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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
Claim Objections
Claim 9 is objected to because of the following informalities: “wherein the functional group … are selected from” should be “wherein the functional group … is selected from”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 10 newly requires that “the modification substances are α,ω-diphosphonic acids or α,ω-diphosphoric acid ester.” However, support in the specification, as originally filed, for the modification substances being α,ω-diphosphonic acids or α,ω-diphosphoric acid ester could not be found.
The first paragraph on page 12 originally stated that “the functional groups are the same kind as the groups which bonds to the metal pigment surface. Preferred herein are additives such as α, ω-diphosphonic acids or α,ω-diphosphoric acid ester.” Examiner’s understanding of this excerpt is that it is the functional group of the R or R’ which can be α, ω-diphosphonic acids or α,ω-diphosphoric acid ester.
Appropriate correction and/or clarification is required.
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 10 and 11 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.
Regarding claim 10, in view of Applicant’s amendment to the specification, it is not clear what applicant requires to be an α, ω-diphosphonic acid or α,ω-diphosphoric acid ester. Since it cannot be determined what Applicant intends to claim, prior art cannot be applied.
Regarding claim 11, the claim recites that “the metal pigment surface can be additionally modified by a dispersing additive.” However, parent claim 1 now uses the modifier “consisting of,” which prevents the flaky metal pigments from having any other components besides the metallic substrate and the surface modification layer made by the recited method. It is, therefore, not clear how the pigment surface can be additionally modified with a dispersing additive when claim 1 prevents any other components.
Appropriate correction and/or clarification is required.
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 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.
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.
Claim(s) 1-5, 8, 9, 11, 12, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Landa et al. (US 20170072427) in view of Schlegl et al. (US2007/0199478). Regarding claim 1, Landa et al. teach “a method of printing onto a surface of a substrate (abstract, Figure 1), which method comprising: providing a donor surface (item 12), passing the donor surface through a coating station from which the donor surface exits coated with individual particles (item 14), and repeatedly (paragraph 101) performing the steps of: treating the surface of the substrate to render affinity of the particles to at least selected regions of the surface of the substrate greater than affinity of the particles to the donor surface, wherein a receptive and/or adhesive layer is applied onto the substrate (paragraph 51), contacting the surface of the substrate with the donor surface to cause particles to transfer from the donor surface only to the treated selected regions of the surface of the substrate, thereby exposing regions of the donor surface from which particles are transferred to corresponding regions on the substrate (paragraph 48), thereby generating a plurality of individual particles adhered to the treated surface of the substrate (paragraph 48), returning the donor surface to the coating station to render the individual particles continuous in order to permit printing of a subsequent image on the surface of the substrate (paragraph 48), wherein the particles adhere to the donor surface more strongly than the particles adhere to each other (paragraph 13: Examiner notes that if the particles adhered to each other more strongly than to the donor surface, then when excess particles are removed by the extraction system, the particles on the surface would attach to the particles being removed and thus would leave the donor surface empty. Therefore, the particles must adhere to the donor surface more strongly in order to have a fresh coating applied to the donor surface.); wherein at least 50 wt. % of the individual particles are metal pigments consisting of a flaky metallic substrate (paragraph 32. Examiner notes that all of the particles are the same particles, as Landa et al. do not disclose having more than one type of particle) and a surface modification layer of the metallic substrate (paragraph 33).” Landa et al. fail to disclose “wherein the surface modification has been made by a treatment of the metallic substrate surface by at least one of the modification substances from the group consisting of phosphate ester, phosphonic esters, phosphonic acids, phosphinate esters, organofunctional silanes, organofunctional titanates, organofunctional zirconates, organofunctional aluminates and mixtures thereof.”
Schlegl et al. teach coating flaky aluminum pigments (paragraph 3) with phosphonic acids (paragraph 109) in order to achieve aluminum pigments with high gloss, improved metallic appearance, and reduced tendency to agglomerate (paragraphs 22 and 23). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the coating of Schlegl et al. as the coating of Landa et al. in order to achieve aluminum pigments with high gloss, improved metallic appearance, and reduced tendency to agglomerate. Regarding claim 2, Landa et al. further teach “wherein the donor surface exits the coating station coated with a monolayer of the individual particles (paragraph 18).” Regarding claim 3, Landa et al. further teach “wherein the flaky metallic substrate has an average thickness (h50 value) in the range of 10 to 500 nm (paragraph 71).” Regarding claim 4, Landa et al. further teach “wherein the flaky metallic substrate has an aspect ratio in the range from 1500:1 to 10:1 (paragraph 76), wherein the aspect ratio is defined as the ratio between the average pigment diameter (D50 value) and the average pigment thickness (h50 value).” Regarding claim 5, Landa et al. further disclose “wherein the flaky metallic substrate comprises one or more of aluminum, copper, zinc, gold-bronze, chromium, titanium, zirconium, tin, iron and steel flaky substrates or pigments of alloys of these metals (paragraph 32).”
Regarding claim 8, Schlegl et al. further teach “wherein the modification substances comprise: ii) R(n-o-p)-P(O)(OR1)o(OR2)p and n+o+p =3 wherein R1, R2 are H, a metal ion or linear or branched alkyl moieties with 1 to 4 C-atoms, and R or is a linear or branched alkyl, aryl, alkylaryl or arylalkyl moieties with 1 to 24 C-atoms (paragraph 109).”
Regarding claim 9, Schlegl et al. further teach “wherein the functional group of moieties R or R' independently are selected from the group consisting of phosphonic, phosphate, amino, epoxy, acrylate, methacrylate, hydroxy, mercapto, thiol, cyano, isocyanate, carboxy, carbamate, ureido or thioureido (paragraph 109).” Regarding claim 11, the metal pigment surface of Landa et al. is able to be “additionally modified by a dispersing additive.” Regarding claim 12, Landa et al. further teach ‘wherein the donor surface is a hydrophobic surface (paragraph 99).” Regarding claim 15, Landa et al. further disclose “wherein the hydrophobic surface is made by an elastomer prepared from poly (dimethylsiloxane) polymers (paragraph 99).”
Regarding claims 16-18, carrying out the modified method of Landa et al., as discussed above with respects to claims 1, 8, and 12, respectively, would result in the product as claimed.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Landa et al. and Schlegl et al., further in view of Hippmann et al. (US 20160304721). Regarding claim 6, Landa et al., as modified, teaches all that is claimed, as in claim 1 above, except that “the flaky metallic substrate is made by a PVD process.” However, Hippmann et al. teach that PVD is a known process for making flaky metal pigments (paragraph 167). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use PVD for making the flaky metal pigments because it is recognized in the art as being suitable for the intended purpose. See MPEP §2144.07.
Claim(s) 1-7, 11, 12, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Landa et al. in view of Hippmann et al. (US 20160304721). Regarding claim 1, Landa et al. teach “a method of printing onto a surface of a substrate (abstract, Figure 1), which method comprising: providing a donor surface (item 12), passing the donor surface through a coating station from which the donor surface exits coated with individual particles (item 14), and repeatedly (paragraph 101) performing the steps of: treating the surface of the substrate to render affinity of the particles to at least selected regions of the surface of the substrate greater than affinity of the particles to the donor surface, wherein a receptive and/or adhesive layer is applied onto the substrate (paragraph 51), contacting the surface of the substrate with the donor surface to cause particles to transfer from the donor surface only to the treated selected regions of the surface of the substrate, thereby exposing regions of the donor surface from which particles are transferred to corresponding regions on the substrate (paragraph 48), thereby generating a plurality of individual particles adhered to the treated surface of the substrate (paragraph 48), returning the donor surface to the coating station to render the individual particles continuous in order to permit printing of a subsequent image on the surface of the substrate (paragraph 48), wherein the particles adhere to the donor surface more strongly than the particles adhere to each other (paragraph 13: Examiner notes that if the particles adhered to each other more strongly than to the donor surface, then when excess particles are removed by the extraction system, the particles on the surface would attach to the particles being removed and thus would leave the donor surface empty. Therefore, the particles must adhere to the donor surface more strongly in order to have a fresh coating applied to the donor surface.); wherein at least 50 wt. % of the individual particles are metal pigments consisting of a flaky metallic substrate (paragraph 32. Examiner notes that all of the particles are the same particles, as Landa et al. do not disclose having more than one type of particle) and a surface modification layer of the metallic substrate (paragraph 33).” Landa et al. fail to disclose “wherein the surface modification has been made by a treatment of the metallic substrate surface by at least one of the modification substances from the group consisting of phosphate ester, phosphonic esters, phosphonic acids, phosphinate esters, organofunctional silanes, organofunctional titanates, organofunctional zirconates, organofunctional aluminates and mixtures thereof.”
Hippmann et al. disclose using a flaky metallic particle which is a metal pigment having a metallic substrate and coating, wherein the coating comprises at least one organofunctional silane (paragraph 23) in order to provide a metal effect pigment which has improved optical properties (paragraph 11) and/or improved agglomeration properties (paragraph 116). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the particles of Hippmann et al. in the method of Landa et al. in order to achieve improved optical properties and/or improved agglomeration properties. Regarding claim 2, Landa et al. further teach “wherein the donor surface exits the coating station coated with a monolayer of the individual particles (paragraph 18).” Regarding claim 3, Landa et al. further teach “wherein the flaky metallic substrate has an average thickness (h50 value) in the range of 10 to 500 nm (paragraph 71).” Regarding claim 4, Landa et al. further teach “wherein the flaky metallic substrate has an aspect ratio in the range from 1500:1 to 10:1 (paragraph 76), wherein the aspect ratio is defined as the ratio between the average pigment diameter (D50 value) and the average pigment thickness (h50 value).” Regarding claim 5, Landa et al. further disclose “wherein the flaky metallic substrate comprises one or more of aluminum, copper, zinc, gold-bronze, chromium, titanium, zirconium, tin, iron and steel flaky substrates or pigments of alloys of these metals (paragraph 32).”
Regarding claim 6, Landa et al., as modified, teaches all that is claimed, as in claim 1 above, except that “the flaky metallic substrate is made by a PVD process.” However, Hippmann et al. teach that PVD is a known process for making flaky metal pigments (paragraph 167). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use PVD for making the flaky metal pigments because it is recognized in the art as being suitable for the intended purpose. See MPEP §2144.07. Regarding claim 7, Hippmann et al. further disclose “wherein the flaky metallic substrate on its surface also contains up to 30wt.% of an oxide, a hydroxide, an oxide hydrate, or a mixture thereof of the same metal and the modification substance is bound on this metal (paragraphs 204 and 205).” Examiner notes that Hippmann et al. gives the wt. % in terms of the weight of the coating, not the particles as a whole. Therefore, Examiner asserts that the percentage of oxide disclosed by Hippmann et al. at least partially overlaps the recited range. Regarding claim 11, the metal pigment surface of Landa et al. is able to be “additionally modified by a dispersing additive.” Regarding claim 12, Landa et al. further teach ‘wherein the donor surface is a hydrophobic surface (paragraph 99).” Regarding claim 15, Landa et al. further disclose “wherein the hydrophobic surface is made by an elastomer prepared from poly (dimethylsiloxane) polymers (paragraph 99).”
Regarding claims 16-18, carrying out the modified method of Landa et al., as discussed above with respects to claims 1, 8, and 12, respectively, would result in the product as claimed.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are moot in view of the new grounds of rejection.
Furthermore, Applicant did not object to the rejection of the claims over the combination of Landa et al. and Hippmann et al., and therefore it is presumed that Applicant agrees with the combination presented previously.
Conclusion
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853