetrated into the voids" (see claim 9 at lines 1-2). There is insufficient antecedent basis for this limitation in the claim. No “resin that penetrated into the voids” is recited in claims 1 or 8, from which claim 9 depends.
For purposes of examination, Examiner treated claim 9 as meaning the composite pigment according to claim 8, wherein the at least one resin penetrates into the voids so that the voids include the at least one resin. Clarification is requested.
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 1-3 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kubo, et al. (U.S. Pub. No. 2015/0252153-A1) (hereinafter, “KUBO).
Regarding claim 1, KUBO teaches a composite pigment containing a substrate particle and a pigment layer arranged on a surface of the substrate particle (see KUBO at Abstract, teaching a colored metallic pigment comprising a metallic pigment substrate with a coloring pigment layer),
wherein the pigment layer contains at least one pigment, at least one resin, and at least one selected from the group consisting of a silicon oxide, a polysiloxane, and composites thereof (see KUBO at paragraphs [0064]-[0065] and [0075]-[0076], teaching the colored pigment layer comprising a protective layer which may be composed of both resin and oxide, particularly silicon oxide and/or polysiloxane condensate),
and wherein the pigment layer is composed of a plurality of particles in which the at least one pigment is coated with the at least one resin (see KUBO at paragraphs [0114]-[0116], [0120] and [0078]-[0080], teaching that the composite pigment is made by first degreasing the aluminum pigment substrate, then adhering the coloring pigment particles to the substrate using carboxylic acid and amine binders, and then coating the resin layer on top; see also Applicant’s specification at paragraphs [0038]-[0043], [0050]-[0051] and [0059]-[0063], disclosing that the composite pigment according to claim 1 is also made by first degreasing the aluminum pigment substrate, then adhering the coloring pigment to the substrate using carboxylic acid and amine binders, then coating the resin layer on top).
KUBO does not explicitly state that the at least one selected from the group consisting of the silicon oxide, the polysiloxane, and the composites thereof must be adhered to surfaces of the plurality of particles on top of the resin coating; however, KUBO teaches that when both the resin and the hydroxide/oxide (silicon oxide/polysiloxane) are included, the order of forming these two layers is not particularly limited (see KUBO at paragraphs [0065]). Therefore, it is clear from the disclosure of KUBO to form the oxide layer on top of the resin layer, as there are only two options for the order of the layers (resin adhered to oxide surface or oxide adhered to resin surface), and KUBO teaches that either order may be used.
KUBO does not explicitly state mention that the pigment layer is porous and has a specific surface area of 70 to 100 m2/g; however, KUBO teaches a composite pigment that is identical or substantially identical to the claimed pigment, and is formed by an identical or substantially identical process.
KUBO teaches a composite pigment as claimed, comprising:
an aluminum metallic pigment substrate particle (see KUBO at paragraph [0031]; see Applicant’s specification at paragraph [0018]),
0.1 to 30 parts by mass of a carboxylic acid having two or more carboxyl groups and 0.1 to 30 parts by mass of an amine having two or more amino groups (see KUBO at paragraphs [0052]-[0057] and [0061]-[0062]; see Applicant’s specification at paragraph [0040], disclosing using 50 parts by mass or less of a binder comprising a carboxylic acid having two or more carboxyl groups and an amine compound having two or more amino groups in order to render the pigment layer porous),
and a pigment layer comprising 1 to 200 parts by mass of a coloring pigment (see KUBO at paragraph [0047]; see Applicant’s specification at paragraph [0041], disclosing 10 to 60% by mass of pigment), 0.5 to 100 parts by mass of a resin (see KUBO at paragraphs [0066]-[0067]; see Applicant’s specification at paragraph [0030], disclosing 5 to 100% by mass of resin) and 0.5 to 100 parts by mass of an oxide, particularly silicon oxide and/or polysiloxane (see KUBO at paragraphs [0076]-[0077]; see Applicant’s specification at paragraph [0036] and [0051], disclosing 2 to 45% by mass of the oxide, silicon oxide/polysiloxane). KUBO teaches that the pigment is formed by a process which includes:
adding aluminum pigment CS460, with a particle size of 16 μm, and DIACID 1550 to a flask of mineral spirit and heating/stirring the mixture, then cooling to room temperature and subjecting to a degreasing step by filtration to obtain the metallic pigment substrate (see KUBO at paragraph [0144]; see Applicant’s specification at paragraph [0059], disclosing a process including adding aluminum flake pigment CS460, with a particle size of 16 μm, and DIACID 1550 to a flask of mineral spirit and heating/stirring the mixture, then cooling to room temperature and filtering for degreasing to obtain the substrate particles);
adding a mineral spirit solvent, a pigment, e.g., blue pigment LONAL BLUE 7185-PM, the metallic pigment substrate particles, DIACID 1550 and an amine, e.g., ADK STAB LA-67 alicyclic polyamine, to a kneader and stirring at a temperature of 0 to 150 °C for up to 1 hour to adhere the coloring pigment to the surface of the metallic pigment substrate particles (see KUBO at paragraphs [0115], [0119] and [0120]; see Applicant’s specification at paragraph [0060], disclosing a process including adding mineral spirit, the aluminum pigment substrate particles, blue pigment LIONOL BLUE 7185-PM, DIACID 1550 and hindered amine ADEKASTAB LA-67 to a kneader and stirring at 80 °C for 1 hour to obtain pigment-coated particles);
adding the slurry containing the colored metallic pigment to a flask containing mineral spirit and adding acrylic acid, trimethylolpropane trimethacrylate and azobisisobutyronitrile (and/or divinylbenzene), and heating/stirring the resulting mixture at 50 to 150 °C for 30 minutes to 30 hours, then cooling to room temperature and filtering to obtain the colored metallic pigment having a layer of resin on the surface, wherein the polymerization reaction is preferably conducted under an atmosphere of inert gas such as nitrogen (see KUBO at paragraphs [0070]-[0071] and [0116]; see Applicant’s specification at paragraph [0061], disclosing a process including adding the slurry containing the pigment-coated particles to a flask of mineral spirit and adding acrylic acid, trimethylolpropane trimethacrylate, divinylbenzene and azobisisobutyronitrile, and heating/stirring the resulting mixture at 100 °C for 6 hours while nitrogen is blown in, then cooling to room temperature and filtering to obtain the resin-coated particles; see Applicant’s specification at paragraph [0045], disclosing polymerization at 50 to 150 °C for 30 minutes to 30 hours);
wherein the protective layer comprising the resin may also include an oxide, e.g., a silicon oxide and/or polysiloxane, which is included by stirring a dispersion of the colored metallic pigment and solvent (e.g., water and/or isopropyl alcohol) with a neutralizing agent, such as monoethanolamine, and a solution containing a silicon compound, e.g., a silica precursor such as tetraethoxysilane (TEOS), in a slurry or paste state in order to form the layer comprising silicon oxide on the surface of the colored metallic pigment, wherein the protective layer is formed by, e.g., heating/stirring the mixture at 50 to 150 °C for 30 minutes to 30 hours, then cooling to room temperature and filtering (see KUBO at paragraphs [0074], [0076], [0078]-[0082] and [0116]; see Applicant’s specification at paragraph [0063], disclosing a process including adding a slurry of the resin-coated particles dispersed in isopropyl alcohol, adding water and monoethanolamine, then adding silica (TEOS) and stirring at 70 °C for 6 hours and cooling to room temperature and filtering to obtain a composite pigment coated with the pigment, resin and silica on the surface).
Therefore, as the composite pigment of KUBO is substantially identical to the claimed invention and is formed by a substantially identical process, it would be expected to have the same or overlapping properties as the claimed invention, including porosity and specific surface area of the pigment layer. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 2, as applied to claim 1 above, KUBO teaches a composite pigment according to claim 1, wherein the at least one resin is a radically polymerized resin of at least one selected from a monomer and an oligomer, and the at least one selected from the monomer and the oligomer has two or more polymerizable double bonds (see KUBO at paragraph [0066]).
Regarding claim 3, as applied to claim 1 above, KUBO teaches a composite pigment according to claim 1, wherein the substrate particle comprises aluminum or an aluminum alloy (see KUBO at paragraphs [0028]-[0029]).
Regarding claim 6, as applied to claim 1 above, KUBO teaches a composite pigment according to claim 1, and further teaches a thermoplastic resin composition comprising the composite pigment according to claim 1 (see KUBO at paragraphs [0099] and [0106]-[0107], teaching a synthetic resin master batch composition containing the colored metallic pigment blended in a matrix of a thermoplastic resin, e.g., polyethylene).
Regarding claim 7, as applied to claim 6 above, KUBO teaches a composite pigment according to claim 6, and further teaches a molded body comprising the thermoplastic resin composition according to claim 6 (see KUBO at paragraphs [0099] and [0106]-[0107], teaching a resin molded article formed from the synthetic resin master batch composition).
Regarding claims 8-9, as applied to claim 1 above, KUBO teaches a composite pigment according to claim 1, wherein the pigment layer includes voids between the plurality of particles, as recited by claim 8, and wherein the at least one resin penetrates into the voids such that the voids include the at least one resin, as recited by claim 9. KUBO teaches a composite pigment according to claim 1 wherein the weight ratio of the amount of pigment to the total amount composite pigment is approximately 2% to 44% (calculated from the amounts of the composite pigment components disclosed in paragraphs [0047], [0057], [0062], [0067], and [0077]; KUBO teaches, with respect to 100 parts by weight of the metallic pigment substrate, 5 to 100 parts of the coloring pigment, 0.5 to 20 parts of the amine component, 0.5 to 20 parts of the carboxylic acid component, 5 to 50 parts of the resin, and 5 to 30 parts of the oxide/hydroxide (i.e., silicon oxide/polysiloxane)), and Applicant’s specification clearly states that ratios of the amount of pigment to the total amount of composite pigment within a range of 10 to 60% by mass will result in the composite pigment as claimed wherein the pigment layer has the voids as claimed and the resin penetrates into the voids (see Applicant’s specification at paragraph [0041]).
As discussed in the rejection of claim 1 above, KUBO teaches a composite pigment which is the same or substantially similar to the claimed composite pigment and is made by the same or a substantially similar method; therefore, the composite pigment of KUBO would be expected to have the same or overlapping properties as the claimed composite pigment. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Response to Arguments
Applicant's arguments filed 01/08/2026 have been fully considered but they are not persuasive.
Applicant argues:
“In comparing between Example 1 and Comparative Example 1, the surface area of the pigment layer can be set to 70 m2/g by a metal oxide adhesion step… Kubo neither discloses nor suggests that the specific surface area of the composite pigment is set to 70 to 100 m 2/g, and that the composite pigment is made by the method including the metal oxide adhesion step… at various steps, Kubo's composite pigment is made using different amounts of compounds or varying methods, so that it cannot be said that that Kubo discloses a composite pigment made using the same or substantially similar method step as the method indicated in the present specification. For example, paragraph [0040] of Applicant's specification provides carboxylic acid and/or an amine compound as binders to the substrate particles and the pigment (colored pigment), where the amount of such a binder depends on the type of pigment and the particle size thereof, however, it is preferably 50 parts by mass or less and more preferably 40 parts by mass or less relative to 100 parts by mass of the pigment. On the other hand, paragraphs [0052]-[0057] and [0061]-[0062] disclose separate binder compounds referred to as a first compound (carboxyl groups) and a second compound (amine) that are each provided at 0.1 parts or more to 30 parts by mass or less. Thus, such is clearly different from the present specification” (see Remarks at pg. 5).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the claimed invention is not obvious over KUBO because KUBO’s composite pigment is made using different amounts of compounds or varying methods, and specifically that KUBO does not disclose or suggest a metal oxide adhesion step and discloses 0.1 to 30 parts by mass of each binder component while the present specification discloses 50 parts by mass or less of both binder components, the Examiner respectfully disagrees. As explained in detail in the rejections above, KUBO discloses a composite pigment which is the same as or substantially similar to the claimed invention and is made by a method which is the same as or substantially similar to the claimed invention, therefore the composite pigment of KUBO would be expected to have the same or overlapping properties as the claimed composite pigment. Additionally, KUBO does explicitly teach a metal oxide adhesion step (see KUBO at paragraphs [0074], [0076] and [0078]-[0082]; see Applicant’s specification at paragraphs [0062]-[0063]; both adhere metal oxide (silica) by stirring a dispersion of the colored metallic pigment and solvent (e.g., water and/or isopropyl alcohol) with a neutralizing agent, such as monoethanolamine, and a solution containing a silicon compound, e.g., a silica precursor such as tetraethoxysilane (TEOS), in a slurry or paste state in order to form the layer comprising silicon oxide on the surface of the colored metallic pigment). Further, KUBO discloses a binder which is the same as the binder in the present specification (both include a first and second component), which is used in a total amount of 0.2 to 60 parts by mass, while the present specification discloses 50 parts by mass or less of the identical binder (see KUBO at paragraphs [0052]-[0057] and [0061]-[0062]; see Applicant’s specification at paragraph [0040]; both disclose a binder comprising a carboxylic acid having two or more carboxyl groups and an amine compound having two or more amino groups); 0.2 to 60 parts by mass encompasses the range of 0 to 50 parts by mass, therefore KUBO teaches using the same binder in the same amounts, and the properties of the composite pigment of KUBO would be expected to be the same as or overlap with the properties of the claimed invention. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Applicant argues:
“the claimed invention provides a remarkable effect of high-water resistances and suppression of peeling of pigment from the substrate particles. It is evident from the fact that, according to Test Example 2, the composite pigments of Example 1 with the specific surface area of 70 m 2/g significantly generates less gas than that of Comparative Example 1 with the specific surface area of 25 m 2/g, and the pigment layer is inhibited from peeling off from the substrate surface… In this light, the features of claim 1 are remarkable and unexpected from those of Kubo which does not disclose the claimed pigment layer” (see Remarks at pg. 6).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the claimed invention provides unexpected results, the Examiner respectfully disagrees. Allegations of unexpected results are discussed in MPEP § 716.02. Applicant has provided no explanation or evidence regarding why these results would be considered unexpected. The composite pigment includes resin, which is known to be water resistant. KUBO also explicitly teaches that the composite pigment provides improved adhesive property and water resistance, suppresses gas generation, and remarkably reduces peeling of the pigment from the substrate (see KUBO at paragraphs [0057], [0064] and [0066]); these results are clearly expected, not unexpected, from the prior art, as the prior art explicitly discloses that they are expected. Further, the results to which Applicant refers are not commiserate in scope with the claimed invention. Example 1 and Comparative Example 1 only show the difference in results for a specific composite pigment containing silica vs. one containing no silica (see paragraphs [0066], [0077], [0082] and Table 3 of the present specification). The results of Example 1 are for the specific composition of Example 1 having a specific surface area of 70 m2/g, not for the broad range of composite pigments of the present claim 1 having a specific surface area of 70 to 100 m2/g (see paragraphs [0059]-[0063], [0066] and Table 3 of the present specification).
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731