DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 2, the phrase “(0 ≤ x ≤ 2)” is in parentheses, generating confusion as to whether the limitation is optional or not. To correct, the Examiner suggests deleting the parentheses. For the purposes of examination, the Examiner is interpreting the claim to necessitate that 0 ≤ x ≤ 2.
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, 3-4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Detrie et al. (US-20140370247-A1) (hereinafter referred to as “Detrie”).
Regarding claims 1 and 6, Detrie teaches a slurry composition (coating agent, regarding claim 6) (see Detrie at para. 0012 and 0020, teaching a marking composition comprising particles of one or more laser absorbers and a vehicle or a solvent; the marking composition of Detrie corresponds to the claimed “slurry” and the claimed “coating agent”) comprising:
• particles of a complex oxide containing La and at least one element selected from the group consisting of Mo and W (see Detrie at para. 0020, teaching the marking composition as comprising particles of one or more laser absorbers; also see Detrie at para. 0034, teaching lanthanum molybdate as a suitable laser absorber; lanthanum molybdate necessarily is a complex oxide containing lanthanum and molybdenum); and
• a dispersion medium (see Detrie at para. 0025-0026, teaching the marking composition as containing a vehicle and a solvent);
• wherein a central particle diameter of the particles is not greater than 800 nm (see Detrie at para. 0047, teaching the particles may have an average particle size of from about 0.1 microns to about 55 microns, or about 100 nm to about 55,000 nm; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• a content of the particles is 0.1 to 10 mass% (see Detrie at para. 0063, teaching that in metal marking applications, the content of the laser absorber particles may range from about 5 wt% to about 60 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claims 3-4, see Detrie at para. 0031 and 0051, teaching the marking composition may contain a resin binder and a dispersant.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Detrie, as applied to claim 1 above, and further in view of Colmont et al. (Colmont, Marie, et al. “Origin of luminescence in La2MoO6 and La2Mo2O9 and their bi-doped variants.” Inorganic Chemistry, vol. 59, no. 5, 20 Feb. 2020, pp. 3215–3220, https://doi.org/10.1021/acs.inorgchem.9b03580) (hereinafter referred to as “Colmont”).
Regarding claim 2, while Detrie teaches the composition according to claim 1 outlined above, Detrie fails to explicitly teach the complex oxide to be La2MoxW(2-x)O9 (0 ≤ x ≤ 2).
However, Colmont teaches that among all inorganic phases reported in the La2O3-MoO3 binary system, La2Mo2O9 remains “without a doubt the most famous” (see Colmont at pg. 3215, right column, last paragraph – pg. 3216, left column, para. 1). Colmont further teaches La2Mo2O9 to demonstrate absorption properties in the UV-Vis specrum (see Fig. 3 of Colmont at pg. 3217).
Detrie teaches lanthanum molybdate as a suitable laser particle (see Detrie at para. 0034). In this case, one of ordinary skill in the art would reasonably look to a lanthanum molybdenate complex like that taught by Colmont, i.e., La2Mo2O9, given it is among one of the most common lanthanum molybdate complexes and further given it demonstrates absorption properties in the UV-Vis spectrum (see Colmont at pg. 3215, right column, last paragraph – pg. 3216, left column, para. 1; see Fig. 3 of Colmont at pg. 3217).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the La2Mo2O9 like that taught by Colmont as the lanthanum molybdate in the composition of Detrie, as La2Mo2O9 is one of the most well-known lanthanum molybdenates and is further known to demonstrate absorption properties in the UV-Vis spectrum (see Colmont at pg. 3215, right column, last paragraph – pg. 3216, left column, para. 1; see Fig. 3 of Colmont at pg. 3217). Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
La2Mo2O9 reads on the claimed formula, where x is equal to 2.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Detrie, as applied to claim 1 above, and further in view of Uehara (JP-2019199517-A), with reference to the included machine translation (hereinafter referred to as “Uehara”), and Iwamoto et al. (JP-H09263048-A), with reference to the included machine translation (hereinafter referred to as “Iwamoto”).
Regarding claim 5, while Detrie teaches the composition according to claim 1 outlined above, Detrie fails to explicitly teach the composition as further comprising an ultraviolet-curable resin.
However, it is well-known that laser marking compositions may suitably contain UV-curable resin binders (see Uehara at pg. 1, para. 1; pg. 6, para. 4-5; also see Iwamoto at pg. 1, para. 1; and pg. 5, last paragraph; and pg. 6, para. 1). Further, Detrie teaches their composition may contain a resin binder, including some binders that are commonly UV-curable, e.g., acrylics and epoxies (see Detrie at para. 0031).
In this case, UV-curable resins are well-known materials suitable for use as resin binders in a laser marking composition (as exemplified by Uehara at pg. 1, para. 1; pg. 6, para. 4-5; and Iwamoto at pg. 1, para. 1; pg. 5, last paragraph; and pg. 6, para. 1), and thus its use in the composition of Detrie would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a UV-curable resin like that taught by Uehara or Iwamoto as the resin binder in the composition of Detrie, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. Further. combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Okimura et al. (JP-2022043763-A) teach a spray composition (see Okimura at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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