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 1-5 in the reply filed on 04/15/2026 is acknowledged. Claims 6-14 are withdrawn from further examination.
The requirement for restriction is hereby made Final.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/221715 to Hamm et al. (hereinafter Hamm) submitted in the IDS filed on 07/05/2023.
A copy of the original document and a machine translation thereof were attached to the previous Office action. The references made to page numbers in the rejection below, refer to the page numbers of the translation.
With respect to claim 1, Hamm teaches effect/pearlescent pigments comprising a glass flake substrate having a thickness of between 0.05-5 µm, a D10 of 1-50 µm, a D50 7-275 m, and a D90 of 15-500 µm (pages 3, 5, 6). Also, Hamm discloses there is a layer A which is a metal oxide on the substrate, which is followed by a sequence of other layers; the sequence can be layers A to E or A to F (page 6). Hamm, additionally, discloses that layer C has MgO.SiO2, and layer D, on the layer C, which comprises of another metal oxide (pages 7 and 8). Layer C reads on the claimed “intermediate oxide layer”. It is important to note that the presence claim recites the open transitional phrase “comprising” which would allow the existence of other layers between the claimed layers.
The disclosed thickness of 0.05-5 microns (i.e. 50nm to 5 microns) overlaps with the claimed range of “equal to or greater than 500 nm”. MPEP 2144.05 states “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).
Although the translation in Hamm uses “mm” as the unit for the size distribution, the actual sizes are in micrometer as shown by the original document. Also, although the machine translation shows “MgO.SiO”, the actual metal oxide is “MgO.SiO2” as, also, evidenced from the original document.
With respect to claim 2, Hamm discloses the glass substrate is made of borosilicate glass, C-Glass, or ECR glass (bottom of page 5). Hamm discloses the substrate can be doped or undoped, and if doped, the doping is of materials such as Ti, Zn, and a few more, or mixture thereof (top of page 6).
With respect to claim 3, Hamm discloses the glass flake substrate has a thickness of between 0.05 micron to 5 microns, in particular between 0.1 to 4.5 microns (page 7). As noted above, under the rejection of claim 1, the size is in fact in micrometer even though the unit shown in the translation appears to be “mm”; this is because the original document shows “µm” as the unit. Thus, the showing of “mm” in the translation is a typographical error.
MPEP 2144.05 states “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).
With respect to claim 4, Hamm discloses the presence/use of SiO2 in the “MgO.SiO2” layer (page 8).
With respect to claim 5, Hamm discloses the use of their effect/pearlescent pigments in paints, varnishes, printing inks, safety printing inks, plastics, as absorbers for the laser making and laser welding, and in cosmetic (page 5).
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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