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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 34 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 34 depends from canceled claim 33, therefore claim 34 is indefinite. For the purpose of examination, claim 34 will be interpreted as depending from claim 30.
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) 30, 32, 34-37, 39, 44-45, 47, and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawashima et al. (WO 2020/179840). Kawashima et al. (US 2022/0177708) as English Equivalent for citation.
Regarding claims 30, 32, 37, 39, and 44-45: Kawashima et al. (US ‘708) discloses aluminum pigments comprising a flaky aluminum particle and a coating film [abstract], wherein Example 5 [Ex. 5; 0142-0150; Table 1, Ex. 5], coats flaky aluminum particles (D50 19 µm) [Ex. 1; 0130] with a layer of titanium oxide (100 nm thick) and a layer of amorphous silicon oxide (60 nm thick) via reaction with tetraethoxysilane [Ex. 5; 0142-0150; Table 1, Ex. 5]. Kawashima et al. (US ‘708) discloses the pigment has a thickness of 0.015 to 3 µm (15 nm to 3000 nm) [0020].
While Kawashima et al. (US ‘708) does not specifically disclose the pigment having a thickness of 15 nm to 300 nm, 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].
The claimed effects and physical properties, i.e. a proportion of the composite particles that are bent is 10% or less [instant clam 30]; a number proportion aggregates constituted by at least four particles is 20% or less with respect to a total number of the composite particles [instant claim 30]; when surfaces of the composite particles are evaluated by XPS, the relative element concentration, ((A/B) x 100), between the element concentration of metal, A, and the element concentration of Si, B, is 10% by mole or less [instant claim 37]; when 200 g of an aqueous metallic coating material, containing 12 g of the metal pigment as a nonvolatile content, 18 g of methoxypropanol, 110 g of an aqueous acrylic resin, 18 g of a melamine resin, and 12 g of water, is collected in a flask and a cumulative amount of generated hydrogen gas is measured in a constant-temperature water bath at 60 °C for up to 24 hours, gas generation is 10 ml or less [instant claim 45], 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 34: Kawashima et al. (US ‘708) discloses the pigment has a D50 of 5 to 30 µm [0019] and a thickness of 0.015 to 3 µm (15 nm to 3000 nm) [0020] (corresponding to aspect ratios of ~ 2 to 2000).
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].
Regarding claim 35: Kawashima et al. (US ‘708) discloses the organosilicon compound include tetraethoxysilane and methyltriethoxysilane [0081], and afford a continuous layer having a relatively smooth surface [0082].
Kawashima et al. (US ‘708) does not specifically disclose 40 to 90% Q4 layers. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 36: Kawashima et al. (US ‘708) discloses the pigment has a D50 of 5 to 30 µm [0019] and a thickness of 0.015 to 3 µm (15 nm to 3000 nm) [0020] (corresponding to aspect ratios of ~ 2 to 2000).
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].
Regarding claim 44: Kawashima et al. (US ‘708) discloses a black base paint containing the aluminum pigment was prepared, spayed to afford a base coat layer and subsequently coated with clear (corresponding to a coating layer containing a resin) [0157-0160].
Regarding claim 47: Kawashima et al. (US ‘708) discloses a gel containing the aluminum pigment and 83.4 mass% water [0162].
The claimed effects and physical properties, i.e. when 200 g of the aqueous metallic coating material is collected in a flask and a cumulative amount of generated hydrogen gas is measured in a constant-temperature water bath at 60°C for up to 24 hours, gas generation is 10 ml or less [instant claim 47], 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 49: Kawashima et al. (US ‘708) discloses a black base paint containing the aluminum pigment was prepared and spayed to afford a base coat layer (corresponding to a coating film) [0157-0160].
Allowable Subject Matter
Claims 38, 40-43, 46, and 48 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kawashima et al. (WO 2020/179840) (Kawashima et al. (US 2022/0177708) as English Equivalent) discloses aluminum pigments comprising a flaky aluminum particle and a coating film [abstract], wherein Example 5 [Ex. 5; 0142-0150; Table 1, Ex. 5], coats flaky aluminum particles (D50 19 µm) [Ex. 1; 0130] with a layer of titanium oxide (100 nm thick) and a layer of amorphous silicon oxide (60 nm thick) via reaction with tetraethoxysilane [Ex. 5; 0142-0150; Table 1, Ex. 5]. While Kawashima et al. (US ‘708) discloses the pigment has a thickness of 0.015 to 3 µm (15 nm to 3000 nm) [0020], Kawashima et al. (US ‘708) does not disclose the particles have an average particle thickness of 15 to 160 nm and an average aspect ratio of 20 to 400; and a proportion of Q4 structures, in which a Si atom has four -O-Si- bonds, in the structure of the polysiloxane constituting the polysiloxane layer is 40 to 90% with sufficient specificity. Kawashima et al. (US ‘708) does not disclose a hydrophilicity A, defined by the sum of (a proportion of Q1 structures, in which a Si atom has one -O-Si- bond, x 3) + (a proportion of Q2 structures, in which a Si atom has two -O-Si- bonds, x2) + (a proportion of Q3 structures, in which a Si atom has three -O-Si- bonds), is 10 to 80%. Such a reconstruction of the claims would be based on improper hindsight reasoning.
Response to Arguments
Applicant’s arguments with respect to claim(s) 30-49 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.
Kawashima et al. (WO 2020/179840) (Kawashima et al. (US 2022/0177708) as English Equivalent) was relied on for disclosing aluminum pigments comprising a flaky aluminum particle and a coating film [abstract], wherein Example 5 [Ex. 5; 0142-0150; Table 1, Ex. 5], coats flaky aluminum particles (D50 19 µm) [Ex. 1; 0130] with a layer of titanium oxide (100 nm thick) and a layer of amorphous silicon oxide (60 nm thick) via reaction with tetraethoxysilane [Ex. 5; 0142-0150; Table 1, Ex. 5]. Kawashima et al. (US ‘708) discloses the pigment has a thickness of 0.015 to 3 µm (15 nm to 3000 nm) [0020].
The claimed effects and physical properties, i.e. a proportion of the composite particles that are bent is 10% or less [instant clam 30]; a number proportion aggregates constituted by at least four particles is 20% or less with respect to a total number of the composite particles [instant claim 30]. 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 Kawashima et al. (US ‘708) does not necessarily or inherently possess the characteristics of the claimed product.
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., tip speed (linear speed) of the stirring blade of the reactor and ultrasonic treatment) 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).
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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