DETAILED ACTION
Applicant’s response filed on 04/01/2026 has been fully considered. Claims 1-29 are pending. Claim 1 is amended. Claims 7-29 are withdrawn.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-6 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.
Claim 1 recites the limitation “
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” in line 5, which is indefinite because Formula (A-1) is unclear because it is cutoff by Formula (A-2). Based on the specification of the instant application [0013], for further examination of the claims, this limitation is interpreted as “
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”.
Claim 1 recites the limitation “the Copolymer below:” “Copolymer
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” in lines 4 and 39-40, which is indefinite because “
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” is not a copolymer, and are instead comonomers that can be copolymerized to prepare a copolymer. It is also unclear how the “50” limits the copolymer. Based on the specification of the instant application [0072, 0073], for further examination of the claims, this limitation is interpreted as “the Copolymer below:” “a copolymer of
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and
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”.
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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rink et al. (US 5,840,372).
Regarding claim 1, Rink teaches a process for the production of a multilayer protective and/or decorative coating on a substrate surface, in which a pigmented aqueous basecoat which contains a polyacrylate basecoat which contains a polyacrylate resin as binder is applied to the substrate surface, the polyacrylate resin being obtainable by polymerization of a mixture of esters of methacrylic acid and/or esters of acrylic acid, together if required with further monomers different from such monomers, a polymer film is formed from the basecoat applied, as transparent topcoat is applied to the resulting basecoat, and subsequently basecoat and topcoat are baked together (1:8-22; 6:49-7:5), wherein the mixture of esters of methacrylic acid and/or esters of acrylic acid contains furfuryl acrylate (1:49-58; 6:58-59), wherein the polymerization of the mixture of esters of methacrylic acid and/or esters of acrylic acid and further monomers can be carried out in an organic solvent or in a mixture of organic solvents (1:63-65), wherein the solution of the polyacrylate resin obtained in this way can then be converted to an aqueous dispersion by adding water (1:65-67), wherein the polyacrylate resins can also be prepared by polymerization of the mixture of esters of methacrylic acid and/or esters of acrylic acid and further monomers in an aqueous emulsion (1:67-2:3), wherein the baking of the basecoat and the topcoat is at 140° C (6:22), wherein the basecoat also contains, in addition to the polyacrylate resins, other binder constituents, that are crosslinking agents (4:21-28; 6:51-52), which reads on a multi-level substrate coating composition comprising a compound (A) serving as a main agent, and a solvent, wherein the compound (A) has a particle structure of the following Formula (1): Formula (1)
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, and the composition is cured by heating as claimed.
Regarding claim 2, Rink satisfies the limitation that is the multi-level substrate coating composition according to claim 1, wherein the aromatic ring is a benzene ring, a naphthalene ring, or an anthracene ring as claimed because the aromatic ring is not required to be present if the compound (A) has a partial structure of the Formula (1), and Rink’s teachings read on the compound (A) has a partial structure of the Formula (1) as explained above for claim 1.
Regarding claim 3, Rink satisfies the limitation that is the multi-level substrate coating composition according to claim 1, wherein the polymer containing the aromatic ring is a polymer having a hydroxyaryl novolac structure in which a hydroxyl group is substituted with a partial structure of Formula (A-1) or (A-2) as claimed because the polymer containing the aromatic ring is not required to be present if the compound (A) has a partial structure of the Formula (1), and Rink’s teachings read on the compound (A) has a partial structure of the Formula (1) as explained above for claim 1.
Regarding claim 4, Rink satisfies the limitation the multi-level substrate coating composition according to claim 1, wherein the monomer containing the aromatic ring is a monomer prepared by substitution of a hydroxyl group of the aromatic ring with a partial structure of Formula (A-1) or (A-2) as claimed because the monomer containing the aromatic ring is not required to be present if the compound (A) has a partial structure of the Formula (1), and Rink’s teachings read on the compound (A) has a partial structure of the Formula (1) as explained above for claim 1.
Regarding claim 6, Rink teaches that the polyacrylate resin is prepared by polymerization of the mixture of esters of methacrylic acid and/or esters of acrylic acid and further monomers in an aqueous emulsion (1:67-2:3; 2:58-59), wherein the polyacrylate resin is prepared by a two-stage emulsion polymerization in which, in a first stage, the mixture of esters of methacrylic acid and/or esters of acrylic acid and further monomers are polymerized in the aqueous phase in the presence of one or more emulsifiers and of one or more free-radial initiators, and in a second stage, the mixture of esters of methacrylic acid and/or esters of acrylic acid and further monomers are polymerized in the presence of the polymer obtained in the first stage (2:58-3:26). Rink’s one or more emulsifiers read on a surfactant. Therefore, Rink’s teachings read on wherein the composition further comprises a surfactant as claimed.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Rink et al. (US 5,840,372) as applied to claim 1, and further in view of Yoshizawa et al. (JP 2006-206712 A, machine translation in English used for citation).
Regarding claim 5, Rink teaches the multi-level substrate coating composition according to claim 1 as explained above.
Rink does not teach that the composition further comprises an acid generator. However, Yoshizawa teaches a thermal acid generator [0179] that is used to carry out polymerization of a fluorine-containing polymer [0179] or to carry out ring-opening polymerization of polyfunctional epoxy compounds [0075], wherein the fluorine-based polymer may be a copolymer with other types of copolymerizable monomers, wherein examples of the copolymerizable monomers include [0050] furfuryl acrylate [0051], wherein the fluoroaliphatic group-containing copolymer is present in a coating composition [0010]. Rink and Yoshizawa are analogous art because both references are in the same field of endeavor of a substrate coating composition. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Yoshizawa’s thermal acid generator to modify Rink’s mixture of esters of methacrylic acid and/or esters of acrylic acid contains furfuryl acrylate, such that Rink’s polyacrylate resin is obtained in the presence of Yoshizawa’s thermal acid generator, and such that Yoshizawa’s thermal acid generator is present in Rink’s pigmented aqueous basecoat. The proposed modification would read on wherein the composition further comprises an acid generator as claimed. One of ordinary skill in the art would have been motivated to do so because Yoshizawa teaches that the thermal acid generator [0179] is beneficial for carrying out polymerization of a fluorine-containing polymer by heating in the presence of the thermal acid generator [0179], wherein the fluorine-based polymer may be a copolymer with other types of copolymerizable monomers, wherein examples of the copolymerizable monomers include [0050] furfuryl acrylate [0051], wherein the fluoroaliphatic group-containing copolymer is present in a coating composition [0010], which would have been desirable for Rink’s mixture of esters of methacrylic acid and/or esters of acrylic acid contains furfuryl acrylate, such that Rink’s polyacrylate resin is obtained in the presence of Yoshizawa’s thermal acid generator, because Rink teaches that pigmented aqueous basecoat contains a polyacrylate basecoat which contains a polyacrylate resin as binder, that the polyacrylate resin is obtainable by polymerization of a mixture of esters of methacrylic acid and/or esters of acrylic acid, together if required with further monomers different from such monomers (1:8-22; 6:49-7:5), and that the mixture of esters of methacrylic acid and/or esters of acrylic acid contains furfuryl acrylate (1:49-58; 6:58-59).
Response to Arguments
Applicant’s arguments, see p. 10-11, filed 04/01/2026, with respect to the rejection of claims 1-4 under 35 U.S.C. 102(a)(1) as being anticipated by Kishioka et al. (JP 2003-084431 A) as evidenced by Chemical Book and Lee et al. have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see p. 10-11, filed 04/01/2026, with respect to the rejection of claims 5 and 6 under 35 U.S.C. 103 as being unpatentable over Kishioka et al. (JP 2003-084431 A) as evidenced by Chemical Book and Lee et al. as applied to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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