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 .
Applicant has amended the claims overcoming the previous claim objections. The amendments to the claims find support in the original filing and correct a clerical error.
The applicant has added new claims with limitations not previously considered. Applicant has provided support for the new claims and limitations therein. No new matter is presented.
The remarks filed 4/27/2026 in conjunction with the amended claims do not overcome the previous rejections restated below for the reasons below set forth.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 4/3/2026 has been considered by the examiner.
Claim Objections
Claim 21 is 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.
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, 18 and 22-23 are rejected on the ground of non-statutory 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. and claims 6, 8 and 10 of the issued patent indicate the alumina comprises silicon as in the new claim 23. Claim 1 of the issued patent indicates the size of the particle is 1 nm to 500 nm as in new claim 22 (this would include diameter) 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)"
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive.
Regarding Double Patenting Rejection: applicant asserts the issued patent does not claim an inorganic coating including a composite metal oxide. This is not persuasive as the issued patent recites esp. at claims 2-4 where the inorganic coating part is made of an oxide which includes titanium oxide, iron oxide and the inorganic coating is made of a metal. These rejections are maintained.
Applicant traverses the rejections under section 103 and acknowledge that Rick and Zhou disclose Mo as a potential metal oxide there are no working examples of same and that choosing same from the list in the reference is not obvious. This is not persuasive. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)) [W]hen the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) The references need not include a working example of the claimed embodiments to establish obviousness (had there been on a rejection for anticipation would be considered) Since the references teach each and every element of the claimed invention no undue experimentation is required and the claims are rendered obvious. The references set forth a finite number of identified metal oxides ( MPEP 2141 2143 2145: choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success)
The Rick reference expressly recites Mo oxide in the claims (from a list of approx.. 12 possible different metals as oxides) as more fully above set forth making the selection of same obvious.
Similarly, Zhou claims molybdenum oxide in the claims and also teaches a finite list of metal oxides including only 11 possible choices (antimony trioxide, tin dioxide, titanium dioxide, antimony tin oxide, indium tin oxide, bismuth trioxide, copper oxide, triiron tetroxide, bismuth oxychloride, zinc oxide, molybdenum oxide, Any one or two or more of ferric oxide, aluminum oxide and magnesium oxide)
Applicant traverses the rejection asserting there is no motivation to combine the cited references. This is not persuasive As more fully above set forth the rejections are based on single reference (no combination is made)
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871
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. attempts to distinguish the art based on the properties of the prior art when no properties are instantly claimed – i.e. refractive index and color conversion) 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). (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The claims are drafted as comprising thereby permitting the presence of additional compositional components MPEP 2111 (i.e. the argued thermoplastic, etc. as mentioned in the remarks at p10)
Applicant argues the references teach a mixture rather than a composite. This is not persuasive. The references teach the claimed flake with the claimed coating and also provides a core shell feature establishing a flake core with the claimed coating.
For the above reasons the rejections are made final.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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