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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 5, 2025 has been entered.
Response to Arguments
Applicant's arguments filed December 5, 2025 have been fully considered but they are not persuasive.
The Office action issued on October 16, 2025, relies on Kittle and Gutman. The Office action acknowledges that Kittle does not disclose two different types of silicas, one being positively tribocharged and a second being negatively tribocharged. Kittle only teaches a negatively tribocharged silica. The Office action uses Gutman to supplement this limitation. Applicant argues that Gutman “describes emulsion aggregation toners that are prepared by mixing negative silica, positive silica, titania and zinc stearate with emulsion aggregation cyan particles.” Further, applicant argues that “Gutman incentivizes one of skill in the art to add different type of silica to the powder coatings of Kittle. Specifically, Gutman would incentivize one of skill in the art to mix two types of silica with several additional components to form additive particles that do not fulfil the requirements of the first dry-blended inorganic particulate additive specified in present claim 1.” Applicant asserts that for these reasons, Gutman teaches away from independent claim 1. Examiner disagrees.
Claim 1 is related to a one-component powder coating composition, not a process for making said one-component powder coating composition. In a product-based claim, patentable weight is given to the product and not the process by which it was made.
Gutman teaches carriers that are both solution coating and powder coating in [0044] – [0054]. In Carriers A, E, or H, no solvent or liquid is disclosed. Blending methods in [0054] include the carrier polymer along with two silica, among other ingredients. There is no solvent taught in these examples, such that it would have been obvious to one having ordinary skill in the art at the time of filing to modify the powder composition of Kittle with the positive and negative silica taught by Gutman. Additionally, it is noted that Kittle teaches a powder coating with a silica component. Gutman is relied upon for the teaching of two silica components, one positive and one negative. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Kittle to have two silica in order to eliminate charge or slow admix. Moreover, the concept of using dual charged particles, both positive and negative, is well established in the art of powder coatings and toners requiring tribocharged particles in order to deposit a coating onto a substrate.
Applicant focuses on the fact that Gutman teaches a range of ingredients not taught in the claim language. However, as the claim is written, using the term “comprising” to describe the ingredients in the powder coating composition, such that it includes other organic additives, colorants, pigments, and the like. The term “consisting of” is used only to limit the inorganic components. While there are additives taught in Gutman, they are not incorporated into the teachings of Kittle for the purposes of this rejection. Gutman was relied upon only to teach the use of two silica into the powder coating of Kittle.
Claim Objections
Claims 1, 2, 6, 8, 10, 13are objected to because of the following informalities: The following limitations are missing proper antecedent basis throughout the claim. Appropriate correction is required.
One powder coating component
Non-coated aluminum oxide
Aluminum hydroxide
Aluminum oxyhydroxide
Silica
Non-coated second silica
Wax-coated silica
Inorganic pigment with a metallic effect
Inorganic color pigment
Biocidal pigment
Anticorrosive pigment
Extender
Pacifying pigment
Conductive or anti-static pigmentInfrared-absorbing pigment
Radiation shielding pigment
Glass flake
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 1-9, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/928,796 (US PG Pub 2023/0287223). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach substantially the same claim limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 11, and 12 of copending Application No. 18/007,503 (US PG Pub 2023/0257592). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach substantially the same claim limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1 recites the limitation "in total of dry-blended inorganic particulate additives” in line 22. There is insufficient antecedent basis for this limitation in the claim.
The language “in total of dry-blended inorganic particulate additives” is unclear as it lacks proper antecedent basis and does not clearly refer to whether it is referring to the first and second dry-blended inorganic particulate additives or includes additional dry blended additives. It is recommended that the language be amended to read “in total of first dry-blended inorganic particulate additives and second dry-blended inorganic particulate additives.”
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.
Claims 1-11, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kittle (US 2006/0062929) in view of Gutman (US 2003/0017406).
Regarding claim 1, Kittle teaches a one-component powder coating composition [0098] comprising a curing system comprising a curable resin [0097] and one or more curing additives for curing the curable resin [0114], wherein the powder coating composition comprises: one powder coating component comprising the curable resin and the one or more curing additives [0115]; 0.1 to 15.0 wt% of a first dry-blended inorganic particulate additive comprising a surface treated silica with a negative tribocharge [0188] – [0189] , the first dry-blended inorganic particulate additive consisting of inorganic components i), ii), and iii), wherein component i) is non-coated aluminium oxide or non-coated silica, component ii) is aluminium hydroxide and/or aluminium oxyhydroxide, and component iii) is silica; or wherein, and wherein, if component i) is non-coated silica, component iii) does not comprise non-coated silica component i) is non-coated silica, component ii) is aluminium hydroxide and/or aluminium oxyhydroxide, and component iii) is silica excluding non-coated silica [0115], [0184] – [0189] (Additive formulation 2 includes aluminum oxide, aluminum hydroxide, and a negatively charged silica); and 0.1 to 35 wt% of a second dry-blended inorganic particulate additive [0204], wherein the powder coating composition comprises 1.0 to 40 wt% in total of dry-blended inorganic particulate additive [0198] – [0199], [0204], wherein the wt% of dry-blended inorganic particulate additive is based on the weight of the one powder coating component, and wherein the second dry-blended inorganic particulate additive is free of aluminium oxide, silica, aluminium hydroxide and aluminium oxyhydroxide [0198] – [0199]
While Kittle teaches a first, surface-treated, negatively charged silica in the first dry blend, it does not disclose the first dry-blended inorganic particulate additive comprises a first and a second silica wherein the first silica isa surface-treated silica with a negative tribocharge and the second silica is non-coated silica or is a surface-treated silica with a positive tribocharge. This is remedied by Gutman [0031] and [0034]. It would have been obvious to one having ordinary skill in the art before the filing date of the invention to modify the powder coating taught by Kittle with the two silica as taught by Gutman in order to eliminate charge or slow admix.
Regarding claim 2, Kittle teaches the powder coating component has a particle size distribution with a Dv90 of at most 50 µm and a Dv50 of at most 30 µm, wherein Dv90 and Dv50 are determined by laser diffraction according to ISO 13320 using the Mie model [0057]-[0064].
Regarding claim 3, Kittle teaches the one powder coating component has a particle size distribution such that Dv90 is at most 25 µm and Dv50 is at most 12 µm [0057]-[0064].
Regarding claim 4, Kittle teaches the curing system is capable of curing at a temperature below 160 °C (Kittle includes a carboxy functional polyester [0092] with polyepoxy as a crosslinking agent, and functional acrylic resins [0091], [0095]. The polymers have a glass transition of 30-85oC, such that they will be cured at a temperature lower than 160oC.)
Regarding claim 5, Kittle teaches the amount of the first dry-blended inorganic particulate additive is in the range from 0.2 to 10 wt% [0115].
Regarding claim 6, Kittle teaches the inorganic component i) is aluminium oxide, and the weight ratio of inorganic components i) and ii) in the first dry-blended inorganic particulate additive is in the range of from 10:90 to 60:40 [0184]-[0188].
Regarding claim 7, Kittle teaches the first dry-blended inorganic particulate additive comprises in the range of from 10 to 99 wt% of inorganic component iii) [0184]-[0188].
Regarding claim 8, Kittle teaches wherein the powder coating composition is free of wax-coated silica (Kittle does not teach wax coated silica).
Regarding claim 9, Kittle teaches a first silica with a negative tribocharge [0188]. Kittle does not teach the weight ratio of negatively chargeable particles and positively charged particles is in the range of from 10:90 to 90:10; however, this is taught by Kittle in combination with Gutman in [0031], [0034], and [0037]. It would have been obvious to one having ordinary skill in the art before the filing date of the invention to modify the powder coating taught by Kittle with the two silica as taught by Gutman in order to eliminate charge or slow admix.
Regarding claim 10, Kittle teaches the second dry-blended inorganic particulate additive consists of or comprises inorganic pigment with a metallic effect, inorganic color pigment, biocidal pigment, anticorrosive pigment, extender, opacifying pigment, conductive or anti-static pigment, infrared- absorbing pigment, radiation shielding pigment, glass flake, or a combination of two or more thereof (titanium dioxide) [0098], [0198]-[0199].
Regarding claim 11, Kittle teaches the second dry-blended inorganic particulate additive comprises an inorganic pigment with a metallic effect or consists of an inorganic pigment with a metallic effect (titanium dioxide) [0098], [0198]-[0199].
Regarding claim 14, Kittle teaches a substrate coated with a powder coating composition [0002]
Regarding claim 15, Kittle teaches a substrate coated with a first layer of powder coating composition and then coated with a top layer of the powder coating composition [0005] (substrate may be immersed multiple times until the desired thickness).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kittle (US 2006/0062929) and Gutman (US 2003/0017406), and further in view of Ring (US 2001/0006993).
Regarding claim 12, Kittle and Gutman do not teach the powder coating composition comprising in the range of from 5 to 35 wt% of an inorganic pigment with a metallic effect, based on the weight of the one powder coating component; however, this is taught by Ring [0024]. It would have been obvious to one having ordinary skill in the art before the invention was filed to modify Kittle and Gutman with Ring in order to provide for the flexible production of a variety of finishes.
Regarding claim 13, Kittle discloses the second dry-blended inorganic particulate additive comprising an inorganic pigment with a metallic effect (titanium dioxide); however, Kittle and Gutman do not disclose a powder coating component comprising bonded inorganic pigment with a metallic effect. This is taught by Ring in [0024]. It would have been obvious to one having ordinary skill in the art before the invention was filed to modify Kittle and Gutman with Ring in order to provide for the flexible production of a variety of finishes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura Martin whose telephone number is (571)272-2160. The examiner can normally be reached Monday - Friday, 7:30am - 3:30 pm.
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/LAURA MARTIN/ SPE, Art Unit 2855
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