DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/29/2026 has been entered.
A final rejection was mailed 02/02/2026. Applicant filed a response, amended claims 1 and 9, and canceled claims 5-8 and 10-11, on 04/29/2026.
Claims 1, 3-4, 9 and 12-20 are pending. Claims 12-20 are withdrawn from consideration. Claims 1, 3-4 and 9 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 Objections
Claim 1 is objected to because of the following informalities:
In order to provide further clarity, it is suggested to amend, “an inorganic color powder, an organic color powder and the inorganic color powder” to “and an inorganic color powder or a combination of an organic color powder and an inorganic color powder” in line 12 of claim 1.
Appropriate correction is required.
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.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lin, CN 111592797A (Lin).
The machine translation of Lin provided with the Office Action mailed 02/02/2026 is referenced below.
Regarding claim 1, Lin teaches a pearlescent paint (i.e., color fixing combination) comprising a base paint and a pearlescent filler (Lin; page 2, lines 9-11).
The pearlescent filler is composed of several metal oxide thin layers coated with mica, and has a particle size of 10-40µm, i.e., a pearlescent powder as claimed (page 3, lines 10-14).
The weight ratio of the base coat to the pearlescent filler is (1-6):1, more preferably 3:1 (Lin; page 3, lines 4-6). These weight ratios overlap in scope with the pearlescent powder weight percentages as claimed. For example, the preferred compositions of Lin comprise 25wt% pearlescent filler (or 1 part) and 75wt% base coat (or 3 parts). 25 weight% pearlescent filler falls within the claimed weight percent ranges of from 15% to less than 40%, or from 15% to 30%, based on the total weight of the composition.
The base coating preferably comprises the following raw materials in parts by weight: styrene-acrylic emulsion 150-250 parts, cellulose ether 2-5 parts (i.e., a hydrophilic polymer comprising a cellulose derivative as claimed), dispersant 1-5 parts, antifoaming agent 1-5 parts, film-forming auxiliary agent 10-15 parts, organic solvent 3-8 parts, water 400-600 parts, filler 25-35 parts, thickening agent 12-16 parts (Lin; page 2, lines 15-18).
In a more preferred embodiment, the base coating comprises the following raw material parts by weight: 200 parts of styrene-acrylic emulsion, 3 parts of cellulose ether, 3 parts of dispersant, 3 parts of antifoaming agent, 12 parts of film-forming auxiliary agent, 5 parts of organic solvent, 505 parts of water, 30 parts of filler, 15 parts of thickening agent (Lin; page 3, lines 25-28).
The styrene-acrylic emulsion is preferably a styrene-acrylate emulsion (i.e., a thickener comprising a polyacrylate or a polystyrene as claimed) (Lin; page 3, line 39).
In a preferred embodiment, the cellulose ether is hydroxyethyl cellulose (i.e., a cellulose hydrophilic polymer as claimed) (Lin; page 4, line 4).
The dispersant is polycarboxylic acid ammonium salt dispersant and/or sodium polycarboxylate salt dispersant (i.e., a dispersant comprising an ammonium salt as claimed or a salt of a polycarboxylic acid) (Lin; page 4, lines 12-13).
Examples of the film-forming auxiliary agent include ester alcohol 12, ethylene glycol monobutyl ether, propylene glycol methyl ether, propylene glycol ethyl ether, propylene glycol butyl ether, dipropylene glycol monomethyl ether, propylene glycol phenyl ether, dipropylene glycol monopropyl ether, dipropylene glycol monobutyl ether, tripropylene glycol n-butyl ether (i.e., alcohol, ester and alkene solvents as claimed) (Lin; page 4, lines 44-47). Organic solvents include propanol, benzyl alcohol, ethylene glycol, propylene glycol, hexanediol (i.e., alcohol and alkene solvents as claimed) (Lin; page 4, lines 56-57).
Inorganic fillers include titanium dioxide and mica powder, wherein the particle diameter of the filler is 700 to 900 mesh (i.e., an inorganic color powder comprising titanium dioxide as claimed) (Lin; page 5, lines 9-12 and 16).
In a preferred embodiment the thickening agent is an acrylic thickening agent (i.e., a polyacrylate thickener or a dispersant comprising polyacids as claimed) (Lin; page 5, line 22).
Therefore, Lin teaches compositions comprising a pearlescent powder, an inorganic color powder, and an adjuvant comprising a solvent, thickener, hydrophilic polymer and dispersant as claimed.
Further, the parts by weight of Lin overlap in scope with the pearlescent powder, adjuvant and inorganic color powder weight percentage as claimed. By means of example only, looking at the preferred amounts of Lin:
The weight ratio of the base coat to the pearlescent filler 3:1 (Lin; page 3, lines 4-6). Therefore, the compositions of Lin comprise 25wt% pearlescent filler and 75wt% base coat (as calculated above). 25 weight% pearlescent filler falls within the claimed weight percent ranges of from 15% to less than 40%, or from 15% to 30%, based on the total weight of the composition.
The base coating preferably comprises in parts by weight: 200 parts of styrene-acrylic emulsion (adjuvant), 3 parts of cellulose ether (adjuvant), 3 parts of dispersant (adjuvant), 3 parts of antifoaming agent (adjuvant), 12 parts of film-forming auxiliary agent (adjuvant), 5 parts of organic solvent (adjuvant), 505 parts of water (adjuvant), 30 parts of filler (inorganic color powder), 15 parts of thickening agent (adjuvant) (Lin; page 3, lines 25-28). Therefore, the base coat preferably comprises a total of 776 parts (200+3+3+3+12+5+505+30+15=776 parts), comprising 30 parts by weight inorganic filler (inorganic color powder) and 746 parts by weight adjuvants.
The preferred compositions of Lin comprise 2.9% by weight inorganic color powder/filler (e.g., titanium dioxide), based on the total weight of the composition (30/776 * 0.25 * 100 = 2.9%), which falls within the claimed inorganic color powder weight percentage range from 1% to 20%, based on the total weight of the composition.
The preferred composition of Lin comprises 72.1% by weight adjuvants (746/776 * 0.75 * 100 = 72.1%), which falls within the claimed adjuvant weight percent range of from 40% to 85%, based on the total weight of the composition.
In Example 1, Lin discloses a pearlescent paint comprising a base paint and a 25µm pearlescent filler in a weight ratio of 3:1, i.e., 25 wt% pearlescent powder (Lin; page 6, lines 55-58).
The base paint includes: 200 parts styrene-acrylic emulsion (a polystyrene/polyacrylate thickener); 3 parts cellulose ether (a hydrophilic polymer comprising a cellulose derivative); 3 parts polycarboxylate sodium salt dispersant;
3 parts antifoaming agent (an adjuvant); 12 parts film-forming aid which is an ester alcohol (an ester alcohol solvent); 5 parts the organic solvent ethylene glycol (an alkene alcohol solvent); 505 parts water (an adjuvant); 30 parts mica powder filler (an inorganic color powder/filler); 15 parts acrylic thickener (i.e. a polyacrylic acid or polyacids dispersant or a polyacrylate thickener); 2 parts preservative (an adjuvant); and 2 parts pH adjuster (an adjuvant) (Lin; page 7, lines 1-15).
The base paint of Example 1 contains the following parts by weight:
780 total parts base paint (200+3+3+3+12+5+505+30+15+2+2=780),
260 parts by weight pearlescent powder (780/3=260)
1040 total parts by weight (780+260=1040)
750 parts by weight adjuvants (780 parts base paint - 30 parts inorganic color powder/filler = 750 parts adjuvant)
30 parts mica powder filler/inorganic color powder.
Therefore, the base paint of Example 1 contains:
72.1 wt% adjuvants based on the weight of the total composition, which falls within the claimed range of 40% to 85% (750/1040 * 100 = 72.1%);
25 wt% pearlescent powder based on the weight of the total composition, which falls within the claimed ranges of 15% to less than 40% (260/1040 * 100 = 25%);
2.9 wt% filler/inorganic color powder based on the weight of the total composition, which falls within the claimed range of 1% to 20% (30/1040 * 100 = 2.9%)
This composition differs from the claimed compositions only in that it contains a polycarboxylate sodium salt dispersant and a mica inorganic color powder.
In other words, the composition of Example 1 of Lin does not comprise a dispersant comprising ammonium salts or an inorganic color powder comprising a titanium dioxide color powder, a titanium-phenol color powder, an iron oxide color powder, or a combination thereof as claimed.
However, Lin teaches that the dispersant may be a polycarboxylic acid ammonium salt dispersant as claimed and/or sodium polycarboxylate salt dispersant, and that the inorganic filler may be titanium dioxide particles (i.e., powder) as claimed or mica (Lin; page 4, lines 12-13, and page 5, lines 9-12 and 16).
In light of the disclosure of Lin of the equivalence and interchangeability of using polycarboxylate salt dispersants and mica powder filler as disclosed in Example 1, with ammonium salt dispersants and titanium dioxide inorganic color powders as presently claimed, it would therefore would have been obvious to one of ordinary skill in the art to use ammonium salts and titanium dioxide as the dispersants and inorganic fillers respectively, such as by substitution of the dispersants and inorganic fillers in the composition of Example 1 of Lin, and thereby arrive claimed invention.
See Examples 3, 5, 8 and 10-13 for additional exemplified pearlescent paints (Lin; page 7, line 25; page 7, line 53-page 8, line 13; 28-31, 43-46 and 53-58; and page 9, lines 1-15).
While there is no disclosure that the pearlescent art paint of Lin is a color fixing combination for contact lens 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 color fixing combination for contact lens, 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 9, this claim further limits the organic color powder, which is an optional embodiment of claim 1 (i.e., an inorganic color powder, an organic color powder and the inorganic color powder, or a combination thereof), and therefore not required. As such, claim 9 is rejected based on identical/substantially identical reasons as claim 1.
Claims 1, 3-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Murai et al, JP H10279853A (Murai) taken in view of evidence by Wikipedia, “Titanium White” (Wikipedia).
The machine translation of Murai provided with the PTO-892 mailed 08/26/2025 is referenced below.
Regarding claims 1, 3-4 and 9, Murai teaches a water-based ink using a pearl pigment, the water-based ink comprising a solvent comprising water and a water-soluble organic solvent, a pearl pigment, and one or more selected from an acrylic resin powder, a water-soluble acrylic resin colloidal dispersion, and a water-soluble acrylic resin emulsion. The water-soluble organic solvent is present in an amount of from 25% by weight to 90% by weight, and the one or more acrylic resins is present in an amount of from 0.01% to 0.9% by weight, based on the total amount of the ink (Murai; [0003] and [0004]).
As the water-soluble organic solvent, one or more polyhydric alcohols selected from glycerin, ethylene glycol, propylene glycol, diethylene glycol, triethylene glycol, dipropylene glycol, butylene glycol and the like are used (i.e., an alcohol or alkene solvent as claimed) (Murai; [0006]).
The coloring agent is a pearl pigment which is obtained by crushing natural mica and coating with titanium oxide, crushing natural mica and coating with iron oxide, or crushing natural mica and coating with titanium oxide and iron oxide. The pigments preferably have a size of 100μm or less (i.e., a pearlescent powder of claim 1 comprising mica as a substrate, and a surface of the substrate is covered with titanium dioxide, iron oxide, or a combination thereof of claim 4) (Murai; [0007]).
The pearl pigment is used in the range of 1 to 40% by weight, based on the total amount of the ink Murai; [0007]).
1 to 40% by weight, based on the total amount of the ink, overlaps in scope with the claimed pearlescent powder ranges of from 15% to less than 40 wt%, or from 15% to 30%, based on the total weight of the composition.
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).
Conventionally known organic pigments and inorganic pigments can be used alone or as a mixture as a complementary colorant for pearl pigments in order to obtain the desired color. For example, azo-based, phthalocyanine-based, azomethyleneazo, and inorganic pigments such as carbon black and titanium white can be used, wherein particles sizes are preferably 100μm or less (Murai; [0007]). As is evidenced by Wikipedia, titanium white is a family of white pigments composed primarily of titanium dioxide (Wiki; page 1, 1st sentence).
The azo-based, phthalocyanine-based, and azomethyleneazo pigments read on the claimed organic color powders of claim 1, and the disazo, monoazo and phthalocyanine color powders of claim 9. Titanium white reads on the claimed inorganic color powders comprising titanium dioxide of claim 1.
The pigments are usually kneaded in polyacrylic acid or polymethacrylic acid (i.e., the polyacid dispersants of claim 1 and the polycarboxylic acid dispersants of claim 3), and their metal salts, ammonium salts, amine salts, and the like (i.e., the ammonium salt dispersant of claim 1). This is convenient because it is easily dispersed when mixed with a solvent (emphasis added). These pigments can be used singly or as a mixture in consideration of the desired color (Murai; [0007]).
As the resin, one or more selected from acrylic resin powder, water-soluble acrylic resin colloidal dispersion, and water-soluble acrylic resin emulsion are used as a pigment dispersant and a thixotropic agent (i.e., a dispersant and thickener as claimed). The resins may be polyacrylic acid, polymethacrylic acid, styrene-acrylic acid copolymers, styrene-methacrylic acid copolymers, and alkali metal, ammonium or amine salts thereof (i.e., the polyacrylate, polymethacrylate, and polystyrene or its derivatives thickeners of claim 1 and the poly(carboxylic) acids and ammonium salt dispersants of claim 1). The acrylic resin is present in an amount of 0.001 to 50% by weight, preferably 0.01 to 0.9% by weight, based on the total amount of the ink (Murai; [0008]).
The teachings of Murai would have presented a recognition of equivalency in the prior art and would have presented strong evidence of obviousness in combining polycarboxylic acids such as polyacrylic acid and polymethacrylic acid with salts thereof, including ammonium salts, in order to provide a pigment dispersant and thickener. Combining equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06.I.).
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069 1072. Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).
An auxiliary fixing agent such as polyvinylpyrrolidone may be blended (i.e., the polyvinylpyrrolidone hydrophilic polymer of claim 1). Further, in order to slightly accelerate the penetration drying of the imprint after imprinting, a small amount of a glycol ether such as diethylene glycol monoethyl ether, diethylene glycol monopropyl ether, diethylene glycol monobutyl ether, and triethylene glycol monobutyl ether may be blended as a penetration aid (i.e., the alcohol and alkene solvents of claim 1) (Murai; [0009]).
Antiseptics and fungicides such as dimethylbenzylalkylammonium chloride (i.e., the ammonium salt dispersant of claim 1 and the dialkyl dimethyl ammonium salt and alkylammonium salt dispersants of claim 3) or benzisothiazol-3-one, may be added in a very small amount (Murai; [0010]).
In Example 1, Murai exemplifies an ink comprising water 20 parts (an adjuvant); glycerin 40 parts (an alcohol solvent); Iriodin 300 Gold Pearl 18 parts (pearlescent powder pigment); Carbon black 15 parts (inorganic color powder); crosslinked branched polyacrylic resin powder 0.3 parts (thickener and polycarboxylic dispersant); Polyvinylpyrrolidone 4 parts (polyvinylpyrrolidone hydrophilic polymer); Diethylene glycol monobutyl ether 2 parts (solvent comprising an alkene alcohol); Diethanolamine 0.3 part (an amine solvent); and 1,2-Benzisothiazol-3-one 0.4 part (an antiseptic/fungicide adjuvant), wherein “part” means “parts by weight” (Murai; [0012-0013]).
This ink comprises 100 total parts by weight (20+40+18+15+0.3+4+2+0.3+0.4 = 100).
Therefore the ink comprises:
18% by weight pearlescent pigment powder, which falls within the claimed range of from 15% to less than 40%, based on the total weight of the composition;
15% by weight of the inorganic pigment powder carbon black, which falls within the claimed from 1% to 20% of an inorganic color powder; and
67% by weight adjuvants (100-18-15 = 67%), which falls within the claimed range of 40% to 85% by weight adjuvants, based on the total weight of the composition.
This ink differs from the color fixing agents as claimed in that it does not contain:
a dispersant comprising an ammonium salt as claimed,
a polyacrylate thickener, and
an inorganic color powder comprises a titanium dioxide color powder, a titanium-phenol color powder, an iron oxide color powder, or a combination thereof as claimed.
However, the teachings of Murai would have presented a recognition of equivalency in the prior art and would have presented strong evidence of obviousness in combining polycarboxylic acids such as polyacrylic acid with salts thereof, in order to provide a pigment dispersant and thickener. Combining equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06.I.).
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069 1072. Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the polyacrylic dispersant and thickener in Example 1 with a salt thereof, i.e., a polyacrylate thickener as claimed, in order to provide a pigment dispersant and thickener.
Further, in light of the disclosure of Murai of the equivalence and interchangeability of using carbon black as disclosed in Example 1, with titanium dioxide as presently claimed; and in using 1,2-benzisothiazol-3-one as disclosed in Example 1 with using dimethylbenzylalkylammonium chloride as claimed, it therefore would have been obvious to one of ordinary skill in the art to use titania white color powder as the inorganic pigment complementary colorant, and to use dimethylbenzylalkylammonium chloride as the antiseptic/fungicide, in the ink of Example 1 of Murai, in order to provide the desired color and antifungal properties, and thereby arrive claimed invention.
While there is no disclosure that the pearlescent ink of Murai is a color fixing combination for contact lens 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 color fixing combination for contact lens, 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.
Response to Amendments and Arguments
1) Applicant’s Remarks and Amendments filed 04/29/2026, with respect to the rejection of claims 1, 3, and 5-11 under 35 U.S.C. 102 over Lin, CN 111592797A (Lin), have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, Lin does not anticipate compositions as claimed which comprise an inorganic color powder comprising a titanium dioxide color powder, a titanium-phenol color powder, an iron oxide color powder, or a combination thereof, as presently claimed.
Note, however, the new grounds of rejection under 35 U.S.C. 103 over Lin due to Applicant’s claim amendments.
2) Regarding Lin, Applicant's arguments filed 04/29/2026 have been fully considered, but they are not persuasive for the following reasons.
Applicant primarily argues:
“The present application discloses in Table 3 and paragraph [0077] that when color fixing combination includes pearlescent powder and inorganic color powder including a titanium dioxide color powder, a titanium-phenol color powder, an iron oxide color powder, or a combination thereof, solidification occurs if the pearlescent powder has a weight percentage over 40% (e.g. Formula 2.1, 2.2, 2.4, and 2.5). On the contrary, when the pearlescent powder has a weight percentage less than 40% (e.g. Formula 2.3, 2.9 to 2.20), solidification will not occur if the weight percentage of the inorganic color powder is from 1% to 30%. Therefore, the applicant was surprised to find that when the color fixing combination includes pearlescent powder and inorganic color powder including a titanium dioxide color powder, a titanium-phenol color powder, an iron oxide color powder, or a combination thereof, the key factor affecting whether the color fixing combination solidifies is that the weight percentage of pearlescent powder needs to be less than 40% and the weight percentage of inorganic powder needs to be from 1% to 30%, which is an unpredictable result.”
Remarks, page 8.
First, Examiner disagrees that the evidence proves that “solidification occurs if the pearlescent powder has a weight percentage over 40%” (emphasis added) because Formulas 2.1, 2.2, 2.4, and 2.5 of Table 3 all comprise 40% by weight pearlescent powder. No composition having pearlescent powder over 40% was compared.
Second, regarding the argument that the key factor affecting whether the color fixing combination solidifies is that the weight percentage of pearlescent powder needs to be less than 40% and the weight percentage of inorganic powder needs to be from 1% to 30%, the data presented in Table 3 is not commensurate in scope with the claims, and thus does not show unexpected results over the claimed range.
Specifically, Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed weight percent range of pearlescent powder and inorganic color powder. The following weight percentage were compared:
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while the claims allow for from 15 to less than 40 wt% pearlescent powder and from 1 to 20 wt% inorganic color powder, or
from 15 to 30 wt% pearlescent powder and from 1 to 30 wt% inorganic color powder when 1 to 4 wt% organic color powder is present.
The lower (15%) and upper (30% with organic pigment and 40% without organic pigment) weight percent limits of pearlescent powder were not compared, and the upper (20% and 30%) weight percent limits of inorganic color powder were not compared.
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).
Third, regarding the claimed adjuvant, while the claims allow for from 40 to 85 weight% of an adjuvant comprising any solvent comprising any alcohols, any amines, any ketones, any esters, or any combinations thereof in any amount; a thickener comprising any polyacrylate, any polymethacrylate, any polystyrene or derivatives, any polyamides, or any combination thereof in any amount; a hydrophilic polymer comprising any polyvinyl alcohol, any cellulose or derivatives, any polyethylene alcohol, polyvinylpyrrolidone and any of its copolymer, any hydroxyapatite, or any combination thereof in any amount; and a dispersant comprising any polyacids and any ammonium salt in any amount;
the comparisons of Table 3 use a single, specific adjuvant in an amount ranging from 54-88 wt%, wherein the adjuvant comprises:
40 wt% solvent comprising glycerol 5 wt%, diethylene glycol 5 wt%, and water 30 wt%;
45 wt% thickener comprising acrylic resin 25 wt% and polymethacrylate 20 wt%; 10 wt% the hydrophilic polymer polyvinylpyrrolidone; and
5 wt% the dispersant comprising polycarboxylic acid 3 wt% and alkylammonium
salt 2 wt%, based on a total weight (100% by weight) of the adjuvant.
Therefore, the evidence is not commensurate in scope over the claimed range of adjuvant components and amounts thereof. Evidence of unexpected results must be commensurate in scope with the claimed invention. See MPEP 716.02(d).
3) Applicant further argues:
“Example 2 of Lin discloses that pearlescent filler based on the total pearlescent art paint has a weight percentage of 50% … , and filler being mica powder (inorganic powder) based on the base paint has a weight percentage of 2.0625% …. Furthermore, table 1 discloses that there is no powder falling on the surface of the coating film (record it as A). That is, 50wt% of pearlescent powder and 2.0625wt% of inorganic powder of Lin does not cause powder shedding (record it as A), so that state after ink preparation is fluidity.
In other words, Lin fails to teach or suggest that the color fixing combination will not solidify when ‘the inorganic color powder comprises a titanium dioxide color powder, a titanium-phenol color powder, an iron oxide color powder, or a combination thereof' as claimed in the amended claim 1, Lin even suggests that pearlescent powder can be used in amounts exceeding 40%, or even as high as 50%. A person skilled in the art upon consulting the contents of Lin, would certainly be unable to obtain a color-fixing combination that will not solidify.”
Remarks, pages 9-10.
Examiner respectfully disagrees with this rationale for the following reasons. The above arguments are based upon Lin’s Example 2. A reference is not limited to a single working example.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
As stated in the above rejection over Lin, Lin teaches a preferred weight ratio of base coating to pearlescent filler of 3:1, i.e., the compositions comprise 25wt% pearlescent filler and 75wt% base coating, which falls within the claimed range of 40-85 wt% (Lin; page 3, line 6).
The base coat may contain 25-35 parts filler, wherein the filler may comprise titanium dioxide or mica (Lin; page 3, lines 20-23 and page 5, lines 9-11). Looking at the preferred embodiment of Lin, the filler comprises 30 parts of a base coat, wherein the base coat has a total of 776 parts (200+3+3+3+12+5+505+30+15=776 parts) (Lin; page 3, lines 25-28). Therefore, the filler, which may be titanium dioxide, comprises 30/766 * 0.75 * 100 = 2.9% of the total composition, which falls within the claimed inorganic color powder ranges of 1-20 wt% and 1-30 wt%.
Therefore, Lin teaches both pearlescent powder and inorganic filler amounts which falls within the claimed ranges. Because the exemplified compositions of Lin do not cause powder shedding so that the state after ink preparation is fluidity, it is clear that Lin teaches color compositions that will not solidify.
Further, as explained in 2) above, the evidence in the specification is not commensurate in scope with the claimed invention, and thus does not provide evidence of the criticality of the claimed proportions and components.
4) Applicant’s Remarks and Amendments filed 04/29/2026, with respect to the rejection of claims 1, 3, and 5-11 under 35 U.S.C. 103 over Ocampo et al, US 2005/0181534A1 (Ocampo) in view of Zhang, US 2020/0376787A1 (Zhang) and Tsuzuki et al, US 6,121,327 (Tsuzuki), have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Specifically, Ocampo, alone or in combination with Zhang and Tsuzuki, does not teach or suggest compositions which comprise a combination of the claimed components, wherein the pearlescent powder has a weight percentage from 15% to less than 40%, based on a total weight of the composition, as presently claimed.
However, upon further consideration, a new grounds of rejection is made under 35 U.S.C. 103 over Murai et al, JP H10279853A.
Conclusion
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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