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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure is objected to because of the following informalities:
There appears to be a typo in line 3 of the abstract; “an waterborne paint” should read “a waterborne paint”.
Appropriate correction is required.
The use of the term “Brookfield RVT DV2T HB-type Viscometer”, which is a trade name or a mark used in commerce, has been noted in this application (see abstract at lines 9-10 and specification at pg. 2, lines 18-19 and 32-33, pg. 5, lines 33-34, pg. 6, lines 8-9, and pg. 7, lines 17-18). The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1-2 and 6 are objected to because of the following informalities:
In claims 1 and 2, there should be a space between numbers and their units; “20°C” should read “20 °C” (see claim 1 at line 9) and “25°C” should read “25 °C” (see claim 2 at line 2).
There appears to be a typo in claim 6; “an waterborne resin” should read “a waterborne resin” (see claim 6 at line 2).
Appropriate correction is required
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.
Claims 1-7 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.
Claim 1 contains the trademark/trade name “Brookfield RVT DV2T HB-type Viscometer” (see claim 1 at line 9). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of viscometer and, accordingly, the identification/description is indefinite.
Further, claim 1 recites “(at 20°C, CPA-40Z cone spindle, and 20 rpm)” (see claim 1 at line 9); the use of parentheses renders the claim further indefinite as it is not clear whether or not the limitations in parentheses are actually part of the claim.
For purposes of examination, Examiner treated this limitation in claim 1 as meaning that the pigment dispersion has a viscosity of less than one Pa-s when the viscosity is measured by a rotary viscometer having a cone spindle at 20 °C and 20 rpm (see claim 1 at lines 8-9). Clarification is requested.
Claims 2-7 are included herein as each depends from a claim which is indefinite for reasons set forth above.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii, et al. (U.S. Pub. No. 2015/0071973-A1) (hereinafter, “FUJII”), with evidence from ProQuip, Inc., "Viscosity Conversion Chart" (hereinafter, “PROQUIP”) as to the rejection of claim 1.
Regarding claim 1, FUJII teaches a pigment dispersion (see FUJII generally at paragraphs [0021], [0055], [0077], [0109], [0112], [0117], [0119] and [0187]-[0195], teaching pigment dispersions and water-based paints, which are also pigment dispersions) comprising:
a vapor-deposited aluminum pigment (see FUJII at paragraphs [0027]-[0028] and [0035], teaching vapor-deposited aluminum pigment as the metallic pigment);
an organic phosphoric acid compound having a straight chain alkyl group having eight or more carbon atoms (see FUJII at paragraphs [0061], [0075]-[0078], [0083]-[0084] and [0109], teaching that the organic compound having a phosphate group is organic phosphoric acid, e.g., lauryl acid phosphate or stearyl acid phosphate, which have straight chain alkyl groups with 12 and 18 carbon atoms, respectively);
and a solvent (see FUJII at paragraphs [0055]-[0056], [0077] and [0195]),
wherein the vapor-deposited aluminum pigment is coated at least partially with at least a part of the organic phosphoric acid compound (see FUJII at paragraphs [0061], [0075]-[0078] and [0109]),
and the pigment dispersion has a viscosity of less than one Pa-s when the viscosity is measured by a rotary viscometer (see FUJII at paragraphs [0187]-[0195], teaching that a proper amount of ion-exchanged water is added to the water-based paint compositions (i.e., pigment dispersions) to make the viscosity 25 seconds as measured with Ford cup No. 4; 25 seconds is less than 30 seconds, and, as evidenced by PROQUIP (see PROQUIP at pg. 1), 30 seconds is approximately equivalent to a Brookfield viscosity of 100 CPS, i.e., 0.1 Pa-s, measured at 77 °F (i.e., 25 °C) within an accuracy of 10% in most cases; i.e., FUJII teaches pigment dispersions having a viscosity of less than 0.1 Pa-s).
FUJII fails to explicitly teach that the viscosity is measured by a viscometer having a cone spindle at 20 °C and 20 rpm. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, as set forth above, FUJII teaches pigment dispersions as claimed by the present claim and having approximate viscosities of less than 0.1 Pa-s; therefore, the pigment dispersion of FUJII would be expected to have the same or overlapping properties as the claimed pigment dispersion, including a viscosity of less than 1 Pa-s when measured by a rotary viscometer having a cone spindle at 20 °C and 20 rpm, and the burden shifts to Applicant to demonstrate otherwise. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
Additionally, FUJII explicitly teaches varying the content of the solvent (which changes the viscosity) to achieve optimal dispersion properties while avoiding environmental pollution, and explicitly teaches adjusting and controlling the viscosity/rheology of the pigment dispersions (see FUJII at paragraphs [0119], [0188]-[0189] and [0195]), i.e., FUJII teaches that the viscosity of the pigment dispersion is a property which may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claims 2-3 and 5, as applied to claim 1 above, FUJII teaches a pigment dispersion according to claim 1, wherein the organic phosphoric acid is an organic phosphoric acid compound which is in a solid state at 25 °C, as recited by claim 2; is a phosphate ester, as recited by claim 3; and has a straight chain alkyl group having eight or more and 30 or less carbon atoms, as recited by claim 5 (see FUJII at paragraphs [0083]-[0084], teaching solid organic phosphate esters, e.g., lauryl acid phosphate or stearyl acid phosphate, which have straight chain alkyl groups with 12 and 18 carbon atoms, respectively).
Regarding claim 4, as applied to claim 1 above, FUJII teaches a pigment dispersion according to claim 1, including an amount of the organic phosphoric acid compound overlapping with and thereby rendering obvious the claimed range of 15 parts by mass or more and 80 parts by mass or less with respect to 100 parts by mass of the vapor-deposited aluminum pigment (see FUJII at paragraphs [0054] and [0087], teaching 0.1 to 10 parts by mass of the organic phosphoric acid with respect to 100 parts by mass of the metallic (vapor-deposited aluminum) pigment and the first compound, and 0.5 to 100 parts by mass of the first compound with respect to 100 parts by mass of the aluminum pigment; i.e., of the 100 parts by mass of the aluminum pigment and first compound combined, 50 to 99.5 parts are the aluminum pigment, so the organic phosphoric compound is present in an amount of 0.1 to 10 parts based on 50 to 99.5 parts of the aluminum pigment alone, which would be an amount of 0.1 to 20 parts by mass of the organic phosphoric compound based on 100 parts by mass of the vapor-deposited aluminum pigment).
As set forth in MPEP § 2144.05, 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)).
Regarding claim 6, as applied to claim 1 above, FUJII teaches a pigment dispersion according to claim 1, and further teaches a waterborne paint comprising the pigment dispersion and a waterborne resin (see FUJII at paragraphs [0077], [0177], [0120]-[0121] and [0190]-[0195]).
Regarding claim 7, as applied to claim 6 above, FUJII teaches a waterborne paint according to claim 6, including an amount of the vapor-deposited aluminum pigment overlapping with and thereby rendering obvious the claimed range of one part by mass or more and 500 parts by mass or less with respect to 100 parts by mass of the waterborne resin (see FUJII at paragraphs [0054], [0071], [0087] and [0118], teaching 0.1 to 50 parts by mass of the colored metallic pigment based on 100 parts by mass of the waterborne resin; as discussed in the rejection of claim 4 above, the colored metallic pigment comprises 0.5 to 100 parts by mass of the first compound and 0.1 to 20 parts by mass of the organic phosphoric compound based on 100 parts by mass of the aluminum pigment, and also comprises 1 to 200 parts by mass of the coloring pigment with respect to 100 parts by mass of the aluminum pigment; i.e., the colored metallic pigment comprises 100 parts by mass of the aluminum pigment out of a total of 101.6 to 420 parts by mass total, or approximately 24% to 98% by mass of the total colored metallic pigment; therefore, 0.1 to 50 parts by mass of the colored metallic pigment comprises approximately 0.02 to 49 parts by mass of the vapor deposited aluminum pigment, so FUJII teaches 0.02 to 49 parts of the vapor deposited aluminum pigment to 100 parts by mass of the waterborne resin).
As set forth in MPEP § 2144.05, 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)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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