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 .
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 16 and 19 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.
Regarding claims 16 and 19, the claims are rendered indefinite because they merely recite a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q).
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 1-5, 7-13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Tooley (WO 2019/197575) in view of Goddard (WO 2020/074394).
Regarding claim 1, Tooley teaches titanium dioxide particles useful for the formation of dispersions (Abstract). The dispersion may specifically be aqueous (p. 14, lines 19-20). The titanium dioxide particles are taught has having a Z-average particle size in the range of 60 nm to 180 nm (p. 20, lines 19-26), which falls within the claimed range of “from 30 nm to 220 nm,” establishing a prima facie case of obviousness.
Tooley further teaches that the dispersions may contain dispersing agents (p. 16, lines 1-5), including inter alia sodium salts of polyacrylic acids (p. 17, lines 1-3), which read on the claimed “dispersing agents comprising groups which bind to the titanium dioxide particles” and the limitation requiring “at least partially neutralized carboxylic acid groups” because sodium salts of polyacrylic acids contain neutralized carboxylic acid groups (i.e., the carboxylic acids have been neutralized by the removal of the acidic hydrogen and replacing said hydrogen with a sodium counterion). Tooley additionally exemplifies pH adjustment of titanium dioxide slurry (e.g., p. 35, lines 30-32), which reads on the claimed incorporation of “pH value adjusting compounds.” Tooley exemplifies the use of Sodium hydroxide for pH adjustment (e.g., Example 6 on p. 35, lines 23-25).
Tooley differs from claim 1 because it is silent with regard to the claimed “particle size distribution span” characteristic.
In the same field of endeavor, Goddard teaches a titanium dioxide dispersion useful in personal care compositions (Abstract) such as sunscreen (p. 19, lines 4-11). Tooley likewise teaches that the inventive titanium dioxide particles are useful for sunscreen (p. 39, claim 18). Goddard teaches the measurement of the titanium dioxide particles using values of D10, D50, and D90 (p. 25, lines 1-3), and teaches a suitable width of particle size distribution (D90 – D10) as ranging from 200 to 730 nm (p. 14, lines 26-29). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the width of particle size distribution of Goddard into the titanium dioxide particles of Tooley, as Goddard teaches said distribution width as suitable for titanium dioxide particles used in, inter alia, sunscreen formulations.
Tooley additionally teaches a D50 ranging from 135 to 225 nm (p. 18, lines 19-30). Therefore, the particles of the combined composition of Tooley in view of Goddard would contain a D50 ranging from 135 to 225 nm alongside a (D90 – D10) value ranging from 200 to 730 nm. The value of [(D90-D10)/(D50)] of the combined composition would range from about 0.185 to about 1.125, which overlaps the claimed range of “from 0.7 to 1.5,” establishing a prima facie case of obviousness.
Regarding claim 2, Tooley teaches a volume-based D50 ranging from 140 to 240 nm (p. 17, lines 19-30), which overlaps the range of “below 220 nm,” establishing a prima facie case of obviousness. Tooley further teaches that more than 90% by volume of the TiO2 particles have a volume-based diameter of less than 140 nm (p. 18, lines 8-9), which falls within the claimed ranges requiring “volume-based D10 values below 150 nm” and “volume-based D90 values below 350 nm,” establishing prima facie cases of obviousness. Tooley does not specifically point out that the D90 value of the composition is higher than the D50 of the composition which, in turn, is higher than the D10 of the composition. Nevertheless, Tooley as modified by Goddard as applied above teaches a composition having a D90 greater than D10 (indicated by the positive range recited as the difference between the two), teaches a distribution curve relating particle sizes to volume/mass percent (p. 17, lines 19-30), and teaches a method of manufacturing similar to the one contemplated in the instant application, which involves grinding titanium dioxide particles using a grinding medium (e.g., c.f. p. 26, lines 10-16 of Tooley and p. 7, second paragraph of the instant Specification).
Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or have been produced by a substantially similar process, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed proviso regarding D90 being higher than D50, and D50 being higher than D10, will therefore necessarily be present in Tooley as modified by Goddard, as the modified composition contains titanium dioxide particles which are produced by a substantially similar process and which possess all of the remaining particle size distribution characteristics as claimed.
Regarding claim 3, as described above, Tooley teaches Z-average particle size in the range of 60 nm to 180 nm (p. 20, lines 19-26), which overlaps the claimed range of “80 nm to 190 nm,” establishing a prima facie case of obviousness.
Regarding claim 4, as described above, Tooley as modified by Goddard teaches a [(D90-D10)/(D50)] ranging from about 0.185 to about 1.125, which overlaps the claimed range of “0.8 to 1.2,” establishing a prima facie case of obviousness.
Regarding claim 5, as described above, Tooley teaches the incorporation of inter alia a polyacrylic acid dispersion agent (p. 17, lines 1-3), which reads on the claimed “polymeric dispersing agent” because it is a polymer, and which reads on the claimed “polymers formed from ethylenically unsaturated monomers” because acrylic acid is ethylenically unsaturated.
Regarding claims 7 and 17, Tooley exemplifies the inventive titanium dioxide within a sunscreen emulsion containing water and propylene glycol (p. 34, Example 5). Propylene glycol reads on the claimed “organic solvents” because the instant specification states that glycols are preferred solvents, and propylene glycol is a glycol (c.f. Instant Specification at p. 10, second paragraph).
Regarding claim 8, Tooley exemplifies the pH adjustment of a titanium dioxide dispersion to a value of 6.5 (p. 35, Example 6, line 34), which falls within the claimed range of “6.2 to 7.8,” establishing a prima facie case of obviousness.
Regarding claim 9, Tooley exemplifies the production of the inventive dispersion via a process involving mixing titanium dioxide with a dispersing agent and grinding the mixture in a bead mill (p. 31, lines 1-5). As described above, Tooley in view of Goddard teaches all of the claimed Z-average particle size and particle size distribution characteristics; thus, it would have been obvious to one having ordinary skill in the art at the time of filing to perform the inventive manufacturing process on mixtures meeting these characteristics. The process of Tooley therefore meets all of the required steps and characteristics as claimed.
Regarding claim 10, as described above, Tooley exemplifies the inventive titanium dioxide within a sunscreen emulsion containing water and propylene glycol (p. 34, Example 5). Propylene glycol reads on the claimed “organic solvents” because the instant specification states that glycols are preferred solvents (c.f. Instant Specification at p. 10, second paragraph). Furthermore, while Tooley does not indicate the incorporation of organic solvents within the exemplified method described in the rejection of claim 9 above, it is prima facie obvious to select any order of mixing (see MPEP 2144.04.IV.C.). Finally, Tooley makes no mention that organic solvents may not be added during the aforementioned processing steps. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate inter alia propylene glycol within the titanium dioxide and dispersing agent “premix,” as claimed.
Regarding claim 11, Tooley exemplifies the inventive titanium dioxide within a sunscreen emulsion containing water, propylene glycol, and PEG-100 stearate (p. 34, Example 5). These components meet all of the required components as claimed.
Regarding claims 12 and 13, Tooley teaches the coating of the exemplified formulation onto a black surface and drying (p. 28, lines 5-18).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tooley (WO 2019/197575) in view of Goddard (WO 2020/074394), and further in view of Venturini (WO 2005/111152) and Grosschartner (WO 2016/168455).
Regarding claim 6, Tooley as modified teaches all of the limitations of claim 1, as described above. Tooley as modified differs from claim 6 because, while Tooley does teach the incorporation of dispersing agents as described above, Tooley as modified is silent with regard to the particular use of a (maleic acid)/(vinyl polyether) copolymer.
In the same field of endeavor, Venturini teaches a blend featuring enhanced hiding power, comprising an effect pigment and an aluminum flake pigment, advantageously used in automotive and industrial paint applications (Abstract). Importantly, Venturini specifically teaches that the inventive compositions have an array of applications (p. 12, first paragraph), including nail enamels, printing inks, and apropos to the present application, sunscreen lotion (p. 13, first paragraph) and automotive paint formulations (p. 12, lines 25-28).
Alongside the teaching that the inventive pigments may be included in automotive paint formulations, Venturini specifically indicates the suitability of titanium dioxide and water or solvents (p. 12, lines 25-28). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (see MPEP 2144.07), and Venturini specifically teaches that dispersions of effect pigments and titanium dioxide may be used in automotive coatings in addition to sunscreens. Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the titanium dioxide dispersions of Tooley as modified within automotive coating applications alongside effect pigments, as Venturini teaches these types of compositions as specifically suitable for the same application.
Venturini further qualifies that these kinds of formulations are suitable as top coats within vehicle applications (p. 2, lines 19-21). Therefore, it would have been obvious to one having ordinary skill in the art to utilize the combined formulation of Tooley as modified by Goddard and Venturini as an automotive top coat.
Also in the same field of endeavor, Grosschartner teaches an effect pigment preparation containing an effect pigment and a dispersive additive, inter alia (Abstract). Grosschartner specifically teaches that the inventive effect pigment preparation is suitable for automotive coatings ([0007]), and teaches that the coating composition containing the inventive effect pigment may additionally contain other colored pigments such as titanium dioxide ([0030]). Finally, Grosschartner teaches that the dispersive additive may be chosen from a list of commercially available products including Dispers 752 W ([0021]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the effect pigment composition of Grosschartner into the combined formulation of Tooley as modified by Goddard and Venturini, as Grosschartner teaches said composition as a suitable effect pigment composition for automotive coatings which may also contain titanium dioxide. In so doing, the combined composition would additionally contain Dispers 752 W, which reads on the claimed “(maleic acid)/(vinyl polyether) copolymer” component because the instant Specification specifically indicates that Dispers 752 W is a maleic acid-vinyl polyether copolymer (c.f. instant Specification at p. 9, final paragraph).
Claims 14-16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tooley (WO 2019/197575) in view of Goddard (WO 2020/074394), and further in view of Venturini (WO 2005/111152).
Regarding claim 14, Tooley as modified teaches all of the limitations of claim 12, as described above. Tooley as modified differs from claim 14 because it is silent with regard to a multilayer-coated substrate.
In the same field of endeavor, Venturini teaches a blend featuring enhanced hiding power, comprising an effect pigment and an aluminum flake pigment, advantageously used in automotive and industrial paint applications (Abstract). Importantly, Venturini specifically teaches that the inventive compositions have an array of applications (p. 12, first paragraph), including nail enamels, printing inks, and apropos to the present application, sunscreen lotion (p. 13, first paragraph) and automotive paint formulations (p. 12, lines 25-28).
Alongside the teaching that the inventive pigments may be included in automotive paint formulations, Venturini specifically indicates the suitability of titanium dioxide and water or solvents (p. 12, lines 25-28). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (see MPEP 2144.07), and Venturini specifically teaches that dispersions of effect pigments and titanium dioxide may be used in automotive coatings in addition to sunscreens. Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the titanium dioxide dispersions of Tooley as modified within automotive coating applications alongside effect pigments, as Venturini teaches these types of compositions as specifically suitable for the same application.
Venturini further qualifies that these kinds of formulations are suitable as top coats within vehicle applications (p. 2, lines 19-21). Therefore, it would have been obvious to one having ordinary skill in the art to utilize the combined formulation of Tooley as modified by Goddard and Venturini as an automotive top coat. The automotive part containing a top coat would therefore also contain other coatings (i.e., non-“top” coats), which reads on a multilayer -coated substrate, as claimed. The top coat of the combined composition reads on the claimed coating comprising the claimed composition.
Regarding claim 15, as described above, Tooley teaches the coating of the exemplified formulation onto a black surface and drying (p. 28, lines 5-18). Furthermore, as described above, it would have been obvious to one having ordinary skill in the art at the time of filing to coat the combined composition onto a pre-coated automotive part as a top coat, which reads on the claimed method.
Regarding claim 16, as described above Tooley teaches the use of the inventive titanium dioxide dispersion within a coating (e.g., p. 28, lines 7-9), which reads on the claimed “method of using.”
Regarding claim 18, Tooley as modified by Goddard meets all of the limitations of claim 11, as described above. Tooley as modified differs from claim 11 because it is silent with regard to the incorporation of the claimed colorant and/or filler, however as described above Venturini renders obvious the use of effect pigments alongside dispersions of titanium dioxide in automotive coatings. It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate an effect pigment into the formulation of Tooley as modified by Goddard for the purpose of forming a coating suitable for automotive use, as taught by Venturini.
Regarding claim 19, as described above, Tooley teaches the use of the inventive titanium dioxide dispersion within a coating (e.g., p. 28, lines 7-9). Furthermore, as described above, it would have been obvious in view of Venturini to utilize the composition in conjunction with an effect pigment to form an automotive coating composition as a top coat for an automotive part, which reads on the claimed “method of using.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
Prosecution Insights