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 .
Response to Amendment
This office action is in response to the Amendment filed on 10/31/2025.
Claims 1-8 are presently pending; claims 7-8 are withdrawn; claims 1 and 7 are amended; claims 1-6 are under examination.
The 35 U.S.C. 103 rejections of claim 1 over BULLARD and claims 2-6 over BULLARD in view of HASHIZUME are maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/24/2025 was filed after the mailing date of the non-final action on 08/04/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, it is noted that the amendment to claim 1 adds a new limitation of a graininess value (G value) of more than 10 and 25 or less “at an incident angle of 45°” (see claim 1 at lines 6-7). As such, while the specification discloses a graininess value of more than 10 and 25 or less (see paragraph [0088] of the present specification), the Examiner has been unable to locate any disclosure that would support a graininess value within this range at an incident angle of 45° as claimed, or any graininess value at any specific incident angle.
Claims 2-6 are included herein as each depends from a claim which is rejected for the reasons set forth above.
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, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Bullard, et al. (U.S. Pub. No. 2019/0217336-A1) (hereinafter, “BULLARD”).
Regarding claim 1, BULLARD teaches a coating composition comprising a coating-film-forming resin and a pigment (see BULLARD at Abstract and paragraph [0080]),
wherein the pigment comprises a flake-shaped metal pigment (see BULLARD at paragraph [0082]),
and a cured coating film of the coating composition (see BULLARD at paragraph [0125]) has a sparkle intensity (Si) overlapping with the claimed range of 20 or more and 100 or less at an incident angle of 45° (see BULLARD at paragraph [0131], teaching a sparkle intensity at an incident angle of 45° of at least about 5),
a sparkle area (Sa value) overlapping with the claimed range of 10 or more and 50 or less at an incident angle of 45° (see BULLARD at paragraph [0134], teaching a sparkle area at an incident angle of 45° of at least about 25, and at paragraph [00120], teaching that the sparkle area may be at most about 50),
and a graininess value (G value) overlapping with the claimed range of more than 10 and 25 or less at an incident angle of 45° (see BULLARD at paragraph [0138], teaching a graininess value of at least about 5 at an incident angle of 45°, and at paragraph [00120], teaching a graininess value of at least about 10 and at most about 20).
As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
The limitation regarding the pigment being “vapor-deposited” (see claim 1 at line 3) is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Claims 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over BULLARD in view of Hashizume, et al. (JP H0959532 A) (hereinafter, “HASHIZUME”; citations herein refer to the attached machine translation).
Regarding claim 2, as applied to claim 1 above, BULLARD teaches a coating composition according to claim 1.
However, BULLARD fails to explicitly teach that the flake-shaped metal pigment has a first protective layer, a metal layer, and a second protective layer in this order, and that the flake-shaped metal pigment has an average particle diameter of 10 to 150 μm, an average thickness of 0.5 to 10 μm, and an aspect ratio of 5 to 50.
HASHIZUME teaches a color metallic flake pigment with excellent metallic luster which is optimal for use in coating materials or incorporating a resin (see HASHIZUME at Abstract),
wherein the flake-shaped metal pigment has a first protective layer, a metal layer (e.g., aluminum), and a second protective layer in this order (see HASHIZUME at paragraphs 17-19 and 28, teaching that the pigment has a metallic layer in the middle which is coated with a continuous layer or thin film of a coating with a silane coupling agent; i.e., there is a metallic layer in the middle with a protective layer coated on each side of the flake),
and the flake-shaped metal pigment has an average particle diameter of 5 to 100 μm, e.g., 30 μm (see HASHIZUME at paragraphs 9 and 31),
an average thickness of 0.1 to 5 μm, e.g., 1 μm (see HASHIZUME at paragraphs 9 and 31),
and a shape factor obtained by dividing the average particle size by the thickness (i.e., an aspect ratio) of about 5 to 100, e.g., 30 (see HASHIZUME at paragraphs 9 and 31).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the coating composition of BULLARD by simply substituting the flake-shaped metal (e.g., aluminum) pigment of BULLARD (see BULLARD at paragraphs [0080] and [0082]) with the flake-shaped metal (e.g., aluminum) pigment of HASHIZUME (see HASHIZUME at paragraphs 9, 17 and 31). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing a flake-shaped metal pigment for the coating composition, and would have been motivated to do so as HASHIZUME teaches that the pigment has excellent metallic luster, color tone and solvent resistance, is easy to handle, and is optimal for use in coating materials or incorporating a resin (see HASHIZUME at Abstract and paragraphs 8-9). Further, HASHIZUME teaches that such pigments are known in the art of coating materials, therefore one of ordinary skill in the art would have found it obvious to select a flaky metallic aluminum pigment as taught by HASHIZUME for use as the flaky metallic aluminum pigment of BULLARD’s coating composition. MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
The limitations regarding the pigment and metal layer being “vapor-deposited” (see claim 2 at lines 1-2 and 4) are considered product-by-process claim language and are not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
18. Regarding claim 3, as applied to claim 2 above, BULLARD in view of HASHIZUME teaches a coating composition according to claim 2, wherein the metal layer has an average thickness overlapping with and thereby rendering obvious the claimed range of 5 to 100 nm (see HASHIZUME at paragraph 9, teaching a thickness of 0.1 to 5 μm, i.e., as low as 100 nm). As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
BULLARD and HASHIZUME fail to explicitly teach that the first and second protective layers each have an average thickness of 0.5 to 3 μm. However, HASHIZUME teaches that if the amount of the coating added (i.e., the thickness of the protective layers) is too small, sufficient effect cannot be achieved, and if the amount of coating added (i.e., thickness of the protective layers) is too large, metallic luster of the pigment is impaired (see HASHIZUME at paragraph 18). HASHIZUME therefore explicitly teaches that the amount of coating added and resulting thickness of the protective layers is a result-effective variable which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here 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)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, one of ordinary skill in the art would have found it obvious, through routine experimentation and optimization, to vary the thickness of the protective layers, including thicknesses of 0.5 to 3 μm, in order to achieve the desired effect of the coating without impairing the metallic luster as taught by HASHIZUME (see HASHIZUME at paragraph 18).
The limitation regarding the metal layer being “vapor-deposited” (see claim 3 at line 3) is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
19. Regarding claim 4, as applied to claim 2 above, BULLARD in view of HASHIZUME teaches a coating composition according to claim 2, wherein the first and second protective layers each comprise a silicone component (see HASHIZUME at paragraphs 17-19, teaching that the coating forming the layers on the metal pigment comprises a silane coupling agent).
20. Regarding claim 5, as applied to claim 2 above, BULLARD in view of HASHIZUME teaches a coating composition according to claim 2, wherein the metal layer comprises aluminum (see BULLARD at paragraph [0082]; see HASHIZUME at paragraphs 9 and 31).
The limitation regarding the metal layer being “vapor-deposited” (see claim 5 at line 2) is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
21. Regarding claim 6, as applied to claim 1 above, BULLARD teaches a coating composition according to claim 1. However, BULLARD fails to explicitly teach that an amount of the flake-shaped metal pigment comprised in the coating composition is in a range of 0.1 to 30 parts by mass based on 100 parts by mass of a resin solid content of the coating-film-forming resin.
HASHIZUME teaches a color metallic flake pigment with excellent metallic luster which is optimal for use in coating materials or incorporating a resin (see HASHIZUME at Abstract), wherein the pigment is used in an amount of 5 parts by weight pigment to 100 parts by weight varnish for automobile repair (i.e., resin) (see HASHIZUME at paragraph 38).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the coating composition of BULLARD by using the flake-shaped metal (e.g., aluminum) pigment in an amount of 5 parts by weight to 100 parts by weight of the resin, as taught by HASHIZUME (see HASHIZUME at paragraph 38). One of ordinary skill in the art could have used the pigment in this amount with a reasonable expectation of success, yielding the predictable result of providing a suitable amount of flake-shaped metal (e.g., aluminum) pigment to provide excellent metallic luster for the coating composition (see HASHIZUME at Abstract).
The limitation regarding the pigment being “vapor-deposited” (see claim 6 at line 2) is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(a) for claims 1-6 as set forth above.
Applicant argues:
“Paragraph [0131] of BULLARD lists Si values at an incident angle of 45° and a specular reflection angle of 15°, which range from about 2.0 to 5.0. Paragraph [0132] lists Si values at an incident angle of 45° and a diffuse reflection angle of 45°, which range from about 1 to 3. Therefore, the range of claim 1 of the present application “a sparkle intensity (Si) of 20 or more and 100 or less at an incident angle of 45°” is not disclosed in BULLARD” (see Remarks at pg. 4).
“paragraph [0138] of BULLARD lists G values at an incident angle of 45°, which range about 3.0 to 5.0. Therefore, the range of claim 1 of the present application "a graininess value (G value) of more than 10 and 25 or less at an incident angle of 45°" is not disclosed in BULLARD… The design targeted by the present application has high sparkle… sparkle area is high, and the entire coating film gives an impression of sparkling, while sparkling-impression-inducing graininess is also strongly recognized visually… the above-mentioned effects of the present application cannot be obtained with the numerical range of G value disclosed in BULLARD: about 3.0 to 5.0” (see Remarks at pg. 5).
“BULLARD does not clearly state the meaning of the G value… Applicant respectfully submits that the G value of BULLARD is attributable to at least the substrate” (see Remarks at pg. 5).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
Regarding Applicant’s argument that BULLARD does not teach the claimed ranges of sparkle intensity and graininess, the Examiner respectfully disagrees. Applicant asserts that BULLARD lists Si values at an incident angle of 45° ranging from 2.0 to 5.0, or 1 to 3, and lists G values at an incident angle of 45° which range from about 3.0 to 5.0; however, as set forth in the rejection above, BULLARD discloses ranges of Si at an incident angle of 45° of at least about 2.0 or at least about 5.0 or of at least about 1 or at least about 3 (not a range of 2.0 to 5.0 or 1 to 3), and ranges of graininess at an incident angle of 45° of at least about 3.0 or at least about 5.0 (not a range of 3.0 to 5.0), e.g., a graininess of up to 20 (see BULLARD at paragraphs [0118]-[0120] , [00131]-[00132] and [00138]). These ranges overlap with and thereby render obvious the claimed ranges; a range of, e.g., at least about 5.0 encompasses the range of 20 or more and 100 or less; a range of, e.g., at least about 5.0 encompasses the range of more than 10 and 25 or less. As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding Applicant’s argument that BULLARD does not state the meaning of the G value and that the G value is attributable to the substrate, the Examiner respectfully disagrees. BULLARD explicitly states that the coating provides the sparkle intensity, sparkle area and graininess values (see BULLARD at, e.g., paragraphs [0118]-[0119] and claims 1 and 13).
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731