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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/602,475, filed on 08 October 2021.
Information Disclosure Statement
The references cited in the PCT international search report by the EPO on 30 June 2020 have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1). In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08 form, must be filed within the set period for reply to this Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 23–28 and 30–41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–5, 7, 8, 11, 13, 14–18, 23 and 25 of U.S. Patent No. 11,421,111 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the published patent anticipates each and every limitation of the above-cited claims in the instant application. The side-by-comparison and relevant claim citations are provided as follows:
18/607,127 (Instant)
US 11,421,111 B2 (Same Parent)
(Claims 1–22: Cancelled)
[Claim 23]
An effect pigment mixture comprising a platelet-like aluminum effect pigment obtained by grinding of aluminum or aluminum based alloy shot and a silvery pearlescent pigment, wherein the silvery pearlescent pigment comprises any one or more of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium
and a second layer on the first layer, wherein the second layer comprises an oxide of titanium,
and mixtures or combinations of the pearlescent pigments a) to e) or pearlescent pigments with mixtures or combinations of the various coating layers mentioned in the pearlescent pigments a) to e),
wherein a weight ratio of the pearlescent pigment to the aluminum effect pigment is in a range of 0.4 to 5.0,
wherein the platelet-like aluminum effect pigment is coated with an anticorrosive coating that includes or consists of SiO2, Cr-oxide, Ce-oxide, Mo-oxide, V-oxide, and mixtures or combinations thereof.
[Claim 1]
An effect pigment mixture comprising a silvery pearlescent pigment and platelet-like aluminum effect pigment, the aluminum effect pigment obtained by grinding of one or more of aluminum shot or aluminum based alloy shot, wherein the silvery pearlescent pigment comprises any one or more of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide optionally coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium
and a second layer on the first layer, wherein the second layer comprises an oxide of titanium, and
a pearlescent pigment comprising any one of the coating layers mentioned in the pearlescent pigments a) to e),
wherein the weight ratio of the pearlescent pigment to the aluminum effect pigment is in a range of 0.4 to 5.0
[Claims 4 and 5]
The effect pigment mixture according to claim 1, wherein the platelet-like aluminum effect pigment is coated with an anticorrosive coating…wherein the metal oxide includes any one or more of SiO2, Ce-oxide, Mo-oxide, V-oxide, and Cr-oxide.
[Claim 24]
An effect pigment mixture according to claim 23, wherein the platelet-like aluminum effect pigment has a d50 in a range of 9 to 30 µm.
[Claim 2]
The effect pigment mixture according to claim 1, wherein the platelet-like aluminum effect pigment has a d50 ranging from 9 to 30 µm.
[Claim 25]
An effect pigment mixture according to claim 23, wherein the platelet-like aluminum effect pigment has a mean thickness hm in a range of 80 to 500 nm.
[Claim 3]
The effect pigment mixture according to claim 1, wherein the platelet-like aluminum effect pigments have a mean thickness hm ranging from 80 to 500 nm
[Claim 26]
An effect pigment mixture according to claim 23, wherein the silvery pearlescent pigment comprises one or more of:
a pearlescent pigment of type a), wherein the pearlescent pigment has a coating comprising a metal oxide layer comprising Ti- and Fe-ions, wherein the Fe-ions are mainly Fe(II) ions;
a pearlescent pigment of type b), wherein the titanium suboxide is represented by the formula TinO2n-1, wherein n is an integer of 1 to 10;
a pearlescent pigment of type c), wherein the titanium oxynitride is represented by the formula Tix-NyOz, wherein x is 0.2 to 0.6, y is 0.05 to 0.6 and z is 0.1 to 0.9, which comprises a solid solution of nitrogen in titanium monoxide;
and mixtures or combinations of the pearlescent pigments a) to c) or pearlescent pigments with mixtures or combinations of the various coating layers mentioned in the pearlescent pigments a) to c).
[Claim 7]
The effect pigment mixture according to claim 1, wherein the silvery pearlescent pigments comprise any one or more of:
the pearlescent pigment of type a), wherein the pearlescent pigment includes a coating comprising a metal oxide layer comprising Ti- and Fe-ions, wherein the Fe-ions are mainly Fe(II) ions,
one or more of the pearlescent pigment pigments of type b1) and b2), wherein the titanium suboxide is represented by the formula TinO2n-1(IV) wherein n in an integer of 1 to 10,
the pearlescent pigment of type c), wherein the titanium oxynitride is represented by the formula TixNyOz(V) wherein x is 0.2 to 0.6, y is 0.05 to 0.6 and z is 0.1 to 0.9, which comprises a solid solution of nitrogen in titanium monoxide, and
pearlescent pigments comprising any one or more of the coating layers mentioned in the pearlescent pigments of types a) to c).
[Claim 27]
An effect pigment mixture according to claim 26, wherein the silvery pearlescent pigment comprises a pearlescent pigment of type a), wherein the pearlescent pigment has a coating comprising a metal oxide layer an ilmenite layer (FeTiO3), magnetite later (Fe3O4), or mixtures thereof.
[Claim 23]
The effect pigment mixture according to claim 7 including a) pearlescent pigments of type a), wherein the metal oxide layer includes one or more of an ilmenite (FeTiO3) layer and a magnetite (Fe3O4) layer.
[Claim 28]
An effect pigment mixture according to claim 23, wherein the silvery pearlescent pigment is of type a) and comprises the following structure:
a transparent platelet-shaped synthetic substrate,
a titanium oxide layer, followed by
a metal oxide layer comprising Ti- and Fe-ions, wherein the Fe-ions are mainly Fe(II)-ions.
[Claim 8]
The effect pigment mixture according to claim 1, wherein the silvery pearlescent pigment comprises the pearlescent pigment of type a comprising the following structure:
a transparent platelet-shaped synthetic substrate,
a titanium oxide layer, followed by
a metal oxide layer comprising Ti- and Fe-ions, wherein the Fe-ions are mainly Fe(II)-ions.
[Claim 29]
An effect pigment mixture according to claim 23, wherein the outermost metal oxide is coated by an organofunctional silane, aluminate, titanite or zirconate.
[Claim 30]
An effect pigment mixture according to claim 23, wherein the hiding power of the silvery pearlescent pigment as defined by the ratio of the L*75°, black/L*75°, white-values measured on the black to white background, respectively, is higher than 70%, wherein the drawdown is made from the pearlescent pigments incorporated in a colorless lacquer and applied on a black/white contrast cartoon using a 100 µm doctor blade, wherein the pigmentation height of the pearlescent pigment is 10 wt.%.
[Claim 11]
The effect pigment mixture according to claim 1, wherein the hiding power of the silvery pearlescent pigment as defined by the ratio of the L*75°, black/L*75°, white-values measured on the black to white background, respectively, is higher than 70%, wherein the drawdown is made from the pearlescent pigments incorporated in a colorless lacquer and applied on a black/white contrast cartoon using a 100 µm doctor blade, wherein the pigmentation height of the pearlescent pigment is 10 wt.%.
[Claim 31]
An effect pigment mixture according to claim 23, wherein the platelet-like aluminum effect pigment is coated with an anticorrosive coating that includes or consists of SiO2 or Mo-oxide or mixtures or combinations thereof.
[Claims 4 and 5]
The effect pigment mixture according to claim 1, wherein the platelet-like aluminum effect pigment is coated with an anticorrosive coating…wherein the metal oxide includes any one or more of SiO2, Ce-oxide, Mo-oxide, V-oxide, and Cr-oxide.
[Claim 32]
An effect pigment mixture according to claim 23, wherein the silvery pearlescent pigment comprises any one or more of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions,
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium
wherein the platelet-like aluminum effect pigment is coated with an anticorrosive coating that includes or consists of SiO2 or Mo-oxide or mixtures or combinations thereof.
[Claim 1]
An effect pigment mixture comprising a silvery pearlescent pigment and platelet-like aluminum effect pigment, the aluminum effect pigment obtained by grinding of one or more of aluminum shot or aluminum based alloy shot, wherein the silvery pearlescent pigment comprises any one or more of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide optionally coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium
and a second layer on the first layer, wherein the second layer comprises an oxide of titanium, and
a pearlescent pigment comprising any one of the coating layers mentioned in the pearlescent pigments a) to e),
wherein the weight ratio of the pearlescent pigment to the aluminum effect pigment is in a range of 0.4 to 5.0
[Claims 4 and 5]
The effect pigment mixture according to claim 1, wherein the platelet-like aluminum effect pigment is coated with an anticorrosive coating…wherein the metal oxide includes any one or more of SiO.sub.2, Ce-oxide, Mo-oxide, V-oxide, and Cr-oxide.
[Claim 33]
An effect pigment mixture according to claim 23, wherein the silvery pearlescent pigment consists of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer, or
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium;
or mixtures or combinations of the pearlescent pigments a) to e).
[Claim 1]
An effect pigment mixture[…]wherein the silvery pearlescent pigment comprises any one or more of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide optionally coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium
and a second layer on the first layer, wherein the second layer comprises an oxide of titanium, and
a pearlescent pigment comprising any one of the coating layers mentioned in the pearlescent pigments a) to e),
[Claim 34]
A coating formulation comprising a first effect pigment, the first effect pigment being the effect pigment mixture according to claim 23, and a binder.
[Claim 13]
A coating formulation comprising: the effect pigment mixture according to claim 1, a binder, a solvent or a solvent mixture, additives and as optional components fillers and/or conventional pigments.
[Claim 35]
A coating formulation according to claim 34, wherein the coating formulation contains at least one second effect pigment, the second effect pigment being a pearlescent pigment based on a transparent substrate and the layers contributing to the color consist of one or two high-refractive index layers consisting of TiO2, Fe2O3 or mixtures thereof.
[Claim 14]
The coating formulation according to claim 13, further comprising an additional pearlescent pigment comprising a transparent substrate and one or more color contributing layers including one or two high-refractive index layers including one or more of TiO.sub.2 and Fe.sub.2O.sub.3.
[Claim 36]
A coating formulation according to claim 35, wherein the silvery pearlescent pigment consists of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer, or
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium;
or mixtures or combinations of the pearlescent pigments a) to e).
[Claim 1]
An effect pigment mixture[…]wherein the silvery pearlescent pigment comprises any one or more of:
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8 and comprising an iron-oxide with Fe(II)-ions;
b1) a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index layer with n>1.8, which comprises titanium suboxide;
b2) a pearlescent pigment comprising a substrate with a high-refractive index with n>1.8 layer, which comprises a titanium suboxide optionally coated with a high-refractive index layer with n>1.8;
a pearlescent pigment comprising a transparent substrate which is coated with a high-refractive index later with n>1.8 and comprising titanium oxynitride
a pearlescent pigment comprising a transparent substrate which is coated with a layer comprising carbon, wherein the carbon is enclosed in particulate form in another metal oxide layer or is formed as a separate, individual layer
a pearlescent pigment comprising a transparent substrate coated with a first layer comprising a mixture of the oxides of titanium, iron and at least one of cobalt and chromium
and a second layer on the first layer, wherein the second layer comprises an oxide of titanium, and
a pearlescent pigment comprising any one of the coating layers mentioned in the pearlescent pigments a) to e),
[Claim 37]
A coating formulation according to claim 34, wherein the coating formulation further includes one or more low refractive layers with n<1.8.
[Claim 25]
The coating formulation according to claim 14, wherein the additional pearlescent pigment further comprises one or more low refractive layers having n<1.8
[Claim 38]
A coating formulation according to claim 34, wherein the weight-% ratio of the effect pigments comprising the first and second effect pigments to the binder is in a range of 0.1 to 0.8.
[Claim 18]
The coating formulation according to claim 13, wherein the weight-% ratio of the effect pigments of the effect pigment mixture ranges from 0.1 to 0.8.
[Claim 39]
A coating formulation according to claim 34, wherein the total amount of the effect pigments of said effect pigment mixture and any other optionally additional pearlescent pigments is in a range of 2 to 5.5 wt.%, based on the total amount of the coating formulation.
[Claim 15]
The coating formulation according to claim 13, wherein the total amount of the effect pigments of the effect pigment mixture ranges from 2 to 5.5 wt.-%, based on the total amount of the coating formulation.
[Claim 40]
A coating formulation according to claim 34, wherein the total amount of the effect pigments of said effect pigment mixture and any other optionally additional pearlescent pigments is in a range of 2 to 4 wt.%, based on the total amount of the coating formulation.
[Claim 16]
The coating formulation according to claim 13, wherein the total amount of the silvery pearlescent pigment ranges from 2 to 4 wt.-%, based on the total amount of the coating formulation.
[Claim 41]
A coating formulation according to claim 34, wherein the amount of the platelet-like metallic effect pigment of the effect pigment mixture is in a range of 1.0 to 2.3 wt.%, based on the total amount of the coating formulation.
[Claim 17]
The coating formulation according to claim 13, wherein the amount of the platelet-like metallic effect pigment of the effect pigment mixture-ranges from 1.0 to 2.3 wt.-%, based on the total amount of the coating formulation.
[Claim 42]
A radio wave transparent coated film on a plastic substrate, the film made from the coating formulation of claim 34.
[Claim 43]
A radio wave transparent coated film on a plastic substrate according to claim 42, said substrate comprising an automotive bumper.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains more than 150 words and because it contains implied language, e.g., “This invention deals with…”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The use of the terms “Dynaslan”, “Silquest”, “Geniosil”, “Paliocrom”, “BASF Colors and Effects”, “Disperbyk”, “Byk”, “Laponite”, “Stapa IL Hydrolan”, “Hostafine”, and “Iriodin”, which are a trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. In the instant case, the names should be written with the following commerce symbols: Dynaslan®, Silquest™, Geniosil®, Paliocrom®, Colors and Effects®, Disperbyk®, Byk®, Laponite®, Stapa® IL Hydrolan®, Hostafine®, and Iriodin® (Iriodin® is correctly written everywhere except pg. 24, l. 4 and pg. 28, Example 7).
The disclosure is objected to because of the following informalities:
Pg. 2, l. 9: “is was proposed” should read “it was proposed”;
Several instances, e.g., pg. 3, ll. 17–19 and pg. 6, ll. 18–21: the text color appears to change to a shade of gray; pursuant to 37 C.F.R. 1.52(a) and MPEP 608.01, sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of legible copies is required, and while the gray text is legible in the as-filed copy, it will potentially lose contrast if reproduced;
Pg. 5, ll. 16–17: “…the aluminum pigments become too thin a disorientation by…” should read “…the aluminum pigments become too thin, and a disorientation by…”;
Pg. 16, l. 5, “The conventional” is in a different font from the rest of the specification;
Pg. 27, Table, Comp. Example 4.0: “not pas” should read “not pass”;
Pg. 30, l. 9, pg. 33, Table 4, Example 8 header, and pg. 35, Table 5 Sample: „Reflex Silver” should be written “Reflex Silver”
Pgs. 31–32 and 35: “BYK-mac” on pg. 31 is written “Byk-mac” and “Byk-MAC on pg. 32, and “BYK-Mac” on pg. 35, which should be corrected for consistency; and
Pg. 39: the Discussion section should include line numbers to be consistent with the rest of the disclosure.
Appropriate correction is required.
Claim Objections
Claims 24–33, 35–41 and 43 are objected to because of the following informalities:
all dependent claims should begin with “The” instead of “A” or “An” to maintain clear antecedence between the dependent claims and their parent;
Claim 26: “type b)” in line 6 lacks clear antecedent basis because parent claim 23 recites a “type b1)” and a “type b2)”, however, because claim 26 limits titanium suboxide, which is common to both b1) and b2), the Examiner feels it is reasonably clear that claim 26 is limiting “type b1)” and/or “type b2)”; the wording of claim 26 should be corrected to establish clear antecedence, but the lack of antecedence does not amount to indefiniteness as written;
Claim 26: the formula numbers should be removed from the formulas for titanium suboxide and titanium oxynitride in components b) and c), or the formula numbers should be changed to (I) and (II) instead of (IV) and (V);
Claim 27: there is a missing comma between “a metal oxide layer” and “an ilmenite layer” in line 3;
Claim 30: there is no conjunction between the final two limitations, i.e., “…using a 100 µm doctor blade, or wherein the pigmentation height…” versus “…doctor blade, and wherein the pigment height…”; in view of the specification, the Examiner believes the conjunction should be “and”;
Claim 30: “wherein the pigment height…is 10 wt.%” is unclear because height is being reported with concentration units; the Examiner believes this is a mistranslation of “Pigmenthöhe” (“pigment level”), which is better translated as “pigment concentration” or “pigment loading”;
Claim 30: the hyphen in “L*75°,white-values” should not be subscript, i.e., it should read “L*75°,white-values; and
Claim 32: the recited list of pearlescent pigments lists a), b1), b2), and then d) and e), leading to confusion because an alphanumeric list does not skip letters; it is understood that this list is copied from the parent claim, so instead of formatting the pigments as a list, the Examiner recommends reciting “Pigment A”, “Pigment B1”, etc., which would overcome the objection and still clearly refer back to the pigments recited in the parent claim.
Appropriate correction is required.
Claim Interpretation
Claim 23 recites “a platelet-like aluminum effect pigment obtained by grinding…”. This is considered product-by-process language (see MPEP 2113). Product-by-process limitations are not limited to the manipulations of the recited steps, only to the structure implied by the steps (which in this case is a platelet-like aluminum effect pigment with no claimed dimensions or properties). In other words, as long as the prior art teaches a product that is substantially similar to the claimed product, the prior art does not have to teach the claimed process.
Claim 23 recites “a silvery pearlescent pigment”. While “silvery” is relative, it is sufficiently defined in the specification to overcome any indefiniteness. The specification recites “In this invention, the term ‘silvery pearlescent pigments’ is used for pearlescent pigments which have a combination of neutral silver or slightly colored reflection color and grey to anthrazite absorption color providing a metallic-like characteristic” (pg. 8, ll. 18–21).
Claim 30 recites “a black/white contrast cartoon”. In the context of L*a*b* colorimetry, the Examiner believes this is meant to refer to a contrast card, e.g., a Leneta contrast card. If Applicants intended for “contrast cartoon” to refer to something different, they are respectfully requested to clarify their intended meaning, as “contrast cartoon” does not appear to be a recognized term in the art.
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 23–43 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.
The term “platelet-like” in claims 23–25, 28, 31, 32, and 41 is a relative term which renders the claim indefinite. The term “platelet-like” 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. For purposes of examination, the Examiner will interpret “platelet-like” as encompassing flakes, disks, oblate spheroids, “pancake” shapes, and any other lamellar shape.
Claims 24–43, being dependent on claim 23, inherit its deficiencies, and are rejected on the same grounds.
Claims 23 and 26 each recite the limitation “wherein the silvery pearlescent pigment comprises any one or more of” (emphasis added), and subsequently recites a Markush group of suitable pearlescent pigments. Pursuant to MPEP 2117 and 2173.05(h), a Markush grouping is a closed group of alternatives, i.e., the selection is made from a group “consisting of”, rather than “comprising” or “including” the alternative members. MPEP 2117 further clarifies that “any claim that recites alternatively usable members, regardless of format, should be treated as a Markush claim”; the recited group is presented as a list of alternative usable members sharing a common structural similarity and a common use (a coated transparent substrate to be used as a pearlescent pigment), making it a Markush group. The specification supports the Markush group as “consisting of” the alternative members (see pg. 3, l. 4, pg. 14, l. 26, and pg. 19, l. 11; the specification does not recite the list as “comprising” the alternatives), so the Examiner will herein interpret claims 23 and 26 as reciting a closed group of alternatives.
Although the Markush group is interpreted as closed, the Examiner does note that the preamble of the claim remains open. Claim 23 is interpreted as reciting “An effect pigment mixture comprising a platelet-like aluminum effect pigment […] and a silvery pearlescent pigment, wherein the silvery pearlescent pigment consists of any one or more of [pigments a) through e)]”. So, while the pearlescent pigments cannot be broadened beyond the scope recited in claim 23, the overall effect pigment mixture can be.
Claims 23, 32 and 36 all recite pigment d) as comprising carbon “in another metal oxide layer”. This wording is ambiguous, as the pigments are all recited as alternatives, meaning the claim doesn’t recite a required metal oxide layer prior to requiring “another metal oxide layer” in pigment d). Additionally, even considering the metal oxides recited in pigments a)–c), it is unclear if “another” is meant to refer to “another kind of metal oxide layer”, i.e., differing from any of the other metal oxides, or simply “another layer of any of the previously recited metal oxides”. For purposes of examination, the Examiner believes the broadest reasonable interpretation of this limitation is “another layer of any of the previously recited metal oxides”.
Claims 23, 32, 33 and 36 all recite pigment e) as being coated with a first layer comprising “a mixture of the oxides of titanium”. This is ambiguously worded because “an oxide of titanium” hasn’t been recited previously in pigment e), so there isn’t an established antecedent basis of “the oxides of titanium”. Pigments b1) and b2) recite titanium suboxide, which could potentially be considered antecedent, but the pigments are recited as alternatives (“any one or more of”), so pigment e) exists independently of pigments b1) and b2). “The oxides of titanium” could also reasonably be interpreted as “the [known] oxides” or “the [common] oxides”, however the line immediately following pigment e) recites “wherein the second layer comprises an oxide of titanium” (emphasis added). This suggests that pigment e)’s first layer comprising “the oxides” is meant to recite “an oxide”, which would be consistent with the second layer comprising “an oxide”. For purposes of examination, the Examiner will interpret pigment e) as reciting “one or more oxides of titanium”.
Claims 23, 32, 33, 36, 37 each recite refractive index limitations as inequalities (i.e., “high-refractive index layer with n > 1.8”). However, refractive index measurements must be reported with the wavelength at which they are measured, especially for metal oxides, which can vary by orders of magnitude from the infrared to ultraviolet wavelengths, and even within the visible wavelengths. Since Applicants did not limit the exact species embodied by each of the claimed pigments (e.g., there is nothing in the specification reciting “titanium suboxide” as consisting of a limited number of species), the Examiner feels the broadest reasonable interpretation of these claims is that any metal oxide that falls within the scope of the claimed pigment must also inherently satisfy the refractive index limitation at whatever wavelength Applicants used to measure refractive index. This interpretation will be used for the purposes of examination, but Applicants are respectfully requested to clarify the wavelength at which they seek coverage for the refractive index limitations.
The Examiner cannot identify any passage in the Specification that would suggest a specific wavelength, so an amendment introducing a wavelength may constitute new matter. However, if Applicants measured according to a known reference standard (e.g., the Sodium D-Line, 589.3 nm), an adequately-supported Declaration under 37 C.F.R. 1.132 asserting that the omitted subject matter would have been understood by a person having ordinary skill in the art to imply a specific wavelength by convention would likely be sufficient to overcome the rejection without introducing new matter.
Claims 23, 26, 31, 32, and 36 each recite “mixtures or combinations”. This is ambiguous because a mixture is inherently a type of combination, and the disclosure does not seem to distinguish between what constitutes a mixture and what constitutes a combination.
Claims 23, 31 and 32 each recite the phrase “includes or consists of”. These are conflicting terms, as “includes” is considered open-ended (allowing for additional species beyond what is recited), which “consists of” is considered closed language (not allowing additional species beyond what is recited) (see MPEP 2111.03). The metes and bounds of the claim are therefore unclear, as the language simultaneously includes and excludes unrecited species. However, the language in the preamble recites an effect pigment mixture comprising the claimed components, which suggests open language. For purposes of examination, the Examiner will herein interpret these claims as reciting “includes”, which is broader than “consists of”.
Claims 26 and 28 recite the phrase “wherein the Fe-ions are mainly Fe(II) ions”. This leads to indefiniteness because “mainly” suggests a majority, but the claims don’t establish what other iron ions are acceptable, or in what amounts. Iron is documented to exist in oxidation states ranging from -2 to +7, with +2 and +3 being the most common by far. A person having ordinary skill in the art would reasonably interpret the claims as allowing Fe(II) and Fe(III) ions, but the allowed ratio is still ambiguous. The specification gives ilmenite and magnetite as preferable embodiments of a metal oxide layer comprising mainly Fe(II) ions (see pg. 9, ll. 11–13), but this leads to further indefiniteness because while ilmenite contains only Fe2+ (FeTiO3 = Fe2+, Ti4+, 3O2-), magnetite contains mainly Fe3+, not Fe2+ (Fe3O4 = Fe2+, 2Fe3+, 4O2-). For purposes of examination, the Examiner will interpret “mainly Fe(II) ions” as encompassing “at least 51 mol% Fe(II) ions”, but will also accept Fe3O4 as meeting the claim limitation, since Applicants indicate it to be a preferable embodiment that satisfies this limitation in their specification.
Claim 29 further limits the effect pigment mixture of claim 23, and recites the limitation “wherein the outermost metal oxide is coated…”. This leads to indefiniteness because the antecedent basis for “the outermost metal oxide” is unclear. Parent claim 23 recites pearlescent pigments coated with a second layer of “an oxide of titanium” (a metal oxide), and further recites pearlescent pigment type d as being optionally enclosed in “another metal oxide layer”. Claim 23 also recites aluminum effect pigments which are coated with anticorrosive coatings comprising “Cr-oxide, Ce-oxide, Mo-oxide, V-oxide, and mixtures or combinations thereof” (all metal oxides). It is therefore unclear whether claim 29 is attempting the further limit the titanium oxide second layer on the pearlescent pigments, the metal oxide layer of pigment type d, or the anticorrosive metal oxide coatings on the aluminum effect pigments. For purposes of examination, the Examiner will herein interpret this claim as referring to the metal oxide passivation layer of the aluminum effect pigment.
Claim 38 recites the limitation "the first and second effect pigments" in line 2. There is insufficient antecedent basis for this limitation in the claim. Parent claim 34 only recites “a first effect pigment”. Claim 35 recites “at least one second effect pigment”, but claim 38 does not depend from claim 35.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 26 expands the scope of pigment type a) from parent claim 23 to include titanium ions (i.e., “comprising a metal oxide layer comprising Ti- and Fe-ions”. However, the broadest reasonable interpretation of claim 23 is a closed Markush group, meaning pigment type a) cannot include additional components in claim 26 that were not recited in parent claim 23.
Claim 27 limits the pearlescent pigment of type a), and recites the limitation “wherein the pearlescent pigment has a coating comprising a metal oxide layer[,] an ilmenite layer (FeTiO3), magnetite (Fe3O4) layer, or mixtures thereof”. However, because the broadest reasonable interpretation of claim 23 is a closed Markush group, pigment type a) cannot include additional components (“a metal oxide layer”) that are not recited in parent claim 23 (“an iron-oxide with Fe(II) ions”). Ilmenite and magnetite both contain Fe(II) ions, so those are acceptable limitations, but “a metal oxide layer” broadens the scope of the claim rather than limiting it.
Claims 33 and 36 limit the Markush group of claim 23 to consist of the recited pearlescent pigments. However, because the broadest reasonable interpretation of claim 23 is already a closed Markush group, claims 33 and 36 fail to further limit the claim.
Claim 38 recites the limitation "the first and second effect pigments" in line 2. Parent claim 34 only recites “a first effect pigment”, so claim 38 fails to further limit its parent.
Claim 39 recites a ratio of “the effect pigments of said effect pigment mixture and any other optionally additional pearlescent pigments”, but neither parent claim 34 nor its parent claim 23 recite the inclusion of optionally additional pearlescent pigments. Because the broadest reasonable interpretation of claim 23 is a closed Markush group, claim 39 cannot introduce “optionally additional” pigments without broadening the scope of the claim.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 23, 24, 26–37 and 41–43 are rejected under 35 U.S.C. 103 as being unpatentable over Venturini (US 2005/0252416 A1, hereinafter “Venturini”), Schoen (US 6,632,275 B1, hereinafter “Schoen”), Sundararaman (US 2014/0076201 A1, hereinafter “Sundararaman”), and Suzuki (US 2014/0322534 A1, hereinafter “Suzuki”).
Evidentiary support for the optical transparency of alumina is provided by HPF (<hpfminerals.com>, “White Fused Alumina: Extreme Hardness”, 2021, hereinafter “HPF”), and evidentiary support for the use of a metal oxide passivation layer is provided by Wikipedia (<Wikipedia.com>, “Passivation (chemistry)”, 2003, hereinafter “Wikipedia”), both of which are applied to claim 23 and all claims dependent thereon.
Evidentiary support for the d50 of Silberline® STARBRIGHT® is provided by Silberline® (“Industrial Coatings, Product Data & Selection Guide”, Silberline®, 2017, hereinafter “Silberline”), and is applied only to claim 24.
Evidentiary support for the refractive index of select inorganic compounds is provided by CRC (“CRC Handbook of Chemistry and Physics”, 97th Edition, 2017, Section 10-248, hereinafter “CRC”), and is applied only to claim 37.
Evidentiary support for the most common types of plastic used in modern automotive bumpers is provided by Badell’s Collision (<badellscollision.com>, “Understanding How We Repair Your Plastic Bumper the Quickest”, 2017, hereinafter “Badell”), and is applied only to claim 43.
Regarding claim 23, Venturini teaches a blend (synonymous with “mixture”) comprising an aluminum flake (within the scope of “platelet-like”) pigment and at least one effect pigment (see generally abstract). The effect pigments are taught to be pearlescent (see paragraph 0002), comprising optically transparent substrates (see paragraph 0026; mica and glass flakes are explicitly referred to as having high transparency), with coatings that include one or more of titanium oxide, iron oxide and chromium oxide (see paragraph 0030; these are inherently “silvery”, since Applicants claim the same species as silvery pearlescent pigments), which is within the scope of claimed pigment e. Although Venturini does not explicitly teach the refractive indices of these oxides, they are all within the scope of Applicants’ claimed metal oxides, and therefore are expected to satisfy the refractive index limitations (see the above 112(b) rejection pertaining to the refractive indices). Venturini further teaches embodiments comprising multiple layers (i.e., having at least a second layer on the first layer), wherein the second layer comprises an oxide of titanium (see paragraph 0030, “SiO2 on calcium aluminum borosilicate, and then TiO2 thereon”).
Venturini fails to explicitly teach the limitations (i) wherein the platelet-like aluminum effect pigment is obtained by grinding aluminum or aluminum-based alloy shot; (ii) wherein a weight ratio of the pearlescent pigment to the aluminum effect pigment is in a range of 0.4 to 5.0, and (iii) wherein the aluminum effect pigment is coated with an anticorrosive coating.
Regarding (i), as discussed in the above Claim Interpretation section, “obtained by” is product-by-process language, and the limitation can be met by any substantially similar product, regardless of the process used to obtain it. Venturini teaches platelet-like aluminum effect pigments, and therefore meets the limitation of the claim.
Regarding (ii), Schoen teaches pigment mixtures comprising SiO2 flakes and special-effect pigments (see generally abstract), wherein the SiO2 flakes are coated with metal oxides (see col. 1, ll. 32–41; referred to as “component A”), and wherein the special-effect pigments are aluminum platelets (see col. 1, ll. 15–23; referred to as “component B”), and wherein the preferred weight ratio of A:B is from 3:1 to 5:1, i.e., 3 to 5, which falls within the claimed ratio. Schoen explicitly teaches the SiO2 as being coated with metal oxides including titanium oxides, iron oxides, and chromium oxides (see col. 1, ll. 60–65), which are the same metal oxides taught by Venturini. Additionally, Venturini teaches “platy SiO2” as being a suitable substrate for the metal oxide-coated effect pigment (see paragraph 0026), which overlaps with Schoen’s metal oxide-coated SiO2 flake pigments (see col. 1, ll. 32–41). It would have been obvious for a person having ordinary skill in the art to modify Venturini according to Schoen’s disclosed weight ratio. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Venturini’s disclosed weight ratio) for another (Schoen’s disclosed weight ratio) to obtain predictable results (both references teach aluminum effect pigments in combination with a pigment comprising a metal oxide-coated substrate, so the results of the proposed modification are predictable).
Regarding (iii), Sundararaman teaches coated metal pigments (see generally abstract), wherein the metal effect pigment is a platelet-shaped aluminum or aluminum alloy (see paragraphs 0032 and 0034). Sundararaman teaches these aluminum effect pigments as being coated with an anticorrosive coating comprising silicon oxide and/or molybdenum oxide (see paragraph 0033; although Sundararaman does not explicitly refer to these oxides as anticorrosive, they inherently have anticorrosive properties—if Applicants recognize these oxides as anticorrosive, then they must be anticorrosive in Sundararaman’s disclosure as well; see MPEP 2112.01). The use of metal oxide coatings to reduce corrosion susceptibility of a metal is well known in the art (see Wikipedia, highlighted text; as an example, the formation of a thin chromium oxide layer on stainless steel is what inhibits corrosion of the steel), and its benefits would have been obvious to a person having ordinary skill in the art. Sundararaman teaches the aluminum flakes as being produced by vacuum metallization (see paragraph 0034), which is the same process taught by Venturini (see paragraph 0037). Since both references teach substantially similar aluminum flakes as metal effect pigments, a person having ordinary skill in the art before the effective filing date of the claimed invention would have been sufficiently motivated to modify Venturini to use a metal oxide coating layer on the aluminum flake to confer anticorrosive properties. The motivation supporting this combination most closely aligns with KSR Rationale C, which states it is prima facie obvious to use a known technique (Sundararaman’s metal oxide coating on aluminum flake effect pigments) to improve similar devices, methods or products (Venturini’s aluminum flake effect pigments) in the same way (both references teach substantially similar products, and the use of metal oxides as a passivation layer is well-understood in the art, so the results of the proposed modification are predictable).
The modification of Venturini by Schoen and Sundararaman arrives at the claimed invention. Additionally, Suzuki teaches alumina flakes for use in coatings and as substrates for effect pigments (see generally abstract), wherein the alumina is coated one or more high-refractive index layers, including layers comprising Fe3O4 (which contains Fe2+, aligning with pigment a), titanium suboxides (aligning with pigments b1 and b2), titanium oxynitrides (aligning with pigment c), and mixtures including titanium oxides, iron oxides, cobalt oxides, and chromium oxides (aligning with pigment e) (see paragraph 0047). Suzuki’s disclosed substrate is alumina, which is optically transparent (see HPF, “Technical Properties” on page 3 and “The Multiple Properties of White Fused Alumina” on page 6), which also aligns with the limitations of the claimed pearlescent pigments. Venturini explicitly teaches “platy aluminum oxide” (i.e., alumina flakes) as being suitable for a metal oxide-coated effect pigment (see paragraph 0026), which overlaps with Suzuki’s metal oxide-coated alumina flake pigments (see paragraph 0047). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Venturini can be further modified to use the specific metal-oxide layers disclosed by Suzuki. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Venturini’s metal oxide-coated substrates and Suzuki’s metal oxide-coated substrates) according to known methods (the combination of each reference’s metal oxide-coated substrate is as simple as adding one to the other; no modifications need to be made to the synthetic pathways because the proposed modification pertains to the use of coated substrates from each reference, not the synthesis of coated substrates) to yield predictable results (both references teach the same substrate being coated with several of the same metal oxides, so the results of the proposed modification are predictable).
Venturini, as modified by Schoen, Sundararaman and Suzuki, arrives at the claimed invention. Claim 23 is therefore rendered prima facie obvious.
Regarding claim 24, Venturini, as modified by Schoen, Sundararaman and Suzuki, teaches the effect pigment mixture according to claim 23. Venturini further teaches the limitation wherein the aluminum effect pigment has a d50 in a range of 9–30 µm (see paragraph 0037 teaching an exemplary aluminum flake as STAR-BRIGHT® by Silberline®; although Venturini fails to explicitly disclose a d50 for the aluminum flakes, or a specific formulation of STAR-BRIGHT®, Silberline teaches all their STAR-BRIGHT® pigments as having a d50 ranging from 8–12 µm [see pg. 12], which overlaps with the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claims 26 and 27, Suzuki further teaches the limitation wherein the silvery pearlescent pigment comprises one or more of pigment types a, b, or c (see paragraph 0047 teaching coatings comprising Fe3O4 [which contains Fe2+, as required for pigment type a], titanium suboxides [as required for pigment types b1 and b2], titanium oxynitrides [as required for pigment type c], or mixtures thereof). Claim 27 further requires that pigment type a has a coating comprising a magnetite layer (Fe3O4), which Suzuki teaches (see paragraph 0047).
Regarding claim 28, Suzuki further teaches the limitation wherein the silvery pearlescent pigment is of type a (see paragraph 0047) and comprises the following structure:
a transparent platelet-shaped synthetic substrate (see paragraph 0047 teaching the substrate as Al2O3 flakes; also see HPF teaching Al2O3 as optically transparent),
a titanium oxide layer (see paragraph 0061 teaching a preferable embodiment comprising a first layer of TiO2), followed by
a metal oxide layer comprising Ti- and Fe-ions, wherein the Fe-ions are mainly Fe(II) ions (see paragraph 0061 teaching a subsequent layer comprising Fe3O4, which contains Fe2+; while Suzuki does not teach a preferred embodiment comprising a mixture of Ti- and Fe(II)-ions, Suzuki teaches ample examples of mixed Ti/Fe coatings [see, e.g., paragraphs 0058, 0064, 0065], and teaches combinations of metal oxides including TiO2 and Fe3O4 [see paragraph 0047], so a person having ordinary skill in the art could reasonably arrive at a mixed coating even though it isn’t explicitly recited as a preferred embodiment).
Regarding claim 29, Sundararaman further teaches the limitation wherein the outermost metal oxide (see the above 112(b) rejection; this is interpreted as referring to the anticorrosive metal oxide layer on the aluminum effect pigment) is coated by an organofunctional silane (see paragraph 0033 teaching metal oxides as including silicon oxide, and further teaching the metal oxide layer as including an organic-inorganic hybrid layer wherein the metal oxides are crosslinked through organic linkers which can further include functional groups; an organofunctional silane is broadly defined as a hybrid compound that bridges an inorganic component [such as SiO2] with functional organic groups, so Sundararaman meets this definition).
Regarding claim 30, Venturini, as modified by Schoen and Suzuki, fails to explicitly teach the limitation wherein the hiding power of the silvery pearlescent pigment as defined in the claim is higher than 70%. The claim requires hiding power to be measured under specific conditions (75° incident angles, 100 µm doctor blade, 10 wt.% pigment loading), and even if one single reference disclosed these exact conditions and the resulting hiding power, the performance of the modified composition could not reasonably be expected to remain the same as any unmodified reference. However, any substantially identical composition will inherently have the same properties, including hiding power measured under the claimed conditions (see MPEP 2112.01). From Applicants’ specification, the hiding power of the silvery pearlescent pigments is mainly achieved by the absorbing layer of the pearlescent pigments (see pg. 9, l. 1). The modified composition of Venturini, Schoen and Suzuki encompasses a transparent substrate with the same high-refractive index layers as claimed for pigment types a, b1, b2, c and e, and therefore it is sufficiently identical to inherently achieve the same hiding power.
The specification does recite other factors regarding hiding power of the overall composition, including limitations regarding the aluminum effect pigment and the ratio between the aluminum and pearlescent pigments, but claim 30 is only drawn to the hiding power of the silvery pearlescent pigment, and so these factors are not relevant to the claim. Therefore, the modified composition inherently possesses the same properties as the claimed pearlescent pigments, and claim 30 is rejected as prima facie obvious.
Regarding claim 31, Sundararaman further teaches the limitation wherein the aluminum effect pigment is coated with an anticorrosive coating that comprises SiO2 or Mo-oxide or mixtures or combinations thereof (see paragraph 0033 teaching oxides of silicon and molybdenum).
Regarding claim 32, Suzuki further teaches the limitation wherein the silvery pearlescent pigment comprises one or more of pigment types a, b1, b2, d or e (see paragraph 0047 teaching alumina as being coated in Fe3O4 [which contains Fe2+, as required for pigment type a], titanium suboxides [as required for pigment types b1 and b2], and mixtures including titanium oxides, iron oxides, cobalt oxides, and chromium oxides [aligning with pigment e]). Sundararaman further teaches the limitation wherein the aluminum effect pigment is coated with an anticorrosive coating that comprises SiO2 or Mo-oxide, or mixtures thereof (see paragraph 0033).
Regarding claim 33, Suzuki further teaches the limitation wherein the silvery pearlescent pigment consists of pigment types a, b1, b2, c, d or e (see paragraph 0047 teaching alumina as being coated in Fe3O4 [which contains Fe2+, as required for pigment type a], titanium suboxides [as required for pigment types b1 and b2], titanium oxynitrides [as required for pigment type c], and mixtures including titanium oxides, iron oxides, cobalt oxides, and chromium oxides [aligning with pigment e]). Suzuki explicitly teaches “at least one metal oxide layer” (see paragraph 0047), which encompasses embodiments using only one layer, thus satisfying the “consists of” transitional phrase of the claim.
Regarding claim 34, Venturini further teaches a coating formulation comprising a first effect pigment mixture, the first effect pigment mixture being the effect pigment mixture according to claim 23, and a binder (see paragraphs 0040 and 0041 teaching the mixture of effect pigments with organic binder).
Regarding claim 35, Venturini further teaches the limitation wherein the coating formulation contains at least one second effect pigment, the second effect pigment being a pearlescent pigment based on a transparent substrate and the layers contributing to the color consist of one or two high-refractive index layers consisting of TiO2, Fe2O3 or mixtures thereof (see paragraph 0026 teaching several transparent substrates; see paragraph 0030 teaching the use of one or two layers consisting of TiO2 and/or Fe2O3 [specifically, paragraph 0030 recites “The metal oxide in most widespread use it titanium dioxide, followed by iron oxide[…], as well as mixtures or combinations of oxides”, which encompasses single-layer coatings as well as multi-layer coatings, thus meeting the “consisting of” transitional phrase of the claim]).
Regarding claim 36, Suzuki further teaches the limitation wherein the silvery pearlescent pigment consists of pigment types a, b1, b2, c, d or e (see paragraph 0047 teaching alumina as being coated in Fe3O4 [which contains Fe2+, as required for pigment type a], titanium suboxides [as required for pigment types b1 and b2], titanium oxynitrides [as required for pigment type c], and mixtures including titanium oxides, iron oxides, cobalt oxides, and chromium oxides [aligning with pigment e]). Suzuki explicitly teaches “at least one metal oxide layer” (see paragraph 0047), which encompasses embodiments using only one layer, thus satisfying the “consists of” transitional phrase of the claim.
Regarding claim 37, Suzuki further teaches the limitation wherein the coating formulation further includes one or more low refractive index layers with n<1.8 (see paragraph 0050 teaching the combination of low- and high-refractive index layers, and paragraph 0051 teaching low-refractive index layers as including SiO2, Al2O3, MgF2, or mixtures thereof; of these, CRC teaches SiO2 as having 1.5209≤n≤1.6493, Al2O3 as having n=1.7673, and MgF2 as having 1.21≤n≤1.423 for their respective reported wavelengths [see section 10-250], so Suzuki’s low refractive index layers meet the limitations of the claim).
Regarding claim 42, Venturini further teaches a radio wave transparent coated film on a plastic substrate, the film made from the coating formulation of claim 34 (see paragraph 0050 teaching the pigment composition as being applied by spraying to form a dry film on a substrate; also see paragraph 0046 teaching a plurality of suitable plastics).
Regarding claim 43, Venturini, as modified by Schoen, Sundararaman and Suzuki fails to explicitly teach the limitation wherein the coated plastic substrate comprises an automotive bumper. As an initial note, this is interpreted as an intended use limitation (see MPEP 2111.02(II)). There is not expected to be any structural difference between a film coated on an automotive bumper versus a film coated on any other plastic substrate. However, Venturini does teach the coating as having “unlimited use in all types of automotive and industrial paint applications” (see paragraph 0045), and further teaches a plurality of plastics that are compatible with the coating, including polypropylene, polyamides, polyesters, polyurethanes, and thermoplastic polyolefins (see paragraph 0046. Badell teaches modern automotive bumpers as most commonly being made from one or more of these same plastics, so a person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the modified composition of Venturini can be applied towards automotive bumpers, even if Venturini does not explicitly recite bumpers as an intended substrate. The motivation supporting this combination most closely aligns with KSR Rationale D, which states it is prima facie obvious to apply a known technique (the application of Venturini’s coating composition, as modified above, on a plastic substrate) to a known device, method or product (the above-listed plastic substrates, which are the most common plastics used for automotive bumpers) ready for improvement (enhanced hiding power, deep color [see Venturini, Paragraphs 0017 and 0045]) to yield predictable results (Venturini teaches the coating as being suitable for these polymers, and explicitly teaches “unlimited use in all types of automotive and industrial paint applications”, so the results of the proposed modification are predictable).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Venturini, Schoen, Sundararaman and Suzuki as applied to claim 23 above, and further in view of Schmid (US 2011/0237683 A1, hereinafter “Schmid”).
Regarding claim 25, Venturini, as modified by Schoen, Sundararaman and Suzuki, teaches the effect pigment mixture according to 23, but fails to explicitly teach the limitation wherein the aluminum effect pigment has a mean thickness in a range of 80 to 500 nm. Venturini teaches the use of STARBRIGHT®, and states that it has a thickness ranging from 0.01–0.5 µm (10–500 nm; see paragraph 0059), but claim 25 is specifically drawn to the mean thickness, not the total thickness. With Venturini’s range of 10–500 nm, the mean thickness must fall somewhere within that range, but if most of the particles are closer to 10 nm thick, the mean thickness may fall closer to 10 nm, which does not overlap with the claimed range. The total thickness range disclosed by Venturini cannot, on its own, render obvious the claimed mean thickness range. Schmid teaches a pigment composition comprising platelet-like perlite and effect pigments (see generally abstract), wherein the effect pigment is explicitly taught to be an aluminum platelet, with STARBRIGHT® cited as an example of a suitable aluminum effect pigment (see paragraph 0048). Schmid teaches the average thickness (i.e., mean thickness) of these particles as ranging from 80 nm to 700 nm, which overlaps with the claimed mean thickness (see paragraph 0048; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Venturini, as modified by Schoen, Sundararaman and Suzuki, can be further modified according to Schmid to use aluminum flakes with a mean thickness ranging from 80–700 nm. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Venturini’s aluminum flake dimensions) for another (Schmid’s aluminum flake dimensions) to obtain predictable results (both references teach the same types of aluminum flakes as effect pigments, so the results of the proposed modification are predictable). This modification arrives at the claimed invention, and therefore, claim 25 is rendered prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, Tu, W, F after 5:30 PM and Th from 8 AM to 6 PM.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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