RESPONSE TO AMENDMENT
WITHDRAWN REJECTIONS
The 35 U.S.C. §103 rejection of the claims made of record in the office action mailed on 06/30/2025 have been withdrawn due to Applicant’s amendment in the response filed 08/19/2025.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (U.S. Pat. No. 6,964,989) in view of Hashizume et al. (U.S. App. Pub. No. 2016/0040015).
Regarding claim 1, Fang et al. discloses a water resistant peelable protective and decorative clear or pigmented coating composition which is intended to be applied to the surface of a painted surface, including automotive paints applied onto metallic articles (Abstract and col. 1, lines 20-30). Fang et al. therefore discloses a metal structure with a paint film provided thereon and the peelable protective film applied onto the paint film. Fang et al. further discloses that the peelable protective film includes a resin material (col. 2, line 63 – col. 3, line 16) and metal flakes. (col. 2, lines 31-33).
Fang et al. does not disclose a concentration of metal plate-like fillers in the peelable protective film of 50% by weight.
Hashizume et al. teaches a flaky stainless-steel pigment and resin composition containing the pigment (Abstract) wherein the resin composition can be used to form a coating film having improved properties including high corrosion resistance. (par. [0015]). Hashizume et al. teaches that the inclusion of the flaky stainless-steel pigment in the resin composition in an amount of 5-120 parts by weight based on the weight of the coating composition results in a composition having improved corrosion resistance (par. [0054]) and wear resistance which prevents degradation of the coating and coated product in harsh environments. (par. [0067]). Examples of coated products disclosed in the prior art reference include vehicles. (par. [0064]).
It would have been obvious to one of ordinary skill in the art to include 5-120 parts by weight of stainless-steel flaky pigments in the peelable protective coating composition of Fang et al., as disclosed in Hashizume et al.
One of ordinary skill in the art would have found it obvious to include the stainless-steel pigments in amounts of 5-120 parts by weight, encompassing the claimed value of 50% by weight presently claimed, in order to impart anticorrosive and improved wear resistance properties to the protective film of Fang et al. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have a reasonable expectation of success that the combination would allow to have improved protection to the underlying painted metal substrates of the vehicles coated with the peelable protection film of Fang et al. due to the presence of the flaky stainless-steel pigments.
Regarding claim 2, Hashizume et al. teaches that the stainless-steel pigments have dimensions for the long side in the range of 55 microns or less with a thickness int her range of 0.03 to 0.5 microns (par. [0012]-[0013]) which is less than 1/10 of the long side dimension disclosed in Hashizume et al.
Regarding claim 4, Hashizume et al. discloses that the pigments are made of stainless-steel. (Abstract).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (U.S. Pat. No. 6,964,989) in view of Hashizume et al. (U.S. App. Pub. No. 2016/0040015), further in view of Roberts et al. (CA 2,000,511).
Fang in view of Hashizume et al. is relied upon as described in the rejection of claim 1, above.
Fang et al. discloses the use of acrylate esters as the resin material in the coating composition. (col. 3, lines 38-45). Fang et al. does not disclose the glass transition temperature of the resin in the coating composition.
Roberts et al. discloses a coating composition that is preferably used as a temporary protective layer on painted, finished motor vehicles. (Abstract). Roberts et al. teaches that a glass transition temperature (Tg) in the range of 10 to 45oC for the coating results in a good compromise between ease of removal and retention of picked up dirt. (page 8, lines 22-26).
It would have been obvious to one of ordinary skill in the art to optimize the glass transition temperature of the coating in Fang et al. in view of the disclosure in Roberts et al.
One of ordinary skill in the art would have found it obvious to optimize the glass transition temperature of the coating composition of Fang et al. in view of the art recognized result effective nature of the glass transition temperature over properties such as removability and dust retention. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II). Furthermore, Roberts et al. suggests a glass transition temperature between 10oC and 45oC provides optimal properties and therefore one of ordinary skill in the art would have found it obvious for the coating composition to have the same glass transition temperature with a reasonable expectation of success in achieving the improvements disclosed in the secondary reference.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (U.S. Pat. No. 6,964,989) in view of Hashizume et al. (U.S. App. Pub. No. 2016/0040015) and Roberts et al. (CA 2,000,511), further in view of Wiener et al. (U.S. App. Pub. No. 2022/0228005).
Fang in view of Hashizume and Roberts et al. is relied upon as described in the rejection of claim 1, above.
Fang et al. does not disclose the peel strength of the coating composition.
Wiener et al. discloses aqueous-based release coatings and articles made therefrom. (Abstract and par. [0001]-[0002]). Wiener et al. teaches that effective peel strengths for releasable coatings are in the range of 0.1 to 2.5 N/10mm based on the desired degree of release (medium or aggressive). (par. [0049]).
It would have been obvious to one of ordinary skill in the art to select an adhesive composition for the releasable coating having a peel strength in the range of 0.1 to 2.5 N/10mm in view of the teachings of Wiener et al.
One of ordinary skill in the art would have found it obvious to select a peel strength in the range of 0.1 to 2.5 N/10mm in order to control the degree of release of the coating for ease of removal and to prevent unwanted stripping of the underlying paint in Fang et al.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 08/19/2025 regarding the rejections of record have been considered but are moot due to the new grounds of rejection.
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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 11/03/2025