DETAILED ACTION
An Office Action was mailed 01/05/2026. Applicant filed a Response on 03/30/2026, amended claims 1, 3, and 10, cancelled claims 18-21, and added claim 22.
Claims 1-10, 17 and 22 are pending.
Claims 1-10, 17 and 22 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10, 17 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, line 3, has been amended to claim “wherein the coloring solution does not comprise Co.”
Although the application as originally filed teaches a coloring component comprising a Co component as an optional component (see claim 3 and specification at ¶¶ [3], [13], [20] and [0018]), basis does not exist for coloring solutions which comprise any Co as an optional component (emphasis added).
Therefore, basis does not exist in the application as originally filed for the present claim language, wherein the coloring solution does not comprise any Co (emphasis added).
It is advised to amend claim 1, line 3, to read: “wherein the coloring solution does not comprise a coloring component comprising Co.”
Claim 12, lines 1-2, recite “wherein the coloring solution does not comprise Fe.”
Although the application as originally filed teaches a coloring component comprising a Fe component as an optional component (see claim 3 and specification at ¶¶ [3], [20] and [0018]), basis does not exist for coloring solutions which comprise any Fe as an optional component (emphasis added).
Therefore, basis does not exist in the application as originally filed for the present claim language, wherein the coloring solution does not comprise any Fe (emphasis added).
It is advised to amend claim 22, line 1-2, to read: “wherein the coloring solution does not comprise a coloring component comprising Fe.”
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6-10, 17 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yanfeng et al, CN 102372443A (Yanfeng).
Yanfeng was cited in the IDS filed 03/19/2025. The Examiner has provided a machine translation of Yanfeng. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-4 and 6-10, Yanfeng discloses a vanadium-based multi-element coating solution comprising a soluble vanadium salt, a soluble zirconium salt, and a solvent, wherein the concentration of vanadium ions is 0.01-6.0 mol/L, and wherein the molar ratio of zirconium ions to vanadium ions (0.01-0.5):1 (i.e., a solution comprising a V component of claims 3 and 10, and a Zr component and solvent of claim 1) (Yanfeng; page 2, lines 49-51).
The vanadium salt is selected from vanadium pentoxide, sodium metavanadate, vanadium oxychloride, or vanadium oxalate (i.e., a vanadium complex of claim 2) (Yanfeng; page 2, lines 56-58).
The soluble zirconium salts are selected from one or more of zirconium oxychloride, tetrabutyl zirconate or zirconium isopropoxide (i.e., the Zr complexes of claim 4) (Yanfeng; page 3, lines 4-5).
The solvent may be methanol, ethanol, water, acetone, ethylene glycol, or mixtures thereof (i.e., an alcohol, glycol or ketone organic solvent of claim 9) (Yanfeng; page 3, lines 7-8). As is evidenced in paragraph in [0045-0049] of Applicant’s specification, methanol, ethanol, water, acetone and ethylene glycol meet the claimed solubility parameter requirements of claim 8.
In Examples 2 , 5 and 7-8, Yanfeng exemplifies various aqueous solutions which comprise at least a vanadium complex (coloring component) and a zirconium complex in the claimed molar concentration of claim 6 (Yanfeng; Examples 2, 5 and 7-8; page 6, lines 26-31; page 7, lines 38-45; page 8, lines 29-40 and page 8, lines 57-page 9, line 6).
See, for example, Example 5 wherein Yanfeng discloses a coating solution comprising sodium metavanadate and water (the water solvent of claim 7), in which the concentration of vanadium ions is 2 mol/L. This composition further comprises tetrabutyl zirconate, wherein the molar ratio of zirconium ions : vanadium ions is 0.2:1 (Yanfeng; page 7, lines 38-45). Using the following calculation:
(2mol V ions/L) * (0.2 mol Zr ions/1 mol V ions) = 0.4 mol Zr ions/L
0.4 mol/L of Zr ion falls within the claimed range of 0.065-0.9 mol/L in terms of Zr ion as claimed in claim 6.
The coating solutions of Yanfeng do not comprise Co as required by claim 1.
While there is no disclosure that the solution of Yanfeng is for coloring a dental ceramic as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for coloring a dental ceramic, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 17, the claim further limits the dental ceramic which is an intended use of the coloring solution of claim 1, and therefore not a required limitation of the coloring solution. As such, claim 17 is rejected based on identical/substantially identical reasons as claim 1.
Regarding claim 22, Yanfeng is relied upon as disclosing the limitations of claim 1 as discussed above The coating solutions of Yanfeng do not comprise Fe as required by claim 22.
Claims 1-5, 7-9, 17 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu, AU 201802012 A4 (Liu).
Liu was cited in the PTO-892 mailed 01/05/2026.
Regarding claims 1-5, 7-9 and 22, Liu discloses a nano zirconium dioxide production plant (Liu; page 1, lines 4-5). The nano zirconium has high strength and toughness, and can be used as ceramic pigments (Liu; page 1, lines 7-14).
In Embodiment 1, Liu exemplifies the following raw materials:
ZrOCl2·8H2O (i.e., a Zr component of claim 1, wherein the Zr component is a complex of claim 4, and wherein the Zr component comprises zirconium chloride oxide hydrate of claim 5);
Y(NO3)3·6H2O (i.e., a coloring component of claim 1, wherein the coloring component comprises a complex of claim 2, and wherein the coloring component comprises Y of claim 3);
Absolute ethyl alcohol (i.e., the solvent of claim 1, wherein the solvent is an alcohol organic solvent of claims 7 and 9); and
Water (the water solvent of claim 7) (Liu; page 2, lines 20 - end of page).
The mixtures forms a solution as claimed (Liu; page 3, lines 9-13). See also Embodiment 2 (page 3, line 20-page 4, line 12).
As is evidenced in paragraph in [0045-0049] of Applicant’s specification ethanol meets the claimed solubility parameter requirements of claim 8.
The solution does not comprise Co or Fe as required by claims 1 and 22 respectively.
Regarding claim 17, the claim further limits the dental ceramic which is an intended use of the coloring solution of claim 1, and therefore not a required limitation of the coloring solution. As such, claim 17 is rejected based on identical/substantially identical reasons as claim 1.
While there is no disclosure that the solution of Liu is for coloring a dental ceramic as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for coloring a dental ceramic, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claims 1-4, 7, 9 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vignali et al, US 2010/0291362 A1 (Vignali).
Regarding claims 1-4, 7 and 9, Vignali teaches an ink set for digital printing on ceramic materials (i.e., for coloring a ceramic) (Vignali; [0001]).
The ink set comprises:
a liquid coloring composition (A) comprising a solvent and at least a cobalt compound;
a liquid coloring composition (B) comprising a solvent and at least an iron compound;
a liquid coloring composition (C) comprising a solvent and at least a compound of a metal chosen from chromium, nickel, and mixtures thereof; and
at least one liquid coloring composition (D) or (E),
wherein liquid coloring composition (D) comprises a solvent and at least a cobalt compound and at least an iron compound, and
a liquid coloring composition (E) comprises a solvent and at least a zirconium compound (Vignali; [0006-0010]).
Vignali discloses a preferred aqueous coloring composition (B) containing 1.0-8.0 wt% of iron and optionally 0.5-3.0 wt% of zirconium, comprising iron ammonium citrate (i.e., a coloring component comprising an Fe complex of claims 1-3), optionally zirconium glycollate (i.e., a Zr component that is a Zr complex of claims 1 and 4), and a mixture of water and propylene glycol as solvents (the water and glycol organic solvents of claims 7 and 9) (Vignali; [0066]). This coloring composition (B) does not comprise Co as presently claimed.
Vignali discloses another variant wherein solvent-based coloring composition (B) contains 2.0-5.0 wt% of iron and optionally 2.0-4.0 wt% of zirconium, comprising iron 2-ethylhexanoate and optionally zirconium 2-ethylhexanoate, and hydrotreated petroleum distillates as solvent (Vignali; 0072]). This coloring composition (B) does not comprise Co as presently claimed.
Vignali further exemplifies coloring composition (B) comprising iron 2-ethylhexanoate (i.e., a coloring component comprising an iron complex of claims 1-3), zirconium 2-ethylhexanoate (i.e., a Zr component comprising a Zr complex of claims 1 and 4), and hydrotreated petroleum distillates as solvent (i.e., an organic solvent of claim 7) (Vignali; [0139] and [0148]). This coloring composition (B) does not comprise Co as presently claimed.
While there is no disclosure that the coloring compositions of Vignali are coloring solutions for a “dental” ceramic as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. a coloring solution for a dental ceramic, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, and further that the prior art compositions which are identical to that set forth in the present claims are capable of performing the recited purpose or intended use.
Regarding claim 17, the claim further limits the dental ceramic which is an intended use of the coloring solution of claim 1, and therefore not a required limitation of the coloring solution. As such, claim 17 is rejected based on identical/substantially identical reasons as claim 1.
Claim 8 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vignali et al, US 2010/0291362 A1 (Vignali) taken in view of evidence by Smith, III et al, US 2025/0375362 A1 (Smith).
Regarding claim 8, Vignali is relied upon as set forth above as disclosing a coloring composition (B) containing 1.0-8.0 wt% of iron and optionally 0.5-3.0 wt% of zirconium, comprising iron ammonium citrate and optionally zirconium glycollate, and a mixture of water and propylene glycol as solvent (Vignali; [0066]).
As is evidenced by Smith, the organic solvent propylene glycol has a solubility parameter of 30.2 (MPa)0.5 (Smith; [0020], Table 1). 30.2 (MPa)0.5 falls within the solubility parameter range of 17.7 (MPa)1/2 or more of claim 8.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Vignali.
Vignali is relied upon as disclosing the limitations of claim 1 as discussed above. Vignali teaches a preferred embodiment wherein coloring liquid (B) comprises 0.5-6.0 wt%, preferably 1.0-4.5 wt% zirconium (Vignali; [0044]). Liquid coloring composition (E), either aqueous or solvent based, has a zirconium concentration of 3.0-15.0 wt%, preferably 6.0-12.0 wt% (Vignali; [0052]).
Vignali teaches that the zirconium compounds of composition (E) form white oxides or white compounds derived from the ceramic material onto which the ink set is applied (Vignali; [0010]). The sets of at least four inks, when applied in varying percentages to the support to be decorated, give rise to a wide range of colors, and are useful for providing a natural stone effect on ceramic materials (Vignali; [0011]).
Vignali does not explicitly teach wherein the content of Zr component is 0.065 to 0.90 mol/L in terms of a Zr ion as claimed.
While Vignali does not explicitly disclose a molarity (mol/L) of Zr ion as presently claimed, 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 molar concentrations of Zr component in the coloring solutions of Vignali, including over the presently claimed, in order to obtain the desired final ceramic color and effect.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3, 10 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/029,695 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the copending application claims a coloring solution for coloring a dental ceramic, comprising a coloring component and a solvent, wherein the coloring component comprises a V component, wherein the solution further comprises a Zr component, and wherein the solution does not comprise Co or Fe.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
1). Applicant’s Amendments filed 03/30/2026 have overcome the 35 USC 112 rejection previously of record.
Note, however, the new grounds of rejection of rejection over 35 USC 112 due to Applicant’s claim amendments (see 2 below).
2). Regarding the negative claim limitation added to claim 1 and found in new claim 22, Examiner agrees that if alternative elements are positively recited in the specification, they may be explicitly excluded from the claims. Regarding claim 1, although basis exists for excluding a coloring component comprising Co, basis does not exist for the exclusion any Co component as presently claimed (emphasis added). Similarly, basis does not exist for excluding any Fe component as presently claimed in new claim 22.
3). Applicant’s arguments, see Remarks, filed 03/30/2026, with respect to the 35 U.S.C. 102(a)(1) rejection of claims 1-10 and 17 over Caldwell et al, US 4142005 (Caldwell) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, Caldwell requires the addition of Co to the coating solutions. Therefore Caldwell does not disclose or suggest solutions which do not comprise Co as currently claimed.
4). Applicant’s arguments, see Remarks, filed 03/30/2026, with respect to the 35 U.S.C. 102(a)(1) rejection of claims 1-4, 7 and 9 over Vignali et al, US 2010/0291362 (Vignali); the 35 U.S.C. 102(a)(1) rejection of claim 8 over Vignali as evidenced by Smith, III et al, US 2025/0375362 ("Smith"); and the 35 U.S.C. 103 rejection of claim 6 over Vignali, have been fully considered, but they are not persuasive.
Applicant primarily argues:
“Turning to the rejections based on Vignali, this reference also seems to require cobalt. For example, composition (A) at [0007], [0065], [0118], [0125], [0138] and [0147] comprises cobalt as an essential ingredient (in the form of cobalt citrate, cobalt 2- ethylhexanoate, or cobalt EDTA). Accordingly, the ink set of Vignali, in particular, composition (A), requires cobalt. For at least this reason, the present claims are not
anticipated by the ink set or composition (A) of Vignali. Moreover, a skilled artisan would not have found it obvious to remove the cobalt from the composition (A) or ink set of Vignali, since the cobalt is an essential component in this reference (see, e.g., [0007]).”
Remarks, pages 6-7.
Although Examiner agrees that composition (A), which requires cobalt, is present in the ink set of Vignali (emphasis added), Vignali discloses separate inks which make up the ink set. These ink compositions, although used together, are separate and distinct from each other, each requiring specific components. Because Vignali discloses coloring compositions (B) which comprise an iron coloring component and a zirconium component (Vignali; [0066] and [0072]), and because coloring composition (B) does not comprise Co as presently claimed, Examiner maintains that Vignali discloses the coloring solutions of claims 1-4 and 7-9 as claimed, and that the Vignali teaches the coloring solution of claim 6 as presently claimed.
Therefore, Applicant’s Remarks have been fully considered, but are not deemed persuasive to overcome the rejections over Vignali.
5). However, the 35 U.S.C. 102(a)(1) rejection of claim 10 over Vignali has been withdrawn for the following reasons. Only after combining the coloring compositions (E) and/or (B) which comprise a zirconium component as claimed (Vignali; [0010], [0066], [0072]) with the required coloring compositions (A) and (C) (Vignali; [0006-0010] and [0053]), is a coloring solution obtained which comprises a chromium and/or nickel component as required by claim 10. Although coloring composition (C) a comprises a chromium and/or nickel component (Vignali; [0007] and [0009]), composition (A) comprises a cobalt compound (Vignali; [0007]), which is excluded by the presently claimed invention.
Therefore, Vignali does not disclose or suggest a coloring solution which comprises a chromium or nickel coloring component and a Zr component, but does not comprise Co as presently claimed.
6). Regarding new claim 22, because liquid coloring composition (B) is required in the ink set of Vignali, and because coloring composition (B) must contain an iron compound (Vignali; [0006-0007] and [0053]), Vignali does not teach or suggest a coloring solution which comprises a coloring component and a Zr component, but does not comprise Fe as required by new claim 22.
7). Upon further consideration and search due to Applicant’s claim amendments, new grounds of rejection are made over Yanfeng and Liu as set forth above.
8). Examiner acknowledges Applicant’s Remarks regarding the double patenting rejection, which remains for the reasons set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE D LIOTT whose telephone number is (703)756-1836. The examiner can normally be reached M-F 8:30-5.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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