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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 11-15, in the reply filed on 06 August 2025 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06 August 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS’s) filed 25 May 2023 and 30 June 2025 have been considered by the examiner. An explanation of any reference not considered by the examiner and struck through is found below.
In the IDS filed 25 May 2023, the examiner notes that Applicant lists DE 10 2015 105 983 A1 as an equivalent of US 2018/0100069 A1. However, because Applicant did not provide a copy of DE 10 2015 105 983 A1, the reference has not been considered, but US 2018/0100069 A1 has been considered.
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.
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 11, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Wissing et al. (US 2016/0160356 A1, “Wissing”).
With respect to claims 11 and 15, Wissing discloses a multilayer coating of a substrate ([0002]) where the substrate is coated with a surfacer layer and a topcoat ([0011-0017]). The surfacer layer comprises at least one polyaspartic acid ester, at least one polyisocyanate cross-linking agent, and at least one pigment ([0036]). The weight ratio of pigment to binder is 4:1 to 1:2 and the pigment can be present in an amount as high as 65% pigment volume concentration ([0083]). Given that the surface layer is highly filled (i.e., high amount of pigment), it is considered a putty layer. The top coat layer includes a clear coat layer ([0095]) made from at least one polyaspartic acid ester ([0097]).
In light of the overlap between the claimed coating system and that disclosed by Wissing, it would have been obvious to one of ordinary skill in the art to use a coating system that is both disclosed by Wissing and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
With respect to claim 13, while there may be no explicit disclosure from Wissing regarding the coating (i.e., putty) having a running limit of 200-1,200 µm, given that Wissing discloses an otherwise identical coating (i.e., putty) made from otherwise identical components as that presently claimed, it is clear the coating (i.e., putty) of Wissing would necessarily inherently have a running limit of 200-1,200 µm, absent evidence to the contrary.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wissing et al. (US 2016/0160356 A1, “Wissing”) as applied to claim 11 above, and further in view of Nakamura et al. (JP H11-166139 A, “Nakamura”). The disclosure of Nakamura is based off a machine translation of the reference included with this action.
With respect to claim 12, while Wissing discloses applying the surfacer layer by spraying, Wissing does not disclose the structural viscosity of the surfacer (i.e., putty) layer.
Nakamura teaches that for spray painting, it is important to maintain a low viscosity during spraying for good atomization, but that viscosity must increase to a sufficient level to prevent the paint from dripping during application such that the paint exhibits pseudoplastic flow (i.e., viscosity decreases as shear rate increases) ([0002]). Nakamura teaches adding viscosity control agents to achieve the desired pseudoplastic flow ([0002]).
Wissing and Nakamura are analogous inventions in the field of coatings used for automotive applications that are applied by spraying.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the pseudoplastic flow of the surfacer layer of Wissing to have a viscosity that decreases as shear rate increases (i.e., a ratio of viscosity at low shear/viscosity at high shear > 1), including having a structural viscosity as presently claimed, in order to provide a surfacer layer that can effectively be applied by spraying but that will not drip during application.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wissing et al. (US 2016/0160356 A1, “Wissing”) as applied to claim 11 above, and further in view of Schafheutle et al. (US 2003/0096120 A1, “Schafheutle”).
With respect to claim 14, while Wissing discloses the surfacer coating contains additives, Wissing does not disclose wherein the additive is at least one corrosion inhibitor.
Schafheutle teaches an automotive surfacer coating (Abstract, [0001]). The surfacer includes customary additives including corrosion inhibitors ([0080]).
Wissing and Schafheutle are analogous inventions in the field of surfacing coatings for automobiles containing additives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating of Wissing to contain a corrosion inhibitor as taught by Schafheutle in order to prevent corrosion. 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). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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