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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15, 17-24 and 26-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 19-23 of U.S. Patent No. 11,815,656. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding claims 1-15, 17-24 and 26-27, the patented claims recite the same article as claimed in present claims.
Claim Objections
Claims 10 and 19 are objected to because of the following informalities:
Claim 10 is amended to recite “a group”. It should be “the group”.
Claim 19 is amended to recite “a group”. It should be “the group”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claim(s) 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. (WO 2011048913).
Regarding claim 27, Kobayashi discloses a resin coating composition on a leather, i.e. an article comprising a substrate and a film disposed on the substrate, (abstract) wherein the film contains a resin (page 3), azomethine black pigment (page 3), composite oxides of two or more metals that can include titanium, iron and zinc (page 3). Given that the composite oxides is the same as claimed in present claim, it is clear that the composite oxides particles of Kobayashi would inherently act as a photocatalyst as presently claimed.
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.
Claims 1-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al. (US 2013/0048925) in view of Sakagami et al. (CN 102575128 A).
Regarding claims 1, 4, 6, and 10, Edwards (Example 1A, 0067) teaches a test paint film formed on an opacity chart (substrate) from a paint that comprises PY128 pigment (azo-based particle) (0064-0065), titanium dioxide particles (0064-0065), an acrylic resin (0064-0065) and titanium dioxide particles coated with silica (0041-0042).
Edwards (0046) teaches azo-based particles and additional metals that can be included in the titanium dioxide particles, but does not limit azomethine black and metals to those disclosed.
Sakagami (Paragraph 66) teaches an azomethine black pigment (Paragraphs 61 and 41) and composite oxide particles that are useful in infrared reflective coatings include composite oxides of two or more metals that can include titanium, iron and zinc.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an azomethine black pigment, as the black azo pigment of Edwards, and composite particles of Sakagami instead of titanium oxide particles of Edwards in order to have a specific azo black pigment that has been shown to be effective for an infrared reflective paint by Sakagami. Further, given that the composite oxides is the same as claimed in present claim, it is clear that the composite oxides particles of Edwards in view of Kobayashi would act as a photocatalyst as presently claimed.
Given that Edwards in view of Sakagami can arrive at a lightness value that can be the same as in the instant application, using a combination of the same type of materials that can be adjusted for a desired color and lightness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the teachings of Edwards in view of Sakagami would encompass articles with area as claimed, barring evidence to the contrary.
Regarding claim 3, Edwards in view of Sakagami discloses the article of claim 1, wherein the lightness value L* (brightness as used in the instant application) of the article can be 75 or less (0055).
Regarding claims 2 and 5, given that Edwards can arrive at a lightness value that can be the same as in the instant application, using a combination of the same type of materials that can be adjusted for a desired color and lightness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the teachings of Edwards would encompass articles with area percentages as claimed, barring evidence to the contrary.
Regarding claim 8, Edwards in view of Sakagami discloses the article of claim 1, the coatings of Edwards can further comprise silica particles (0041-0042).
Regarding claim 9, Edwards in view of Sakagami discloses the article of claim 8, wherein the lightness value L* (brightness as used in the instant application) of the article can be 75 or less (0055).
Regarding claims 11, 12, 14, 15, and 19, Edwards (Example 1A, 0067) teaches a test paint film formed on an opacity chart (substrate) from a paint that comprises PY128 pigment (azo-based particle) (0064-0065), titanium dioxide particles (0064-0065), an acrylic resin (0064-0065) and titanium dioxide particles coated with silica (0041-0042).
Edwards (0046) teaches azo-based particles and additional metals that can be included in the titanium dioxide particles, but does not limit azomethine black and metals to those disclosed.
Sakagami (Paragraph 66) teaches an azomethine black pigment (Paragraphs 61 and 41) and composite oxide particles that are useful in infrared reflective coatings include composite oxides of two or more metals that can include titanium, iron and zinc.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an azomethine black pigment, as the black azo pigment of Edwards, and composite particles of Sakagami instead of titanium oxide particles of Edwards in order to have a specific azo black pigment that has been shown to be effective for an infrared reflective paint by Sakagami. Given that Edwards can arrive at a lightness value that can be the same as in the instant application, using a combination of the same type of materials that can be adjusted for a desired color and lightness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the teachings of Edwards in view of Sakagami would encompass articles with area percentages as claimed, barring evidence to the contrary.
Regarding claim 13, Edwards in view of Sakagami discloses the article of claim 11, wherein the lightness value L* (brightness as used in the instant application) of the article can be 75 or less (0055).
Regarding claim 16, Edwards in view of Sakagami discloses the article of claim 11, but does not specifically disclose the content of the resin is 100 wt% and a content of the titanium oxide particle coated with silica is 10 to 70 wt%.
Since the instant specification is silent to unexpected results, the specific amounts of the resin and titanium oxide particle coated with silica are not considered to confer patentability to the claims. As the infrared reflectivity is a variable that can be modified, among others, by adjusting the amounts of the resin and titanium oxide particle coated with silica, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amounts cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of the resin and titanium oxide particle coated with silica in the coating to obtain the desired infrared reflectivity (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 17, Edwards in view of Sakagami discloses the article of claim 11, the coatings of Edwards can further comprise silica particles (0041-0042).
Regarding claim 18, Edwards in view of Sakagami discloses the article of claim 17, wherein the lightness value L* (brightness as used in the instant application) of the article can be 75 or less (0055).
Regarding claims 20, 21, 22, 23 and 24, Edwards (Example 1A, Pages 14-15, Paragraph 18) teaches a paint that comprises PY128 pigment (azo-based particle) (0064-0065), titanium dioxide particles coated with silica (0041-0042) and an acrylic resin (0064-0065).
Edwards (Paragraph 32) teaches azo-based particles and additional metals that can be included in the titanium dioxide particles, but does not limit azomethine black and metals to those disclosed.
Sakagami (Paragraph 66) teaches an azomethine black pigment (Paragraphs 61 and 41) and composite oxide particles that are useful in infrared reflective coatings include composite oxides of two or more metals that can include titanium, iron and zinc.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an azomethine black pigment, as the black azo pigment of Edwards, and composite particles of Sakagami instead of titanium oxide particles of Edwards in order to have a specific azo black pigment that has been shown to be effective for an infrared reflective paint by Sakagami. Given that Edwards can arrive at a lightness value that can be the same as in the instant application, using a combination of the same type of materials that can be adjusted for a desired color and lightness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the teachings of Edwards in view of Sakagami would encompass articles with area percentages as claimed, barring evidence to the contrary.
Regarding claim 25, Edwards in view of Sakagami discloses the article of claim 11, but does not specifically disclose the content of the resin is 100 wt% and a content of the titanium oxide particle coated with silica is 10 to 70 wt%.
Since the instant specification is silent to unexpected results, the specific amounts of the resin and titanium oxide particle coated with silica are not considered to confer patentability to the claims. As the infrared reflectivity is a variable that can be modified, among others, by adjusting the amounts of the resin and titanium oxide particle coated with silica, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amounts cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of the resin and titanium oxide particle coated with silica in the coating to obtain the desired infrared reflectivity (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 26, Edwards in view of Sakagami discloses the article of claim 25, the coatings of Edwards can further comprise silica particles (0041-0042).
Regarding claim 27, Edwards (Example 1A, 0067) teaches a test paint film formed on an opacity chart (substrate) from a paint that comprises PY128 pigment (azo-based particle) (0064-0065), titanium dioxide particles (0064-0065) and an acrylic resin (0064-0065).
Edwards (0046) teaches azo-based particles and additional metals that can be included in the titanium dioxide particles, but does not limit azomethine black and metals to those disclosed.
Sakagami (Paragraph 66) teaches an azomethine black pigment (Paragraphs 61 and 41) and composite oxide particles that are useful in infrared reflective coatings include composite oxides of two or more metals that can include titanium, iron and zinc.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an azomethine black pigment, as the black azo pigment of Edwards, and composite particles of Sakagami instead of titanium oxide particles of Edwards in order to have a specific azo black pigment that has been shown to be effective for an infrared reflective paint by Sakagami. Further, given that the composite oxides is the same as claimed in present claim, it is clear that the composite oxides particles of Edwards in view of Kobayashi would act as a photocatalyst as presently claimed.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
Regarding double patenting rejection, applicant argues that the pending claim 1 recites the organic azo-particle is a component of the film. However, applicant’s attention is drawn to patented claim 1 which also discloses organic azo based particle is a component of the film.
Regarding 102 rejection, amended claims overcome the rejection of Kobayashi. However, newly added claim 27 is rejected by Kobayashi as explained above.
Applicant argues that paragraphs 0041-002 of Edwards do not state anything about specifically titanium oxide particle whose surface is coated with specifically silica. However, as applicant pointed in the remarks that paragraph 0041 does disclose titanium oxide and paragraph 0042 does disclose silica as one of the choices. Therefore, the rejection is proper. Further, it is noted that the rejection is based on obviousness.
Applicant argues that because Edwards does not have the combination of features recited by amended claim 1, Edwards does not achieve the properties. However, it is noted that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Sakagami does not cure the deficiencies of Edwards. However, note that while Sakagami does not disclose all the features of the present claimed invention, Sakagami is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely an azomethine black pigment and composite oxide particles that are useful in infrared reflective coatings include composite oxides of two or more metals that can include titanium, iron and zinc, and in combination with the primary reference, discloses the presently claimed invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMIR SHAH/Primary Examiner, Art Unit 1787