DETAILED ACTION
Claims 1-9 were subjected to restriction requirement mailed on 10/06/2025.
Applicants filed a response, and elected Group I, claims 1-4 and 6-7, and withdrew claims 8-9, and canceled claim 5 with traverse on 12/05/2025.
Claims 1-4 and 6-9 are pending, and claims 8-9 are withdrawn after consideration.
Claims 1-4 and 6-7 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 .
Examiner’s Note
It is noted that there is a typo in paragraph 3, page 4 of Office Action mailed 10/06/2025, “wherein claim(s) 1-6” should be written as “wherein claim(s) 1-7” instead.
Election/Restrictions
Applicant's election with traverse of claims 1-4, 6-7 in the reply filed on 12/05/2025 is acknowledged. This is not found persuasive because the reason set forth below.
With respect to applicant’s traversal of the restriction requirement, Applicant’s remarks are based on the presently amended claims having a technical feature not taught by the references cited in the restriction requirement set forth in the previous Office action mailed 10/06/2025. However, the restriction requirement was properly made with respect to the claims presented at the time of the previous Office action (i.e., the claims as originally presented) and Applicant has not presented any arguments directed to the original claims. Also, even with respect to the newly amended claims filed 12/05/2025, prior art set forth below still show that the amended claims do not make a contribution over the prior art (i.e., that Groups I to II still lack the same or corresponding special technical features) because the groups do not make a contribution over Ono in view of Hiasa as set forth below.
Ono teaches an effect pigment dispersion that comprises water, surface adjusting agent (reading upon a wetting agent), a flake-effect pigment and a rheology control agent, that has a solids content within the range of 0.5 to 10 mass% to form an effect pigment-containing film (i.e., based on the effect pigment dispersion that comprises water, surface adjusting agent, a flake-effect pigment and a rheology control agent, which is within the claimed range) (Ono, Abstract).
Ono further teaches as the rheology control agent in the effect pigment dispersion, a known rheology control agent can be used; it is particularly preferable to use a cellulose-based rheology control agent (Ono, [0083]); cellulose nanofibers are particularly preferably used, in terms of obtaining a coating film with excellent metallic luster (Ono, [0087]).
Ono does not explicitly disclose the cellulose nanofiber is sulfonic acid-modified or a sulfur content in the sulfonic acid-modified cellulose nanofiber (C) being in a range of 0.42 mmol/g to 3.0 mmol/g.
With respect to the difference, Hiasa teaches fine cellulose fiber which is excellent in redispersibility in water (Hiasa, Abstract); and the cellulose can be used as an additive (Hiasa, page 3, 4th paragraph from bottom). Hiasa specifically teaches the fine cellulose fibers having a sulfur introduction amount of 0.5 mmol/g or more based on a sulfo group (Hiasa, Abstract); wherein the amount of sulfur introduced due to a sulfo group is 0.5 mmol/g to 3.0 mmol/g (Hiasa, page 2, bottom paragraph).
As Hiasa expressly teaches, the fine cellulose fibers having a sulfur introduction amount of 0.5 mmol/g or more based on a sulfo group, viscosity characteristics, the redispersibility is excellent (Hiasa, Abstract; page 3, 4th paragraph from bottom). According to Gallo, a sulfo group is -SO3H, which corresponds to a sulfonic acid group (Gallo, page 101, Abstract).
Hiasa is analogous art as Hiasa is drawn to fine cellulose fiber which is excellent in redispersibility in water; and the cellulose can be used as an additive (Hiasa, page 3, 4th paragraph from bottom).
In light of the motivation of introducing sulfur through sulfo group on cellulose, as taught by Hiasa, it therefore would have been obvious to a person of ordinary skill in the art to introduce sulfur through sulfo group (i.e., sulfonic acid group, reading upon sulfonic acid-modified) onto the cellulose nanofibers of Ono, wherein the amount of sulfur introduced due to a sulfo group is 0.5 mmol/g to 3.0 mmol/g, in order to improve the redispersbility and viscosity characteristics, and thereby arrive at the shared technical feature.
Therefore, since the limitations fail to define a contribution over Ono in view of Hiasa, they failed to constitute a special technical feature and hence there is lack of unity between the cited claims.
Applicants primarily argue:
“These excellent effects could never have been expected from Itoh (i.e., the identified closest prior art), which is directed an effect pigment dispersion but fails to disclose a sulfonic acid-modified cellulose nanofiber (C). See MPEP §716.02(e) ("Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art."). As noted above, Wen is directed to a completely different application and does not teach or suggest the stability of the effect pigment dispersion itself against shear. Thus, from the teachings of Itoh and Wen, the skilled artisan could not reasonably have expect to achieve the excellent effects of the present claims, especially directed to the improved viscosity stability.”
Remarks, p. 10
The examiner respectively traverses as follows:
The data to show advantageous effects by the effect pigment dispersion in the present invention is not persuasive for the following reasons.
Firstly, the data is not commensurate in scope with the scope of the claims. The data in the specification only provides support for an effect pigment dispersion comprising a specific wetting agent of specific amount, specific flake-effect pigments of specific amounts, specific sulfonic acid-modified cellulose nanofibers of specific amounts and specific amounts of water; while the claim broadly recite an effect pigment dispersion of any wetting agent of any amount, any flake-effect pigment of any amount,, any sulfonic acid-modified cellulose naofiber of any amount, and water of any amount.
Further, the data does not show using the upper- and lower-ends of the effect pigment dispersion containing a solid content of 0.1 to 10 parts by mass per 100 parts by mass of a total of all components of the effect pigment dispersion, and a sulfur content in the sulfonic acid-modified cellulose nanofiber (C) being in a range of 0.42 mmol/g to 3.0 mmol/g. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of the effect pigment dispersion containing a solid content of 0.1 to 10 parts by mass per 100 parts by mass of a total of all components of the effect pigment dispersion, anda sulfur content in the sulfonic acid-modified cellulose nanofiber (C) being in a range of 0.42 mmol/g to 3.0 mmol/g.
Secondly, the data does not provide proper side-by-side comparison. The closest side-by-side comparison is Example 8 and Comparative Example 6, which has additional difference in the flake-effect pigment and viscosity modifier other than sulfonic acid-modified cellulose nanofiber, solvent used and solid content. Therefore, it is unclear what factor contributes to the observed performance difference.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/05/2025.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al., EP 3705191 A1 (Ono) in view of Hiasa et al., JP 6713590 B1 (Hiasa) (provided in IDS received on 01/05/2023, published June 24th, 2020), and taken in view of evidence by Gallo et al., Sterol sulfates and sulfotransferases in Marine diatoms, Methods in Enzymology, 2018 (Gallo).
The examiner has provided a machine translation of Hiasa et al., JP 6713590 B1 (Hiasa). The citation of the prior art set forth below refers to the machine translation.
Regarding claim 1, Ono teaches an effect pigment dispersion that comprises water, surface adjusting agent (reading upon a wetting agent), a flake-effect pigment and a rheology control agent, that has a solids content within the range of 0.5 to 10 mass% to form an effect pigment-containing film (i.e., based on the effect pigment dispersion that comprises water, surface adjusting agent, a flake-effect pigment and a rheology control agent, which is within the claimed range) (Ono, Abstract).
Ono further teaches as the rheology control agent in the effect pigment dispersion, a known rheology control agent can be used; it is particularly preferable to use a cellulose-based rheology control agent (Ono, [0083]); cellulose nanofibers are particularly preferably used, in terms of obtaining a coating film with excellent metallic luster (Ono, [0087]).
Ono does not explicitly disclose the cellulose nanofiber is sulfonic acid-modified or a sulfur content in the sulfonic acid-modified cellulose nanofiber (C) being in a range of 0.42 mmol/g to 3.0 mmol/g.
With respect to the difference, Hiasa teaches fine cellulose fiber which is excellent in redispersibility in water (Hiasa, Abstract); and the cellulose can be used as an additive (Hiasa, page 3, 4th paragraph from bottom). Hiasa specifically teaches the fine cellulose fibers having a sulfur introduction amount of 0.5 mmol/g or more based on a sulfo group (Hiasa, Abstract); wherein the amount of sulfur introduced due to a sulfo group is 0.5 mmol/g to 3.0 mmol/g (Hiasa, page 2, bottom paragraph).
As Hiasa expressly teaches, the fine cellulose fibers having a sulfur introduction amount of 0.5 mmol/g or more based on a sulfo group, viscosity characteristics, the redispersibility is excellent (Hiasa, Abstract; page 3, 4th paragraph from bottom). According to Gallo, a sulfo group is -SO3H, which corresponds to a sulfonic acid group (Gallo, page 101, Abstract).
Hiasa is analogous art as Hiasa is drawn to fine cellulose fiber which is excellent in redispersibility in water; and the cellulose can be used as an additive (Hiasa, page 3, 4th paragraph from bottom).
In light of the motivation of introducing sulfur through sulfo group on cellulose, as taught by Hiasa, it therefore would have been obvious to a person of ordinary skill in the art to introduce sulfur through sulfo group (i.e., sulfonic acid group, reading upon sulfonic acid-modified) onto the cellulose nanofibers of Ono, wherein the amount of sulfur introduced due to a sulfo group is 0.5 mmol/g to 3.0 mmol/g, in order to improve the redispersbility and viscosity characteristics, and thereby arrive at the claimed invention.
Regarding claim 2, as applied to claim 1, Ono in view of Hiasa further teaches the content of the surface adjusting agent in the effect pigment dispersion as a solids content is preferably 0.01 to 4.0 parts by mass, based on 100 parts by mass of the effect pigment dispersion, in terms of the excellent metallic luster of the multilayer coating film to be obtained (Ono, [0069]).
Given that the solids content of the effect the pigment dispersion is 0.5 to 10 mass%, it can be derived that the content of the surface adjusting agent is in a range of 0.1 to 100 parts by mass (i.e., 0.01/10%=0.1), based on 100 parts by mass of the solid content in the effect pigment dispersion, which encompasses the range of the presently claimed.
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 3, as applied to claim 1, Ono in view of Hiasa further teaches the content of the flake-effect pigment in the effect pigment dispersion as a solids content is preferably 0.2 to 8.0 parts by mass (Ono, [0082]).
Given that the solids content of the effect the pigment dispersion is 0.5 to 10 mass%, it can be derived that the content of flake-effect pigment is in a range of 2 to 100 parts by mass (i.e., 0.2/10%=2), based on 100 parts by mass of the solid content in the effect pigment dispersion, which encompasses the range of the presently claimed.
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, as applied to claim 1, Ono in view of Hiasa further teaches The content of the rheology control agent in the effect pigment dispersion as a solids content is preferably 0.01 to 3.0 parts by mass, based on 100 parts by mass of the effect pigment dispersion, in terms of obtaining a multilayer coating film with excellent metallic luster. (Ono, [0102]).
Given that the solids content of the effect the pigment dispersion is 0.5 to 10 mass%, it can be derived that the rheology control agent is in a range of 0.1 to 100 parts by mass (i.e., 0.01/10%=0.1), based on 100 parts by mass of the solid content in the effect pigment dispersion, which encompasses the range of the presently claimed.
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 6, as applied to claim 1, given that the solids content of the effect the pigment dispersion is 0.5 to 10 mass%, and the effect pigment dispersion that comprises water, surface adjusting agent, a flake-effect pigment and a rheology control agent, it can be derived that water content is 90 to 99.5 mass% of a total of the effect pigment dispersion, which overlaps the range of the presently claimed.
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 7, as applied to claim 1, Ono in view of Hiasa further teaches the effect pigment dispersion may contain a base resin and/or a dispersion resin (Ono, [0110]); in terms of reducing VOC of the paint, the base resin ca be made soluble in water or dispersed in water by using a resin containing a hydrophilic group (Ono, [0049]).
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732