DETAILED ACTION
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7, 14-15, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizuguchi et al. (US 7,083,675).
Regarding claims 1-4:
Mizuguchi discloses a black perylene-based pigment comprising a solid solution comprising at least two compounds represented by formulas I to IV, wherein prior art formulas II, III, and IV are encompassed by present formulas I through III (2:10-3:4):
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Mizuguchi discloses formula II (corresponds to present formula I) comprises R1 and R2 which comprise -(CH2)n-X where X is selected from, among others, phenyl and alkoxyphenyl, and n is 0 to 5 (2:57+; 3:23+). Example groups R1 and R2 include phenylethyl, 4-methoxyphenyl, and 4-ethoxyphenyl (Id.).
Mizuguchi further discloses formulas III and IV (correspond to present formula II and III) comprise R3 and R4 which comprise alkylphenylene, alkoxyphenylene, halogenated phenylene, and naphthalenediyl (2:64+; 3:43+). Example groups R3 and R4 include phenylene, methylphenylene, methoxyphenylene, 4-chlorophenylene, etc. (Id.). Also note Examples use compounds wherein R3 and R4 are phenylene (9:42+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select any of the groups taught by Mizuguchi as providing suitable black pigments, including those resulting in compounds within the scope of the present claims, to provide such pigments in accordance with Mizuguchi, and thereby arrive at the claimed invention.
Mizuguchi teaches the mixing ratio in terms of mole percent of the two compounds, in particular compounds (A) according to formula II relative to compounds (B) according to formulas III and/or IV, is in the range of 5:95 to 90:10 to provide the desired level of blackness (3:60-4:29). In view of the molar mass of each compound, such molar ratios would result in weight ratios that overlap with the claimed weight ratio range. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative molar ratio of a compound according to formula II (corresponds to present formula I) and compound(s) according to formulas III and/or IV (correspond to present formula II and III), including over molar ratios that result in weight ratios falling within the claimed range, to provide a solid solution in accordance with Mizuguchi’s teaching having the desired degree of blackness for a given end use.
Regarding claims 5, 19, and 20:
The examiner submits that the solid solutions taught by Mizuguchi that comprise compounds that otherwise are the same as presently claimed have the same properties as presently claimed.
Regarding claim 7:
Mizuguchi does not require any further ingredients, and so discloses a solid solution consisting of the compounds as claimed.
Regarding claim 14:
Although Mizuguchi does not disclose a process comprising all of the claimed steps, note that “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Mizuguchi meets the requirements of the claimed solid solution, Mizuguchi clearly meet the requirements of present claim.
Regarding claim 15:
Mizuguchi discloses the pigment can be used in inks, paints, toner, etc. (1:18+; 4:55+).
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizuguchi et al. (US 7,083,675) in view of Kruesemann et al. (US 2015/0004424)
Regarding claim 17:
Mizuguchi discloses a black perylene-based pigment comprising a solid solution as previously explained. The pigment can be used in inks, paints, toner, coatings, etc. (1:18+; 4:55+). The pigment has extremely high reflectivity in infrared and near-infrared (NIR) wavelengths (11:5+). Mizuguchi discloses test coatings comprising the pigment and titanium dioxide (5:66+).
Mizuguchi is silent with regard to a multilayer coating comprising a primer coating and a basecoat as presently claimed.
Such coatings were known in the art to have utility. For example, Kruesemann discloses a coating comprising NIR reflective pigment and effect pigments [abstract; 0001; 0024]. The coating comprises a primer, a basecoat, and a clearcoat [0062; 0075]. The primer comprises the NIR reflective pigment and a white pigment [0063; 0074; 0076; 0083]. The basecoat comprises black pigments and/or dyes [0074-0083]. One of ordinary skill in the art would recognize the relative amounts of a black NIR reflecting pigment as taught by Mizuguchi and white pigment as taught by Kruesemann would determine the balance of color and reflecting properties. Additionally, Kruesemann discloses coatings comprising amounts of effect pigments (e.g., titanium dioxide) in the range of 0.1-60% by weight of the NIR reflective pigment to adjust such properties [0045; 0048].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use Mizuguchi’s pigment in conventional coating systems comprising a primer coating and basecoat comprising a black color, as taught by Kruesemann, and further vary the relative amount of the pigment in the primer layer, including over values falling within the presently claimed range, to provide the color and reflecting properties desired for a given end use.
Regarding claim 18:
Mizuguchi discloses the pigment can be used in inks, paints, toner, coatings, etc. (1:18+; 4:55+).
Mizuguchi is silent with regard to a weight amount of the pigment.
One of ordinary skill in the art would recognize the relative amounts of a pigment as taught by Mizuguchi would determine the balance of color and reflecting properties. Additionally, Kruesemann discloses coatings, including thermoplastics, comprising amounts of colorants in a binder can be 5-40% by weight based on solids [0060].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative amount of the pigment, including over values falling within the presently claimed range, to provide the color and reflecting properties desired for a given end use.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive.
In response to the previous anticipation rejections based on Mizuguchi ‘675, Applicant argues the claimed invention is not anticipated or obvious in view of the reference (Remarks, p10). Applicant argues the reference does not result in a solid solution as claimed (Remarks, p10). To support this position, Applicant filed a Declaration with Remarks which is described as providing analysis and additional testing (Remarks, p11). In particular, the Declaration states that “under the harsh conditions used in examples 1 and 7 of Mizuguchi ‘675/D1, no solid solution can be formed” (Declaration, para. 5). The Declaration further argues “the compound where X is a pyridyl group and n is 2, decomposes to the pigment Color Index P.V. 29” (Declaration, para. 5). As evidence, the Declaration cites an additional Mizuguchi Article (para. 6) as well as attempted replication of Examples 1 and 7 of Mizuguchi ‘675 with corresponding thermogravimetric, spectroscopic, and coloristic analysis (para. 7-11). In view of the evidence, the Declaration also states “Mizuguchi ‘675/D1 fails to provide a solid solution as claimed” (para. 12).
The examiner has reviewed the arguments and evidence provided by Applicant in view of the currently amended claims, but respectfully maintains the claims remain properly rejected as being obvious in view of Mizuguchi ‘675. First, the examiner notes the anticipation rejections have been withdrawn and only obviousness rejections remain. The anticipation rejections relied upon Mizuguchi’s Examples 1 and 7, which contained a compound according to formula II wherein R1 and R2 comprise –(CH2)n-X where X is pyridyl and n is 2 (i.e., a 4-pyridylethyl derivative or EPY). Amended claim 1, however, no longer encompasses a group where X is pyridyl, but rather encompasses “X is phenyl, or C1-C5 alkoxyphenyl; wherein n is 1 or 2”. As such, neither of Examples 1 or 7 anticipate the amended claimed invention. The examiner maintains Mizuguchi discloses a genus of compounds that renders obvious the claimed compounds as explained in the current rejections as explained in the current rejections.
With respect to Applicant’s argument that the reference broadly does not result in a solid solution, the examiner does not find this broad argument to be persuasive. Although Applicant has provided evidence from the Mizuguchi Article and further experimental data which suggests that the EPY derivative in Examples 1 and 7 decomposes at the calcining treatment of 500°C for 1 hour taught by Mizuguchi ‘675, there is no evidence to suggest that other derivatives (e.g., the 4-phenylethyl derivative or EPH) taught by the reference and falling within the scope of the amended claims would similarly decompose and fail to result in a solid solution as claimed. Neither the Remarks nor the Declaration present any arguments or evidence that would suggest to one of ordinary skill in the art that the evidence relating to EPY would be generalizable to all other compounds taught by Mizuguchi ‘675 that are encompassed by the present claims (as a non-limiting example: EPH). Therefore, the examiner maintains the obviousness rejections in view of Mizuguchi ‘675.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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