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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/26/26 has been entered.
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.
Claim 15 is 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 15: Claim 15 is rejected as being indefinite because it requires using the composition as a single coating layer on a substrate according to claim 1 yet does not necessarily require the performance of the steps of claim 1 and therefore it is unclear what the metes and bounds of the claim are.
For the purpose of examination, claim 15 is being interpreted as:
Claim 15: The method of claim 1, wherein the pigmented coating composition of either step (2) or step (3a) comprises:
at least one non-blacking coloring pigment having a volume average particle size of <1000nm in an amount in the range of from 0.01 to 7.50 wt.-%, based on the total solid content of the coating composition,
wherein said composition does comprise any black pigment,
wherein said at least one non-blacking coloring pigment is incorporated into the coating composition in the form of a pigment paste.
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 1-3, 6-10, 15, 17, & 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Decker et al. (US PG Pub 2008/0187708; hereafter ‘708).
Claim 1: ‘708 is directed towards a method of preparing a multilayer coating system onto a substrate (title & abstract) comprising:
applying an IR reflecting layer having IR-reflective pigments in a resinous binder wherein the IR-reflective pigment can be Paliogen or Lumogen black pigments from BASF (i.e. a pigmented base composition to a substrate wherein the basecoat composition comprises at least one organic black pigment ; see Example 8; abstract; Layer 6, Fig. 1; and ¶s 10-12 & 32), and
applying a radiation absorbing layer includes nanosized pigments dispersed in a resinous binder, wherein the nanosized pigments such as Pigment Blue 15:3 (i.e. applying a coating composition different from the pigmented base composition wherein the coating composition is a pigmented topcoat composition; see Example 8; abstract; Layer 8, Fig. 1; and ¶s 10, 13-16, & 32),
characterized in that radiation absorbing layer does not comprise any black pigment and the topcoat radiation absorbing layer composition comprises a non-black coloring pigment having a volume average particle size of <100 nm (¶s 14 & 16) in an amount of 2.28 wt % based on the total solid content of the composition (see Pigment Blue 15:3 portion of Example 8’s tinting composition, Table 1 & ¶ 32), wherein the non-black coloring pigment is incorporated into the respective composition in the form of a pigment paste (the blue pigment is first combined with resin and dispersant and then added to the clear coat composition in Example 8, see ¶ 32);
wherein the multilayer coating system obtained after curing has a jetness (Mc) value that exceeds its blackness (My) value (‘708 teaches that the coating system exhibits cool dark color, title; the process produces cool dark colors, ¶ 23; and the color is black, ¶s 3-5; i.e. ‘708’s multilayer coating process produces a cool black and a cool black in turn implies a blue tinted black which as evidenced by the Specification means that Mc exceeds My, see Specification, lines 20-34, pg 28).
Claim 2: The non-black coloring pigment is a blue pigment (Pigment Blue 15:3, ¶ 32).
Claim 3: The pigment paste containing the one non-black coloring pigment has a haze of 0.2% (see ¶ 29 & Table 2).
Claim 6: The multilayer coating system of ‘708 has a jetness value of 299 (see Table 3).
Claim 7: The blue coloring pigment (non-black coloring pigment) present in the topcoat is present at an amount of 2.28 wt % based on the total solid content of the composition (see Pigment Blue 15:3 portion of Example 8’s tinting composition, Table 1 & ¶ 32).
Claim 8: The blue coloring pigment (non-black coloring pigment) present in the topcoat is present at an amount of 2.28 wt % based on the total solid content of the composition (see Pigment Blue 15:3 portion of Example 8’s tinting composition, Table 1 & ¶ 32).
Claim 9: The organic black pigment present in the IR reflective coating (i.e basecoat composition) is an IR-transparent organic black pigment (Lumogen can be used in both the IR reflective coating and the radiation absorbing layer and is IR transparent; see ¶s 13-14).
Claim 10: ‘708 teaches that the coating has a total pigment concentration of 6 wt% based on the total weight of the non-volatiles and the relative masses of each pigment added to the mixture relative to the amount of clear coat base used (¶ 32).
Based on the values provided in ¶ 32 it is apparent that the total solid content of the topcoat is ~36 wt% solid content based on the weight of the composition.
Claim 15: As discussed above in regards to claim 1, ‘708 anticipates the method of using a pigmented coating composition as claimed.
‘708 further teaches that the multilayer coating system of ‘708 has a jetness value of 299 after curing (see Table 3).
Claim 17: The blue pigment paste has a haze of 0.2% (Table 2, Example 8, ¶ 32).
Claim 18: The blue pigment paste has a haze of 0.2% (Table 2, Example 8, ¶ 32).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4, 5, 11-12, 16, 19, & 20 are rejected under 35 U.S.C. 103 as being unpatentable over ‘708.
Claim 4: The non-black coloring pigment has an average particle size of less than 100 nm (¶ 14).
Although the taught range of less than 100 nm is not explicitly the claimed range of 10 nm to <950 nm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Claim 5: The non-black coloring pigment has an average particle size of less than 100 nm (¶ 14).
Although the taught range of less than 100 nm is not explicitly the claimed range of 10 nm to 750 nm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Claims 11 & 12: ‘708 does not teach the order of coating and curing during the process.
However, it is prima facie obvious to select any order of performing steps and to cure the two layers simultaneously because as a general rule, no invention is involved in the broad concept of performing simultaneously operations which have previously been performed in sequence or election of any order of mixing ingredients is prima facie obvious. In re Eksergian, 25 C.C.P.A., Patents, 734, 92 F.2d 811, 35 USPQ 530, and In re Mink, 27 C.C.P.A., Patents, 726, 107 F.2d 586, 43 USPQ 456. MPEP §2144.04(IV)(C).
Claim 16: ‘708 teaches that the second layer 8 can be comprised of a single pigment or a mixture (see ¶ 14) wherein Pigment Blue 15:3 (i.e. phthalocyanine blue – an organic blue pigment; ¶ 16) and the choice of pigments is based on the desired tint color (¶ 14).
It would have been obvious to one of ordinary skill in the art at the time of filing to use Pigment Blue 15:3 as the only nano-sized pigment in the topcoat layer because a prior art’s disclosure of possible combination renders all combinations obvious and aesthetic design choices are prima facie obvious based on one’s color choice. See MPEP §2144.04 (I). See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Claim 19: The non-black coloring pigment has an average particle size of less than 100 nm (¶ 14).
Although the taught range of less than 100 nm is not explicitly the claimed range of 25 nm to 900 nm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Claim 20: The non-black coloring pigment has an average particle size of less than 100 nm (¶ 14).
Although the taught range of less than 100 nm is not explicitly the claimed range of 30 nm to 850 nm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Response to Arguments
Applicant's arguments filed 3/26/25 have been fully considered but they are not persuasive.
In regards to applicant’s argument that claim 15 is not indefinite; the Office does not find this argument convincing because as discussed above it is not clear if claim 15 requires all the steps of claim 1 or instead only requires a single layer from the composition as taught and therefore one would not be able to determine the metes and bounds of the claim.
In regards to applicant’s argument that ‘708 does not anticipate the amended claim 1 and original claim 15 because there is not an explicitly statement that the jetness values exceed the blackness value; the Office does not find this argument convincing because as discussed above, ‘708 teaches that the layer structure applied produces a cool dark coating and wherein the underlying basecoat is black it is apparent that the structure produced is a cool black and thus ‘708 produces a blue-tinted black because a cool color is a blue tinted color and as noted by applicant, a cool color means that jetness exceeds blackness.
In regards to applicant’s argument that ‘708 produces a reddish/brown undertone; the Office does not find this argument convincing because ‘708 explicitly states that a cool dark color is produced and thus teaches a blue undertone (see title). Applicant has not provided any evidence to support this statement. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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