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 .
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.
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(s) 1-13, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Landa et al. (US 20170072427) in view of Hippmann et al. (US 20160304721) and Trummer et al. (US 2015/0166760) Regarding claims 1 and 18, Landa et al. teach “a method of printing onto a surface of a substrate (abstract, Figure 1), the method comprising: providing a donor surface (item 12), passing the donor surface through a coating station from which the donor surface exits coated with individual particles (item 14), and repeatedly performing a process (paragraph 107) comprising: treating the surface of the substrate to render affinity of the particles to at least selected regions of the surface of the substrate greater than affinity of the particles to the donor surface (paragraph 51), contacting the surface of the substrate with the donor surface to cause particles to transfer from the donor surface only to the treated at least selected regions of the surface of the substrate, thereby generating a plurality of the individual particles adhered to the treated surface of the substrate, and exposing regions of the donor surface from which particles are transferred to corresponding regions on the substrate (paragraph 48), and returning the donor surface to the coating station to render the individual particles continuous in order to permit printing of a subsequent image on the surface of the substrate (paragraph 48).” Landa et al. fail to teach “wherein at least 50 wt. % of the individual particles are metal pigments comprising a flaky metallic substrate and a surface treatment of the metallic substrate, wherein the surface treatment of the metallic substrate comprises at least one coating layer surrounding the metallic substrate consisting of a metal oxide and a network modifier having the formula RzSiX(4-z)wherein z is an integer from 1 to 3, R is an aryl group having 6 to 18 C atoms or an arylalkyl group having 7 to 25 C atoms or mixtures thereof, and X is, independently at each occurrence, a halogen group or an alkoxy group, and a surface modification of the coating layer comprising at least one heteropolysiloxane or a compound having at least two terminal functional groups which are the same or different from each other and which are spaced by a spacer, wherein at least one group of the at least two terminal functional groups is capable of being chemically bonded to the coating layer.”
Hippmann et al. disclose using a flaky metallic particle which is a metal pigment having a metallic substrate and coating, wherein the coating has a metal oxide (paragraphs 207 and 227) and a network modifier (paragraphs 207 and 224), and then is coated with a heteropolysiloxane (paragraphs 17-22, 141, 155, 192, 194 and 236) in order to provide a metal effect pigment which has improved optical properties (paragraph 11) and/or improved agglomeration properties (paragraph 116). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the particles of Hippmann et al. in the method of Landa et al. in order to achieve improved optical properties and/or improved agglomeration properties. Examiner considers the network modifier and the metal oxide to be the instantly recited “at least one coating layer surrounding the metallic substrate consisting of a metal oxide and a network modifier”. Examiner notes that the language does not prevent other layers/components from being present. Hippmann et al. further disclose that the network modifier is Ran3xn3SiX(4-xn3), and that Ran3 is a non-reactive organic group (paragraph 224), but does not give any examples, leaving the choice up to one having ordinary skill in the art. Trummer et al. disclose a similar coated particle (abstract) using a similar network modifier wherein the R group is also described as a nonreactive organic group (paragraph 123). Trummer et al. disclose that the R group can be aryl (paragraph 126), and further disclose that the modifier can be, for example, phenyltri(m)ethoxy silane (paragraph 129). It has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use phenyltri(m)ethoxy silane a the network modifier of Hippmann et al. because it has been shown in the art to be suitable for the intended purpose. Regarding claim 2, Hippmann et al. further teach “wherein the surface modification is bonded to the top surface of metal oxide (paragraph 42).” Regarding claim 3, Landa et al. further teach “wherein the donor surface exits the coating station coated with a monolayer of the individual particles (paragraph 18).” Regarding claim 4, Hippmann et al. further teach “wherein the flaky metallic substrate has an average thickness (h50 value) in the range of 10 to 500 nm (paragraph 135).” Regarding claim 5, Hippmann et al. further teach “wherein the flaky metallic substrate has an aspect ratio in the range from 1500:1 to 10:1 (paragraph 138), wherein the aspect ratio is defined as the ratio between the average pigment diameter (D50 value) and the average pigment thickness (h50 value).” Regarding claim 6, Hippmann et al. further disclose “wherein the flaky metallic substrate comprises one or more of aluminum, copper, zinc, gold-bronze, chromium, titanium, zirconium, tin, iron and steel flaky substrates or pigments of alloys of these metals (paragraph 142).” Regarding claim 7, Hippmann et al. further disclose “wherein the flaky metallic substrate is made by a PVD process (paragraph 167).” Regarding claim 8, Hippmann et al. further disclose “wherein a first coating layer of the at least one coating layer surrounding the metallic substrate comprises a metal oxide in an amount of at least 60 wt. %, based on the weight of the first coating layer (paragraph 205).” Regarding claim 9, Hippmann et al. further disclose “wherein the metal oxide of the first coating layer comprises one or more of silicon oxide, aluminum oxide, boron oxide, zirconium oxide, cerium oxide, iron oxide, titanium oxide, chromium oxide, tin oxide, zinc oxide, molybdenum oxide, vanadium oxide, oxide hydrates thereof, and hydroxides thereof (paragraph 203).”
Regarding claim 10, Hippmann et al. further teach “wherein the at least one heteropolysiloxane is prepared from components comprising at least one aminosilane component and at least one alkylsilane component (paragraph 233).”
Regarding claim 11, Hippmann et al. further teach “wherein the surface modification of the coating layer comprises the compound having at least two terminal functional groups which are different from each other and which are spaced by a spacer (paragraphs 208-221).” Regarding claim 12, Landa et al. further teach “wherein a receptive and/or adhesive layer is applied onto the substrate when treating the surface of the substrate (paragraph 51).” Regarding claim 13, Landa et al. further teach ‘wherein the donor surface is a hydrophobic surface (paragraph 99).” Regarding claim 16, Hippmann et al. further teach “wherein the flaky metallic substrate is an aluminum pigment made by a PVD process (paragraph 167).” Regarding claim 17, Landa et al. further disclose “wherein the donor surface is a hydrophobic surface comprising an elastomer prepared from poly (dimethylsiloxane) polymers (paragraph 99).”
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the coating is limited to 2 components) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner considers the network modifier and the metal oxide to be the instantly recited “at least one coating layer surrounding the metallic substrate consisting of a metal oxide and a network modifier”. Examiner notes that the language does not prevent other layers/components from being present.
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 JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853