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 .
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 (or as subject to pre-AIA 35 U.S.C. 102) 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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wakamiya (US Patent No. 8,926,746 B2).
The reference teaches, in Table 1, examples 1, 2, and 3, glass flakes and their corresponding D10, D50, and D90 values. Table 2, Examples 4 to 6 teach the glass flakes coated with titanium oxide to form a luster pigment. Tables 1 and 2 appear below:
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362
689
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437
648
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The instant claims are met by the reference.
As for claim 1, the reference teaches D10 and D50 values that fall within the claimed range. The D90/D10 ratios all fall within the claimed range as seen in Table 1. While the reference does not recite the A10 value, this is a value that is not referenced in the prior art and as the D10, D50, and D90/D10 ratio falls within the claimed range, the A10 value would therefore be inherently possessed by the flakes of the reference absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 2, the reference teaches glass flakes.
As for claim 3, the reference teaches, in Table 2, D10 and D50 values that fall within the claimed range. The D90/D10 ratios all fall within the claimed range as seen in Table 2. While the reference does not recite the A10 value, this is a value that is not referenced in the prior art and as the D10, D50, and D90/D10 ratio falls within the claimed range, the A10 value would therefore be inherently possessed by the flakes of the reference absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. The glass flake is coated with titanium oxide layer thus meeting the claimed metal oxide layer.
As for claim 4, Table 1 teaches the D10, D50 and D90 values of the glass flake before coating with titanium oxide. The D10 and D50 values fall within the claimed range. The D90/D10 ratios all fall within the claimed range as seen in Table 1. While the reference does not recite the A10 value, this is a value that is not referenced in the prior art and as the D10, D50, and D90/D10 ratio falls within the claimed range, the A10 value would therefore be inherently possessed by the flakes of the reference absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. The glass flake is coated with titanium oxide layer thus meeting the claimed metal oxide layer.
As for claim 5, the reference teaches glass flakes.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kaupp et al (US Patent Application Publication No. US 2010/0297045 A1).
The reference teaches, in Table 2, flaky particles with different particle size distributions.
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250
524
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The second flake teaches a D10 in the range 5-25 µm, D50 from 10 to 35 µm and D90 from 20 to 45 µm.
The instant claims are obvious over the references.
As for claim 1, the reference teaches, with respect to the second flake, a D10 that falls within the claimed range, a D50 that overlaps the claimed range, and based on the D90 size a ratio of D90/D10 that overlaps the claimed 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), see MPEP 2144.05. While the reference does not recite the A10 value, this is a value that is not referenced in the prior art and as the D10, D50, and D90/D10 ratio can fall within the claimed range, the A10 value would therefore be inherently possessed by the flakes of the reference absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. Note also that in Figure 1, the surface area of one flaky particle is 4085.63 µm2 which is much more than 100 or 200 µm2.
As for claim 2, claim 9 recites that the flakes can be made of glass.
As for claim 3, the flakes may be coated with metal oxide, hydroxides, etc. (claim 4). The reference teaches, with respect to the second flake, a D10 that falls within the claimed range, a D50 that overlaps the claimed range, and based on the D90 size a ratio of D90/D10 that overlaps the claimed 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), see MPEP 2144.05. While the reference does not recite the A10 value, this is a value that is not referenced in the prior art and as the D10, D50, and D90/D10 ratio can fall within the claimed range, the A10 value would therefore be inherently possessed by the flakes of the reference absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. Note also that in Figure 1, the surface area of one flaky particle is 4085.63 µm2 which is much more than 100 or 200 µm2.
As for claim 4, the table in paragraph [0057] teaches the thickness of the coating layers. Based on this thickness and the sizes in Table 2, the reference teaches, with respect to the second flake, a D10 that falls within the claimed range, a D50 that overlaps the claimed range, and based on the D90 size a ratio of D90/D10 that overlaps the claimed 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), see MPEP 2144.05. While the reference does not recite the A10 value, this is a value that is not referenced in the prior art and as the D10, D50, and D90/D10 ratio can fall within the claimed range, the A10 value would therefore be inherently possessed by the flakes of the reference absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. Note also that in Figure 1, the surface area of one flaky particle is 4085.63 µm2 which is much more than 100 or 200 µm2.
As for claim 5, the reference teaches glass.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
June 23, 2026
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