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 12/15/2025. After entry of this amendment, claims 1-2, 6, 9-13, and 15-18 are currently pending in this application with claims 11-13, and 16-18 being withdrawn from further examination.
Election/Restrictions
Applicant’s election without traverse of claims 1-6, 8-10, and 15 in the reply filed on 12/15/2025 is acknowledged.
The restriction requirement is deemed proper and is made Final.
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.
Claim(s) 1-2, 6, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008/127416 to Nishikawa.
With respect to claim 1, Nishikawa teaches a composite-coated aluminum pigment having excellent storage stability, low hydrogen gas generation in water-based
paint or water-based ink, and having excellent adhesiveness and electric strength
(abstract, [0001], [0046]). Nishikawa teaches aluminum pigment coated with a silica
coating film, which is surface treated with a treatment agent comprising an aryl group-
containing silane which is a phenyl group-containing silane or a diphenyl group-
containing silane ([0014]-[0016]) wherein the aluminum pigment comprising an
aluminum substrate in flake (scale) shape ([0050]). It is noted that the presence of Mo-
oxide layer is optional according to the claims. Furthermore, upon application of a
phenyl silane onto the silica film, the silane contacts the silica film; thus, at the point of
contact, the silane is attached to some silica. While the remaining thickness of silica is
taken to read on the claimed inorganic metal oxide layer comprising over 50% silica, the silane and that one layer of silica or those silica having silane attached thereto, is taken to read on the claimed hybrid layer comprising silica modified by a phenyl silane.
With respect to claim 2, Nishikawa teaches a thickness of 3-30 nm for the silica
film ([0064]).
With respect to claim 6, Nishikawa teaches the use of diphenylmethoxysilane as
the silane ([0016]).
With respect to claim 9, Nishikawa teaches the use of aluminum flake as metal
effect flake ([0050]). The claims under examination are product claims; therefore, the method through which the substrate is produced does not add patentable weight to the examination of the product claims. In the present claim, the aluminum flake is claimed to have been "produced by milling technology". MPEP 2113 states "[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).
Nevertheless, Nishikawa teaches utilizing mechanical pulverization method including ball milling, stamp milling and more to produce the aluminum flake substrate ([0048]).
With respect to claim 10, Nishikawa does not disclose a silica film comprising
only of a portion of silica; thus, it is taken that the film comprises of all silica. Also, when disclosing the silane, the reference does not disclose a portion of silane with other organic materials; thus, it is taken that the silane can be only of the diphenyl silane or only of phenyl silane. Therefore, the totality of the two coatings, i.e. silica film and the coating of silane, which is taken to render a hybrid layer obvious by considering the fact that upon attachment to the silica, the top layer of silica having silane attached thereto is taken to read on the hybrid layer, comprises of silica and silane. Thus, the two coatings together are 100% of silica and silane, which renders the claimed "at least 95%" obvious.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Nishikawa as applied to claim 1 above, and further in view of U.S. Patent No. 5,472,491 to Duschek et al.
Nishikawa teaches composite-coated aluminum pigment comprising aluminum
flake substrates coated with a silica film and with phenyl or diphenyl silane, which as
detailed out above, is taken to render the claimed structured layer of claim 1 obvious. Nishikawa is silent as to a top coat layer.
Duschek, directed to pearlescent pigment based on a metal oxide-coated platelet
shaped substrate, comprise a top layer of coupling agents comprising zirconium
aluminate or could be of a few other coupling reagents, wherein the choice of the
coupling agent in the top layer depends on the polymer of a coating composition in
which the pigment is used (Duschek, abstract; col. 2, lines 9-12 and 42-67; col. 3, lines
20-67; col. 4, lines 4-6).
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to have modified Nishikawa with the teachings of Duschek in order to incorporate a top coating onto the composite pigment of Nishikawa wherein the top coating comprises zirconium aluminate as that taught by Duschek motivated by the fact that zirconium aluminate is a known coupling reagent used as top coating of pigments having platelet shaped substrate, and the fact
that it would be well within the scope of a skilled artisan to have selected zirconium aluminate as the coupling reagent in the top coat depending on the water-borne surface-coating system, as those taught by Duschek.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Applicant has asserted the claimed hybrid layer is the product of a reaction between SiO2 precursor and the diphenyl silane, phenyl silane, or mixture thereof, and it is not a layer on top (Remarks, page 6). Applicant has, additionally, asserted Nishikawa fails to teach a chemical reaction between aryl silane surface treatment and the underlying silica layer, and that there is no suggestion that such a reaction has occurred (Remarks, page 6). Moreover, Applicant has asserted the present Application under examination discloses a top coating as optional, and that there is a difference between the hybrid layer and a top coating (Remarks, page 6). In addition, Applicant has asserted Nishikawa does not teach or suggest that the aryl silane used in the surface treatment is chemically bonded to silica below (Remarks, page 6).
The examiner, respectfully, submits the claims under examination are product claims, and the process through which the claimed pigment and its consecutive coating layers are formed are not part of the claimed language; even if such process limitations would become part of the language of the claim, the claim would be treated as product-by-process claim. The product under examination, that is the layered structure of the claimed metal effect pigment, has been rendered obvious by the reference as detailed out in the previous Office action and repeated above.
Allowable Subject Matter
Claims 3-5 and 8 are 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.
The following is a statement of reasons for the indication of allowable subject
matter: the prior art do not disclose or suggest the cumulative teachings of claims 1 and
3 with particular attention given to the claimed 29Si NMR-MAS signal ratio or D-silanes
to Q-silanes. Additionally, the prior art do not disclose or suggest the cumulative
limitations of claims 1 and 4 with particular attention given to the claimed 29Si NMR-MAS signal ratio of T-silanes to Q-silanes. Furthermore, the prior art do not disclose or
suggest the cumulative limitations of claims 1 and 5. Moreover, the prior art do not
disclose or suggest the cumulative limitations of claims 1 and 8 with particular attention
given to the thickness of coating c) which is the hybrid layer in the total thickness of the coatings a), b), and c).
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.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731