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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 2, 2026 has been entered.
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 1-18 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.
Considering Claim 1: Claim 1 has been amended to recite “wherein each rutile pigment is separately and independently coated with at least one coating”. There is no support for the particles being separately coated, as the instant specification only provides support for a coating process where a plurality of particles in suspension are coated, rather than the coating occurring separately and independently for each particle.
Considering Claim 11: Claim 11 has been amended to recite “wherein each rutile pigment is separately and independently coated with at least one coating”. There is no support for the particles being separately coated, as the instant specification only provides support for a coating process where a plurality of particles in suspension are coated, rather than the coating occurring separately and independently for each particle.
Claim Rejections - 35 USC § 103
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.
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 1-10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Werner (US Pat. 3,437,502) in view of Patel (US Pat. 5,433,956).
Considering Claims 1 and 4-7: Werner teaches a pigment particle comprising a rutile pigment particle (2:64-3:1); a silica coating applied to the rutile particle prepared from a silicate solution (2:1-44; Example 1); and a further coating of aluminum oxide on the silica layer (2:1-44, Example 1).
Werner does not teach the coating as occurring separately and independently. However, the instant claim is a product by process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113.
Werner does not teach adding a blue pigment to the coating. However, Patel teaches neodymium oxide powder to a sol gel coating, such as a silicate solution (3:33-46). Patel is analogous art as it is concerned with a similar technical difficulty, namely offsetting the color to provide a white appearance. It would have been obvious to a person of ordinary skill in the art to have added the pigment of Patel to the coating layers of Werner, and the motivation to do so would have been, as Patel suggests, to create a white color in the pigment of Werner.
Considering Claim 2: Werner is silent towards the b* value of the particles. However, the color of the particle is an aesthetic design choice that can be controlled by selection of the pigment of the coating and the amount of pigment. It would have been obvious to a person of ordinary skill in the art to have controlled the color of the particles to allow for their use in products having a desirable color for the end user.
Considering Claim 3: Werner teaches pulverizing the coated product into a powder of particles (2:1-44).
Considering Claims 8 and 9: Werner and Patel are silent towards the amount of pigment in the coating layer. However, the amount of pigment would control the coloration of the coating, and thus would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of pigment in the coating, and the motivation to do so would have been, as Patel suggests, to provide the desired color to the pigment of Werner.
Considering Claim 10: Werner is silent towards the b* value of the particles. However, the color of the particle is an aesthetic design choice that can be controlled by selection of the pigment of the coating and the amount of pigment. It would have been obvious to a person of ordinary skill in the art to have controlled the color of the particles to allow for their use in products having a desirable color for the end user.
Considering Claim 18: Werner teaches a coating comprising the particle (7:58-69).
Claims 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Werner (US Pat. 3,437,502) in view of Patel (US Pat. 5,433,956).
Considering Claims 11-14: Werner teaches a method for preparing a pigment particle comprising providing a rutile pigment particle (2:64-3:1) in an aqueous suspension (Example 1); providing a silicate solution/silica precursor (2:1-44; Example 1); forming a silica coating on the pigment particle (2:1-44; Example 1); providing a aluminum oxide precursor the suspension (2:1-44; Example 1);and providing a further coating of aluminum oxide on the silica layer (2:1-44, Example 1).
Werner does not teach adding a blue pigment to the coating. However, Patel teaches neodymium oxide powder to a sol gel coating, such as a silicate solution (3:33-46). Patel is analogous art as it is concerned with a similar technical difficulty, namely offsetting the color to provide a white appearance. It would have been obvious to a person of ordinary skill in the art to have added the pigment of Patel to the coating layers of Werner, and the motivation to do so would have been, as Patel suggests, to create a white color in the pigment of Werner.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the particles are separately and independently coated, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 15 and 16: Werner and Patel are silent towards the amount of pigment in the coating layer. However, the amount of pigment would control the coloration of the coating, and thus would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of pigment in the coating, and the motivation to do so would have been, as Patel suggests, to provide the desired color to the pigment of Werner.
Considering Claim 17: Werner is silent towards the b* value of the particles. However, the color of the particle is an aesthetic design choice that can be controlled by selection of the pigment of the coating and the amount of pigment. It would have been obvious to a person of ordinary skill in the art to have controlled the color of the particles to allow for their use in products having a desirable color for the end user.
Response to Arguments
Applicant's arguments filed June 2, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the sol-gel coating of Patel would be understood as being a matrix rather than a coating is not persuasive. Patel teaches adding a pigment to a silica sol-gel coating. Werner teaches coating a titanium dioxide pigment with a silica sol-gel. Therefore, the combination of Werner and Patel would result in a pigmented sol-gel coating on a pigment, when combined as outlined above.
Werner teaches the same means of coating the particles as the instant claims, and as such would result in the same structure as the instant claims, namely titanium dioxide particles coated with a silica coating. The silica coating, as modified by Patel, includes the claimed blue pigment.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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