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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/11/2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-9 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 11-19 of prior U.S. Patent No. US 12,116,685 B2. This is a statutory double patenting rejection.
The claims for the current application are a 1 to 1 correlation to the claims of Patent US 12,116,685 B2 with the following:
Application 18/882,171
Patent US 12,116,685 B2
1
11
2
12
3
13
4
14
5
15
6
16
7
17
8
18
9
19
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16 is rejected under 35 U.S.C. 102 (a2) as being anticipated by Chen et. al. (US 2021/0060904 A1).
Regarding claim 16 Chen teaches (fig. 1A-1B) metallic film, comprising:
a layer (12) comprising a metallic material separated from a carrier substrate onto which the metallic material is first deposited (para. 0037),
where the metallic film has a thickness of 40 nm to 120 nm (para. 0020) and at least one of:
a transmission attenuation less than or equal to 45 decibels when measured at a frequency of 20 GHz to 30 GHz on the metallic film (see table 2);
and a transmission attenuation less than or equal to 50 decibels when measured at a frequency of 70 GHz to 80 GHz on the metallic film (para. 0089; see table 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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et. al. (US 2021/0060904 A1) in view of Tundermann et. al. (3,941,584).
Regarding claim 18 Chen teaches (fig. 1A-1B) metallic film, except where the metallic material comprises NiCr.
Tundermann teaches where the metallic material comprises NiCr (col. 6, lines 26-66).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the reflective material as taught by Chen with NiCr as taught by Tundermann for the benefit of stain resistance paint with increased reflectance.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et. al. (US 2021/0060904 A1) in view of Banerjee et. al. (US 2011/0091658 A1).
Regarding claim 19 Chen teaches (fig. 1A-1B) metallic film, except where a discrete metallic particle made by breaking up the metallic film of claim 16.
Banjeree teaches where a discrete metallic particle made by breaking up the metallic film of claim 16 (para. 0006,0039).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the reflective structure of Chen with the flake dye process as taught by Banjeree for the benefit of creating an omnidirectional paint composition with a narrow band reflectance.
Regarding claim 20 Chen teaches (fig. 1A-1B) metallic film, where a paint, polymer, or coating system comprising the discrete metallic particle of claim 19.
Banjerjee teaches where a paint, polymer, or coating system comprising the discrete metallic particle of claim 19 (para. 0006, 0039).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the reflective structure of Chen with the flake dye process as taught by Banjeree for the benefit of creating an omnidirectional paint composition with a narrow band reflectance.
Allowable Subject Matter
Claims 10-15 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Further prior art related to the current invention include Hieda (US 4,936,913), Okamura et. al. (US 6104530) and Wu et. al. (US 2015/0033988 a1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E TALLMAN whose telephone number is (571)270-3958. The examiner can normally be reached Monday-Friday 10 a.m. -6 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert E. Tallman/ Primary Examiner, Art Unit 2872
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