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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9 and 12-13, drawn to a metal effect pigments having a surface treatment with phosphoric acid, tetraethyl orthosilicate and at least one organic coupling agent.
Group II, claim(s) 10-11, drawn to a method for preparing a metal effect pigment according to claim 1 comprising the following steps: dispersing/suspending the metal effect pigments in water and/or one or more solvents, performing the surface treatment by adding A) phosphoric acid (H3PO4), B) tetraethyl orthosilicate (TEOS) and C) at least one organic coupling agent into the water and/or the solvent(s), and drying the metal effect pigments.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The two groups lack unity of invention because even though the inventions of these groups require the technical feature of metal effect pigments having a surface treatment with phosphoric acid, tetraethyl orthosilicate and at least one organic coupling agent, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Winkelmann et al. (US 2013/0058988; published: 3/7/13; in IDS dated 8/5/24). Winklemann et al. teach a aluminum effect pigment paste formed by the addition of phosphoric acid (i.e., the claimed A) in water and iron(II)sulfate heptahydrate in water to the pigment dispersion; followed by the addition of tetraethoxysilane (i.e., the claimed tetraethyl orthosilicate B; TEOS) and oxalic acid in water; stirring continued at 78 °C for about 8 hours and then every 2 hours ethylene diamine in isopropanol was added; and finally dynasylan AMMO (3-aminopropyltrimethoxysilane; i.e., the claimed organic coupling agent C) was added, stirred, cooled and filtered to obtain the product [Example 1].
During a telephone conversation with Gregory Lowen on 9/10/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 12-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102
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, 3, 7-9 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winkelmann et al. (US 2013/0058988; published: 3/7/13; in IDS dated 8/5/24).
With regards to instant claims 1, 3 and 7-9, Winklemann is directed to a metallic effect pigment selected from platelet-shaped aluminum having a coating of silicon oxide SiOx (x = 1-2), wherein the coated metallic effect pigment comprises metal cations and phosphorus- and/or sulfur-containing anions on the metallic effect pigment surface [Abstract]. Winklemann teaches a aluminum effect pigment paste formed by the addition of phosphoric acid (i.e., the claimed A) in water and iron(II)sulfate heptahydrate in water to the pigment dispersion; followed by the addition of tetraethoxysilane (i.e., the claimed tetraethyl orthosilicate B; TEOS) and oxalic acid in water; stirring continued at 78 °C for about 8 hours and then every 2 hours ethylene diamine in isopropanol was added (sol-gel method); and finally dynasylan AMMO (3-aminopropyltrimethoxysilane; i.e., the claimed organic coupling agent C) was added, stirred, cooled and filtered to obtain the product [Example 1]. It is noted that Winklemann teaches that “on the metallic effect pigment surface” refers not only to the metallic effect pigment surface as such but also to a metallic effect pigment surface on which there is formed a metal oxide layer or on which a metal oxide layer has formed; for example, aluminum effect pigments have an aluminum oxide layer [0048].
With regards to instant claims 12-13, Winklemann teaches that the metallic effect pigments of the invention find use in cosmetics, plastics, and coating compositions, preferably inks, printing-inks, paints or powder coating materials, and particularly preferred in this context are waterborne paints, aqueous printing-inks or cosmetics. [0277].
Therefore, by teaching all the limitations of claims 1, 3, 7-9 and 12-13, Wilklemann anticipates the instant invention as claimed.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Winkelmann et al. (US 2013/0058988; published: 3/7/13; in IDS dated 8/5/24).
As noted in the anticipation rejection above Winklemann anticipates claims 1, 3, 7-9 and 12-13 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103 over Winklemann for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
With regards to instant claims 1, 3 and 7-9, Winklemann is directed to a metallic effect pigment selected from platelet-shaped aluminum having a coating of silicon oxide SiOx (x = 1-2), wherein the coated metallic effect pigment comprises metal cations and phosphorus- and/or sulfur-containing anions on the metallic effect pigment surface [Abstract]. Winklemann teaches a aluminum effect pigment paste formed by the addition of phosphoric acid (i.e., the claimed A) in water and iron(II)sulfate heptahydrate in water to the pigment dispersion; followed by the addition of tetraethoxysilane (i.e., the claimed tetraethyl orthosilicate B; TEOS) and oxalic acid in water; stirring continued at 78 °C for about 8 hours and then every 2 hours ethylene diamine in isopropanol was added (sol-gel method); and finally dynasylan AMMO (3-aminopropyltrimethoxysilane; i.e., the claimed organic coupling agent C) was added, stirred, cooled and filtered to obtain the product [Example 1]. It is noted that Winklemann teaches that “on the metallic effect pigment surface” refers not only to the metallic effect pigment surface as such but also to a metallic effect pigment surface on which there is formed a metal oxide layer or on which a metal oxide layer has formed; for example, aluminum effect pigments have an aluminum oxide layer [0048].
With regards to instant claims 12-13, Winklemann teaches that the metallic effect pigments of the invention find use in cosmetics, plastics, and coating compositions, preferably inks, printing-inks, paints or powder coating materials, and particularly preferred in this context are waterborne paints, aqueous printing-inks or cosmetics. [0277].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
In the embodiment described above, Winklemann does not teach wherein the surface treatment contains three organic coupling agents, as required by instant claim 2. However, it is noted that Winklemann teaches that the alkoxysilane used in accordance with the invention preferably comprises di-, tri- and/or tetraalkoxy-silanes [0227]. Furthermore, Winklemann teaches that tetraalkoxysilane used advantageously comprises tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, or mixtures thereof [0228].
Winklemann does not teach the amount of at least one organic coupling agent in the range of 0.3-3% by weight calculated as carbon content based on the total weight of the metal effect pigments, phosphoric acid in the range of 0.01-1% by weight calculated as P2O5 based on the total weight of the metal effect pigments and tetraethyl orthosilicate in the range of 0.1-1.5% by weight calculcated as SiO2 based on the total weight of the metal effect pigments, as required by instant claims 4-6.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Since Winklemann teaches that the alkoxysilane used in accordance with the invention preferably comprises di-, tri- and/or tetraalkoxy-silanes [0227] and furthermore, that tetraalkoxysilane used advantageously comprises tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, or mixtures thereof [0228], it would have been obvious to one of ordinary skill in the art at the time the invention was made to try the limited number of solutions disclosed by Winklemann (one, two or three alkoxysilanes) with the reasonable expectation that at least one would be successful. By doing such, one of ordinary skill in the art would have chosen from a finite number of predictable solutions and would have used and identified the that three organic coupling agents are suitable to be used in Winklemann’s composition.
The amount of organic coupling agent (e.g., amino silane), phosphoric acid and tetraethyl orthosilicate is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of organic coupling agent (e.g., amino silane), phosphoric acid and tetraethyl orthosilicate in order to best achieve the desired results as such would provide advantageous biological effect. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, Winklemann teaches that amino silanes are used as a basic aminic catalyst and surface modifiers [0271], phosphoric acid increasing the corrosion resistance of the metallic effect pigments [0053] and tetraethyl orthosilicate adoes not produce salts and is advantageous environmentally and in regards of possible agglomeration during the sol-gel reaction [0230]. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of organic coupling agent (e.g., amino silane), phosphoric acid and tetraethyl orthosilicate would impact the production of paints and therefore be an optimizable variable.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617
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