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 .
DETAILED ACTION
Applicant's election with traverse of Group I (claims 1 and 4-10) in the reply filed on 12/05/2025 is acknowledged. The traversal is on the grounds that the claims in the non-elected groups that corresponds to allowable group I claims be reinstated for allowance. In response, it is noted that rejoinder will be revisited at the time of allowance as outlined in the restriction requirement of 10/17/2025. Claims 11-24 are withdrawn and claims 2-3 are cancelled.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 04/01/2025, 11/10/2025, 10/13/2025, and 11/16/2023 have been considered here.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2005071019 A1 (Ino, 2005; machine translation provided by PE2E via FIT).
In regards to claims 1 and 8, Ino teaches a glitter pigment comprising a scaly glass with a metal oxide coating layer (see Ino, abstract). The scaly glass is taught to be a glass flake (see Ino, paragraphs 0014-1; 0021-0031) and the metal oxide coating layer comprises zirconium oxide (see Ino, paragraphs 0014-6; 0031).
In regards to claims 7, the glass flake is taught to have an average diameter of 0.1-10 µm (the translation read 0.1 to 10 m, however looking the original document, it can be seen that the actual measurement is in µm) (see Ino, paragraph 0028). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 9-10, it is taught that composition has a silica coating comprising titer-zirconia (i.e., comprising zirconium oxide) and that the thickness of the silica coating layer is taught to be 50 nm to 1µm (see Ino, paragraph 0046). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1, 4, and 6, Ino is silent on the mean deviation of mean friction coefficient (MMD) of the glitter pigment and the L* of the composition. To this point, it is noted that Ino teaches that the coating of the metal oxide is done through the liquid phase deposition method (see Ino, paragraph 0031). In the instant specification as filed, it is discussed that the coating of the zirconium oxide on the flaky substrate is produced through a liquid phase deposition (see instant specification as filed, paragraph 0017). Further, it is taught that the glass flake is used as it has a high surface smoothness and high transparency (see Ino, paragraph 0021). It is also taught that the glass flakes are produced using a blow method and melt molding (see Ino, paragraphs 0022-0023). In the specification as filed, it is discussed that the MMD is a measure of the smoothness of the surface (see instant specification as filed, paragraph 0012) and the L* is a measurement of a reflected color (see instant specification as filed, paragraph 0019). It is also taught that the glass flake used in the instant invention are produced using a blow method that is identical to that of Ino (see instant specification as filed, paragraph 0024). As the MMD and L* measurement are properties of the composition, it would be within the purview of one with ordinary skill in the art to expect that the properties of the composition of Ino would have identical properties as instantly claimed. MPEP §2112.01(I) states that “[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” As the prior art renders obvious the instant composition, a person of ordinary skill in the art would reasonably expect the same composition to have the same properties as instantly claimed.
Ino does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Ino with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2005071019 A1 (Ino, 2005; machine translation provided by PE2E via FIT) as applied to claims 1, 4, 6-10 above, and further in view of US PGPUB 20120308667 A1 (Melson, 2012).
The teachings of Ino have been described supra.
The teachings of Ino are silent on the specific surface area of the glitter pigment.
Melson teaches an effect pigment composition (see Melson, abstract) comprising a glass flake having a particle size of between 5-150µm (see Melson, paragraphs 0020-0021) which are coated with a metal oxide such as zirconium oxide (see Melson, paragraph 0022) with a thickness of 20-200 nm, more preferably 4-50 nm (see Melson, paragraph 0024). It is taught that the specific surface area of the pigment is less than or equal to 4 m2/g, which is more than 2.5 cm2/g as instantly claimed. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 5, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to use the teachings of Ino with the teachings of Melson to achieve the instant composition as both references teach similar compounds using similar materials (i.e., glass flakes coated in zirconium oxide with similar particle sizes and coating thicknesses). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one with ordinary skill in the art to combine the teachings of Melson, specifically the specific surface area of pigment, with the teachings of Ino according to the known method of making a glitter pigment comprising glass flake and a zirconium dioxide coating (see Ino, paragraphs 0022-0023, 0031) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Conclusion
No claims allowed.
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/A.A.A./Examiner, Art Unit 1611
/CRAIG D RICCI/Primary Examiner, Art Unit 1611