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 .
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1, 2, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid (US 2011/0237683) in view of Omura (US 2021/0371681).
With respect to claims 1, 8, and 9, Schmid discloses pigment compositions for use in paints and coatings having an improved sparkle effect comprising an effect pigment (abstract), wherein the effect pigment is preferably aluminum flake (paragraph 0056). Schmid teaches that the metal layer can be obtained by chemical vapor deposition (paragraphs 0093 and 0105). The pigments are added to binders such as curable melamine and urea-formaldehyde resin (paragraph 0154) to form the paints and coatings.
Schmid fails to explicitly disclose that the coating composition provides a cured coating having (i) sparkle intensity of 5 or more at 45° or sparkle area of 10 or more at 45°; (ii) a graininess value of 5-10; or (iii) the chroma at 45° of 5 or less.
With respect to (i), Schmid shows in Figures 1-3 sparkle area and sparkle intensity values at 15°, 45°, and 75° of the pigment composition. The sparkle area and sparkle intensity values far exceed the claimed 10 or more and 5 or more, respectively. The sparkle area and intensity values are for the pigment composition and not for a cure coating.
Even so, because the pigment composition is capable of meeting the claimed sparkle intensity and area, it would have been obvious to one of ordinary skill in the art to adjust the amount of pigment composition in the coating composition to get the target sparkle effects.
With respect to (ii), Omura discloses a coating composition including a curable binder component and flake-like aluminum pigment (abstract) and teaches that graininess of the cured coating is preferably 5-10 because when greater than 5 there is a high particle feeling (i.e., sparkle) and when below 10 there is metallic evenness (paragraphs 0273-0274).
Given that both Schmid and Omura are drawn to curable coating compositions comprising metallic flake pigment and further given that Omura teaches that such pigment advantageously has a graininess value of 5-10, it would have been obvious to one of ordinary skill in the art to select a metallic flake pigment that provides graininess value that gives sparkle and metallic evenness.
With respect to (iii), while Schmid fails to disclose the chroma C*, it teaches that the pigments can be tuned to have a strong metallic appearance or a strong colored metal effect by adjusting the thickness of the metal layer or by adding additional colored layers, respectively (paragraph 0095).
Therefore, it would have been obvious to one of ordinary skill in the art to select a pigment that would provide a reduced color tone that overlaps with claimed C* of 5 or less.
With respect to claim 2, Schmid fails to disclose the flip-flop value, however, it teaches that color effects (i.e., flip-flop) are obtained by using colorants (paragraph 0012). Schmid also teaches that reduced angle effects can be obtained by utilizing less perlite (paragraph 0034).
Given that a flip-flop value is dependent on adding colorants and perlite as taught by Schmid, it would have been well within the skill of one of one of ordinary skill in the art to adjust the flip-flop properties to within a low flip-flop value of 1.1-2 for desired end-use coatings and paints.
With respect to claim 7, Schmid teaches that the amount of pigment composition is present coating formulations in an amount of 0.1-10 wt % (paragraph 0158), wherein the pigment composition comprises 20-99.5 wt % effect pigment (paragraph 0033). These amounts provide for 0.02-11 parts by weight of effect pigment per 100 parts by weight of resin solid content.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Schmid (US 2011/0237683) in view of Omura (US 2021/0371681) and further in view of Hashizume (JP 9-59532, machine translation).
The discussion with respect to Schmid and Omura in paragraph 2 above is incorporated here by reference.
With respect to claims 3 and 5, Schmid teaches that the metal effect pigments having average particle size of 5-100 µm and thickness of 80-700 nm (paragraph 0048), which provides for an aspect ratio of at least 7.
Schmid also teaches that color pigments can be applied to the surface of the effect pigments (paragraph 0140) and that surface treatments can be used (paragraph 0087) but fails to disclose that there are first and second protective layers.
Hasmizume discloses a vapor-deposited color metallic flake pigment (abstract) for use in paints (paragraphs 0017, 0024-0025, and 0034), wherein the coating is applied to both side of the flake and therefore provide for the claimed structure of first protective layer, metal layer, and a second protective layer. The pigment is applied with a silane coupling agent in order to improve the coating (paragraph 0018), which hydrolyzes to a polysiloxane (i.e., silicone) component.
Given that Shmid teaches adding pigments and surface treatments to the surface of the effect pigments and further given that Hasmizume teaches that using both of them in combination provides for a pigment that effectively provides metallic luster and vivid color, it would have been obvious to one of ordinary skill in the art to utilize first and second protective layers on the effect pigment.
With respect to claim 4, Hasmizume teaches that the amount of pigment coating added to the metallic flake pigment is too thick the metallic luster of the pigment is impaired (paragraph 0018) but fails to explicitly disclose the thickness of the protective layers.
Even so, it is the examiner’s position that the thickness of the protective layers is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate protective layer thickness, including those within the scope of the present claims, so as to produce desired end results, i.e., a desirable amount of metallic luster and color.
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 and 3-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/014,306 because of the following reasons.
With respect to claim 1, US appl ‘306 claims in its claim 1 a coating composition comprising a pigment comprises a flake-shaped vapor-deposited metal pigment, wherein a cure coating film from the coating composition has sparkle intensity at 45° of 20-100, sparkle area at 45° of 10-50, and a graininess value at 45° of greater than 10. While the graininess value of greater than 10 does not overlap with claimed range of 5-10, it is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
US appl ‘306 also fails to disclose the chroma C* of the cured coating, however, chroma C* is dependent on color saturation. Because US appl ‘306 does not claim a coating composition comprising a colorant, it would have been obvious to one of ordinary skill in the art to prepare a coating composition that when cured into a film has chroma C* of 5 or less.
With respect to claim 3, see claim 2 of US appl ‘306.
With respect to claim 4, see claim 3 of US appl ‘306.
With respect to claim 5, see claim 4 of US appl ‘306.
With respect to claim 6, see claim 5 of US appl ‘306.
With respect to claim 7, see claim 6 of US appl ‘306.
With respect to claim 8, see claim 7 of US appl ‘306.
With respect to claim 9, see claim 8 of US appl ‘306.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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