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 over coming certain rejections under section 112 giving rise to new rejections under section 112 as more fully below set forth. The amended claims do not overcome the previously cited prior art now presented with rejections under sections 102 and 103. As a result of the amended clams further search and consideration has identified additional prior art below cited.
The amendments to the claims find support in the original filing. No new matter is presented.
The priority documents are acknowledged.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-6 are 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.
Applicant claims in claim 1: the flaky base material has a coarse particle area fraction of 9 % or less. The term “coarse particle area” does not appear to possess a conventional definition in the art at the time of filing the invention. The specification indicates "coarse particle" denotes a particle that is sufficiently smaller than the flaky base material, for example, a particle having a major diameter of about 0.01 microns to about 3 microns as observed with a scanning electron microscope, or a particle having a particle diameter of about 0.05% to about 15% of the particle diameter of the flaky base material. (emphasis added by examiner) “sufficiently smaller’ is a relative term and not defined. Giving the broadest reasonable interpretation would not limit the claims to the “for example” ranges. This term is indefinite as claimed.
Claim Objections
Claim 6 is rejected as being directed to three different products and not a single invention (i.e. an ink, a coating material, a toner, a molded article) Applicant should correct the claims by separating them into single claims. Absent same, for purposes of examination, the claim will be interpreted such that an ink, a coating material, a toner or a molded article are obvious variants.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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
INTRODUCTION/CLAIM INTERPRETATION
Any and all claim interpretations above and below set forth are expressly incorporated into each and every rejection below as though fully set forth therein.
Regarding the limitation for “flaky”: no definition is set forth in the instant specification. This term is being given its broadest reasonable interpretation in view of the specification and is interpreted to includes flakes, scales (scaly), and platelets.
Regarding the limitation for a colorant: giving the claims the broadest reasonable interpretation in view of the specification, the colorant of claim 1 will include both organic and inorganic colorants (claim 3 requires an organic colorant)
Regarding the limitation for “flaky base material has a coarse particle area fraction of 9 % or less: The claims are being afforded the broadest reasonable interpretation in view of the specification. The prior art below recited does not require any coarse particle surfaces. As such the below prior art is deemed to meet this limitation for 9 % or less.
Regarding the limitation: “formed by coating” The below prior art teaches a product of a base flake material including the instantly claimed species layered and/or coated with the instantly claimed chemical components. As such the prior art teaches the instantly claimed product. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). MPEP 2113 product by process rejections may be 102 or 103.
Regarding the limitation for: “the surface of the flaky base material has a coarse particle area fraction of 9 % or less”
Giving the claims the broadest reasonable interpretation in view of the specification: "coarse particle" denotes a particle that is sufficiently smaller than the flaky base material, for example, a particle having a major diameter of about 0.01 microns to about 3 microns as observed with a scanning electron microscope, or a particle having a particle diameter of about 0.05% to about 15% of the particle diameter of the flaky base material.
The below rejections are set forth as 102 or in the alternative 103 (anticipation or in the alternative obviousness) due to the indefinite language of the claims.
The below cited prior art does not require any coarse surface area of the flaky base material as such it meets the instant claim limitation.
The basis for the 103 rejection, assuming arguendo the prior art which does not require coarseness does not meet the claim limitation is as follows:
The examiner notes that where the below cited art uses in one instance the same commercial product it will necessarily possess the claimed property in the claimed range.
The prior art flaky base is the claimed chemical base (i.e. alumina mica, glass etc.) is being used for the same purpose (i.e. a pigment) and will necessarily possess a degree of surface properties including but not limited to coarseness suitable for layering the instantly claimed layers (the prior art teaches the claimed layers and species thereof) or in the alternative will overlap said range. 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)
The prior art flaky base is the claimed chemical base (i.e. alumina mica, glass etc.) is being used for the same purpose (i.e. a pigment) as such one of ordinary skill in the art at the time of filing the invention would utilize a degree of surface properties including but not limited to coarseness suitable for layering the instantly claimed layers (the prior art teaches the claimed layers and species thereof) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(a)(2) as anticipated by or Kitamura (US 2009/0069447A1)
Regarding Claims 1-6
Kitamura (US 2009/0069447A1) discloses a pigment with gold tone, cosmetic, ink and resin composition comprising same (Title)(satisfying the intended use of claim 6)
The pigment is a scaly glass substrate (i.e. flake) with a base coating comprising a metal base coating of silver nickel and nickel based alloy, a gold coating containing gold,(being an inorganic colorant and a metal) and a yellow coating with yellow colorant (Abstract) [0016]
The glass flake includes those that are commercially available such as MICROGLAS, METASHINE NS series from Nippon [0048] (where METASHINE is indicated as a supplier of glass flakes in the instant specification at [0019]) [0048] of reference (meeting the limitation of claim 1 for a flake base material and claim 2 for glass)
The base coating is a metal such as silver nickel and nickel based alloy [0042] (meeting claims 1 and 4 for a metal)
There is a gold coating [0052-0054] (meeting the limitation of claim 5 for a metal layer on the pigment)
The coatings may be multi-layer coatings [0049-0051] (meeting the limitation of claim 5 for a metal layer on the pigment)
There is a yellow coating [0055-0059] including those set forth in [0060-0064](meeting the limitation of claim 1 for a colorant and claim 3 for an organic pigment colorant)
Yellow acid colorants prescribed by Color Index Generic Name (C. I. G. N), including for example, Acid Yellow 23 (certified colorant name in Japan: Yellow No. 4, hereinafter the name in the parenthesis indicates the certified colorant name in Japan), Food Yellow 3 (Yellow No. 5), Acid Yellow 73 (Yellow No. 202 (1), Yellow No. 202 (2)), Acid Yellow 3 (Yellow No. 203), Acid Yellow 40 (Yellow No. 402), Acid Yellow 1 (Yellow No. 403), Acid Yellow 36 (Yellow No. 406) and Acid Yellow 11 (Yellow No. 407).
yellow pigments prescribed by C. I. G. N. above, including, for example, Acid Yellow 73 (Yellow No. 201), Solvent Yellow 33 (Yellow No. 204), Pigment Yellow 12 (Yellow No. 205), Pigment Yellow 1 (Yellow No. 401), Solvent Yellow 5 (Yellow No. 404), Solvent Yellow 6 (Yellow No. 405), Pigment Yellow 110, Pigment Yellow 139, Pigment Yellow 150 and Pigment Yellow 154. (meeting the limitation for a colorant and for an organic pigment – see instant specification at [0022-0023] where many of the yellow pigments of the reference are expressly recited as organic pigments)
The gold coating is uniform [0053] the silver and gold coating and silica coating with yellow pigment dispersed is uniform [0108] [0124] The coating is deposited uniformly [0108][0124][0053]
The substrate has an average particle diameter of 1 micron to 500 microns thickness of 0.3 to 10 microns [0034] or 20 microns to 500 microns for cosmetics [0035] for an ink 1-40 microns or 15-30 microns [0037] where the pigment particle diameter is 1 to 40 microns [0037] the average particle diameter of the water insoluble colorant may be 10 to 500 nm [0092] The yellow pigment has an average particle diameter of about 100 nm [0107] meeting the limitation for coarse particles (i.e. particle sufficiently smaller than the flaky base material meeting the claim limitation a diameter 0.05-15 % of the diameter of the flaky base
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(a)(2) as anticipated by or in the alternative under 35 U.S.C. 103 as obvious over Filou et al (US 2011/0236698)
Regarding Claims 1-6
Filou discloses a composition for manufacture of articles comprising a thermoplastic polymer, an effect pigment and at least one metallic pigment (Abstract) [0029-0032]
As an example Metashine platelet are coated with nickel, chromium molybdenum alloy [0158]
Pigment with effects are used including Iriodin 119 from Merck formed from mica flakes coated with titanium dioxide particles size of 10-60 microns [0028] and Idriodin 120 from Merck from mica flakes coated with titanium dioxide in particle sizes of 5 to 20 microns [0229]
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(The examiner notes the specification of the instant application utilizes Metashine and Iriodin : Metashine is a commercially available flaky base material of mica as recognized in the instant specification at [0019] Iriodin is a flaky mase material of mica [0019])
The interference pigments include nacres (pearlescent), reflective interference particles and goniochromatic pigment and mixtures [0041] the nacres include pigments such as titanium mica coated with an organic dye or coated with a metal oxide such as chromium oxide [0043] titanium mica coated with organic dye and there are at least two successive layers of metal oxides and/or organic dye stuffs [0108] see also claim 7 of reference (meeting the limitation for flake base material of mica with at last one metal or metal oxide with an organic colorant and with a metal or metal oxide of claims 1-5)
The synthetic substrate is coated at least partially with at least one layer of at least one metal oxide [0044] such as titanium oxide [045] metallic pigments include aluminum, coper and alloys [0048] (meeting claims 4-5)
The interference pigment includes nacres pigments which may be iridescent and include titanium mica coated with chromium oxide and at least two successive layers of metal oxides and or organic dyestuffs [0108] (meeting claim 1 for metal and metal oxide with a colorant and claim 3 for an organic pigment as colorant and claim 2 for mica and claim 4 for metal oxides)
Micas covered with at least one layer of metal oxide is preferably used [0112]
The composition comprises at least one mono chromatic pigment [001] The pigments are in the form of a powder [0095-0100]
The composition incudes filler of silica and titanium dioxide [0053]
The composition is used as coatings [0063] (meeting claim 6)
Polymers for the composition include amides, polyolefins, epoxy and polyester and epoxy polyether hybrid and polyurethane [0069=0070]
The reference indicates the mica is coated and has at least two successive layers [0043]
Filou: The examiner maintains that since the mica is coated, since the references uses the same commercial materials of the instant application, and since the reference teaches multiple successive layers, that one of ordinary skill in the art would readily envisage an uniform coating. A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)) In the alternative, assuming arguendo one would not envisage a uniform coating, the examiner maintains that due to the layers and the reference of coating a uniform coating would be obvious to try by one of ordinary skill in the art at the time of filing the invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as obvious over Hetzenegger DE 4225357A1 as evidenced by Merck Safety Data Sheet or in the alternative further in view JP S 6218770
Regarding Claims 1-6
Hetzenegger DE 4225357A1 (1994) discloses platelet shaped substrates coated with organic colorants [0001] (meeting claim 1 for colorant and claim 3 for organic pigment as colorant and claim 1 for flaky base material)
The platelet shaped substrates include silicate flakes and mica flakes and glass flakes (meeting claim 1 and 2) [0025]
The substrate may be coated with metal oxide [0026] (meeting claim 4)
The flaky material is covered with a metal oxide which is commercially available such as Iriodin by Merck and Learlin by Learl Corp. [0028] (meeting claim 4)
The production of the metal oxide coated substrates is commonly known. Metal oxide, essentially titanium dioxide coating mica pigments are also commercially available under the name Iriodin® (E. Merck, Darmstadt), Flonac® (Kemira Oy, Pori, Finland) and Mearlin® (Mearl Corporation, New York) available.
Titanium dioxide coated mica pigment coated with organic colorants [0040] (meeting claims 1-5)(titanium dioxide is a white pigment)
The substrate may be coated with an organic colorant directly on the substrate surface [0029] and is an organic colorant on the inorganic substrate [0030] (meeting claim 3) The colorant adheres firmly and evenly to the substrate surface [0030-0031]
Abstract
Lustrous pigment (I) is based on a flaky substrate (II) coated with basic organic colourant of the formula: F-(Z-X)m (III); where F= an n-valent colourant radical; Z= a bridging gp; X= a basic gp; and m= 1-4. (II) consists of silicate-type flakes coated with metal oxide and opt and adhesion promoter. USE/ADVANTAGE - (I) is used for colouring lacquers, printing inks, plastics, glasses, ceramics and decorative cosmetic formulations (claimed). (I) has good properties for application eg strong lustre, high colour purity, interesting colour effect, high mechanical strength and better opacity than usual. (III) adheres well and uniformly to (II). Interesting 2-tone-pigments are obtd if the absorption colour of (III) and interference colour of (II) are different, whilst intense colours are obtd if they are the same. In an example, 0.5 g bis(5-methyl-imidazol-4-yl-methyl)-Cu phthalocyanine was dissolved in 200 g 25 (wt)% acetic acid at 80 deg C. 100 g TiO2 coated mica pigment were dispersed in this soln for 5 min, then 660 g 5% aq NaOH soln was dripped into the stirred dispersion in 2 h, until the pH was 7.0 +/- 1. After stirring for 30 min, the pigment was filtered, washed salt-free with water and dried. In a 10% polyester-CAB lacquer on cardboard, the colour flop was red to blue.
The coating colorant adheres well and uniformly (Abstract) The organic colorant sticks firm and even on the substrate surface. [0031]
The pigments have a 10 wt.% varnish of commercially available polyester [0042] (further meeting claim 5)
The pigment are suitable for use in paint printing ink cosmetics etc. [0040] (meeting claim 6)
[0028]
The production of metal oxide-coated substrates is generally known.
Metal oxide, essentially titanium dioxide-coated mica pigments are also commercially available under the names Iriodin® (E. Merck, Darmstadt), Flonac® (Kemira Oy, Pori, Finland) and Mearlin® (Mearl Corporation, New York). [0028] (these commercial products possess the particle size which overlaps and renders obvious the instant “coarseness”)
Evidenced by MERCK: Iriodin mica titanium oxide coated particles are in ranges which meet and/or overlap the claimed range in that they are they are larger and therefore 0%. Merck shows an Iriodin mica coated with titanium dioxide (P1-2) particle size of 5 to 25 microns (P5)
In the alternative, assuming the particle size is not obvious:
JP S 6218770 discloses a pigment for a cosmetic with a coated surface of a flat material with a fine TiO.sub2 particle the particle size of the flat material is 0.5 to 100 microns and includes mica. (Abstract) The ultra fine titanium oxide may have a particle diameter of 10-50 micrometers (meeting the limitation of claim 1 for coarse particle area fraction less than 9 as the particles are all greater than 3 microns) The composition is suitable for cosmetics [0002] the composition includes a platelet substrate coated with an organic colorant [001] the platelet substrates include mica [0025] The substrates are preferably coated with metal oxide [0026] such as titanium oxides [0027] These are commercially available and known for example Metal oxide, essentially titanium dioxide-coated mica pigments are also commercially available under the names Iriodin® (E. Merck, Darmstadt), Flonac® (Kemira Oy, Pori, Finland) and Mearlin® (Mearl Corporation, New York). [0028]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the commercially available product of Iriodin and/or a titanium oxide with a particle diameter of 10-50 microns in the composition of Hetzenneger as it expressly contemplates such a commercially available product and as titanium dioxide particles for adherence to a mica substrate.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection as to the reference Filiou added in response to the amendment to the claims adding limitations not previously considered.
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
As above set forth additional citations have been provided to prior art and additional references are above cited addressing the new limitations to the claims not previously presented (both as to coarse particle area fraction and uniform coating) establishing anticipation and/or a prima facie showing of obviousness by a preponderance as more fully above set forth.
Applicant argues the method of making the claimed pigment results in the claimed coarse particle area. This is not persuasive. No product by process limitations are recited, as is known by those of ordinary skill in the art a product may be made by more than one process. The instant specification also recognizes the product may be made by wet, vapor or solid phase [0035] Further the instant specification provides commercial products used in the formation also used by the cited prior art.
The prior art as above cited teaches commercial products as well as other products of flaky mica coated in various layers of metal, metal oxide and organic pigment with particle sizes meeting and/or rendering obvious the major diameter of 0.01 to 3 microns is less than 9 % of the surface area (i.e. where none of the particles are in this size range zero percent of the surface area is so coated thereby meeting the claimed range and/or as above set forth where the particle size may overlap thereby rending same obvious). The prior art teaches uniform coating as above set forth.
For example:
Kitamura: The gold coating is uniform [0053] the silver and gold coating and silica coating with yellow pigment dispersed is uniform [0108] [0124] The coating is deposited uniformly [0108][0124][0053]
Filou: The examiner maintains that since the mica is coated, since the references uses the same commercial materials of the instant application, and since the reference teaches multiple successive layers, that one of ordinary skill in the art would readily envisage an uniform coating. A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)) In the alternative, assuming arguendo one would not envisage a uniform coating, the examiner maintains that due to the layers and the reference of coating a uniform coating would be obvious to try by one of ordinary skill in the art at the time of filing the invention.
Hetenneger: The coating colorant adheres well and uniformly (Abstract) The organic colorant sticks firm and even on the substrate surface. [0031] The colorant adheres firmly and evenly to the substrate surface [0030-0031]
For the above reasons the rejections are maintained and made final.
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.
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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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732