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 .
Response to the Arguments
In their response dated 1/9/2026 the applicants argued following:
Office action relied on Kittle and Gutman. The office action acknowledged that Kittle did not utilize two different types of silicas which are positively and negatively tribocharged silica. The office action relied upon Gutman to supplement this limitation. The applicants argued that Gutman relates to toners which are in an emulsion and aggregate. Gutman does not lead one of ordinary skill in the art to dry blend the carriers with inorganic particulate that consists solely of inorganic ingredients of claim 1.
Gutman teaches two different types of silicas that are mixed with titania, zinc stearate and emulsion aggregation cyan particles. Consequently composition of Gutman discloses other components excluded from the scope of claim 1.
Response:
First – instant claims are product claims, not process. In this type of claim patentable weight is given to the product and not to the process by which it is made.
Second – applicants are requested to turn to [0046-0048, 0050 and 0053] which are directed to powder coating. Looking at, for example, Carrier A or carrier E or H – no solvent or liquid is disclosed. Blending methods include the carrier polymer along with two silicas, titania pigment cyan particles and lubricant (stearate) and introducing them into a powder mill [0054]. There is no solvent taught in this method because cyan particles as a colorant are removed from the emulsion. Term “emulsion” refers to the way cyan colorant was processed in the same manner as applicant’s dry blending. It should also be noted that applicants invention enables one of ordinary skill in the art to include pigments, extenders, melt flow additives (pages 6 and 15) wherein pigments can be dyes or inorganic pigments including those with metallic effect.
Third – applicant’s claims utilize term “consisting of “ only to limit the mixture of specific inorganic particulates, while the rest of the claims includes terms “comprising”. Term “comprising” includes other organic additives, colorants and pigments and the like. It should also be noted that applicants invention enables one of ordinary skill in the art to include pigments, extenders, melt flow additives (pages 6 and 15) wherein pigments can be dyes or inorganic pigments including those with metallic effect.
Fourth – while the teachings of Gutman disclose other additives, these additives were not bodily incorporated into the teachings of Kittle. The examiner relied solely on the two types of silicas for powder coatings and why one of ordinary skill in the art would utilize two charged silicas in powder coatings. The grounds of rejection state following:
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This is a knowledge that one of ordinary skill in the art would have to possess to form such coatings. Gutman is pretty clear on that.
Kittle further states that the powder coatings which are electrically charged are transported through are towards the substrate and their final deposition is influenced by inter alia electric field lines that are generated between spray gun and substrate. The difficulty lies in coating substrates that have complicated shapes such as recessed portions restricting the flow of the electric field [0002-0003]. This is the reason why Kittle introduced charge into the inorganic particles. Again, it is knowledge that is well established in the art.
To further support examiner’s position a translation of JP 2002-348528 to Yoshinari will be provided with the arguments. While Yoshinari’s charged particles are preferably alumina (silica not excluded) the purpose of utilizing this reference is the presence of charges themselves. The important part is that the articles of Yoshinari also have complicated shape and the difficulties of obtaining uniform coatings. The issues are the same in Yoshinari as they are in Kittle. Yoshinari further supports examiners position by stating that blending positively and negatively charged particles, charging property is improved.
In summary applicant’s arguments do not overcome rejections of record. The rejections are maintained and will be restated reflecting the arguments.
With respect to the Double Patenting rejections, the examiner acknowledges applicants statement that terminal disclaimer will be filed once application is in condition for allowance.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kittle (US 2006/0062929) in view of Gutman (US 2003/0017406).
With respect to claims 1, 4, 9 and 10, Kittle discloses composition for powder coating having tribocharged particles which adhere to the substrate [0008].
The polymer utilized is a film forming polymer [0088] along with solid curing agent [0090] and combination of particulates.
Particle size of the one component powder coating is preferably not exceeding 50 microns, most preferred range is 20-45 microns [0057-0062] such that D90 is less than 40 microns, D50 is less than 20 microns. The particle size distribution further meets limitation of claim 4 With respect to the method by which particle size is measured, disclosed in Kittle laser scattering meets the laser diffraction because laser diffraction is also a static laser scattering.
Particles utilized in example 5 of Kittle are a combination of aluminum oxide which meets the limitation of component (i), aluminum hydroxide which meets the limitation of component (ii) and silica which meets the limitation of component (iii). The silica of Kittle is hydrophobic silica HDK 3004, which is negatively charged silica also utilized in the instant invention.
The difference between the teachings of Kittle and instant invention is utilizing combination of two silicas that are both positively and negatively charged.
Gutman teaches another powder coating composition, which utilizes both positively and negatively charged silica. The use of such silicas provides a powder coating (or toner) that is capable of high triboelectric charging but does not exhibit charge through or slow admix [0015]. Per [0030] of Gutman the positive and negative content of silica has to be properly balance in order to avoid defects. See also [0032].
This improvement with respect to eliminating charge through or slow admix is attributed to specifically using two silicas. One silica being positively charged or in other words silica treated with silane and having amino/ammonium functionality such as those produced by Wacker Chemie [0036] and second silica being negatively charged silica such as that surface treated with hexamethyldisilazane (also taught in Kittle) [0034]. The ratio is 90:10 to 30:70, preferably 70:30 to 34:66. Wherein the actual ratio is determined “tuned” with respect to carrier coating as can be readily determined through routing experimentation within the skill of a practitioner [0037, 0041]. In other words, the optimal ratio range of negative to positive particulates varies with carrier and intended use, which includes powder coatings [0046-0053]. Additionally the ratio of the two silicas meet the limitations of claims 9 and 10.
As such based on the discussion of Gutman and disclosed therein advantages, it would have been obvious to one having ordinary skill in the art at the time of the instant invention to modify the silica of Kittle to comprise positively and negatively charged silica. Such combination would eliminate charge through and slow admix. Moreover, the concept of using dual charged particles (positive and negative) is well established in the art in the powder coatings and tonners requiring tribocharged particles in order to deposit the coating onto a substrate. One of ordinary skill in the art would readily understood that.
The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
With respect to claim 3, alumina and the aluminum hydroxide are typically utilized in a ratio of 1:99 to 99:1 [0169].
With respect to claim 5, particle size distribution for example 5 is D90 10 microns, D50 5.5 microns [0183].
With respect to claims 2, 6 and 7, in addition to the already mentioned particle size distribution, the inorganic particulates comprise 0.01-10 % by weight [0115] of the powder coating composition, preferably 0.01-1 % by weight. The range in Kittle is directed to total amount of additives, wherein combination of alumina and aluminum hydroxide are utilized within 0.25-0.75% by weight preferably 0.45-0.55 % by weight [0115]. This means that silicas as the third component of the composition makes up the balance thereby meeting limitations of claim 2.
With respect to claim 8, Kittle does not teach wax coated silica.
With respect to claims 11 and 12, polymers utilized in Kittle include carboxy functional polyester [0092] with polyepoxy as crosslinking agent, and functional acrylic resins [0091, 0095]. The polymers have glass transition of 30-85oC as such they will have to be cured at a temperature lower than 160oC.
With respect to claim 13, the applicants coat a substrate with the claimed composition [0134].
With respect to claim 14, substrate may be immersed multiple times until desired thickness of coating is achieved [0055].
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kittle (US 2006/0062929) in view of Yoshinari (JP 2002-348528)
With respect to claims 1, 4, 9 and 10, Kittle discloses composition for powder coating having tribocharged particles which adhere to the substrate [0008].
The polymer utilized is a film forming polymer [0088] along with solid curing agent [0090] and combination of particulates.
Particle size of the one component powder coating is preferably not exceeding 50 microns, most preferred range is 20-45 microns [0057-0062] such that D90 is less than 40 microns, D50 is less than 20 microns. The particle size distribution further meets limitation of claim 4 With respect to the method by which particle size is measured, disclosed in Kittle laser scattering meets the laser diffraction because laser diffraction is also a static laser scattering.
Particles utilized in example 5 of Kittle are a combination of aluminum oxide which meets the limitation of component (i), aluminum hydroxide which meets the limitation of component (ii) and silica which meets the limitation of component (iii). The silica of Kittle is hydrophobic silica HDK 3004, which is negatively charged silica also utilized in the instant invention.
The difference between the teachings of Kittle and instant invention is utilizing combination of two silicas that are both positively and negatively charged.
Yoshinari discloses powder coating composition comprising resin and inorganic particles which are charged. The particles of Yoshinari are inorganic particles which include both alumina and silica.
Although Yoshinari exemplifies alumina as a positively charged particle silica is also encompassed in [0011] and therefore not excluded as an option for positively charged particle.
The importance of the teachings of Yoshinari is presence of two particles that bear positive charge and negative charge.
As it was mentioned in the arguments section above, Kittle states that the powder coatings which are electrically charged are transported through are towards the substrate and their final deposition is influenced by inter alia electric field lines that are generated between spray gun and substrate. The difficulty lies in coating substrates that have complicated shapes such as recessed portions restricting the flow of the electric field [0002-0003].
Yoshinari states that presence of both positively and negatively charged particles in powder coatings are utilized to treat difficult shapes [0002] where uniform coatings and necessary film thickness are required. Blending positively and negatively charged particles improved charging property [0016 of Yoshinari] due to electric field generated between spray gun and substrate (Kittle). In the end the resultant coating will have improved thixotropy of the molten material.
It would have been obvious to one having ordinary skill in the art to utilize both the positively and negatively charged silicas in the composition of Kittle, because combination of the two silicas will improve charging properties of the powder coating composition resulting in final coating that is uniform, can be coated onto complicated surfaces wherein the coating itself will have improved thixotropic of the molten material.
The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
With respect to claim 3, alumina and the aluminum hydroxide are typically utilized in a ratio of 1:99 to 99:1 [0169].
With respect to claim 5, particle size distribution for example 5 is D90 10 microns, D50 5.5 microns [0183].
With respect to claims 2, 6 and 7, in addition to the already mentioned particle size distribution, the inorganic particulates comprise 0.01-10 % by weight [0115] of the powder coating composition, preferably 0.01-1 % by weight. The range in Kittle is directed to total amount of additives, wherein combination of alumina and aluminum hydroxide are utilized within 0.25-0.75% by weight preferably 0.45-0.55 % by weight [0115]. This means that silicas as the third component of the composition makes up the balance thereby meeting limitations of claim 2.
With respect to claim 8, Kittle does not teach wax coated silica.
With respect to claims 11 and 12, polymers utilized in Kittle include carboxy functional polyester [0092] with polyepoxy as crosslinking agent, and functional acrylic resins [0091, 0095]. The polymers have glass transition of 30-85oC as such they will have to be cured at a temperature lower than 160oC.
With respect to claim 13, the applicants coat a substrate with the claimed composition [0134].
With respect to claim 14, substrate may be immersed multiple times until desired thickness of coating is achieved [0055].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/007,503 (‘503). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending application ‘503 discloses a one component powder coating comprising curable resin, one or more curing additives and 10-20 wt.% of dry blended inorganic particulate additive comprising aluminum oxide, aluminum hydroxide and silica with content of silica and powder particle size distribution as required by the instant claims.
While the tribocharged silica is not required in claim 1 of ‘503, it is required in dependent claims. Ratios of the inorganic particulates are also the same in both invention.
In both invention wax coated silica is excluded
Both invention utilize the same type of polymers and a curing system that is capable of curing at a temperature below 160oC.
Both invention claim substrate that is coated with the composition as well as substrate that is coated twice.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/007,819 (‘819). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is almost the same as the claim 1 of ‘819 except that dry blended inorganic particle is utilized I amount of 0.1-15 % by weight which is encompassed by instantly claimed amount of 0.1-25 % by weight. The dry blended additive in ‘819 is utilized in amount of 0.1-35 % by weight while instant invention requires 5.0-25% by weight in instant claim 6. Other limitations in all dependent claims such as particle size distribution, ratios of all the claimed components are also within the same range. In both application the additive is free of wax coated silica.
With respect to the additives, ‘816 claims additional components which are not listed in instant claims. However, per MPEP 804 the specification can be used to learn the meaning of a term. In instant case, the examiner can rely on specification to learn the meaning of term “additive”. Consistent with the MPEP, instant invention lists the same additives, for example metallic pigment. The definition of additive further includes two silicas bearing negative and positive charge as claimed in instant claim 1.
Both inventions claimed substrate coated with powder coating composition as well as substrate that is coated with more than one layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 5, 2026