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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/13/2025 has been entered.
This action is responsive to Applicant’s request for continued examination and amendment/remarks filed 06/13/2025.
Claims 17, 22, 24, and 26-39 are currently pending.
Response to Amendment
The objection of claim 17 is withdrawn in view of the above amendment.
The rejection of claims 22, 32, and 37-39 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment. However, Applicant’s amendment to claim 17 renders the claim indefinite. See the new 112 rejection, below.
The rejection under 35 U.S.C. 103 as being unpatentable over Boaz (US 5,938,834 A) is withdrawn in view of the above amendment.
See the revised and new prior art rejections, below.
Claim Interpretation
It is noted claim 17 has been amended from a “precursor for forming a radiative cooling coating” to a “radiative cooling coating” which appears to mark a shift in the claimed invention from an intermediate product (precursor) to a final product. Applicant’s present remarks also indicate this (“… further amendments to claim 17 to focus on the coating rather than the precursor composition”, p.5).
However, as similarly indicated in previous Office actions, the terminology “radiative cooling coating” is a preamble limitation constituting intended use or purpose of the recited composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02.
Also note the claims recite several product-by-process-type and/or contingent-type limitations (e.g., “such that after heating to a temperature above the softening temperature of the second composition and below the melting temperature of the first composition, a porous matrix is formed by the solid particles having the second composition with the solid particles of the first composition dispersed in the porous matrix thereby providing a solar reflectance of at least about 0.8 and an infrared emissivity of at least about 0.9 in a wavelength range from 8 um to 13 um” in claim 17, “when coated on a substrate to a thickness of about 500 um, the coating has a solar reflectance of at least about 0.9” in claim 22, “wherein a first composition:second composition weight ratio is selected to provide the porous matrix having a porosity that is less than about 60%” in claim 32 which draws its antecedent basis “the porous matrix” to the independent claim’s contingent/product-by-process limitation meaning it, too, is merely a contingent/product-by-process limitation). Product-by-process limitations are not limited to the recited steps except to the extent they suggest or require some certain structure of the recited product. The broadest reasonable interpretation of a contingent limitation only requires (in method claims, which are not present claimed) the steps that must be performed or (in product claims) the structure that must be present and does not include the steps that are not required to be performed or the structure that are not required because the conditions(s) precedent are not met. See MPEP 2113 and 2111.04, respectively.
In the present case, the claims do not require the contingent/product-by-process limitations of heating to some certain relative temperature (or the porous matrix and properties resulting from heating to that certain relative temperature) nor coating to a thickness of 500 um (or the properties resulting therefrom), and a composition (whether it is coated or merely capable of being coated) comprising the two sets of solid particles with the recited chemical identities (including the exclusion of a glass from the first composition and exclusion of an organic polymer in the coating/composition), size, and proportion will fully read on the claim.
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 17, 22, 24, and 26-39 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 pre-AIA the applicant regards as the invention.
Claim 17 has been amended to recite that the solid particles having a first composition comprise “an inorganic oxide, nitride, carbide, sulfate, or carbonate having high solar reflectance” where the term “high” is a relative term which renders the claim indefinite. The term “high” describing a “high solar reflectance” of the “solid particles with the first composition” component is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In view of support from the original specification, what would be a high solar reflectance for the solid particles having a first composition and what would not? While the independent claim later recites (and specification also discuss) a solar reflectance value of at least about 0.8, this feature is to the entire composition and does not set forth any meaning or standard as to what solar reflectance would be regarded as a high solar reflectance for the individual “solid particles having a first composition” component.
Claims 22, 24, and 26-39 are also rejected for their dependency on claim 17.
For purposes of further examination and compact prosecution, the limitation will be broadly construed. For purposes of searching and applying prior art, the Office’s search generally encompassed the particular species of the solid particles having the first composition recited in the dependent claims (see the Al2O3, SiO2, ZnO, TiO2, and MgO species in claim 24 and CaCO3, BN, and BaSO4 in claim 28). The Office assumes these particular species of compound possess a high solar reflectance. If these particular species of compounds Applicant discloses and later-claims for the solid particles having a first composition do not have a high solar reflectance, then claims 24 and 28 fail to further limit the independent claim and claim 17 might likely also raise an enablement issue.
Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 17, 22, 24, and 26-39 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP 2012-140479 A). An English language machine translation of Kobayashi et al. was provided with the Office’s supplied copy of the reference.
As to claim 17, Kobayashi et al. teach a reflective coating composition comprising a white pigment and a glass (a distinct component from the white pigment component) suitable and useful for forming a reflective coating (abstract). Titanium dioxide is Kobayashi et al.’s most preferred white pigment (p.2 of the English language machine translation; this is also exemplified in the working examples on p.8-9), and the most preferred particle size of the white pigment is about 0.1 to 10 microns (p.3; also, 0.3 microns is exemplified, p.8). See also Kobayashi et al.’s other preferred white pigments (e.g., aluminum oxide, zinc oxide, magnesium oxide, calcium carbonate, barium sulfate, and boron nitride on p.2). Note that these disclosed species of white pigment are the same as those disclosed by Applicant has being solid particles having high solar reflectance. Kobayashi et al.’s white pigment reads on the claimed solid particles having a first composition comprising an inorganic oxide, nitride, carbide, sulfate or carbonate having high solar reflectance and is not a glass. Kobayashi et al.’s glass component includes at least a zinc borosilicate glass (p.3) and has a most preferred particle size of about 1 to 10 microns (p.4). A firing temperature of the composition is selected according to glass’ melting temperature and is preferably 400°C or higher such as 500 to 1,600°C (p.7; 900°C is exemplified, p.9). Titanium dioxide inherently melts well-above the glass frit powder’s disclosed melting point of between about 400 to 1,600°C (about 1,840°C). While Kobayashi et al. teach the precursor composition to their coating comprises a resin containing an organic polymer (abstract and p.4), Kobayashi et al. teach the resin is decomposed during a sintering process when forming the reflective film (p.6) meaning an organic polymer is absent in Kobayashi et al.’s final coating just as that claimed.
Regarding concentrations, Kobayashi et al. teach the ratio between the white pigment and the glass can be selected between the weight ratio range of 99/1 to 1/99 and subsets thereof (p.5), which overlaps the claimed proportion of first composition (Kobayashi et al.’s white pigment) of about 40-60 wt.%. See also the subsets of white pigment / glass weight ratio ranges of, for example, 55/45 to 40/60 (Id. at p.5), which even falls within the claimed proportion of first composition of about 40-60 wt.%. As no other components are disclosed as mandatory (and also because Kobayashi et al. teach performing a drying treatment that removes any precursor solvent on p.5 and performing a sintering process that decomposes any precursor resin Id. on p.6 [that would also remove any precursor solvent as well]), Kobayashi et al.’s relative weight ratio of white pigment and glass approximately corresponds to the actual weight percentages of Kobayashi et al.’s final coating.
While Kobayashi et al. fail to meet the claimed coating composition under the meaning of anticipation, the claimed coating composition is nevertheless prima facie obvious over the above-cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the claimed limitations from the teachings of Kobayashi et al. by providing and formulating a reflective coating comprising a blend of both the glass frit powder and titanium dioxide powder pigment where the glass frit powder and pigment powder each have the preferred/exemplary parameters cited among p.2 to 4 (Id.). The titanium dioxide particles in such combination are indeed solid particles having a first composition comprising an inorganic oxide having a high solar reflectance that is not a glass with (and/or overlapping) an average particle size between about 0.1 to 20 microns, the glass powder in such combination are indeed a glass having a composition different from the titanium dioxide and having an average particle size between (and/or overlapping) about 0.5 to 20 microns and are at-once present with the titanium dioxide particles, the glass inherently has a softening temperature (melting temperature between 400°C and 1,600°C) that is below a melting temperature of the titanium dioxide (~1,840°C), the coating is formed in such a manner that it is free of an organic polymer in the final product (sintering decomposes any resin present, Id.), and the amount of white pigment in the final product overlaps, if not is narrower than, the claimed proportion of about 40-60 wt.%.
Also note, as implied above, the reference is not merely limited to titanium dioxide as its white pigment and teaches any of aluminum oxide (melting point ~2,070°C), zinc oxide (melting point ~1,975°C), magnesium oxide (melting point ~2,850°C), calcium carbonate (melting point ~825°C), and barium sulfate (melting point ~1,580°C) as suitable express alternatives for the white pigment component (Id. at p.2 of the reference). The above rationale(s) also apply to any of the cited express alternative white pigment powders for the reasons set forth above with the preferred particle sizes ranges within/overlapping the claimed solid particles of the first composition (comprising an inorganic oxide, sulfate, or carbonate) average particle size range of about 0.1 to 20 microns and the relative softening/melting temperature of the solid particles of the first composition compared to the softening/melting temperature of the glass (400°C to 1,600°C, Id.) via substituting the titanium dioxide white pigment with any of the aluminum oxide, zinc oxide, magnesium oxide, calcium carbonate, and barium sulfate alternative white pigment(s) with a reasonable expectation of success.
Any remaining limitation(s) in claim 17 is/are drawn to product-by-process and/or contingent limitations that do not specifically require additional structure actually be present (see the Claim Interpretation section, Id.).
Arguendo, it appears the features in the product-by-process and/or contingent limitation(s) would flow naturally from the cited teachings of the reference as Applicant discloses porosity in the composition (i.e., porosity in a porous matrix) is tailored by the amount of binder/solid particles of the composition during sintering of a precursor to a final product (see spec. [12], [47], & [48]) and Kobayashi et al. teach substantially the same, if not substantially overlapping, amounts/ratios of inorganic oxide particles to glass particles within those disclosed as sufficiently meeting the recited porosity value in the final product and sintering their precursor to obtain a final reflective film product (Id.). Also note Kobayashi et al. provides a resin in the precursor which is decomposed during sintering to obtain their final reflective film (Id.); decomposition, i.e., removal, of the resin in the volume of the precursor would be expected by a person of ordinary skill in the art to form some pores/voids and contribute to a porosity. The claimed solar reflectance and infrared emissivity would flow naturally from Kobayashi et al.’s final product, too, as Kobayashi et al. teach their final product is a reflective film (Id.) preferably having a reflectance in the 90%+ range (p.8) and (as described above) teach the film is formed from substantially the exact same solid particles having the recited first composition (see the chemical identities of Kobayashi et al.’s white pigment corresponding to the same genera/species as those claimed/disclosed) and solid particles having the recited second composition (see the Kobayashi et al.’s glass particles having the same relative melting properties as those claimed/disclosed) in the same/overlapping amounts.
As to claim 22, the limitations in this claim are drawn to product-by-process and/or contingent limitations that do not specifically require additional structure actually be present (see the Claim Interpretation section, Id.). Kobayashi et al. teach the thickness of the obtained reflective film can be appropriately selected from the range of between 0.01 to 10,000 microns (see paragraph bridging p.7 to 8), which meets the claimed limitations as neither the claim nor the reference specifically requires the recited thickness of 500 microns nor the effect that follows.
Arguendo, it appears the features in the product-by-process and/or contingent limitation(s) would flow naturally from the cited teachings of the reference as Kobayashi et al.’s thickness ranges overlap and encompass the claimed 500 micron thickness and Kobayashi et al. teach their final product is a reflective film preferably having a reflectance in the 90%+ range (Id.) overlapping the claimed reflectance.
As to claim 24, Kobayashi et al. teach the first composition/inorganic oxide is TiO2 (titanium dioxide, Id.). Kobayashi et al. also teach Al2O3, ZnO, and MgO as alternative white pigments (Id.).
As to claims 26 and 27, while the claimed softening temperatures of less than about 600°C and less than about 500°C are not anticipated by the reference, the teachings of the reference nevertheless overlap the claimed softening temperature ranges under a prima facie case of obviousness for the reasons set forth above (Kobayashi et al. teach the glass particle component has a melting temperature between [and therefore a softening temperature at or below] about 400°C to 1,600°C, Id.).
As to claim 28, Kobayashi et al. teach the first composition/inorganic oxide (white pigment) is calcium carbonate, boron nitride, or barium sulfate (Id.).
As to claims 29-31, Kobayashi et al. teach the composition comprises a white pigment (Id.) which reads on the claimed coloring agent and pigment by double inclusion. As to the claimed concentration range of 1-50 wt.%, as described above, Kobayashi et al. teach the ratio between the white pigment and the glass (which are approximately if not directly the actual concentrations in the final product), range from 99/1 and 1/99 and subsets thereof such as 55/45 to 40/60 (Id.), which overlaps the claimed pigment concentration of 1-50 wt.%.
Also note that Kobayashi et al. teach more than one white pigment may be provided (p.2) as well as “extender pigments” (p.3). Provision of a second white pigment as suggested on p.2 to 3 of the reference overlap/encompass and render obvious the claimed pigment being present in an amount of about 1 to 50 wt.%. Kobayashi et al. teach the second/additional pigment or extender pigment is combined in an amount of 50 wt.% or less with respect to the entire amount of the pigment (p.3) where the ratio of the (entire) white pigment to glass is 99/1 to 99/1 (and subsets thereof) where a resin component may be 1 to 100 parts by weight with respect to 100 parts by weight of the total amount of the (entire) white pigment and glass (p.5). The aggregate of these ratios overlap the claimed 1 to 50 wt.% range of the second/extender pigment.
As to claim 32, the limitations in this claim are drawn to limiting the product-by-process and/or contingent limitations of the independent claim and do not specifically require additional structure actually be present (see the Claim Interpretation section, Id.).
However, arguendo, as similarly described above regarding the independent claim, it appears the features in the product-by-process and/or contingent limitation(s) would flow naturally from the cited teachings of the reference as Applicant discloses porosity in the composition (i.e., porosity in a porous matrix) is tailored by the amount of binder/solid particles of the composition during sintering of a precursor to a final product (see spec. [12], [47], & [48]) and Kobayashi et al. teach substantially the same, if not substantially overlapping, amounts/ratios of inorganic oxide particles to glass particles within those disclosed as sufficiently meeting the recited porosity value in the final product and sintering their precursor to obtain a final reflective film product (Id.). Also note Kobayashi et al. provides a resin in the precursor which is decomposed during sintering to obtain their final reflective film (Id.); decomposition, i.e., removal, of the resin in the volume of the precursor would be expected by a person of ordinary skill in the art to form some pores/voids and contribute to a porosity.
As to claims 33-35, while the claimed limitations regarding solid particles having a third composition different from the first and second composition are not met under the meaning of anticipation by the teachings of the reference, the teachings of the reference nevertheless encompass and render obvious the claimed limitation that the coating further comprises solid particles having a third composition different from the first composition or the second composition. Kobayashi et al. teach more than one white pigment may be provided (p.2). Provision of a second distinct species of white pigment within the plethora of species disclosed as motivated by p.2 of the reference meet solid particles having a third composition (comprising in organic oxide, nitride, sulfate, or carbonate) different from the first and second composition. Each of the white pigments have a particle size between 0.01 to 50 microns, preferably 0.05 to 20 microns, and more preferably 0.1 to 10 microns (p.3), which meets and encompassed the claimed limitation that the solid particles having the third composition have a particle size distribution different from the solid particles having the first and/or second composition(s).
As to claim 36, Kobayashi et al.’s preferred particle size of the white pigment (meeting the solid particles of the first composition) is 0.1 to 10 microns (Id.) which is substantially identical to the claimed range. Kobayashi et al. teach their glass component (meeting the solid particle of the second composition) has a preferably particle size of 0.5 to 20 microns and more preferably about 1 to 10 microns (p.4, Id.), which substantially overlaps the claimed range.
As to claims 37-39, Kobayashi et al. teach the thickness of the obtained reflective film can be appropriately selected from the range of between 0.01 to 10,000 microns (see paragraph bridging p.7 to 8). Subsets thereof include preferably 1 to 400 microns, for example 2 to 300 microns, and more preferably about 3 to 150 microns, for example 5 to 100 microns (Id.), which overlap the instantly claimed coating thickness ranges of at least about 50 microns, at least about 100 microns, and at least about 200 microns.
Claims 17, 22, 24, and 26-39 are rejected under 35 U.S.C. 103 as obvious over Roeder (WO 2018/215308 A1).
As to claim 17, Roeder teaches a coating composition comprising a grit (also called scattering body in the reference) and a glass frit. See pages 3, 6, & 18-20. The grit is present as particles selected from, among few others, TiO2, ZnO, Al2O3, barium sulfate, and calcium carbonate (p.6 lines 16-17 & p.20 lines 1-4), have a particle size of 0.01 to 30 microns, preferably 1 to 10 microns (p.6 lines 23-24), and is present in the composition in a concentration of 0-60 wt.% preferably 1-55 wt.% (p.19 lines 41-43). Note that these disclosed species of grit particles are the same as those disclosed by Applicant has being solid particles having a high solar reflectance. The disclosed grit meets the claimed solid particles having a first composition comprising an inorganic oxide, sulfate, or carbonate having high solar reflectance and is not a glass, the general particle size of the disclosed grit overlaps the claimed average particle size range, and the preferred particle size of the disclosed grit falls within the claimed average particle size range. The glass frit may comprise various compositions such as lead, cadmium and/or lithium-free glass frits and bismuth oxide-based glass with several other potential components (p.18 line 32 to p.19 line 11). The glass frit is in the form of a powder and have a diameter of less than 20 microns, particularly less than 10 microns, and preferably 0.1 to 10 microns (p. 19 lines 30-35) and is present in the composition in a concentration of 0.1-90 wt.% preferably 10-80 wt.% (p.18 lines 28-30). Preferred glass frits have a transformation point Tg (i.e., softening point) of less than 500°C and a minimum melting point of less than 700°C (p. 19 lines 16-18). The disclosed glass frit meets the claimed solid particles having a second composition different from the first composition and being a glass, and the general particle sizes and preferred range(s) of the disclosed glass frits overlap the claimed average particle size range. Note that the glass frit is intrinsically disclosed to have a softening point well-below a melting temperature of the grit similar to that relatively claimed because the glass frit has a softening point of below 500°C (Id.) and all of TiO2, ZnO, Al2O3, barium sulfate, and calcium carbonate inherently melt well-above the disclosed glass’ softening point (about 1,840°C, about 1,975°C, about 2,070°C, about 1,580°C, and about 825°C, respectively). While Roeder teaches the precursor composition to their coating comprises (in addition to the glass frit and grit particles) a continuous phase selected from water, organic solvents, inorganic solvents, polymers, wax, oils and mixtures thereof (p.20), Roeder teaches the continuous phase is selected such that it is evaporated after the precursor composition has been applied (i.e., coated) or is selected such that it may be burned without residue (p.20) meaning an organic polymer (and also any of the alternative solvent, wax, or oil) is absent in Roeder’s final coating just as that claimed. In any event, provision of any of the non-polymer continuous phase genera (e.g., water, organic solvent, inorganic solvent, oil) reads on the claimed exclusion of an organic polymer because the continuous phase genera are clearly listed in the alternative from polymers (p.20 line 4+) implying to a person of ordinary skill in the art that polymers may be excluded from the composition as claimed with another continuous phase or vehicle in their place such as water or another solvent with a reasonable expectation of success.
While Roeder fails to meet the claimed coating composition under the meaning of anticipation, the claimed coating composition is nevertheless prima facie obvious over the above-cited teachings of the reference. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive within the claimed limitations from the teachings of Roeder by providing and formulating a coating comprising a blend of both the glass frit and grit where the glass frit and grit each have the preferred/exemplary parameters cited among p.3, 6, & 18-20 (Id.). The grit particles (e.g., titanium oxide, zinc oxide, aluminum oxide, barium sulfate, and/or calcium carbonate) in such combination are indeed solid particles having a first composition comprising an inorganic oxide having a high solar reflectance that is not a glass with (and/or overlapping) an average particle size between about 0.1 to 20 microns, the glass frit in such combination are indeed a glass having a composition different from the grit particles (e.g., titanium oxide, zinc oxide, aluminum oxide, barium sulfate, and/or calcium carbonate) and having an average particle size between (and/or overlapping) about 0.5 to 20 microns and are at-once present with the grit particles, the glass has a softening point below a melting temperature of the first composition/grit (preferred glass frits have a transformation point Tg, i.e., softening point, of less than 500°C while the titanium oxide, zinc oxide, aluminum oxide, barium sulfate, and/or calcium carbonate grit species inherently melt well-above the disclosed glass’ softening point, e.g., about 1,840°C, about 1,975°C, about 2,070°C, about 1,580°C, and about 825°C, respectively, Id.), the coating may be formed in such a manner that it is free of an organic polymer (the continuous phase is either evaporated or burned without residue while obtaining the final product and/or the composition is formed with an alternative non-polymeric continuous phase, Id.), and the amount of grit (either in the precursor with a continuous phase other than a polymer or the final product with the continuous phase either evaporated/burned off) in the composition is in a concentration overlapping the recited range of about 40-60 wt.% of the composition (note, the concentrations for the glass frit and grit given on p.18-20 are in terms of a paint which is the precursor composition with the continuous phase; however, these totality of the disclosed ranges still overlap the claimed concentration of the solid particles having the first composition when the continuous phase is any of the genera other than the polymer genera; alternatively, one of ordinary skill in the art would recognize the disclosed concentrations of the precursor paint when formed to the final coating composition ex-continuous phase still indeed overlap the claimed concentration of the solid particles having the first composition).
Any remaining limitation(s) in claim 17 is/are drawn to product-by-process and/or contingent limitations that do not specifically require additional structure actually be present (see the Claim Interpretation section, Id.).
Arguendo, it appears the features in the product-by-process and/or contingent limitation(s) would flow naturally from the cited teachings of the reference as Applicant discloses porosity in the composition (i.e., porosity in a porous matrix) is tailored by the amount of binder/solid particles of the composition during sintering of a precursor to a final product (see spec. [12], [47], & [48]) and Roeder teaches substantially the same, if not substantially overlapping, amounts/ratios of grit particles to glass frit particles within those disclosed as sufficiently meeting the recited porosity value in the final product and sintering their precursor to obtain a final coating layer product (Id.). Also note Roeder provides a continuous phase in their precursor which is evaporated and/or burned without residue to obtain their final coating (Id.); evaporating and/or burning without residue, i.e., removal, of the continuous phase in the volume of the precursor would be expected by a person of ordinary skill in the art to form some pores/voids and contribute to a porosity. The claimed solar reflectance and infrared emissivity would flow naturally from Roeder’s final product, too, as Roeder teaches their final product is a coating layer formed from substantially the exact same solid particles having the recited first composition (see the chemical identities of Roeder’s grit corresponding to the same genera/species as those claimed/disclosed) and solid particles having the recited second composition (see Roeder’s glass frit particles having the same relative melting properties as those claimed/disclosed) in the same/overlapping amounts. While Roeder’s precursor paint and final coating layer further contains a colorant component (see, e.g., p.5 & 20), so does the instantly claimed invention (see, e.g., instant claims 29 to 31).
As to claim 22, the limitations in this claim are drawn to product-by-process and/or contingent limitations that do not specifically require additional structure actually be present (see the Claim Interpretation section, Id.). Roeder teaches the coating has a preferred thickness of from 100 nm to 50 microns (see p.3 lines 19-20), which meets the claimed limitations as neither the claim nor the reference specifically requires the recited thickness of 500 microns nor the effect that follows.
As to claim 24, Roeder teaches the first composition/inorganic oxide (termed “grit” in the reference) comprises/is an inorganic oxide selected from Al2O3, ZnO, and TiO2 (Id.).
As to claims 26 and 27, Roeder teaches the glass frit has a softening temperature less than 500°C (Id.).
As to claim 28, Roeder teaches the first composition/inorganic oxide (termed “grit” in the reference) comprises/is calcium carbonate, boron nitride, or barium sulfate (Id.).
As to claims 29-31, Roeder teaches the composition further comprises a coloring agent in a concentration of 10-80 wt.% (p.4 line 14 to p.6 line 8 & p.20 lines 6-14), which reads on the claimed coloring agent, pigment, and overlaps the claimed concentration range thereof of about 1-50 wt.%. Note that some preferred colorants are also quantum dots and compound semiconductors.
As to claim 32, the limitations in this claim are drawn to limiting the product-by-process and/or contingent limitations of the independent claim and do not specifically require additional structure actually be present (see the Claim Interpretation section, Id.).
However, arguendo, as similarly described above regarding the independent claim, it appears the features in the product-by-process and/or contingent limitation(s) would flow naturally from the cited teachings of the reference as Applicant discloses porosity in the composition (i.e., porosity in a porous matrix) is tailored by the amount of binder/solid particles of the composition during sintering of a precursor to a final product (see spec. [12], [47], & [48]) and Roeder teaches substantially the same, if not substantially overlapping, amounts/ratios of grit particles to glass frit particles within those disclosed as sufficiently meeting the recited porosity value in the final product and sintering their precursor to obtain a final coating layer product (Id.). Also note Roeder provides a continuous phase in their precursor which is evaporated and/or burned without residue to obtain their final coating (Id.); evaporating and/or burning without residue, i.e., removal, of the continuous phase in the volume of the precursor would be expected by a person of ordinary skill in the art to form some pores/voids and contribute to a porosity.
As to claims 33-35, the teachings of Roeder meet the claimed limitations that the composition further comprises solid particles having a third composition different from the first composition or second composition that comprises one or more of an inorganic oxide, nitride, sulfate, or carbonate having a particle size distribution that differs from that of the first composition and/or second composition. Roeder teaches there is “at least one” grit particle (Id.). Provision of a second species of grit particle as encompassed by the component comprising more than one species thereof in the particle size range previously disclosed meets the claimed limitations. Alternatively, Roeder’s luminescent colorant component reads on the claimed limitations (Id., p.4 line 14 to p.6 line 2 & p.20 lines 6-20) since they comprise inorganic oxide, nitride, or sulfate having a different composition from the grit and glass frit and a distinct particle size than the grit and glass frit. In any event, the various cited teachings overlap and encompass that limitations that the third composition (second distinct grit species or inorganic luminescent colorant particles) has a particle size distribution differing from one or both of the other two compositions.
As to claim 36, the rationale set forth above regarding claim 17 meets and overlaps the claimed limitations that the solid particles of the first composition (grit particles) have an average particle size between about 0.1 to 10 microns and the solid particles of the second composition (glass frit powder) have an average particle size between about 2 to 20 microns (Id.). Roeder’s preferred particle size of the grit (meeting the solid particles of the first composition) is 0.5 to 10 microns and more preferably 1 to 10 microns (Id. at p.6) which are substantially identical to the claimed range. Roeder teaches their glass component (meeting the solid particle of the second composition) has a size distribution such that at least 90% by weight of the particles have a diameter of less than 20 microns and a most preferred particle size range of 0.1 to 10 microns (Id. at p.19) which each substantially overlap the claimed range.
As to claim 37, Roeder teaches the coating has a preferred thickness of from 100 nm to 50 microns (Id. at p.3) which touches the claimed range if not overlaps the claimed coating thickness range in view of the claimed “about” modifier.
As to claims 38 and 39, while Roeder fail to teach the coating has a thickness of at least about 100 or about 200 microns, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide/arrive within the claimed coating thickness from the teachings of Roeder with a reasonable expectation of success. As cited above, Roeder teaches the coating has a preferred thickness of from 100 nm to 50 microns (Id. at p.3) which is merely a preferred embodiment that does not preclude other more broad thickness values. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to vary/tailor the thickness of Roeder’s coating in order to affect the luminous/coloring property of the coating (Roeder teach the purpose of the coating is to serve as a luminous coating containing the above-cited glass matrix, grit particles, and colorant particles, Id.).
Response to Arguments
Applicant's arguments filed 06/13/2025 regarding the 103 rejection over Roeder (WO 2018/215308 A1) have been fully considered but they are not persuasive.
Applicant argues Roeder teaches away from the claimed invention and fails to teach or suggest key features required for a radiative cooling coating. Applicant is concerned that Roeder’s composition requires a luminescent colorant component that would defeat an objective of creating a radiative cooling coating due to their inclusion increasing absorption of photon energy within the coating. Applicant is also concerned that Roeder’s composition requires a grit that is disclosed as a scattering body that might result in emitted photons being absorbed by another luminescent colorant particle further increasing a heating effect of the coated rather than serving as a radiative coating.
In response, Applicant’s arguments are not persuasive first because the arguments are drawn to a recitation of intended use of the claimed invention rather than the actual differences in compositional structure between the claimed invention and prior art reference. The terminology “radiative cooling coating” is a preamble limitation constituting intended use or purpose of the recited composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention (the recited chemical components), and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02.
There are also several product-by-process-type and/or contingent-type limitations in the claims (e.g., “such that after heating to a temperature above the softening temperature of the second composition and below the melting temperature of the first composition, a porous matrix is formed by the solid particles having the second composition with the solid particles of the first composition dispersed in the porous matrix thereby providing a solar reflectance of at least about 0.8 and an infrared emissivity of at least about 0.9 in a wavelength range from 8 um to 13 um” in claim 17, etc.). Product-by-process limitations are not limited to the recited steps except to the extent they suggest or require some certain structure of the recited product. The broadest reasonable interpretation of a contingent limitation only requires (in method claims, which are not present claimed) the steps that must be performed or (in product claims) the structure that must be present and does not include the steps that are not required to be performed or the structure that are not required because the conditions(s) precedent are not met. See MPEP 2113 and 2111.04, respectively. In the present case, the claims do not require the contingent/product-by-process limitations of heating to some certain relative temperature (or the porous matrix and reflective/emissive properties resulting from heating to that certain relative temperature), and a composition (whether it is coated or merely capable of being coated) comprising the two sets of solid particles with the recited chemical identities (including the exclusion of a glass from the first composition and exclusion of an organic polymer in the coating/composition), size, and proportion will fully read on the claim – Roeder indeed teaches such a composition.
Roeder’s coating composition, like the claimed invention, comprises:
1) species of inorganic particles that are the preferred species as Applicant’s claimed “solid particles having a first composition comprising an inorganic oxide, nitride, carbide, sulfate or carbonate having high solar reflectance” (Roeder’s grit component is preferably TiO2, ZnO, Al2O3, BaSO4, and CaCO3 on p.6 which are several of Applicant’s preferred species disclosed in [52] of the original spec., even claimed species in dependent claims 24 and 28, for the first composition solid particles),
2) species of glass particles having a softening temperature the same as that as Applicant’s claimed “solid particles having a second composition different from the first composition, wherein the second composition is a glass” (Roeder’s glass frit preferably has a softening temperature [disclosed as transformation point Tg] less than 500°C on p.19, which meet’s Applicant’s preferred species, even claimed species in dependent claims 26 and 27, for the second composition solid particles), and
3) species of inorganic colorant that are the preferred species as Applicant’s claimed “coloring agent” in the instant dependent claims (Roeder’s inorganic/luminescent colorant includes garnets such as yttrium aluminum garnets and cerium-doped yttrium aluminum garnets and quantum dots such as CdSe, CdS, and ZnS on p.4, 5, & 20, which meet’s Applicant’s preferred genera of pigments, phosphors, oxides, quantum dots, and semiconductors and species thereof disclosed in [60] of the original spec., especially the claimed genera in dependent claim 30, for the coloring agent component).
Applicant’s concern that Roeder’s non-optionality of luminescent particles serves as a teaching away from the claimed invention is not persuasive because the claimed invention encompasses substantially the same genera/species of luminescent particles as Roeder in the coloring agent component of dependent claims 29-31. Please compare Roeder’s genera/species of inorganic/luminescent colorant, especially the garnets and quantum dots, disclosed on p.4, 5, & 20 of Roeder to Applicant’s preferred genera of pigments, phosphors, oxides, quantum dots, and semiconductors and species thereof disclosed in [60] of the original spec. Applicant’s argument of the reference teaching away from the claimed invention by Roeder’s luminescent/phosphor component allegedly defeating an objective of the claimed invention is also confusing because the claimed invention includes substantially the same component and products of identical composition can not have mutually exclusive properties. How does Roeder’s luminescent/phosphor component having the same genera/species as the claimed coloring agent (phosphor pigments, quantum dots, and/or semiconductors) defeat the purpose of the claimed invention or would be incompatible with the claimed invention while the claimed invention nevertheless requires the same component be present?
Applicant’s concern that Roeder’s grit particles that are disclosed as a scattering body with respect to some other glazing layer serves as a teaching away from (and/or would be contrary to) the claimed invention is not persuasive for substantially the same reason because the claimed invention encompasses substantially the same genera/species of grit particles as Roeder in the “solid particles having a first composition comprising an inorganic oxide, nitride, carbide, sulfate, or carbonate having high solar reflectance, wherein the first composition is not a glass” component of the instant claims, especially dependent claims 24 and 28. Please compare Roeder’s preferred species of grit, e.g., TiO2, ZnO, Al2O3, BaSO4, and CaCO3, disclosed on p.6 which are several of Applicant’s preferred species disclosed in [52] of the original spec., even claimed species in dependent claims 24 and 28, for the first composition solid particles. As cited in the rejection of record, the particle sizes between the two components are substantially the same and overlapping, too. Applicant’s argument of the Roeder’s grit component behaves differently than the claimed first composition solid particles is also confusing because the claimed invention includes substantially the same component and products of identical composition can not have mutually exclusive properties.
Accordingly, the rejection is maintained for the reasons of record.
Additionally, Applicant’s arguments with respect to the prior art rejections of record are also moot because the arguments do not apply to all of the references being used in the current rejection. Kobayashi et al. (JP 2012-140479 A) is relied upon under a new grounds of rejection necessitated by the present claim amendments.
While it is noted Applicant previously submitted arguments filed on 11/14/2024 to the Kobayashi et al. reference regarding a different, former grounds of rejection, those arguments do not apply the new grounds of rejection set forth above in view of Applicant’s shift in invention from a precursor to a final composition. In those arguments, Applicant argued Kobayashi et al. failed to teach or suggest a polymer free coating and coating with 40-60 wt.% of the solid particles of the first composition. However, those arguments are not persuasive because, as cited in the new grounds of rejection, Kobayashi et al. teach organic polymer resin is decomposed upon sintering their precursor their final reflective film and Kobayashi et al.’s ratio of white pigment and glass in the final reflective film overlaps, if not falls within, the claimed about 40-60 wt.% concentration of solid particles having the first composition. See the new 103 rejection, above.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
Correspondence
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
August 4, 2025