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 .
Response to Amendment
This office action is in response to the Amendment filed on 03/24/2026.
Claims 1-5 and 7-10 are presently pending and under examination; claim 6 is canceled; claims 1-2 are amended; claims 8-10 are new.
The objections to the abstract/specification are withdrawn in light of the amendments to the abstract/specification.
The objections to claims 1-2 are withdrawn in light of the amendments to the claims; the objection to claim 6 is moot as this claim has been canceled.
The rejection of claims 1-5 and 7 under 35 U.S.C 112(b) is withdrawn in light of the amendments to the claims; the rejection of claim 6 is moot as this claim has been canceled.
The 35 U.S.C. 103 rejection of claims 1-5 and 7 over FUJII is maintained; the rejection of claim 6 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/27/2026 was filed after the mailing date of the non-final action on 11/24/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 7 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 7 recites “The waterborne paint according to claim 6, including… the waterborne resin” (see claim 7 at lines 1-3). Claim 6 has been canceled, therefore the scope of claim 7 cannot be ascertained; claim 7 cannot depend from claim 1, as claim 1 is directed to a waterborne dispersion which does not contain a waterborne resin, not a waterborne paint including a waterborne resin. Claim 7 cannot be properly examined as there is no way to determine the limitations of the claim; for purposes of examination, Examiner treated claim 7 as just reciting a waterborne paint. Clarification is requested.
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.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 depends from claim 6, which is canceled. Claim 7 is of improper dependent form as it cannot further limit or include all the limitations of a claim that is canceled.
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 § 103
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 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fujii, et al. (U.S. Pub. No. 2015/0071973-A1) (hereinafter, “FUJII”).
Regarding claims 1 and 10, FUJII teaches a pigment dispersion (see FUJII generally at paragraphs [0011], [0077] and [0092]-[0112], teaching pigment dispersions in solvent) 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]), and
wherein the pigment dispersion does not contain a waterborne resin (see FUJII at paragraphs [0011], [0077] and [0092]-[0112], teaching that the pigment may be dispersed in a paint or in a solvent, i.e., it can be dispersed in a solvent and does not require mixing with a waterborne resin to form a paint),
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]).
FUJII fails to explicitly teach that a viscosity, measured by a cone plate viscometer at 20 °C and 20 rpm, is less than one Pa-s, as recited by claim 1, or is 0.1 to 0.6 Pa-s, as recited by claim 10. 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, therefore the pigment dispersion of FUJII would be expected to have the same or overlapping properties as the claimed pigment dispersion, including viscosity when measured by a cone plate viscometer 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.
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 claims 4 and 8-9, as applied to claims 1, 3 and 5 above, FUJII teaches a pigment dispersion according to claims 1, 3 and 5, 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 7, FUJII teaches a waterborne paint (see FUJII at paragraphs [0077], [0177], [0120]-[0121]).
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) and 112(d) for claim 7, and under 35 U.S.C. 103 for claims 8-10 over FUJII as set forth above.
Applicant argues:
“Claim 1 is amended to recite that the pigment dispersion does not contain a waterborne resin. Fujii on the other hand in its disclosed water based composition contains a resin component” (see Remarks at pg. 6).
“The paint composition of Fujii containing a resin solution has a viscosity measured by a Ford cup No. 4… non-Newtonian dispersions… makes viscosity measurement by… the Ford cup not appropriate, but rather a rotations viscometer is required… the use of a Ford cup that the material whose viscosity is measured is not a non-Newtonian material… One of ordinary skill would readily know from this claim waterborne resin free aqueous dispersions exhibits non-Newtonian flow behavior… neither reference teaches measuring non-Newtonian dispersions” (see Remarks at pg. 6-8 and 11-12).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because amended claim 1 excludes waterborne resin and FUJII discloses a water-based composition containing a resin with viscosity measured by a Ford cup, the Examiner respectfully disagrees. As set forth in the rejection of amended claim 1 above, FUJII teaches dispersions that do not contain a waterborne resin. The pigment of FUJII at may be dispersed in a paint or in a solvent; FUJII teaches dispersing the pigment in a solvent, and does not require mixing with a waterborne resin to form a paint. As set forth in MPEP § 2123, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
As discussed in the rejection above, FUJII teaches a pigment dispersion as claimed by claim 1 (which does not contain a waterborne resin), therefore the dispersion of FUJII would be expected to have the same or overlapping properties as the claimed dispersion, including viscosity when measured as recited in claim 1. 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. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of FUJII have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
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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