DETAILED ACTION
This is an Office action based on application number 18/695,503 filed 26 March 2024, which is a national stage entry of PCT/JP2022/035691 filed 26 September 2022, which claims priority to JP2021-157126 filed 27 September 2021. Claims 1 and 3-6 are pending. Claim 2 is canceled.
Amendments to the claims, filed 31 July 2026, have been entered into the above-identified application.
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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi (US Patent Application Publication No. US 2020/0183051 A1) (Taguchi) in view of Kuna et al. (US Patent Application Publication Nol. US 2016/0326375 A1) and Sun et al. (US Patent Application Publication No. US 2017/0190964 A1) (Sun).
Regarding instant claim 1:
Taguchi discloses an inorganic pigment containing a black metal compound inclusive of a nitride containing at least one metal inclusive of Zr (paragraph [0117]) (i.e., zirconium nitride).
Taguchi further discloses that the surface of the inorganic pigment is modified from the viewpoint of improving dispersibility and suppressing aggregation properties, wherein said modification includes a method of coating with silicon oxide, titanium oxide, germanium oxide, aluminum oxide, magnesium oxide, and zirconium oxide (paragraphs [0118-0119]).
Taguchi does not explicitly disclose the thickness of said oxide layer. Taguchi does not disclose fine particles, and the amount thereof, scatter on the surface of the oxide layer or in the oxide layer.
Regarding the thickness of the oxide layer:
Kuna discloses the encapsulation of pigment flakes with a metal oxide coating (paragraph [0001]).
Kuna further discloses that the metal oxide has a thickness of about 5 nm to about 20 nm to provide passivation and protection (paragraph [0027]). Kuna teaches that relatively thick layers of oxide, e.g., 60 nm to 70 nm, may provide sufficient from environmental attack, but the large thickness can be detrimental to the optical performance of the pigment. (paragraph [0011]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the oxide coatings of Taguchi have the thickness described by Kuna. The motivation for doing so would have been to provide passivation and protection without being detrimental to the optical performance of the pigment.
With regard to the fine carbon particles scatter on the surface of the oxide layer or in the oxide layer:
Sun discloses nanoparticles comprising a coating layer containing amorphous carbon that suppresses oxidation or reduction of the particles during use and also provides more compatibility to a resin matrix than conventional oxide coating layers so that the dispersibility is enhanced, leading to improved chromic properties (paragraph [0020]).
Said “amorphous carbon” is construed to meet the broadly claimed “fine carbon particles”.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the amorphous carbon of Sun into the oxide coatings of Taguchi. The motivation for doing so would have been to suppress oxidation and reduction of the pigment during use while also enhancing dispersibility of the pigment in a matrix resin.
With regard to the amount of the surface-adhered carbon:
Since the instant specification is silent to unexpected results, the specific amount of surface-adhered carbon is not considered to confer patentability to the claims. As the ability to suppress oxidation and reduction and the enhancement of dispersibility are variables that can be modified, among others, by the inclusion of carbon in the coating, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of carbon in the coating of the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Kuna and Sun with Taguchi to obtain the invention as specified by the instant claim.
Regarding instant claims 4-5:
Taguchi further discloses that the inorganic pigment is included in a light attenuating layer (paragraph [0116]).
Taguchi further discloses that the light attenuating layer contains a resin selected from the group inclusive of methacrylic resin, acrylic resin, and an epoxy resin (paragraph [0142]), each of which are construed to include acrylic and epoxy monomers, respectively.
As Taguchi discloses the same organic materials recited by claim 5, Taguchi meets the “UV-curable organic material” recited by the claims.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Taguchi in view of Kuna and Sun as applied to claim 1 above, and further in view of Kageyama et al. (JP2017222559A with citations taken from the provided machine translation) (Kageyama).
Regarding instant claim 3:
Taguchi in view of Kuna and Sun discloses the coated zirconium nitride particle as cited in the rejection of claim 1 above, but does not disclose the claimed ratio of transmittance.
However, Kageyama discloses a zirconium nitride powder that is suitably used as an insulating black pigment [0001]).
Kageyama further discloses that a transmission spectrum of a dispersion of a powder of 50 ppm has a ratio of X/Y of 2.5 or higher wherein X is the light transmittance at 370 and Y is the light transmittance at 550 nm. Kageyama teaches that such a ratio ensures that the zirconium nitride transmits ultraviolet light effectively and provide high light-shielding performance (paragraph [0016]).
Kageyama further discloses that the 50 ppm dispersion includes a propylene glycol monomethyl ether acetate solvent (paragraph [0073]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the zirconium nitride particle of Taguchi in view of Kuna and Sun has the transmission spectrum ratio of Kageyama. The motivation for doing so would have been to ensure that the particles provide high light-shielding performance.
It is noted that Kageyama discloses wavelength transmittance at 370 nm and 550 nm, whereas the claims recite transmittance at 365 nm and 600 nm. However, one of ordinary skill in the art would conclude that the wavelengths are sufficiently close (in terms of the electromagnetic spectrum) that there is a reasonable expectation that the properties provided by such a ratio would be similar.
While there is no disclosure in the prior art that the transmittance is measured at specific temperature and relative humidity, absent evidence of criticality regarding how the transmittance is measured and given that the transmittance obviates the presently claimed property, it is the Examiner's position that the prior art meets the requirements of the instant claim.
Therefore, it would have been obvious to combine Kageyama with Taguchi in view of Kuna and Sun to obtain the invention as specified by the instant claim.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Taguchi in view of Kuna and Sun as applied to claim 1 above, and further in view of Ishikawa et al. (US Patent Application Publication No. US 2020/0033728A1) (Ishikawa).
Regarding instant claim 6:
Taguchi in view of Kuna and Sun discloses a zirconium nitride pigment particle having a metal oxide coating with a thickness of about 5 nm to about 20 nm to provide passivation and protection, but does not explicitly disclose the claimed ratio.
However, Ishikawa discloses a zirconium nitride inorganic black pigment (paragraph [0106]).
Ishikawa teaches that the average primary particle size of the inorganic pigment is preferably 10 nm or more to 150 nm or less from the standpoint of enhancing dispersibility, storage stability, and flexibility (paragraph [0113]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the zirconium nitride of Taguchi in view of Kuna and Sun has the particle size described by Ishikawa. The motivation for doing so would have been to enhancing dispersibility, storage stability, and flexibility.
Given the metal oxide thickness and particle size disclosed by the prior art, the prior art encompasses a ratio range that overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Therefore, it would have been obvious to combine Ishikawa with Taguchi in view of Kuna and Sun to obtain the invention as specified by the instant claim.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa in view of Kuna and Sun.
Regarding instant claim 1:
Ishikawa discloses an inorganic black pigment having zirconium atoms inclusive of zirconium nitride (paragraph [0106]).
Ishikawa further discloses that the inorganic black pigment having zirconium atoms may undergo surface treatment to modify the surface of the pigment, wherein the surface treatment is inclusive of a method in which part or all of the surface is covered by a covering material inclusive of silica and metal oxide (paragraph [0107]).
Ishikawa does not explicitly disclose the thickness of said oxide layer. Ishikawa does not disclose fine particles, and the amount thereof, scatter on the surface of the oxide layer or in the oxide layer.
Regarding the thickness of the oxide layer:
Kuna discloses the encapsulation of pigment flakes with a metal oxide coating (paragraph [0001]).
Kuna further discloses that the metal oxide has a thickness of about 5 nm to about 20 nm to provide passivation and protection (paragraph [0027]). Kuna teaches that relatively thick layers of oxide, e.g., 60 nm to 70 nm, may provide sufficient from environmental attack, but the large thickness can be detrimental to the optical performance of the pigment. (paragraph [0011]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the oxide coatings of Ishikawa have the thickness described by Kuna. The motivation for doing so would have been to provide passivation and protection without being detrimental to the optical performance of the pigment.
With regard to the fine carbon particles scatter on the surface of the oxide layer or in the oxide layer:
Sun discloses nanoparticles comprising a coating layer containing amorphous carbon that suppresses oxidation or reduction of the particles during use and also provides more compatibility to a resin matrix than conventional oxide coating layers so that the dispersibility is enhanced, leading to improved chromic properties (paragraph [0020]).
Said “amorphous carbon” is construed to meet the broadly claimed “fine carbon particles”.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the amorphous carbon of Sun into the oxide coatings of Ishikawa. The motivation for doing so would have been to suppress oxidation and reduction of the pigment during use while also enhancing dispersibility of the pigment in a matrix resin.
With regard to the amount of the surface-adhered carbon:
Since the instant specification is silent to unexpected results, the specific amount of surface-adhered carbon is not considered to confer patentability to the claims. As the ability to suppress oxidation and reduction and the enhancement of dispersibility are variables that can be modified, among others, by the inclusion of carbon in the coating, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of carbon in the coating of the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Kuna and Sun with Ishikawa to obtain the invention as specified by the instant claim.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa in view of Kuna and Sun as applied to claim 1 above, and further in view of Kageyama.
Regarding instant claim 3:
Ishikawa in view of Kuna and Sun discloses the coated zirconium nitride particle as cited in the rejection of claim 1 above, but does not disclose the claimed ratio of transmittance.
However, Kageyama discloses a zirconium nitride powder that is suitably used as an insulating black pigment [0001]).
Kageyama further discloses that a transmission spectrum of a dispersion of a powder of 50 ppm has a ratio of X/Y of 2.5 or higher wherein X is the light transmittance at 370 and Y is the light transmittance at 550 nm. Kageyama teaches that such a ratio ensures that the zirconium nitride transmits ultraviolet light effectively and provide high light-shielding performance (paragraph [0016]).
Kageyama further discloses that the 50 ppm dispersion includes a propylene glycol monomethyl ether acetate solvent (paragraph [0073]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the zirconium nitride particle of Ishikawa in view of Kuna and Sun has the transmission spectrum ratio of Kageyama. The motivation for doing so would have been to ensure that the particles provide high light-shielding performance.
It is noted that Kageyama discloses wavelength transmittance at 370 nm and 550 nm, whereas the claims recite transmittance at 365 nm and 600 nm. However, one of ordinary skill in the art would conclude that the wavelengths are sufficiently close (in terms of the electromagnetic spectrum) that there is a reasonable expectation that the properties provided by such a ratio would be similar.
While there is no disclosure in the prior art that the transmittance is measured at specific temperature and relative humidity, absent evidence of criticality regarding how the transmittance is measured and given that the transmittance obviates the presently claimed property, it is the Examiner's position that the prior art meets the requirements of the instant claim.
Therefore, it would have been obvious to combine Kageyama with Ishikawa in view of Kuna and Sun to obtain the invention a specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant traverses the prior art rejection because the prior art does not disclose the surface-adhered carbon content and only supplies it only through routine optimization rationale. Applicant further argues that the premise that the specification is “silent to unexpected results” is incorrect. Applicant relies upon the examples and comparative examples of their original disclosure to show the criticality of the claimed amount of carbon content.
Applicant’s arguments are unpersuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d). In the instant case, the evidence upon which Applicant relies is much narrower in scope that the claims. Specifically, the examples and comparative examples utilize a specific type of carbon (i.e., a carbon black particle having a specific average particle diameter) and are made by a specific process, whereas the claims are drawn to generic fine carbon particles. One of ordinary skill in the art would not conclude that all the embodiments encompassed by the scope of the claims would have the same allegedly unexpected properties exhibited by the examples utilizing carbon black.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 08/17/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
