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 .
Specification/Drawings
The disclosure is objected to because of the following informalities: Paragraph 0030 of the specification as filed refers to “Table 1” with “Table 1” provided in Paragraph 0031, however, Paragraph 0031 does not include a “Table” and instead only includes a magnified image of the coating, i.e., a figure or “drawing”, that is objected to by the Examiner because per 37 CFR 1.58(a), the specification “shall not contain drawings”, see also MPEP § 608.01 VI which specifically states that “the written description portion of the specification must not contain drawings” (emphasis added). The same is applicable to “Table 2” as recited in Paragraph 0032 and shown as an image/figure in Paragraph 0033, and “Table 3” as recited in Paragraph 0034 and shown as an image/figure in Paragraph 0035.
Appropriate correction is required.
Further, the Examiner objects to the drawings given the presence of drawings in the specification and requests that the three drawings improperly incorporated into the specification as Tables 1-3 be submitted in accordance with 37 CFR 1.81. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-9 are 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. The term “large” in independent claims 1 and 6 is a relative term which renders the claim(s) indefinite. The term “large” is not defined by the claim(s), the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is unclear as to how many indium particle structures the metal layer of claim 1 comprises and how many indium flakes are contained in said indium particle structures in order to be considered a “large” number. Similarly, it is unclear as to how many indium flakes are dispersed in the solvent of the coating method of instant claim 6 in order to be considered a “large” number of indium flakes. Independent claims 1 and 6 also recite the limitation “a particle size of each of the indium flakes is 1 µm or less at a cumulative median value of 50%” (emphasis added), however, given that a cumulative median value of 50% (i.e., D50 value) means that 50% of the flakes, in terms of volume or mass, have a size smaller than the D50 value while the remaining 50% of the flakes have a size larger than the D50 value, it is unclear as to what is meant by “a particle size of each of the indium flakes is 1 µm or less at a cumulative median value of 50%” (emphasis added) as instantly claimed. It is also unclear as to what is meant to be encompassed by the claimed “indium particle structures” of instant claims 1 and 6, and how the claimed “particle size of the indium particle structure” of “40 µm to 300 µm” as recited in instant claims 1 and 6 is determined given that the coating or metal layer is “an indium particle structure”, particularly when the “ratio of the indium particle structure per unit area of a surface of the coating material” is just under 100%, i.e., 99.9% (e.g., as in instant claim 2) such that the indium particle structure(s) constitute(s) essentially the entire coating. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
The dependent claims do not remedy the above and hence are indefinite for the same reasons.
Claims 6-7 are further 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. Claim 6 recites the limitation, “spraying the dispersion by spray radiation” on lines 2-3, however, given that the term “spray radiation” does not have an accepted meaning in the art and that the specification fails to specifically define the term “spray radiation” or how “spray radiation” is different from “spraying”, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, especially given that “spray radiation” often refers to spraying of radiation curable (see attached Google Search results for “spray radiation”) which is not utilized in the instant invention. Claim 6 also recites the limitation “these steps being repeated” on line 3 wherein it is unclear as to which “steps” are encompassed by “these steps” (e.g., just spraying and drying, or dispersing, spraying, and drying); and further recites the limitation "the indium particle structures" on line 6, wherein there is insufficient antecedent basis for this limitation in the claim.
Dependent claim 7 does not remedy the above and hence is indefinite for the same reasons.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomita (JP2021063285A, please refer to the attached machine translation for the below cited sections). Tomita discloses flake-shaped indium particles or flaky particles (i.e., “indium flakes”) having a cumulative 50% volume particle diameter D50 of 0.7 µm or less (reading upon the claimed particle size of “1 µm or less at a cumulative median value of 50%” as recited in instant claim 1; Paragraphs 0007 and 0019-0020); a dispersion or ink (Paragraph 0037) containing the flake-shaped indium particles, an organic solvent such as an ether or ester solvent (Paragraphs 0039-0042), and other components as needed (Paragraph 0037), with the ink preferably also containing a binder (Paragraph 0044); and a coating film formed by applying the dispersion or ink onto a substrate (Paragraph 0007), wherein the obtained coating film has very dense packing and low surface roughness (Paragraph 0018), and exhibits excellent water resistance and excellent metallic design properties including a high gloss at both 20° and 60° indicating a high mirror-like finish (as in the instant invention), with a surface smoothness exceeding that of flake-shaped aluminum, such that the flaky indium particles can be used to produce coatings in various fields and for various applications including for automotive components, home appliances, and imparting metallic appearance to decorative films (Paragraphs 0006, 0008, 0010-0012, 0018, 0053, and 0055). Tomita discloses that there are no particular limitations on the substrate nor on the method of applying the dispersion or ink containing the flake-shaped indium particles onto the substrate to form the coating film having the above excellent metallic appearance properties, and can be appropriately selected depending on the purpose, with example coating methods recited in Paragraph 0053 (Paragraphs 0052-0055). Tomita specifically discloses an example (Ex. 3) wherein an indium flake composition as shown in Table 2 containing 46.5 parts of diethylene glycol diethyl ether (DEGDE), 17.5 parts of propylene glycol monomethyl ether (PGM), 9.1 parts of γ-butyrolactone, 13.7 parts of tetraethylene glycol dimethyl ether (TEGDM), and 13.2 parts of indium flakes of D50 of 0.3 µm and 40 nm thickness (as shown in Table 1), is applied to a substrate via an inkjet method, i.e., a method by which the liquid dispersion/ink is jetted or “micro-sprayed” onto the substrate from the printhead and thus broadly a “spraying” or “spray radiation” method as instantly claimed (see attached Google Search results), with SEM images of the resulting indium coating film (No. 8) shown in Figs. 12A and 12B, copied below.
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Copied from JP2021063285A, Fig. 12A (above, 20,000X), Fig. 12B (below, 50,000X).
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Tomita also provides several SEM images of other coating films produced in the working examples, both inventive and comparative, four of which are copied below, including Fig. 6A (20,000X, top left) and Fig. 6B (50,000X, top right) being of indium coating film No. 4 produced by spin coating in Ex. 1, Fig. 19 (bottom left) being a cross-sectional view of indium coating film No. 4, and Fig. 14A (20,000X) being indium coating film No. 9 of Comp. Ex. 4 formed by drip-coating and dried at 60°C for 10-15 min, with each of the SEM images of coatings No. 4, No. 8, and even of Comp. Ex. 4 showing that the indium flakes formed an “indium particle structure” over substantially the entire surface or unit area of a surface of the coating material (e.g., “unit area” of the sample shown in the SEM images) within the claimed range as recited in instant claim 2, and Fig. 19 showing a “height” within the claimed range as recited in instant claim 3.
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Further, given that Tomita discloses that the surface roughness of the examples was evaluated over an area of 30 µm x 30 µm (Paragraph 0075), thus a diagonal length of about 42.43 µm corresponding to an “indium particle structure” having a “particle size in the range of 40 µm to 300 µm” as broadly claimed, particularly given the lack of clarity as discussed above, and that the claimed “of a fishing member” constitutes intended end use of the base material and coated base material wherein the substrates and coated substrates disclosed by Tomita are capable of the same intended end use, e.g., a coated flat plate or glass slide as disclosed by Tomita (Paragraph 0054, Examples) having a metallic mirror finish can be used as a “fishing member”, the Examiner takes the position that Tomita discloses the claimed invention with sufficient specificity to anticipate instant claims 1-3
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.
Alternatively, claims 1-3 as well as claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tomita (JP2021063285A) as applied above to claims 1-3, and further discussed below.
The teachings of Tomita are discussed in detail above and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-3, particularly given the lack of clarity thereof, the Examiner alternatively takes the position that the claimed invention would have been obvious over Tomita given that each dried micro-sprayed droplet from the inkjet printer utilized by Tomita in the working examples, i.e., SP-300V from Roland D.G. (which is known to have an EPSON DX4 micro-piezo printhead with 3.5 picoliter minimum drop size and 1440 dpi maximum resolution) printed on the glossy polyvinyl chloride (PVC) printing media (MV-G-18G from Roland D.G.), could be equated to the claimed “indium particle structure” and given that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the resulting dried droplet to have a “particle size” within the claimed range of 40 µm to 300 µm as instantly claimed, the Examiner alternatively takes the position that the claimed invention would have been obvious over the teachings of Tomita, particularly given that Tomita utilizes indium flakes having a particle size at a cumulative median value of 50% falling within the claimed range of 1 µm or less and clearly teaches that the resulting metal layer has excellent metallic appearance including a mirror finish as in the instant invention (which based upon the instant disclosure results when the “metal layer” has “a large number of indium particle structures containing a large number of indium flakes” with “a particle of the indium particle structure” being “in a range of 40 µm to 300 µm” as instantly claimed).
Additionally, with respect to instant claim 2, although the examples of Tomita cited above utilize indium flakes as the only solid component and that based upon the SEM images showing minor voids in the coating film reading upon the claimed ratio per unit area as recited in instant claim 2, it is also noted that Tomita specifically teaches that the ink may further comprise a binder component in a content of preferably 0.1% by mass or more and 30% by mass or less relative to the total amount of ink (Paragraph 0047), and given that the flake-shaped indium particles may be present in an amount of preferably 0.1% mass or more and 20% by mass or less, relative to the total amount of ink (Paragraph 0045), Tomita provides a clear teaching and/or suggestion that the indium flakes may constitute an amount of the coating material reading upon the claimed 25% or more and less than 100%, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 2 would have been obvious over the teachings of Tomita given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, with respect to instant claims 4-5, dependent upon instant claim 1, given that instant claim 4 does not require the claimed lower coating layer to be formed from a material different from the metal layer, and similarly, instant claim 5 does not require the claimed upper coating layer to be formed from a different material, the Examiner takes the position that a single indium coating film taught by Tomita may be equated to the broadly claimed “lower coating layer…formed between the base material and the metal layer” as in instant claim 4 and/or the claimed “upper coating layer…formed on a surface of the metal layer” of instant claim 5 given that as shown in the cross sectional view of the coating film of Fig. 19 (copied above on page 8, bottom left image), the coating film includes multiple “layers” of the indium flakes stacked upon one another to form a coating film having a desired thickness. Hence, given that instant claims 4 and 5 do not require any specific materials for the lower and upper coatings, respectively, nor any specific layer thicknesses, the Examiner takes the position that the claimed invention as recited in instant claims 4-5 would have been obvious over the teachings of Tomita.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shigemori (JP2009106888A, please refer to the attached machine translation for the below cited sections) in view of Tomita (JP2021063285A, again please refer to the attached machine translation for the below cited sections). Shigemori teaches a metallic painted material or article, and a method for forming such metallic painted articles having a coating applied to at least the parts that are directly and/or indirectly touched by the hands, such as fountain pens, fishing rods, and handrails (Paragraph 0001), wherein the coating is a laminated coating film that effectively brings out the metallic luster of a metallic coating having metal flakes oriented in the dried coating in a regular manner by providing a coating film formed using a paint containing a chain-like polymer material as a lower and/or upper layer of a metallic coating film by separating the formation of the coating film using the paint containing the chain-like polymer material from the formation of the metallic coating film to prevent a decrease in metallic luster because the orientation of the metallic powder in the metallic coating film does not change (Entire document, particularly Paragraphs 0001, 0004, and 0009). Shigemori teaches that the paint that forms a metallic coating only needs to contain at least metallic powder and a liquid medium such as an organic solvent and/or water, wherein the metallic powder is preferably in the form of flakes and can be metallic pigments, particularly those obtained by crushing a vapor-deposited metal film such as aluminum, silver, or any of the metals recited in Paragraph 0007, into metal fragments to create a metallic coating film that has an excellent metallic appearance and excellent metallic luster (Paragraph 0007). Shigemori teaches that a metallic coating with an excellent metallic appearance can be obtained when the weight concentration of metallic powder in the dry coating is 1wt% or more, especially when it is 15wt% or more, and that furthermore, by setting the weight concentration of the metallic pigment in the metal piece to 100 wt.%, a metallic coating film with a metallic appearance and excellent metallic luster can be obtained (Paragraph 0007).
Shigemori teaches that the method of forming the metallic coated product can be achieved by the following steps: (1) forming a coating film 2 (“lower coating layer” as in instant claim 4) on an object to be coated 1 by applying a paint containing a chain-like polymer material, (2) drying the coating film of step (1), (3) forming a metallic coating film 3 with metallic powder 4 (“metal layer”) on the upper layer of the coating film formed in step (2), (4) drying the metallic coating film 3 at a temperature below the softening point of the polymer material, (5) forming a coating film 5 (“upper coating layer” as in instant claim 5) by applying a paint containing a chain-like polymer material to the upper layer of the metallic coating film 3, and (6) integrating and curing at a temperature above the softening point of the chain polymer material as shown in Figs. 1-4 and detailed in Paragraph 0010 and in the working examples which utilize aluminum flakes, including examples utilizing aluminum flakes formed by crushing a vapor-deposited metal film into metal chips/flakes and dispersed in organic solvent(s) including ketone-based and/or ester-based solvents (i.e., Kanpe Baking Thinner No. 4 from Kansai Paint Co., Ltd.; reading upon the solvent(s) of instant claim 7) to form a metallic paint that is then spray-painted and dried to form decorative coated objects (Examples).
Hence, given that Shigemori teaches that the painted object may be a fishing rod with at least the parts directly and/or indirectly touched by hands coated with the metallic coating (thereby teaching and/or suggesting coating of the “reel body” as in instant claim 8 and/or the rod body as in instant claim 9, e.g., obvious parts of a fishing rod that are directly touched by hands), Shigemori clearly teaches a coating material directly or indirectly provided on a surface of a base material of a fishing member and comprising a metal layer, a lower coating layer formed between the base material and the metal layer, and an upper coating layer formed on a surface of the metal layer (as in instant claims 1 and 4-5), and although Shigemori teaches that the metal layer is formed from a coating or paint comprising a “large number” of metallic flakes dispersed in an organic solvent (as in instant claims 6-7) in a concentration of preferably 15wt% or more, wherein setting the weight concentration in the metallic coating to 100 wt.%, a metallic coating film with metallic appearance and excellent metallic luster can be obtained, and teaches spraying by “spray radiation” to form the coating layers with intermediate drying steps (as in instant claim 6) thereby suggesting that the steps can be “repeated a plurality of times to form a coating material” having a desired thickness (e.g., as in instant claim 6), Shigemori does not teach that the metallic flake pigments are indium flakes having a cumulative D50 particle size of 1 µm, and form “a large number of indium particle structures” having a particle size thereof in the range of 40 µm to 300 µm as instantly claimed. However, given that Shigemori does not limit the metallic flakes to any specific metal or particle size, and that Tomita, as discussed in detail above and incorporated herein by reference, specifically teaches that by utilizing indium flake particles having a D50 of 0.7 µm or less dispersed in an organic solvent such as ethers and/or esters (e.g., as in Shigemori, reading upon the solvents of instant claim 7), an improved metallic appearance can be obtained, particularly in comparison to aluminum flakes (e.g., as utilized in the examples of Shigemori), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the indium flakes taught by Tomita in the invention taught by Shigemori given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to use a known technique to improve similar devices in the same way, and further, given that Tomita provides a clear teaching and/or suggestion that the coating method and drying conditions can be optimized, as in the working examples, to provide an improved mirror finish with the indium flakes providing a low surface roughness and oriented parallel to the surface (e.g., as in Shigemori), with a high packing density over substantially the entire coating, as shown in the SEM images, reading upon and/or suggesting a “large number” of “indium particle structures” as in the claimed invention, including an “area ratio” as in instant claim 2 and a thickness or “height” as in instant claim 3, the Examiner takes the position that absent any clear showing of criticality and/or evidence of unexpected results with respect to the claimed “particle size of the indium particle structures…in a range of 40 µm to 300 µm” as recited in instant claims 1 and 6, the claimed invention as recited in instant claims 1-9 would have been obvious over the teachings of Shigemori in view of Tomita.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
