DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, 15-16, and 18-20 in the reply filed on 04/02/2026 is acknowledged.
Claims 8-14, and 17 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/02/2026.
Status of the claims
Claims 1-20 are pending. Claims 8-14 and 17 have been withdrawn.
Claims 1-7, 15-16, and 18-20 are currently under examination.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statements (IDS) filed on
04/01/2024 is attached to the instant Office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 3-4 and 18 are objected to because of the following informalities: Claims 1, 3-4, recites “of from” with regards to the average molecular weight, this appears to be a grammatical error.
Claim 18 recite “of from” with regards to an average diameter, this appears to be a grammatical error.
Appropriate correction is required.
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 2, 5-7, 18-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites “a substrate plate”. This language is indefinite because it is unclear what the term substrate plate and is not defined in the instant specification. The examiner is interpreting the term “substrate plate” to mean a “substrate platelet”.
Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogers et al. (US8920553B2, Published 12/30/2014).
The claims are drawn to a pigment suspension comprising: at least one aluminum pigment; and at least one polyethylene glycol having an average molecular weight of from 200 g/mol to 35,000 g/mol.
Regarding claims 1 and 3, Rogers discloses the present disclosure is directed to cellulose ether compositions for coated applications and coated products made using these compositions (Summary section). Rogers also discloses in Example 1, the VLV cellulose ether coating composition which comprises Component A may be a cellulose ether product, Component B: polyethylene glycol (MW=400), Component C: sodium lauryl sulfate (i.e., surfactant), Component D: aluminum lake pigment, Component E: water (Example 1). The preponderance of the evidence supports that aluminum lake pigments are water insoluble, therefore, the composition of Example 1 would necessarily be a suspension. With regards to claim 3 wherein the at least one polyethylene glycol comprises at least two polyethylene glycols each having an average molecular weight of from 200g/mol to 35,000 g/mol, the preponderance of the evidence supports the conclusion that that at least two polyethylene glycols each having an average molecular weight of from 200 g/mol to 35,000 g/mol because the limitation of the instant claims reads that the polyethylene glycols do not require different molecular weights, and Rogers disclose in Example 1 that the amount % wt. of Component B can be between 1-10%, therefore, at least two polyethylene glycols with the molecular weight of 400 such as PEG 400 can be present in the composition.
Accordingly, Rogers anticipated the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Petereit et al. (US20060078610A1, Published 04/13/2006).
Applicant’s invention
The applicant’s claims are drawn to a pigment suspension comprising: at least one aluminum pigment; and at least one polyethylene glycol having an average molecular weight of from 200 g/mol to 35,000 g/mol.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1 and 3, Petereit teaches a film-forming coating agent comprising a pigment (paragraph [0016]), wherein the pigment is an aluminum pigment (Petereit, claim 5), wherein the pigment is suspended alone or together with the release agent in water. The pigment suspension may additionally comprise pharmaceutically usual excipients such as plasticizers (paragraph [0060]), wherein an example of the plasticizers are polyethylene glycols 4000 to 20,000 (i.e., molecular weight) (paragraph [0082]). Petereit further teaches in example 1, A mixture of a spray suspension of a EUDRAGIT® E dispersion formed from 57.0 g of EUDRAGIT® E PO, 4.0 g of sodium lauryl sulfate, 8.55 g of dibutyl sebacate and 278.5 g of water coagulates shortly after stirring in a pigment suspension consisting of 57.0 g of talc, 17.0 g of aluminum pigment orange yellow, 34.0 g of titanium dioxide and 432.0 g of water (paragraph [0090]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Petereit does not disclose a single embodiment or example where every limitation recited in the instant claims is taught.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The claims are considered prima facie obvious to one of ordinary skill in the art at the time of filing because Petereit teaches all of the claimed elements. It would have been prima facie obvious to one of ordinary skill in the art before the time of filing to have a pigment suspension comprising: at least one aluminum pigment; and at least one polyethylene glycol having an average molecular weight of from 200 g/mol to 35,000 g/mol because Petereit teaches and contemplates all the elements required to make the pigment suspension.
With regards to claim 3 wherein the at least one polyethylene glycol comprises at least two polyethylene glycols each having an average molecular weight of from 200g/mol to 35,000 g/mol, it would have been obvious to have at least two polyethylene glycols because Petereit teaches the use of plasticizers wherein an example of the plasticizers are polyethylene glycols 4000 to 20,000 (i.e., molecular weight) (paragraph [0082]). Petereit also teaches that the more than one plasticizer ordinarily have a molecular weight between 100 and 20,000 (paragraph [0082]). It would have been obvious to one of ordinary skill to have two polyethylene glycols each having an average molecular weight of from 200g/mol to 35,000 g/mol because Petereit teaches that more than one plasticizer can be present such as polyethylene glycols 4000 to 20,000 (i.e., molecular weight) (paragraph [0082]), which reads on the limitation of having at least two polyethylene glycols each having an average molecular weight of from 200g/mol to 35,000 g/mol.
Claims 2, 5-7, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Petereit et al. (US20060078610A1, Published 04/13/2006) in view of Shimizu et al. (US20160168387A1, Published 06/16/2016).
Applicant’s invention
Petereit renders obvious all the limitations of instant claim 1. Applicants claim 2 further adds the limitation wherein the at least one pigment has a substrate plate. Applicants claim 5 further adds the limitation wherein the substrate plate comprises a vacuum metalized pigment. Applicants claim 6 further adds the limitation wherein the substrate plate comprises a lenticular substrate plate. Applicants claim 7 further adds the limitation wherein the substrate plate comprises a lamellar substrate plate. Applicants claim 18 further adds the limitation wherein the substrate plate has an average diameter of from 2 µm to 200 µm. Applicants claim 19 further adds the limitation wherein the substrate plate has an average thickness of at most 150 nm. Applicants claim 20 further adds the limitation wherein a ratio of the average diameter to the average thickness is at least 80.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 2, Petereit teaches a film-forming coating agent comprising a pigment (paragraph [0016]), wherein the pigment is an aluminum pigment (Petereit, claim 5), wherein the pigment is suspended alone or together with the release agent in water. The pigment suspension may additionally comprise pharmaceutically usual excipients such as plasticizers (paragraph [0060]), wherein an example of the plasticizers are polyethylene glycols 4000 to 20,000 (i.e., molecular weight) (paragraph [0082]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Petereit does not teach wherein the at least one aluminum pigment has a substrate plate (instant claim 2); wherein the substrate plate comprises a vacuum metalized pigment, a lenticular substrate plate, and a lamellar substrate plate (instant claims 5-7). Petereit also does not teach wherein the substrate plate has an average diameter of from 2 µm to 200 µm (instant claim 18); wherein the substrate plate has an average thickness of at most 150 nm (instant claim 19); wherein a ratio of the average diameter to the average thickness is at least 80 (instant claim 20). However these deficiencies are cured by Shimizu et al.
In the analogous art of pigments, Shimizu teaches a metallic luster pigment based on coated aluminum substrate platelets (paragraph [0011]), wherein the aluminum platelets may take various forms. Substrate platelets used may, for example, be lamellar and lenticular metal platelets or else what are called vacuum metallized pigments (VMP) (paragraph [0030]). Shimizu also teaches in general, the platelets have mean greatest diameters of about 2 to 200 μm (paragraph [0024]); and wherein the aluminum substrate platelets have a thickness of 1 to 50 nm (paragraph [0011]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing for the at least one aluminum pigment to have a substrate plate in Petereit’s film-forming coating agent comprising a pigment. Petereit teaches that the film-forming coating agent comprises a pigment, wherein the pigment is an aluminum pigment. One would have understood in view of Shimizu that the metallic luster pigment made from aluminum substrate platelets (paragraph [0011]), wherein the aluminum platelets may take various forms. Substrate platelets used may, for example, be lamellar and lenticular metal platelets or else what are called vacuum metallized pigments (VMP) (paragraph [0030]). It would have been obvious to one of ordinary skill to have the at least one aluminum pigment to have a substrate plate in Petereit’s film-forming coating agent comprising a pigment because Petereit teaches having a pigment, wherein the pigment is an aluminum pigment and Shimizu teaches that the metallic luster pigment (i.e., aluminum pigment) can be made from aluminum substrate platelets, wherein the aluminum platelets may take various forms, for example, be lamellar and lenticular metal platelets or else what are called vacuum metallized pigments (VMP) (paragraph [0030]).
With regards to claim 20, wherein a ratio of the average diameter to the average thickness is at least 80, it would have been obvious to one of ordinary skill in the art to optimize the average diameter and the average thickness to obtain a ratio of at least 80. One would have understood in view of Shimizu that the substrate platelets can have a diameter of about 2 to 200 μm (paragraph [0024]); and wherein the aluminum substrate platelets have a thickness of 1 to 50 nm (paragraph [0011]). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the average diameter and the average thickness to obtain a ratio of at least 80 depending on the desired result of ratio using the diameter and thickness of the substrate platelets taught by Shimizu. Determining optimal concentrations is routine experimentation and is practiced by one of ordinary skill. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Claims 4, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Petereit et al. (US20060078610A1, Published 04/13/2006) in view of Porter et al. (US4543370A, Published 09/24/1985).
Applicant’s invention
Petereit renders obvious all the limitations of instant claim 1. Applicants claim 4 further adds the limitation wherein the at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol. Applicants claim 15 further adds the limitation wherein the at least two polyethylene glycols are different from one another. Applicants claim 16 further adds the limitation wherein a weight ratio of the at least one second polyethylene glycol to the at least one first polyethylene glycol is from 15:1 to 1:1.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 4, Petereit teaches a film-forming coating agent comprising a pigment (paragraph [0016]), wherein the pigment is an aluminum pigment (Petereit, claim 5), wherein the pigment is suspended alone or together with the release agent in water. The pigment suspension may additionally comprise pharmaceutically usual excipients such as plasticizers (paragraph [0060]), wherein an example of the plasticizers are polyethylene glycols 4000 to 20,000 (i.e., molecular weight) (paragraph [0082]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Petereit does not teach wherein the at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol (instant claim 4); wherein the at least two polyethylene glycols are different from one another (instant claim 15); and wherein a weight ratio of the at least one second polyethylene glycol to the at least one first polyethylene glycol is from 15:1 to 1:1 (instant claim 16). However, these deficiencies are cured by Porter et al.
In the analogous art of coating compositions for use in pharmaceuticals and food, Porter teaches a dry powder edible film coating composition which comprises edible pigment particles and edible polymer plasticizers (Porter claim 1), wherein the edible pigment comprises aluminum lake (i.e., aluminum pigment) and the plasticizer is polyethylene glycol 400 (Examples 2 and 3). Porter further teaches Exemplary of the polymer plasticizer for use in the dry coating mixture of the invention are polyethylene glycol, for example, polyethylene glycol having a molecular weight of 200 to 8000 (column 2, lines 22-25); wherein the plasticizer is a liquid such as polyethylene glycol 400 (column 2, lines 35-36).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol in Petereit’s film-forming coating agent comprising a pigment and plasticizers. Petereit teaches a method of producing pharmaceuticals or food supplements comprising coating substrates with film-forming coating agent comprising a pigment (paragraph [0016]), wherein the pigment is an aluminum pigment (Petereit, claim 5), wherein the pigment is suspended alone or together with the release agent in water. The pigment suspension may additionally comprise pharmaceutically usual excipients such as plasticizers (paragraph [0060]), wherein an example of the plasticizers are polyethylene glycols 4000 to 20,000 (i.e., molecular weight) (paragraph [0082]). One would have understood in view of Porter that a dry powder edible film coating composition for use in pharmaceuticals, confectionery and food can be made using edible pigment particles and edible polymer plasticizers (Porter claim 1), wherein the edible pigment comprises aluminum lake (i.e., aluminum pigment) and the plasticizer is polyethylene glycol 400 (Examples 2 and 3). Porter further teaches Exemplary of the polymer plasticizer for use in the dry coating mixture of the invention are polyethylene glycol, for example, polyethylene glycol having a molecular weight of 200 to 8000 (column 2, lines 22-25); wherein the plasticizer is a liquid such as polyethylene glycol 400 (column 2, lines 35-36). It would have been obvious to one of ordinary skill in the art to have at least one polyethylene glycol comprises at least one first polyethylene glycol having an average molecular weight of from 200 g/mol to 600 g/mol and at least one second polyethylene glycol having an average molecular weight of from 1000 g/mol to 35,000 g/mol in Petereit’s film-forming coating agent comprising a pigment plasticizers because Petereit and Porter are directed to coatings that are applied to pharmaceuticals and food, and both teach using plasticizers such as polyethylene glycol with a range of molecular weights such as 200 to 8000 and 4000 to 20,000, therefore, one of ordinary skill could use a broad range of plasticizers with different molecular weights for the purpose of coatings applied to pharmaceuticals and food. See 2144.06 (I).
With regards to claim 15, wherein the at least two polyethylene glycols are different from one another, it would have been obvious to one of ordinary skill in the art to have the at least two polyethylene glycols are different from one another in Petereit’s film-forming coating agent comprising a pigment and plasticizers because Petereit and Porter are directed to coatings that are applied to pharmaceuticals and food, and both teach using plasticizers such as polyethylene glycol with a range of molecular weights such as 200 to 8000 and 4000 to 20,000, and Porter further teaches the use of liquid polyethylene glycol 400 which is a liquid and is preferably used with a solid plasticizer such as the polyethylene glycol 3350 and 8000 (column 2, lines 39-43), therefore, the different molecular weights reads to the limitation of having two different polyethylene glycols wherein the molecular weights are in a range and can be liquid or solid.
With regards to claim 16, wherein a weight ratio of the at least one second polyethylene glycol to the at least one first polyethylene glycol is from 15:1 to 1:1, it would have been obvious to one of ordinary skill in the art to optimize the ratio of polyethylene glycols in Petereit’s film-forming coating agent comprising a pigment and plasticizers. Petereit teaches the amounts used are between 1 and 35% (paragraph [0082]). One would have understood in view of Porter is that The preferred range is about 5% to 20% by weight of plasticizer to polymer (column 6, lines 19-20). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the weight ratio of the at least one second polyethylene glycol to the at least one first polyethylene glycol to be from 15:1 to 1:1 to achieve the desired results of the plasticizer to enhance flexibility and durability based on the molecular weights of the polyethylene glycol. Determining optimal concentrations is routine experimentation and is practiced by one of ordinary skill. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 (II). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617 /ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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