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 .
The Applicant’s amendment filed on November 25, 2025 was received. No claims were amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued January 2, 2024.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as unpatentable over Faler et al. (US 6,291,564) in view of Beier et al. (US 2015/0042716) and Tessari et al. (US 2013/0115379) on claims 14-15, 17, 36-37, 39, 42-46, 48-50 and 52-54 are maintained. The rejections are restated below.
Regarding claim 14: Faler et al. discloses a system for coating motor vehicle substrates using standard spraying or coating techniques and equipment (col. 10 lines 19-34), where the coating composition can include a film-forming resin in an aqueous medium, one or more crosslinking materials capable of reacting with the film-forming resin to form a crosslinked film (col. 5 lines 57+, col. 6 lines 1-10), flow control agents and thixotropic agents which are both rheology modifiers, a number of pigments or dyes which are colorants (col. 9 lines 50+, col. 10 lines 1-5), a monohydric alcohol such as butanol or butoxyethanol which are swelling solvents (col. 6 lines 39-50), where the solids content of the composition ranges from 10 to 80 wt%, which overlaps the claimed range of 8-12% (col. 10 lines 6-10).
Faler et al. does not explicitly refer to the monohydric alcohol as a swelling solvent, but some of the examples given, particularly butanol and glycol monoethers, explicitly match Applicant’s definition of a swelling solvent listed in Applicant’s specification in paragraph 38 of the published Application, and therefore one of ordinary skill in the art would understand the monohydric alcohol of Faler et al. to correspond to the claimed swelling solvent.
While Faler et al. does not disclose the exact range of less than 25 wt%, the disclosed range of 10-80 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 8-12 wt% solids because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose that the applicator is a precision applicator having a nozzle. However, Beier et al. discloses a similar vehicle coating system which utilizes a continuous or piezo (drop on-demand) inkjet printing head with nozzles to create multicolored images on complexly shaped surfaces (pars. 79-80, 87, 127). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an inkjet applicator as taught by Beier et al. as the applicator of Faler et al. because Beier et al. teaches that its system allows a complexly shaped multicolored design to be printed onto the complex geometry of a fully assembled vehicle (par. 127) while maintaining precise control of the coating process (par. 79-80).
Faler et al. fails to explicitly disclose the composition of the flow control agent or thixotropic agent, though does disclose that these components can constitute up to 40% of the total weight of the composition, or in other words 0-40 wt% based on the total weight of the composition (col. 9 lines 50-57). However, Tessari et al. discloses a similar aqueous coating composition which uses a thickener comprised of (meth)acrylic polymer microgel which meets the definition of an alkali swellable polymer and an EVA copolymer wax (par. 11, 18 29-30). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a rheology modifier- including the PMMA microgel and EVA copolymer wax- as taught by Tessari et al. in the composition of Faler et al. because Tessari et al. teaches that using these elements in a coating composition can help noticeably improve the visual quality of the coating (pars. 4-10). As discussed above, Faler et al. discloses that the amount of this agent in the coating can constitute 0-40 wt% of the total weight of the composition (col. 9 lines 50-57). While this is not the exact claimed range of 7-20 wt%, the disclosed range of 0-40 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed range of 7-20 wt% because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 40 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 40 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 1 and 32 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Faler et al. does not explicitly disclose that the viscosities are tuned such that the high-shear viscosity is low enough to provide smooth coating composition flow through the application device and the low-shear viscosity is high enough to minimize coating composition sag on the substrate. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01).
Regarding claim 15: Faler et al. discloses that the composition is applied with good pattern control (col. 23 lines 54-61) such that it produces a desired pattern.
Regarding claim 17: Faler et al. discloses that the post-cure thickness of the film can be between 12.7 and 127 microns (col. 11 lines 24-33). While Faler et al. does not disclose the exact range 20 microns or less, the disclosed range of 12.7 to 127 microns overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of less than 20 microns because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Regarding claims 36-37: Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 60 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 60 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 3 and 20 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Faler et al. discloses that the substrate can be parts of a vehicle but does not explicitly disclose how the parts are positioned relative to the ground. However, Beier et al. discloses a similar vehicle coating system in which the parts of the vehicle being coated are arranged in a particular way relative to the ground, i.e. the windowpane (12) being arranged vertically and the front fender (8) being arrange horizontally (pars. 123-126, figure 1). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an application system similar to that of Beier et al. which treats differently arranged portions on a vehicle with the composition of Faler et al. because Beier et al. teaches that its system allows a complexly shaped multicolored design to be printed onto the complex geometry of a fully assembled vehicle (par. 127)
Regarding claim 39: Faler et al. discloses that the film-forming resin can include a polyurethane which includes carboxylic acid groups and hydroxyl groups (col. 3 lines 32-57).
Regarding claim 42: Faler et al. discloses that the crosslinking material can include an animoplast (col. 6 lines 11-21).
Regarding claim 43: Faler et al. and Tessari et al. teach that the rheology modifier includes a microgel formed of poly(meth)acrylic acid polymer derived from alkyl (meth)acrylates which is alkali swellable polymer (Tessari et al. par. 18).
Regarding claim 44: Faler et al. and Tessari et al. teach that the wax in the rheology modifier is an EVA (ethylene/vinyl acetate) copolymer wax (Tessari et al. par. 7).
Regarding claim 45: Faler et al. discloses that the color pigments can include carbon black (col. 9 lines 58+, col. 10 lines 1-5).
Regarding claim 46: Faler et al. discloses that the swelling solvent is a monohydric alcohol (col. 6 lines 39-50).
Regarding claim 48: Faler et al. discloses that the thixotropic and flow control agent can constitute between 0 and 40% of the weight of the total composition, such that it comprises 0-40 wt% of the thixotropic/flow control agent based on the total weight of the coating composition (col. 9 lines 50-57). While this is not the exact claimed range of 7-18 wt%, the disclosed range of 0-40 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed range of 7-18 wt% because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Regarding claim 49: Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 60 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 60 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 3 and 32 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Regarding claim 50: Faler et al. discloses that the difference in surface tension between the clear topcoat and the composition in the basecoat is greater than 10 dynes/cm (col. 11, lines 33-57).
Regarding claim 52: Faler et al. discloses a system for coating motor vehicle substrates using standard spraying or coating techniques and equipment (col. 10 lines 19-34), where the coating composition can include a film-forming resin in an aqueous medium, one or more crosslinking materials capable of reacting with the film-forming resin to form a crosslinked film (col. 5 lines 57+, col. 6 lines 1-10), flow control agents and thixotropic agents which are both rheology modifiers, a number of pigments or dyes which are colorants (col. 9 lines 50+, col. 10 lines 1-5), a monohydric alcohol such as butanol or butoxyethanol which are swelling solvents (col. 6 lines 39-50), where the solids content of the composition ranges from 10 to 80 wt%, which overlaps the claimed range of 8-12% (col. 10 lines 6-10).
Faler et al. does not explicitly refer to the monohydric alcohol as a swelling solvent, but some of the examples given, particularly butanol and glycol monoethers, explicitly match Applicant’s definition of a swelling solvent listed in Applicant’s specification in paragraph 38 of the published Application, and therefore one of ordinary skill in the art would understand the monohydric alcohol of Faler et al. to correspond to the claimed swelling solvent.
While Faler et al. does not disclose the exact range of 8-12 wt%, the disclosed range of 10-80 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 8-12 wt% solids because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose that the applicator is a precision applicator having a nozzle. However, Beier et al. discloses a similar vehicle coating system which utilizes a continuous or piezo (drop on-demand) inkjet printing head with nozzles to create multicolored images on complexly shaped surfaces (pars. 79-80, 87, 127). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an inkjet applicator as taught by Beier et al. as the applicator of Faler et al. because Beier et al. teaches that its system allows a complexly shaped multicolored design to be printed onto the complex geometry of a fully assembled vehicle (par. 127) while maintaining precise control of the coating process (par. 79-80).
Faler et al. fails to explicitly disclose the composition of the flow control agent or thixotropic agent, though does disclose that these components can constitute up to 40% of the total weight of the composition, or in other words 0-40 wt% based on the total weight of the composition (col. 9 lines 50-57). However, Tessari et al. discloses a similar aqueous coating composition which uses a thickener comprised of (meth)acrylic polymer microgel which meets the definition of an alkali swellable polymer and an EVA copolymer wax (par. 11, 18 29-30). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a rheology modifier- including the PMMA microgel and EVA copolymer wax- as taught by Tessari et al. in the composition of Faler et al. because Tessari et al. teaches that using these elements in a coating composition can help noticeably improve the visual quality of the coating (pars. 4-10). As discussed above, Faler et al. discloses that the amount of this agent in the coating can constitute 0-40 wt% of the total weight of the composition (col. 9 lines 50-57). While this is not the exact claimed range of 5-20 wt%, the disclosed range of 0-40 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed range of 5-20 wt% because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 40 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 40 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 1 and 32 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Faler et al. does not explicitly disclose that the viscosities are tuned such that the high-shear viscosity is low enough to provide smooth coating composition flow through the application device and the low-shear viscosity is high enough to minimize coating composition sag on the substrate. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01).
Regarding claim 53: Faler et al. and Tessari et al. teach that the wax in the rheology modifier is an EVA (ethylene/vinyl acetate) copolymer wax (Tessari et al. par. 7).
Regarding claim 54: Faler et al. discloses that the film-forming resin can include a polyurethane which includes carboxylic acid groups and hydroxyl groups (col. 3 lines 32-57).
The claim rejections under 35 U.S.C. 103 as unpatentable over Faler et al., Beier et al. and Tessari et al. as applied to claims 14-15, 17, 36-37, 39, 42-46, 48-50 and 52-54 above and further in view of Lamers et al. (US 2017/0136493) on claims 40-41 and 55 are maintained. The rejections are restated below.
Regarding claims 40 and 55: Faler et al. fails to explicitly disclose that the film-forming resin comprises a core-shell particle. However, Lamers et al. discloses a similar waterborne substrate coating composition in which the film forming resin includes a polymeric urethane-shell particle having a core-shell morphology with hydroxyl and carboxylic acid functional groups, the core including (meth)acrylate or vinyl monomers (pars. 57-63). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a core-shell composition as taught by Lamers et al. in the system of Faler et al. because Lamers et al. teaches that this is a useful and well-known composition for use in multi-layer automotive coatings and simple substitution of one known component for another is not considered to be a patentable advance (MPEP 2143).
Regarding claim 41: Faler et al. and Lamers et al. combine to disclose the above system which includes the polymeric urethane-shell particles having a core formed from (meth)acrylic or vinyl monomers (par. 58-60).
The alternate claim rejections under 35 U.S.C. 103 as unpatentable over Faler et al. in view of Ledford et al. (US 2015/0299499), Beier et al. and Tessari et al. on claims 14-15, 17, 36-37, 39, 42-46, 48-50 and 52-54 are maintained. The rejections are restated below.
Regarding claim 14: Faler et al. discloses a system for coating motor vehicle substrates using standard spraying or coating techniques and equipment (col. 10 lines 19-34), where the coating composition can include a film-forming resin in an aqueous medium, one or more crosslinking materials capable of reacting with the film-forming resin to form a crosslinked film (col. 5 lines 57+, col. 6 lines 1-10), flow control agents and thixotropic agents which are both rheology modifiers, a number of pigments or dyes which are colorants (col. 9 lines 50+, col. 10 lines 1-5), where the solids content of the composition ranges from 10 to 80 wt%, which overlaps the claimed range of 8-12 wt% (col. 10 lines 6-10).
Faler et al. discloses some monohydric alcohols which are identical to the swelling solvents listed in Applicant’s specification, but Faler et al. does not explicitly refer to them as swelling solvents or disclose that they swell the resin. However, Ledford et al. discloses a similar automotive coating composition provided with swelling solvents that swell the resin in order to increase its viscosity (par. 46, 194). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a swelling solvent as taught by Ledford et al. in the composition of Faler et al. because Ledford teaches that this helps the product adhere to vertical surfaces or distribute more evenly with more deglossing (par. 194).
While Faler et al. does not disclose the exact range of 8-12 wt%, the disclosed range of 10-80 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 8-12 wt% solids because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. and Ledford et al. fail to explicitly disclose that the applicator is a precision applicator with a nozzle. However, Beier et al. discloses a similar vehicle coating system which utilizes a continuous or piezo (drop on-demand) inkjet printing head with nozzles to create multicolored images on complexly shaped surfaces (pars. 79-80, 87, 127). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an inkjet applicator as taught by Beier et al. as the applicator of Faler et al. because Beier et al. teaches that its system allows a complexly shaped multicolored design to be printed onto the complex geometry of a fully assembled vehicle (par. 127) while maintaining precise control of the coating process (par. 79-80).
Faler et al. fails to explicitly disclose the composition of the flow control agent or thixotropic agent, though does disclose that these components can constitute up to 40% of the total weight of the composition, or in other words 0-40 wt% based on the total weight of the composition (col. 9 lines 50-57). However, Tessari et al. discloses a similar aqueous coating composition which uses a thickener comprised of (meth)acrylic polymer microgel which meets the definition of an alkali swellable polymer and an EVA copolymer wax (par. 11, 18 29-30). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a rheology modifier- including the PMMA microgel and EVA copolymer wax- as taught by Tessari et al. in the composition of Faler et al. because Tessari et al. teaches that using these elements in a coating composition can help noticeably improve the visual quality of the coating (pars. 4-10). As discussed above, Faler et al. discloses that the amount of this agent in the coating can constitute 0-40 wt% of the total weight of the composition (col. 9 lines 50-57). While this is not the exact claimed range of 7-20 wt%, the disclosed range of 0-40 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed range of 7-20 wt% because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 40 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 40 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 1 and 32 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Faler et al. does not explicitly disclose that the viscosities are tuned such that the high-shear viscosity is low enough to provide smooth coating composition flow through the application device and the low-shear viscosity is high enough to minimize coating composition sag on the substrate. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01).
Regarding claim 15: Faler et al. discloses that the composition is applied with good pattern control (col. 23 lines 54-61) such that it produces a desired pattern.
Regarding claim 17: Faler et al. discloses that the post-cure thickness of the film can be between 12.7 and 127 microns (col. 11 lines 24-33). While Faler et al. does not disclose the exact range 20 microns or less, the disclosed range of 12.7 to 127 microns overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of less than 20 microns because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Regarding claims 36-37: Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 60 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 60 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 3 and 20 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Faler et al. discloses that the substrate can be parts of a vehicle but does not explicitly disclose how the parts are positioned relative to the ground. However, Beier et al. discloses a similar vehicle coating system in which the parts of the vehicle being coated are arranged in a particular way relative to the ground, i.e. the windowpane (12) being arranged vertically and the front fender (8) being arrange horizontally (pars. 123-126, figure 1). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an application system similar to that of Beier et al. which treats differently arranged portions on a vehicle with the composition of Faler et al. because Beier et al. teaches that its system allows a complexly shaped multicolored design to be printed onto the complex geometry of a fully assembled vehicle (par. 127)
Regarding claim 39: Faler et al. discloses that the film-forming resin can include a polyurethane which includes carboxylic acid groups and hydroxyl groups (col. 3 lines 32-57).
Regarding claim 42: Faler et al. discloses that the crosslinking material can include an animoplast (col. 6 lines 11-21).
Regarding claim 43: Faler et al. and Tessari et al. teach that the rheology modifier includes a microgel formed of poly(meth)acrylic acid polymer derived from alkyl (meth)acrylates which is alkali swellable polymer (Tessari et al. par. 18).
Regarding claim 44: Faler et al. and Tessari et al. teach that the wax in the rheology modifier is an EVA (ethylene/vinyl acetate) copolymer wax (Tessari et al. par. 7).
Regarding claim 45: Faler et al. discloses that the color pigments can include carbon black (col. 9 lines 58+, col. 10 lines 1-5).
Regarding claim 46: Faler et al. discloses that the swelling solvent is a monohydric alcohol (col. 6 lines 39-50).
Regarding claim 48: Faler et al. discloses that the thixotropic and flow control agent can constitute between 0 and 40% of the weight of the total composition, such that it comprises 0-40 wt% of the thixotropic/flow control agent based on the total weight of the coating composition (col. 9 lines 50-57). While this is not the exact claimed range of 7-18 wt%, the disclosed range of 0-40 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed range of 7-18 wt% because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Regarding claim 49: Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 60 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 60 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 3 and 32 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Regarding claim 50: Faler et al. discloses that the difference in surface tension between the clear topcoat and the composition in the basecoat is greater than 10 dynes/cm (col. 11, lines 33-57).
Regarding claim 52: Faler et al. discloses a system for coating motor vehicle substrates using standard spraying or coating techniques and equipment (col. 10 lines 19-34), where the coating composition can include a film-forming resin in an aqueous medium, one or more crosslinking materials capable of reacting with the film-forming resin to form a crosslinked film (col. 5 lines 57+, col. 6 lines 1-10), flow control agents and thixotropic agents which are both rheology modifiers, a number of pigments or dyes which are colorants (col. 9 lines 50+, col. 10 lines 1-5), a monohydric alcohol such as butanol or butoxyethanol which are swelling solvents (col. 6 lines 39-50), where the solids content of the composition ranges from 10 to 80 wt%, which overlaps the claimed range of 8-12% (col. 10 lines 6-10).
Faler et al. discloses some monohydric alcohols which are identical to the swelling solvents listed in Applicant’s specification, but Faler et al. does not explicitly refer to them as swelling solvents or disclose that they swell the resin. However, Ledford et al. discloses a similar automotive coating composition provided with swelling solvents that swell the resin in order to increase its viscosity (par. 46, 194). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a swelling solvent as taught by Ledford et al. in the composition of Faler et al. because Ledford teaches that this helps the product adhere to vertical surfaces or distribute more evenly with more deglossing (par. 194).
While Faler et al. does not disclose the exact range of 8-12 wt%, the disclosed range of 10-80 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 8-12 wt% solids because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose that the applicator is a precision applicator having a nozzle. However, Beier et al. discloses a similar vehicle coating system which utilizes a continuous or piezo (drop on-demand) inkjet printing head with nozzles to create multicolored images on complexly shaped surfaces (pars. 79-80, 87, 127). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an inkjet applicator as taught by Beier et al. as the applicator of Faler et al. because Beier et al. teaches that its system allows a complexly shaped multicolored design to be printed onto the complex geometry of a fully assembled vehicle (par. 127) while maintaining precise control of the coating process (par. 79-80).
Faler et al. fails to explicitly disclose the composition of the flow control agent or thixotropic agent, though does disclose that these components can constitute up to 40% of the total weight of the composition, or in other words 0-40 wt% based on the total weight of the composition (col. 9 lines 50-57). However, Tessari et al. discloses a similar aqueous coating composition which uses a thickener comprised of (meth)acrylic polymer microgel which meets the definition of an alkali swellable polymer and an EVA copolymer wax (par. 11, 18 29-30). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a rheology modifier- including the PMMA microgel and EVA copolymer wax- as taught by Tessari et al. in the composition of Faler et al. because Tessari et al. teaches that using these elements in a coating composition can help noticeably improve the visual quality of the coating (pars. 4-10). As discussed above, Faler et al. discloses that the amount of this agent in the coating can constitute 0-40 wt% of the total weight of the composition (col. 9 lines 50-57). While this is not the exact claimed range of 5-20 wt%, the disclosed range of 0-40 wt% overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing fate of the claimed invention through routine experimentation to result in the claimed range of 5-20 wt% because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. discloses that the coating has a high shear viscosity of 100-120 mPa*s at a shear rate of 1000s-1 (col. 19 lines 1-9). While Faler et al. does not disclose the exact range of 40 to 110 mPa*s, the disclosed range of 100-120 mPa*s overlaps the claimed range such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention through routine experimentation to result in the claimed range of 40 to 110 mPa*s because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (see MPEP 2144.05).
Faler et al. fails to explicitly disclose the low-shear viscosity. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01). In the instant case, since the composition taught by Faler et al. meets all of the specific compositional claim limitations and since low shear viscosity is known to be much higher than high shear viscosity as evidenced by Wu et al. (US 2003/0144375) (see figures 1-2), one of ordinary skill in the art would recognize that the low-shear viscosity would likely be similar to that claimed. Regardless, even if the low-shear viscosity was somewhat different from that claimed, one of ordinary skill in the art would recognize that viscosity and any shear rate is a result effective variable as indicated by Faler et al. (col. 19 lines 1-9) such that it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to experiment and optimize the low-shear viscosity to be between 1 and 32 Pa*s because simple optimization of result effective variables is not considered to be a patentable advance (Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215).
Faler et al. does not explicitly disclose that the viscosities are tuned such that the high-shear viscosity is low enough to provide smooth coating composition flow through the application device and the low-shear viscosity is high enough to minimize coating composition sag on the substrate. However, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2114.) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP 2112.01).
Regarding claim 53: Faler et al. and Tessari et al. teach that the wax in the rheology modifier is an EVA (ethylene/vinyl acetate) copolymer wax (Tessari et al. par. 7).
Regarding claim 54: Faler et al. discloses that the film-forming resin can include a polyurethane which includes carboxylic acid groups and hydroxyl groups (col. 3 lines 32-57).
The alternate claim rejections under 35 U.S.C. 103 as unpatentable over Faler et al., Ledford et al., Beier et al. and Tessari et al. as applied to claims 14-15, 17, 36-37, 39, 42-46, 48-50 and 52-54 above and further in view of Lamers et al. on claims 40-41 and 55 are maintained. The rejections are restated below.
Regarding claims 40 and 55: Faler et al. fails to explicitly disclose that the film-forming resin comprises a core-shell particle. However, Lamers et al. discloses a similar waterborne substrate coating composition in which the film forming resin includes a polymeric urethane-shell particle having a core-shell morphology with hydroxyl and carboxylic acid functional groups, the core including (meth)acrylate or vinyl monomers (pars. 57-63). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a core-shell composition as taught by Lamers et al. in the system of Faler et al. because Lamers et al. teaches that this is a useful and well-known composition for use in multi-layer automotive coatings and simple substitution of one known component for another is not considered to be a patentable advance (MPEP 2143).
Regarding claim 41: Faler et al. and Lamers et al. combine to disclose the above system which includes the polymeric urethane-shell particles having a core formed from (meth)acrylic or vinyl monomers (par. 58-60).
Response to Arguments
Applicant's arguments filed November 25, 2025 have been fully considered but they are not persuasive. Applicant primarily argues three points:
The Faler et al. reference recites too broad a range of solids percentage to motivate one of ordinary skill in the art to arrive at the claimed range, and further the claimed range is critical which should overcome the prima facie case of obviousness
Faler et al. and Beier et al. would not be combined because one of ordinary skill in the art would recognize the compositions of Beier et al. could not function in a precision application device
The prior art does not recognize the higher and low shear viscosities as a result effective variable
In response:
Applicant’s citation of MPEP 2144.05 III D is irrelevant to a percentage range- it is more applied to situations where a patent will describe an extraordinarily wide range of specific elements, as the example cites (68,000 protein variants). Faler et al. on the other hand is simply claiming a relatively normal working range of 10-80% solids in the disclosed product. Nothing about that range is overly broad or unreasonable, particularly because Faler et al. recognizes a wide range of applications for its product which would benefit from a wide range of solids percentages. Applicant’s argument about criticality is similarly unpersuasive because an argument of criticality should be backed up with evidence detailing unexpected results of the claimed range. The instant specification talks primarily about the rheological flow properties of the liquid with different solids percentages and different compositions, which is a natural and expected property to come from modifying solids percentage of a fluid (i.e., more solids would be expected to flow more difficultly). If Applicant wishes to argue that their claimed range enables unexpected results, rather than those expected, Applicant must provide sufficient evidence to prove this.
There is no need for one prior art document to explicitly disclose all of the claim features when used in a 103 rejection. Applicant is reminded that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Faler et al. is drawn to a coating composition, and teaches that it has a wide range of possible viscosities and solids percentages, and also that it can be sprayed onto the target, even stating that the primary mode of application is spraying, which can indeed be considered a precision application device, which Applicant argues the composition cannot work with. Even further, the composition of Faler et al. does indeed overlap that of the instant claims when it comes to solids percentages, so Applicant’s arguments that applying the composition of Faler et al. with a precision application device like an inkjet head is clearly false, as indicated by Applicant’s own specification. Applicant is reminded that the examples in Faler et al. are not the extent of the teachings in the patent, rather the entire disclosure is. There is no reason in Faler et al. or Beier et al. to expect that the composition of Faler et al. cannot be used in an inkjet applicator when viewing the teachings of Faler et al. as a whole.
Firstly, it is noted that this argument completely ignores the main discussion in the rejection above of the viscosities- that they are not a patentable structural element of the composition, but rather a property inherent to the fluid based on its exact composition. Applicant’s claim limitations regarding HSV and LSV have been treated as such- inherent properties which flow naturally from the claimed composition, and not actual patentable limitations of the system.
However, the above rejection furthermore states that even if they were to be treated as structural limitations, the wide range of viscosities in Faler et al. and how they correspond to the compositions of Faler et al. in each example and throughout the disclosure is more than sufficient evidence to suggest to one of ordinary skill in the art that these viscosity values are result effective variables. The disclosure of Faler et al. is replete with different viscosity values measured different ways, and always teaches that these properties flow from the exact proportions and ingredients used in the composition such that it is very clear that the viscosity values can be easily tuned to a specific need by varying the composition in the way done in Faler et al. Faler et al. explicitly says that one of the goals of its invention is to improve the coating finish of automobiles without the use of solvents which contribute to coating flow but still able to manage a smooth finish (col. 1 lines 25-46), resulting in a number of improved properties (col. 23 lines 54+). These improvements come from the properties of the coating material, which includes the wide variety of viscosities. Just because Faler et al. does not explicitly teach that the changes in viscosity affect application flow control of the coating liquid does not mean one of ordinary skill in the art would not be motivated to try optimizing these values- Applicant is reminded that the inventor recognizing another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
1/9/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717