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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, 14-15, and 17-20, in the reply filed on 9/24/2025 is acknowledged.
Claims 8-13 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/24/2025.
Claim Rejections - 35 USC § 102
Claim(s) 1, 5-7, 14-15, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizuguchi et al. (US 7,083,675).
Regarding claim 1:
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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Additionally, Mizuguchi discloses Examples comprising combinations of the above formulas falling with the scope of the present claims (7:12-9:67). For instance, see Examples 1 and 7. Example 1 discloses a solid solution comprising a compound according to formula II wherein R1 and R2 comprise –(CH2)n-X where X is pyridyl and n is 2 (corresponds to present formula I); and a compound according to formula III wherein R3 and R4 are phenylene (corresponds to present formula III) (7:12+). Example 7 uses the same compound according to formula II (corresponds to present formula I); and a compound according to formula IV wherein R3 and R4 are pyridinediyl (corresponds to present formula II) (8:18+). (Note: the description of Example 7 states R3 and R4 are “pyridyl” rather than “pyridinediyl” but this appears to be a typographical error based on the chemical structure and the earlier description of the groups (2:64+).)
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 6:
Mizuguchi discloses Example 1 uses 120.01 g (0.2 mol) of a compound according to formula II (corresponds to present formula I) and 107.3 g (0.2 mol) of a compound according to formula III (corresponds to present formula III) (7:14+). In other words, formula II has a molecular weight of 600 g/mol (=120.01/0.2) and formula III has a molecular weight of 536 g/mol (=107.3/0.2). As disclosed in Table 1, other examples each use different molar ratios, several of which provide weight ratios within the claimed range (9:42+). For instance, Example 4 uses 0.75 mol (450 g) of formula I per 0.25 mol (134 g) of formula II, which provides a weight ratio of 450:134 or 77:23.
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 Rejections - 35 USC § 103
Claim(s) 2-5, 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 2-4:
Mizuguchi discloses a black perylene-based pigment comprising a solid solution as previously explained. Mizuguchi discloses formula II (corresponds to present formula I) comprises R1 and R2 which comprise -(CH2)n-X where X is phenyl or methoxyphenyl and n is 0 to 5 (2:57+; 3:23+).
Mizuguchi further discloses formulas III and IV comprise R3 and R4 which comprise phenylene, methylphenylene, methoxyphenylene, 4-chlorophenylene, etc. (2:64+; 3:43+). 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.
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.
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.
Conclusion
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