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 .
Remark
This Office Action is in response to applicant’s preliminary amendment filed on January 25, 2025, which has been entered into the file.
By this amendment, the applicant has amended claims 1-20 and has newly added claims 21-39.
Claims 21-39 remain pending in this application.
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.
Claim(s) 39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the US patent application publication by Lee et al (US 2015/0116856 A1).
Lee et al teaches an article that is comprised of a thin film interference foil includes a dielectric layer (14, Figure 1) and a mirror layer (12, Figure 1) that may comprise metallic material (please see paragraph [0043]) therefore serves as the thin film interference foil. Lee further teaches the thin film interference foil comprises a coating including multiple layers of colored selectively absorbing nanoparticles that is placed on the thin film interference foil.
This reference has anticipated the claim.
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.
Claim(s) 21, and 23-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication by England et al (US 2018/0239070 A1) in view of the US patent application publication by Lee et al (US 2015/0116856 A1).
England et al teaches, with regard to claim 21, a thin film structure that serves as a coated interference pigment that is comprised of thin film layers (110, Figure 1) that is comprised of dielectric layers (102, 103 and 104) with different refractive indices. England et al teaches that the refractive index of layers 102 and 104 may be the same and different from refractive index of layer 103, (please see paragraph 0114), which makes the thin film layers form an interference filter that serves as interference pigment. England et al further teaches that the thin film structure comprises a coating including a nanoparticle coating layer (120) serves as a colored selectively absorbing nanoparticles (105). England et al teaches that the nanoparticle coating layer may either be placed on the thin film layers or be placed on the top of the thin film layers, (please see Figure 5C).
This reference has met all the limitations of the claims. It however does not teach explicitly that the nanoparticle coating comprises a multiple layers of colored selectively absorbing nanoparticles. Lee et al in the same field of endeavor teaches a coating layer that is comprised of a composite layer (16, Figure 1) that is comprised of multiple layers of color selectively absorbing nanoparticles (15). It would then have been obvious to one skilled in the art to apply the teachings of Lee et al to modify the nanoparticle coating to include multiple layers of colored selectively absorbing nanoparticles for the benefit of providing different absorption spectrum to the thin film structure.
With regard to claim 23, Lee et al teaches that the multiple layers includes two or more layers in which all of the multiple layers includes colored selectively absorbing nanoparticles of the same color, (please see Figure 1 of Lee et al).
With regard to claims 24 and 25, Lee et al teaches that the absorbing nanoparticles having different thickness in combined with the thin film interference pigment may have absorbance peaks for different colors, (please see Figure 4, paragraph [0049]). It would then have been obvious to one skilled in the art to make the two or more layers of a first color of selectively absorbing nanoparticles with a first thickness and to make two or more layers of a second color selectively absorbing nanoparticles with a second thickness for the benefit of allowing the coating with the multiple layers of colored selectively absorbing nanoparticles to have different absorbance peaks with different color characteristics. With regard to claim 25, it is either implicitly true or obvious modification by one skilled in the art to make the coated interference pigment with a change of reflection color when change the order of the first and second color of selectively absolving nanoparticles for the benefit of providing different color effects.
With regard to claim 26, Lee et al teaches that the composite layer (16) may comprise two or more layers of colored selectively absorbing nanoparticles, (please see Figure 1). Lee et al teaches that for nanoparticles layers, incorporated with the mirror layer (12, may be part of the interference filter), have different thickness, the absorption spectrum may be different, (please see Figures 4, paragraph [0049]). The different size or thickness of the nanoparticles may contribute to different portion, read as density, of nanoparticles. And it is within general level skilled in the art to make the different layers of the nanoparticles to have different thickness or portion of the nanoparticles for the benefit of providing different absorption properties.
With regard to claims 27 and 28, England et al teaches that the coating of the selectively absorbing nanoparticles may either be continuous, (please see Figure 1) or discontinuous, (please see Figure 4).
With regard to claim 29, England et al teaches that the selectively absorbing nanoparticles are nanoparticles chosen from metallic nanoparticles, (105, please see paragraph [0114]).
With regard to claim 30, England et al teaches that the absorbing element may comprise metal nitride, (please see paragraph [0015]).
With regard to claim 31, England et al teaches that the thin film interference pigment along (please see Figures 5E and 5F) have a different transmittance/reflectance spectrum from the thin film interference pigment with the coating includes color selectively absorbing nanoparticles, (please see Figures 5C and 5D). It is within general level skilled in the art to make the spectra have the desired complementary properties for the benefit of allowing the thin film interference pigment and the coated thin film interference pigment to have desired optical properties.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over England et al and Lee et al as applied to claim 21 above, and further in view of the US patent application publication by Kim et al (US 2016/0061417 A1).
The thin film structure served as the coated interference pigment taught by England et al in view of the teachings by Lee et al as described in claim 21 has met all the limitations of the claims.
With regard to claim 22, these references do not teach explicitly that each layer of the multiple layers includes a blend of two or more different colored selectively absorbing nanoparticles. Kim et al in the same field of endeavor teaches a multiple layers containing quantum dots, wherein each layer may comprise a blend of two or more different colored selective absorbing nanoparticles, (15 for green color and 13 for red color, Figure 2). It would then have been obvious to one skilled in the art to apply the teachings of Kim et al to make each layer of the coating of the multiple layers with a blended two or more different colored selectively absorbing nanoparticles for the benefit of allowing the coated thin film interference pigment to have different color effect.
Claim(s) 32-34 and 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US patent application publication by Domnick et al (US2008/0318012 A1) in view of the US patent application publication by Phillips et al (US 2003/0215641 A1) and the US patent application publication by Lee et al (US 2015/0116856 A1) .
Domnick et al teaches a method for making a coated pigment that is comprised of method step of providing a pigment (1, Figures 1 and 2) and a method step of depositing a coating on the pigment that includes layer of colored selectively absorbing nanoparticles (4).
This reference has met all the limitations of the claims. It however does not teach explicitly that the pigment is a thin film interference pigment. Phillips et al in the same field of endeavor teaches a thin film interference pigment (please see Figure 1 or 71 of Figure 8) that may comprise a dielectric layer, a reflector layer and a dielectric layer. It would then have been obvious to one skilled in the art to apply the teachings of Phillips et al to modify the pigment to make it a thin film interference pigment for the benefit of making the pigment has desired color effect.
These references also do not teach that the coating includes a multiple layers of the color selectively absorbing nanoparticles.
Lee et al in the same field of endeavor teaches a coating layer that is comprised of a composite layer (16, Figure 1) that is comprised of multiple layers of color selectively absorbing nanoparticles (15). It would then have been obvious to one skilled in the art to apply the teachings of Lee et al to modify the nanoparticle coating to include multiple layers of colored selectively absorbing nanoparticles for the benefit of providing different absorption spectrum to the thin film structure.
With regard to claims 33-34, Domnick et al teaches that the coating may fully encapsulates the thin film pigment, (please see Figures 1 and 2). With regard to claim 34, this reference does not teach that alternatively that the coating encapsulate only a portion of the thin film interference pigment. However, such modification is considered to obvious matters of design choice to one skilled in the art for the benefit of providing different color effect.
With regard to claim 37, Domnick et al in light of Phillips et al teaches that the interference pigment exhibits shifted chroma and hue (please see paragraph [0050]) which therefore exhibits change in the chroma and hue. Lightness is also controlled. It would then have been obvious to one skilled in the art to make the coated interference pigment to either increase or decrease in chroma as compared to the thin film interference pigment.
With regard to claim 38, Lee et al teaches that the absorbing nanoparticles having different thickness in combined with the thin film interference pigment may have absorbance peaks for different colors, (please see Figure 4, paragraph [0049]). It would then have been obvious to one skilled in the art to make the two or more layers of a first color of selectively absorbing nanoparticles with a first thickness and to make two or more layers of a second color selectively absorbing nanoparticles with a second thickness for the benefit of allowing the coating with the multiple layers of colored selectively absorbing nanoparticles to have different absorbance peaks with different color characteristics.
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Domnick et al, Phillips et al and Lee et al as applied to claim 32 above, and further in view of the US patent application publication by Kim et al (US 2016/0061417 A1).
The coated pigment taught by Domnick et al in view of the teachings by Phillips et al and Lee et al as described in claim 32 has met all the limitations of the claims.
With regard to claim 36, these references do not teach explicitly that each layer of the multiple layers includes a blend of two or more different colored selectively absorbing nanoparticles. Kim et al in the same field of endeavor teaches a multiple layers containing quantum dots, wherein each layer may comprise a blend of two or more different colored selective absorbing nanoparticles, (15 for green color and 13 for red color, Figure 2). It would then have been obvious to one skilled in the art to apply the teachings of Kim et al to make each layer of the coating of the multiple layers with a blended two or more different colored selectively absorbing nanoparticles for the benefit of allowing the coated thin film interference pigment to have different color effect.
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Domnick et al, Phillips et al and Lee et al as applied to claim 32 above, and further in view of the US patent application publication by England et al (US 2018/0239070 A1).
The coated pigment taught by Domnick et al in view of the teachings by Phillips et al and Lee et al as described in claim 32 has met all the limitations of the claims.
With regard to claim 35, these references do not teach explicitly that the thin film interference pigment alone is configured to transmit the colors as claimed. England et al in the same field of endeavor teaches a thin film structure including a coating layer comprises metal nanoparticles and interference pigment wherein the thin film interference pigment alone (please see Figures 5E and 5F) have a different transmittance/reflectance spectrum from the thin film interference pigment with the coating includes color selectively absorbing nanoparticles, (please see Figures 5C and 5D). It would then have been obvious to one skilled in the art to apply the teachings of England et al to make the spectra have the desired complementary properties for the benefit of allowing the thin film interference pigment and the coated thin film interference pigment to have desired optical properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,298.470. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim an article or coated interference pigment that is comprised of a thin film interference pigment and a coating including more layers of colored selectively absorbing nanoparticles on the thin film interference pigment.
Claims 21-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,164,128. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim an article or coated interference pigment that is comprised of a thin film interference pigment and a coating including more layers of colored selectively absorbing nanoparticles on the thin film interference pigment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY Y CHANG whose telephone number is (571)272-2309. The examiner can normally be reached M-TH 900AM-430PM.
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AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/ Primary Examiner, Art Unit 2872
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