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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee et al. (US 2019/0169440) in view of Heinz et al. (US 2008/0305184).
Regarding claims 1 and 5: Banerjee et al. (US ‘440) discloses LiDAR reflecting pigments [abstract], wherein an Al core with a thickness of ~ 200 nm contains a first layer of Fe2O3 with a thickness of ~ 135 nm, a second layer formed from Cr with a thickness of ~ 20 nm, and a third layer of Fe2O3 with a thickness of ~ 45 nm [0047-0049]. Banerjee et al. (US ‘440) discloses the pigment reflects ~ 65-75% of electromagnetic radiation between 850 and 950 nm [0021-0022; 0047-0049; Fig. 7B; Fig. 8]. Banerjee et al. (US ‘440) discloses the Al core is platelet shaped [0016-0017; 0028; 0043-0044; Fig. 3; Fig. 4]. Banerjee et al. (US ‘440) discloses the second layer can contain Cr and Co [0008].
Banerjee et al. (US ‘440) does not disclose the second layer containing oxides of Cr or Co. However, Heinz et al. (US ‘184) discloses coated pigments [abstract], wherein the flake pigment is coated with metals such as Cr [0029] or metal oxides such as Cr2O3 [0013]. Banerjee et al. (US ‘440) 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 Cr2O3, as taught by Heinz et al. (US ‘184) in the invention of Banerjee et al. (US ‘440), and would have been motivated to do so since Heinz et al. (US ‘184) discloses the coating can include metals such as Cr [0029] or metal oxides such as Cr2O3 [0013]. 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].
Regarding claim 4: Banerjee et al. (US ‘440) and Heinz et al. (US ‘184) disclose the basic claimed paint [as set forth above with respect to claim 1]; wherein Banerjee et al. (US ‘440) discloses the pigment has a L* of less than or equal to 40 [0023] and the pigment reflects less than 10% on average of electromagnetic radiation between 350 nm and 750 nm [0021; 0047-0049; Fig. 7B].
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 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee et al. (US 2019/0169440) in view of Heinz et al. (US 2008/0305184).
Regarding claims 6 and 10: Banerjee et al. (US ‘440) discloses LiDAR reflecting paints containing pigments [abstract; 0007], wherein a pigment with an Al core having a thickness of ~ 200 nm contains a first layer of Fe2O3 with a thickness of ~ 135 nm, a second layer formed from Cr with a thickness of ~ 20 nm, and a third layer of Fe2O3 with a thickness of ~ 45 nm [0047-0049]. Banerjee et al. (US ‘440) discloses the pigment reflects ~ 65-75% of electromagnetic radiation between 850 and 950 nm [0021-0022; 0047-0049; Fig. 7B; Fig. 8]. Banerjee et al. (US ‘440) discloses the Al core is platelet shaped [0016-0017; 0028; 0043-0044; Fig. 3; Fig. 4]. Banerjee et al. (US ‘440) discloses the second layer can contain Cr and Co [0008]. Banerjee et al. (US ‘440) discloses paints containing a binder 150 and the LiDAR reflecting pigments 10 [0007; 0016-0017; 0043 Figs. 3-4].
Banerjee et al. (US ‘440) does not disclose the second layer containing oxides of Cr or Co. However, Heinz et al. (US ‘184) discloses coated pigments [abstract], wherein the flake pigment is coated with metals such as Cr [0029] or metal oxides such as Cr2O3 [0013]. Banerjee et al. (US ‘440) 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 Cr2O3, as taught by Heinz et al. (US ‘184) in the invention of Banerjee et al. (US ‘440), and would have been motivated to do so since Heinz et al. (US ‘184) discloses the coating can include metals such as Cr [0029] or metal oxides such as Cr2O3 [0013]. 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].
Regarding claim 9: Banerjee et al. (US ‘440) and Heinz et al. (US ‘184) disclose the basic claimed paint [as set forth above with respect to claim 6]; wherein Banerjee et al. (US ‘440) discloses the paint has a L* of less than or equal to 40 [0023] and the paint reflects less than 5% on average of electromagnetic radiation between 350 nm and 725 nm [0021; 0047-0049; Fig. 7B].
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 Banerjee et al. (US 2019/0169440) in view of Heinz et al. (US 2008/0305184).
Regarding claims 11-12: Banerjee et al. (US ‘440) discloses a panel of a vehicle coated with a paint containing LiDAR reflecting pigments [abstract; 0018-0019; Figs. 5-6], wherein a pigment having an Al core with a thickness of ~ 200 nm contains a first layer of Fe2O3 with a thickness of ~ 135 nm, a second layer formed from Cr with a thickness of ~ 20 nm, and a third layer of Fe2O3 with a thickness of ~ 45 nm [0047-0049]. Banerjee et al. (US ‘440) discloses the pigment reflects ~ 65-75% of electromagnetic radiation between 850 and 950 nm [0021-0022; 0047-0049; Fig. 7B; Fig. 8]. Banerjee et al. (US ‘440) discloses the Al core is platelet shaped [0016-0017; 0028; 0043-0044; Fig. 3; Fig. 4]. Banerjee et al. (US ‘440) discloses the second layer can contain Cr and Co [0008]. Banerjee et al. (US ‘440) discloses paints containing a binder 150 and the LiDAR reflecting pigments 10 [0007; 0016-0017; 0043 Figs. 3-4]
Banerjee et al. (US ‘440) does not disclose the second layer containing oxides of Cr or Co. However, Heinz et al. (US ‘184) discloses coated pigments [abstract], wherein the flake pigment is coated with metals such as Cr [0029] or metal oxides such as Cr2O3 [0013]. Banerjee et al. (US ‘440) 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 Cr2O3, as taught by Heinz et al. (US ‘184) in the invention of Banerjee et al. (US ‘440), and would have been motivated to do so since Heinz et al. (US ‘184) discloses the coating can include metals such as Cr [0029] or metal oxides such as Cr2O3 [0013]. 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].
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 electron 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 electron 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) 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].
See attached form PTO-892.
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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