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) 1-2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 2017/0240745).
Regarding claims 1 and 4-5: Schoen et al. (US ‘745) discloses effect pigments based on Al2O3 flakes containing metal oxide coating layers [abstract], wherein Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Schoen et al. (US ‘745) discloses Al2O3 flakes coated with a layer of Fe2O3 (Al2O3 flakes + Fe2O3) [0044].
Schoen et al. (US ‘745) does not specifically disclose Al2O3 flakes + Fe2O3- + Co3O4. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a layer of Co3O4 on the Al2O3 flakes + Fe2O3 pigment based on the invention of Schoen et al. (US ‘745), and would have been motivated to do so since Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Additionally, “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 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
The claimed effects and physical properties, i.e. the pigment reflects IR rays in a range from 850 to 950 nm in an amount equal to or greater than 30% on average [instant claim 1]; a blackness L* of less than or equal to 35, wherein the pigment reflects visible electron rays in an amount equal to or smaller than 15% on average [instant claim 4], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 2: Schoen et al. (US ‘745) discloses the basic claimed pigment [as set forth above with respect to claim 1]; wherein Schoen et al. (US ‘745) discloses the thickness of each layer (Fe2O3- layer and Co3O4 layer) on the surface of the Al2O3 flakes is 20-400 nm [0037].
Schoen et al. (US ‘745) does not specifically disclose a ratio of a content of Fe contained in the first layer to a content of Co contained in the second layer is in a range of 1:05 to 1:1. However, in the case where the claimed ranges “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Claim(s) 6-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 2017/0240745).
Regarding claims 6 and 9-10: Schoen et al. (US ‘745) discloses paints containing a binder and effect pigments based on Al2O3 flakes containing metal oxide coating layers [abstract; 0085; 0094-0095], wherein Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Schoen et al. (US ‘745) discloses Al2O3 flakes coated with a layer of Fe2O3 (Al2O3 flakes + Fe2O3) [0044].
Schoen et al. (US ‘745) does not specifically disclose Al2O3 flakes + Fe2O3- + Co3O4. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a layer of Co3O4 on the Al2O3 flakes + Fe2O3 pigment based on the invention of Schoen et al. (US ‘745), and would have been motivated to do so since Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Additionally, “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 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
The claimed effects and physical properties, i.e. the pigment reflects IR rays in a range from 850 to 950 nm in an amount equal to or greater than 30% on average [instant claim 6]; a blackness L* of less than or equal to 35, wherein the pigment reflects visible electron rays (400-700 nm) in an amount equal to or smaller than 1% on average [instant claim 9], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 7: Schoen et al. (US ‘745) discloses the basic claimed paint [as set forth above with respect to claim 6]; wherein Schoen et al. (US ‘745) discloses the thickness of each layer (Fe2O3- layer and Co3O4 layer) on the surface of the Al2O3 flakes is 20-400 nm [0037].
Schoen et al. (US ‘745) does not specifically disclose a ratio of a content of Fe contained in the first layer to a content of Co contained in the second layer is in a range of 1:05 to 1:1. However, in the case where the claimed ranges “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 2017/0240745).
Regarding claims 11-12: Schoen et al. (US ‘745) discloses effect pigments based on Al2O3 flakes containing metal oxide coating layers [abstract], wherein a binder and the effect pigment are used in automotive coating and finishing systems (ex. base coat and clear coat) {corresponding to a coated panel} [0085; 0091-0095]. Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Schoen et al. (US ‘745) discloses Al2O3 flakes coated with a layer of Fe2O3 (Al2O3 flakes + Fe2O3) [0044].
Schoen et al. (US ‘745) does not specifically disclose Al2O3 flakes + Fe2O3- + Co3O4. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a layer of Co3O4 on the Al2O3 flakes + Fe2O3 pigment based on the invention of Schoen et al. (US ‘745), and would have been motivated to do so since Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Additionally, “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 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
The claimed effects and physical properties, i.e. the pigment reflects IR rays in a range from 850 to 950 nm in an amount equal to or greater than 30% on average [instant claim 11]; the panel is able to be detected by LiDAR [instant claim 11], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 2017/0240745) as applied to claim 1 above, and further in view of Heinz et al. (US 2008/0305184).
Regarding claim 3: Schoen et al. (US ‘745) discloses the basic claimed pigment [as set forth above with respect to claim 1]; wherein Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Schoen et al. (US ‘745) discloses a mixture of TiO2 and Fe2O3 as the first layer (Al2O3 flakes + TiO2/Fe2O3) [0044]. An embodiment containing a layer having a mixture of TiO2 and SnO2 (Al2O3 flakes + TiO2/SnO2) is also disclosed [0036-0037]. An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Schoen et al. (US ‘745) does not disclose the second layer containing CuO. However, Heinz et al. (US ‘184) discloses coated pigments [abstract], wherein the flake pigment is coated metal oxides such as CuO [0013]. Schoen et al. (US ‘745) and Heinz et al. (US ‘184) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of coated pigments. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined CuO, as taught by Heinz et al. (US ‘184) in the invention of Schoen et al. (US ‘745), and would have been motivated to do so since Heinz et al. (US ‘184) discloses the coating can include metal oxides such as CuO [0013] (thereby affording Al2O3 flakes + TiO2/SnO2 + CuO).
Schoen et al. (US ‘745) discloses the thickness of each layer (TiO2/SnO2 + CuO) on the surface of the Al2O3 flakes is 20-400 nm [0037].
Schoen et al. (US ‘745) does not specifically disclose a ratio of a content of Ti and Sn contained in the first layer to a content of Cu contained in the second layer is in a range of 1:4 to 1:6. However, in the case where the claimed ranges “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 2017/0240745) as applied to claim 6 above, and further in view of Heinz et al. (US 2008/0305184).
Regarding claim 8: Schoen et al. (US ‘745) discloses the basic claimed paint [as set forth above with respect to claim 6]; wherein Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Schoen et al. (US ‘745) discloses a mixture of TiO2 and Fe2O3 as the first layer (Al2O3 flakes + TiO2/Fe2O3) [0044]. An embodiment containing a layer having a mixture of TiO2 and SnO2 (Al2O3 flakes + TiO2/SnO2) is also disclosed [0036-0037]. An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Schoen et al. (US ‘745) does not disclose the second layer containing CuO. However, Heinz et al. (US ‘184) discloses coated pigments [abstract], wherein the flake pigment is coated metal oxides such as CuO [0013]. Schoen et al. (US ‘745) and Heinz et al. (US ‘184) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of coated pigments. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined CuO, as taught by Heinz et al. (US ‘184) in the invention of Schoen et al. (US ‘745), and would have been motivated to do so since Heinz et al. (US ‘184) discloses the coating can include metal oxides such as CuO [0013] (thereby affording Al2O3 flakes + TiO2/SnO2 + CuO).
Schoen et al. (US ‘745) discloses the thickness of each layer (TiO2/SnO2 + CuO) on the surface of the Al2O3 flakes is 20-400 nm [0037].
Schoen et al. (US ‘745) does not specifically disclose a ratio of a content of Ti and Sn contained in the first layer to a content of Cu contained in the second layer is in a range of 1:4 to 1:6. However, in the case where the claimed ranges “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Schoen et al. (US 2017/0240745) was relied on for disclosing effect pigments based on Al2O3 flakes containing metal oxide coating layers [abstract], wherein Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. Schoen et al. (US ‘745) discloses Al2O3 flakes coated with a layer of Fe2O3 (Al2O3 flakes + Fe2O3) [0044]. Schoen et al. (US ‘745) does not specifically disclose Al2O3 flakes + Fe2O3- + Co3O4. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a layer of Co3O4 on the Al2O3 flakes + Fe2O3 pigment based on the invention of Schoen et al. (US ‘745), and would have been motivated to do so since Schoen et al. (US ‘745) discloses the metal oxide coating includes one or more layers of Fe2O3, Co3O4, TiO2, and/or SnO2 [0036-0038]. See also In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [MPEP 2144.06].
The claimed effects and physical properties, i.e. the pigment reflects IR rays in a range from 850 to 950 nm in an amount equal to or greater than 30% on average [instant claim 1], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)) [See MPEP 2112]. Evidence {data} would need to be provided showing the composition disclosed by Schoen et al. (US 2017/0240745) does not necessarily or inherently possess the characteristics of the claimed product.
Heinz et al. (US 2008/0305184) was relied on for disclosing coated pigments [abstract], wherein the flake pigment is coated metal oxides such as CuO [0013].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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