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 Preliminary Amendment
The amendment submitted on 16 June 2026 has been entered. After entry of the amendment, claims 1-15 and 17 are currently pending in the application.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 16 June 2026 is acknowledged. This restriction requirement is hereby withdrawn by the current examiner and accordingly all claims will be examined.
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 1-15 and 17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, the phrase “the starting compounds” lacks proper antecedent basis. It is unclear as to the types of materials that may be used as the starting compounds and the assistants and therefore the scope of the claim is unascertainable.
In claim 5, the phrase “the amount of TiO2 employed” lacks proper antecedent basis.
In claim 15, the phrase “the outer metal oxide layer” lacks proper antecedent basis.
In claim 16, the phrase “the starting compounds” lacks proper antecedent basis. It is unclear as to the types of materials that may be used as the starting compounds and the assistants and therefore the scope of the claim is unascertainable.
In claim 17, the phrases “the laser marking” and “the laser welding” lack proper antecedent basis.
Claim Rejections - 35 USC § 102/103
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 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.
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 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al “Formulation Mechanism of Plate-like Bi4Ti3O12 particles in Molten Salt Fluxes”.
The reference teaches Bi4Ti3O12 particles. Note also the reference teaches in the Introduction section the use of this as a precursor to prepare anistropic particles with Aurivillius or perovskite structure such as BaBi4Ti4O15.
As for claim 12, the reference teaches Bi4Ti3O12 particles which meets the crystalline particles having an aurivillius structure. While the reference does not recite the same process to produce the particles, it is believed that the resulting product is the same. As stated in MPEP 2113 [R-1]: "[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) (citations omitted). Once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). Accordingly since the resulting product appears to be the same the instant claims are anticipated by and/or rendered obvious by the reference.
As for claim 13, the reference teaches Bi4Ti3O12 particles.
Claims 12-13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meenakshi et al “Bismuth Titanate as an infrared reflective pigment for cool roof coating”.
The reference teaches, in the abstract, a pale-yellow color no pigment with infrared reflectance comprising Bi4Ti3O12.
As for claim 12, the reference teaches Bi4Ti3O12 particles which meets the crystalline particles having an aurivillius structure. While the reference does not recite the same process to produce the particles, it is believed that the resulting product is the same. As stated in MPEP 2113 [R-1]: "[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) (citations omitted). Once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). Accordingly since the resulting product appears to be the same the instant claims are anticipated by and/or rendered obvious by the reference.
As for claim 13, the reference teaches Bi4Ti3O12 particles.
As for claim 17, the reference teaches the pigment in a coating on a steel surface.
Allowable Subject Matter
Claims 1-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 14 and 15 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.
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.
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, Amber R. Orlando can be reached at (571) 270-3149. 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.
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
July 6, 2026
Prosecution Insights