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 .
Election/Restrictions
Applicant’s election of Group I, Claims 1-11 in the reply filed on 5/18/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant's arguments filed 5/18/26 have been fully considered but they are not persuasive.
The remarks argue the following:
In the Office Action, it is stated that Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the composition of claim 1, this technical is not a special technical feature. Since the withdrawn claims 12-16 of Group II includes each and every limitation recited in claim 1, once the feature recited in claim 1 is a special technical feature, this special feature is deemed to be a common special technical feature. With the presence of the common special technical feature, rejoinder of the unelected Group II (corresponding to withdrawn claims 12-16) is respectfully solicited. Applicant also reserves the right to pursue the subject matter of the non-elected inventions, species or claims in one or more divisional applications.
The remarks are respectfully not persuasive. The restriction did restrict between the groups, citing to prior art, but it is respectfully contended that this restriction did not purport to state that the technical feature is not a special technical feature. In fact, it is argued that the special technical feature relied upon in the restriction is a special feature that is common among the groups. Based on this, restriction is deemed prior according to the restriction practice required under 37 CFR 1.475 practice.
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.
Claim 10 is 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.
Claim 10, line 2 “surface uneven distribution ratio S2/S1 of a SiO2 content S2” is unclear. The specification of this application explains that S1 describes the silicon content of the plate-shaped iron oxide particles (para. 60) and then it states in paragraph 73 that the S2 content describes the content of the SiO2 in the surface layer of the plate-shaped iron oxide particle by converting the content of the silicon into the content of silicon dioxide. The difference between S1 and S2 do not appear to be significantly different.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5, 6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bujard (WO 2009/062886).
As to Claims 1, 6 and 8, Bujard describes a plate-like substrate that includes a layer of metal oxide, such as Fe2O3, which is then doped with a dopant, such as Mo (page 3, lines 1-5). The substrate can include SiO2 flakes (page 6, lines 4-5). Although Bujard does not state that the iron oxide is plate-shaped, since the composition is a layer on the plate-shaped SiO2 flake, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the iron oxide is part of the plate-shaped flake since a layer of iron oxide would not substantially alter the shape and size of the composition.
As to the silica being a shape control agent, the specification of this application explains that a shape control agent can include silicon compounds (para. 24 of the published specification). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same composition would have the same properties of shape controlling.
As to Claim 5, Bujard teaches that the pigment can contain a layer of metal oxide, which can include just Fe2O3 that is doped with Mo (Claim 1). The other features are optional. In some embodiments, the layer can include just Fe2O3 and Mo and the second layer is also optional. Therefore, in some embodiments, the pigment can include just Fe2O3 and Mo.
The amount of Mo added ranges from 0.1 to 10 mol Mo (Claim 1). Assuming the rest of the layer is just iron oxide, the molar amount of iron oxide is from 99.9 to 90 mol %. As a result, the mass of Mo in this layer is from
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bujard as applied to claim 1 above, and further in view of Cho (EP 3719081).
As to Claim 2, Bujard teaches that the silica can have a thickness of 200nm to 2 micrometers (page 15, lines 7-12).
Bujard did not describe that this was a median diameter.
Cho describes a pigment (title) that is made up of a metal oxide, such as silicon oxide (para. 13), which is then combined with a coating layer of Fe2O3 (para. 15). The composite can include other components (para. 15, 16), however, Cho explain that the particle has an average diameter, or D50, of 10-200 nm (para. 67, 68). The reason, Cho explains, is that if the D50 is smaller than 10nm, then certain optical characteristics may not be triggered (para. 69), but that if the D50 is greater than 200nm, then the flaky substrate may not adhere properly (para. 69).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the D50 of the silica particle carrying the iron oxide and other component to a size range of 10-200nm, as taught by Cho for use with the pigment of Bujard because Cho explains that a smaller particle size of 200nm or less improves the pigments adherence.
As to determining the particle thickness using dynamic light scattering, although the references do not specifically explain that the thickness of the compound is measured using dynamic light scattering, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that any method used to determine the thickness of the composition would be effective to determine the thickness.
Claim(s) 3, 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bujard as applied to claim 1 above, and further in view of Lechner (DE 102019210687).
Lechner describes a pigment that has an average thickness of at most 50nm and at least 1nm (page 3, lines 3-7). Lechner then explains that the size of the substrate platelet can be matched to the particular application, for example the desired effect on a material (page 3, 14-17). Furthermore, Lechner explains that the compound can have an aspect ratio of about at least 80 (page 3, lines 18-25).
The preferred composition can include silicon dioxide, iron oxide and other compounds (page 4, para. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ an aspect ratio of 80 with an average thickness of 50-1nm, as taught by Lechner for use with the pigment of Bujard because these features are known to be effective for use in a pigment composition.
Also, since the size is an optimizable feature, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the size based on the desired function to the user.
Claim(s) 5, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bujard as applied to claim 1 above, and further in view of Schmidt (WO 2012/013663).
Bujard teaches that the pigment can contain a layer of metal oxide, which can include just Fe2O3 that is doped with Mo (Claim 1). The other features are optional. In some embodiments, the layer can include just Fe2O3 and Mo and the second layer is also optional. Therefore, in some embodiments, the pigment can include just Fe2O3 and Mo.
The amount of Mo added ranges from 0.1 to 10 mol Mo (Claim 1). The support added can include perlite, which include a silica-based compound (page 15, last para). Other supports are useable as well.
As to the amount of Mo in terms of MoO3, the specification explains that when combining the molybdenum precursor with acid, the molybdenum converts to the oxide form (see published specification, para. 114). Similarly, Boujard also adds their molybdenum to the same acid (HCl) (see example 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same process used the same way would produce the same results.
Bujard does not teach the amount of Mo in the pigment or the amount of support in the pigment.
Schmidt describes a pigment (abstract) that gives a patina effect (abstract). Schmidt explains that coatings that can give off a patina effect include metal flakes (page 3, lines 13-15), but the color can vary based on the compositions (page 3, lines 18-25). Other color effects include a rusty surface (page 15, lines 18-20), which can include an iron oxide coating on a flake support (page 15, lines 18-25). Different forms of iron oxide added with pigments can give different effects (page 16, lines 1-5). Generally, Schmidt explains that the addition of iron oxide pigment can range from 95% to 5% of a perlite support (page 16, lines 5-10). Perlite can have a silica-containing composition (page 8, lines 41-45).
Therefore, since Bujard employs 0.1 to 10 mole% of Mo and the rest is Fe2O3 (from 99.9-90 molar %), and then assuming the support is perlite and the amount of perlite is about 5% (since iron oxide can be in the compound 95% in Schmidt and the perlite is 5wt%, pg. 16, lines 4-7), and since perlite is predominately SiO2 (substituting 5% of Fe2O3 with a lower molecular weight SiO2), the amount of MoO3 content in the composition is from 0.3-9%.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
As to determining the mass% using an XRF analysis, although the references do not teach that this is the tool used to determine the mass and weight % of the compounds, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that any method of determining mass and mole percent would be as effective in determining the amount of each compound in the product.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bujard as applied to claim 8 above, and further in view of Morimitsu (KR 2008/0109758).
Bujard teaches that the metal oxide can be deposited using a CVD method or other methods (page 16, last para), but does not teach the features of Claim 10.
Morimitsu describes a metallic pigment (title). The composition can be made using a number of different process steps (page 7, para. 4). Morimitsu explains that in some embodiments, the metal layer may be either uniformly deposited on the silica or unevenly deposited on the surface of the silica (page 9, para. 7).
Therefore, although Morimitsu does not specifically teach the specific surface uneven distribution ratio between the S2 and the S1, since an analysis using X-ray photoelectron spectroscopy surface analysis is used to determine the surface features of the particle, an uneven metal layer would result in a reading of unevenness of the underlayer as well.
Further, although Morimitsu does not specifically teach that the S2/S1 value is from 1-20, since Morimitsu explains that the use of a CVD method results in uneven metal layer deposition (page 3, para. 6), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the same method would produce a composition with the same characteristics.
Furthermore, Bujard describes a number of different variations for applying the silica layer and/or other layers to give the particle different qualities and features (see page 19, lines 11-17, page 11, lines 12-17). Therefore, since Bujard describes varying the pigment in various ways based on the intended results of the user, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the Si content and the Si distribution in the pigment are optimizable features.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bujard as applied to claim 1 above, and further in view of Lanzendoerfer (EP 1457192).
Lanzendoerfer describes a pigment composition (title) and explains that when using a silicon oxide material, which are advantageous, these compounds frequently have irregular shapes whose specific surface areas are very large (200-400 m2/g), but whose specific surface area can be controlled by the use of different production processes (page 6, para. 5).
Therefore, since it is known to adjust the production process of a silicon-containing compound, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the production process of making the pigment components, as taught by Lanzendoerfer for use in the product of Bujard in order to produce a product with the desired specific surface area for the intended use of the product.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 September 19, 2026
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