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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/22/2025 and 7/10/2023 have been considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I and Species 1 molded article and 2 B composite metal oxide includes a metal oxide of two or more metals selected from Fe Ti Zn Ni Co Mn and Al in the reply filed on 12/1/2025 is acknowledged reading on claims 1, 16, and 18.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claims 3-15, 17 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/1/2025
Claim Objections
Claim 18 is objected to because of the following informalities: Claim 18 recites a diameter of 0.1pm or greater and 500 pm or less. It appears from the specification at [0020] that the units should be microns and for purposes of examination have been interpreted as such. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rick et al (US 2004/0177788)
Regarding Claim 1:
Rick teaches a pigment in a flake (meeting claim 16) form having coating layers of various refractive index and an absorbent layer and a protective layer (See claim 1 reference) The flake form substrate includes alumina (See claim 2 Al.us.b2O.sub.3) (meeting claim 1 for an alumina particle) The coating includes titanium oxide, zirconium oxide, zinc oxide (See claim 3 reference) and an absorbent layer of molybdenum oxide (See claim 9 of reference) as well as iron oxide, nickel oxide etc. (See claim 9-10 of reference) (meeting claim 1 for molybdenum and for the recited metal oxides)
The materials are used in an injection molding machine to form an article [0157]
The coating has a layers having thickness of 20-250nm; 10-100nm and 20-250nm (see claim 1 reference)
Further Regarding Claim 16:
Rick teaches the limitations above set forth. Rick teaches a pigment in a flake (meeting claim 16) form having coating layers of various refractive index and an absorbent layer and a protective layer (See claim 1 reference) The flake form substrate includes alumina (See claim 2 Al.us.b2O.sub.3) (meeting claim 1 for an alumina particle) The coating includes titanium oxide, zirconium oxide, zinc oxide (See claim 3 reference) and an absorbent layer of molybdenum oxide (See claim 9 of reference) as well as iron oxide, nickel oxide etc. (See claim 9-10 of reference)
Further Regarding Claim 18:
Rick teaches the limitations above set forth. The flake form substrates have a thickness of 0.05 to 5 microns. The size of the other two directions usually between 1 and 250 microns [0019] (rending obvious the ranges of claim 18 where one dimension is 200 microns and the other is 100 microns making it 2:1 for aspect ratio).
See MPEP 2144.05(I): "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)"
Claim(s)1 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng Zhou (CN 110317402A) (2019)
Regarding claims 1 and 16
Feng Zhou (CN 110317402A) (2019) teaches a composition comprising a component referred to as a “laser absorber” and color changing aid. Feng teaches the composition includes an alumina flake (meeting claim 1 for a composite particle comprising alumina particle and claim 16 for a flake) with one or more metal oxides coated thereon including molybdenum oxide, (meeting claim 1 for alumina particle containing molybdenum) The metal oxide is antimony trioxide, tin dioxide, titanium dioxide, antimony tin oxide, indium tin oxide, bismuth oxide, copper oxide, ferric oxide, bismuth oxychloride, zinc oxide, molybdenum oxide, ferrous oxide, aluminum oxide or magnesium oxide. (meeting claim 1 for metal oxide two or more including iron / ferrous oxide, Ti / titanium oxide; aluminum oxide and a tin oxide.
Feng Zhou (CN 110317402A) (2019) teaches an alumina flake (meeting the limitation of claim 16 for a flake)
The particle has a diameter of 10 nm to 200 microns (Abstract)
The metal oxide-coated inorganic flakes are selected from metal oxide-coated mica flakes, metal oxide-coated alumina flakes, metal oxide-coated glass flakes, and metal oxide-coated ceramic flakes any one or more of two;
Further, the particle size of the laser absorbing agent is 10.0 nm˜200.0 μm; preferably, the particle size of the laser absorbing agent is 20.0 nm˜70.0 μm.
The agent as a core shell structure (first par in summary of invention)
Below are excerpts from the machine translation teaching flakes of alumina molybdenum and various metal oxides including certain of the claimed metal oxides:
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The reference teaches flakes:
The metal oxide-coated inorganic flakes are selected from metal oxide-coated mica flakes, metal oxide-coated alumina flakes, metal oxide-coated glass flakes, and metal oxide-coated ceramic flakes any one or more of two;
The reference also teaches particles of one or more including alumina and molybdenum oxide as swell as ferric oxide titanium oxides etc. thereby rendering obvious claim 1:
Reference claim 3. The color-changing aid according to any one of claims 1 to 2, wherein: the metal powder is selected from any one or more than two of silver, iron, copper, tin, tungsten, titanium, chromium, nickel, gold, indium, zinc, antimony, aluminum, magnesium or alloy thereof;
the metal oxide is selected from one or more of antimony trioxide, tin dioxide, titanium dioxide, tin antimony oxide, indium tin oxide, bismuth trioxide, copper oxide, ferroferric oxide, bismuth oxychloride, zinc oxide, molybdenum oxide, ferric oxide, aluminum oxide and magnesium oxide;
the metal salt is selected from one or more than two of copper chromate, calcium silicate, hydroxyl copper phosphate, copper orthophosphate, calcium zirconate, zirconium silicate, barium titanate, calcium titanate, magnesium titanate and strontium titanate;
the inorganic flake coated with the metal oxide is any one or more than two of mica flake coated with the metal oxide, alumina flake coated with the metal oxide, glass flake coated with the metal oxide and ceramic flake coated with the metal oxide;
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12503606 Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a composite particle of an alumina particle comprising Mo with an inorganic coating (Claim 1 patent) having the claimed particle size (claim 1) with an oxide such as titanium oxide and iron oxide (Claims 2-3 patent) having a plate like shape (i.e. flake) (claim 7 patent) the instantly claimed particle size aspect ratio thickness etc. (patent claim 1) the diameter will overlap or meet the claimed range based upon the size, thickness, aspect ratio etc. See MPEP 2144.05(I): "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)"
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action for prior art teaching various alumina particles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732