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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wissing et al. (US 2018/0327632 A1, “Wissing”).
With respect to claims 11, 15, and 21, Wissing discloses a multilayer coating of a substrate ([0002]) where the substrate is coated with a surfacer layer ([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 the surface layer is highly filled (i.e., high amount of pigment), it is considered a putty layer. Wissing further discloses the surfacer layer is flashed off in order to evaporate any solvent ([0026], [0093]); thus, the coating contains no liquid and has a solids content of 100%. The surfacer layer is subsequently coated with a top coat having a base coat and a clear coat ([0095], [0097]). The clear coat comprises at least one polyaspartic acid ester ([0097]) and is dried ([0099]) (i.e., has no liquid and thus a solids content of 100%).
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.
Claims 12 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wissing et al. (US 2018/0327632 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 the action mailed 01 October 2025.
With respect to claim 12, while Wissing discloses applying the surfacer layer by spraying ([0085], [0091]), 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.
With respect to claims 22-23, Wissing discloses applying the surfacer coating onto the substrates ([0091]) where the substrates include metal ([0035]). The metal substrate is optionally pretreated ([0103]); when there is no pretreatment (since the pretreatment is optional), there is no primer layer, and thus the putty is applied directly to a substrate surface.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wissing et al. (US 2018/0327632 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 ([0084]), 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).
Response to Arguments
Due to the amendments to the claims, the 35 U.S.C. 103 rejections of claims 11, 13, and 15 over Wissing (US 2016/0160356 A1, “Wissing ‘356”); the 35 U.S.C. 103 rejection of claim 12 over Wissing ‘356 in view of Nakamura; and the 35 U.S.C. 103 rejection of claim 14 over Wissing ‘356 in view of Schafheutle set forth in the action mailed 01 October 2025 are withdrawn. This is because Wissing ‘356 does not disclose wherein the putty has a solids content of 70-100% where the solids content is a percentage by mass of the at least one putty layer which remains as a residue after evaporation. However, claims 11-15 and 21-23 are newly rejected under 35 U.S.C. 103 as set forth above.
Applicant's arguments filed 30 January 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the prior art fails to disclose the putty has a solids content of 70-100% after evaporation as recited in amended claim 11. Applicant further argues “putty” does not appear in the prior art. Applicant further argues the prior art discloses the use of a multilayer coating, which Applicant contends are in the background of the present specification. Applicant also argues the prior art discloses coatings having a thickness of 25-400 µm before sanding and 60-250 µm after sanding (Wissing ‘356, [0079]), whereas the present invention has a thickness of 1,200 µm; Applicant points to [0014] of the present specification for support. Applicant further argues the prior art pretreats the metal substrates before applying the surfacer coating and points to the Examples of Wissing ‘356 for support, and argues the presently claimed invention is drawn to coatings able to be coated directed to the substrate without a primer layer. Applicant further argues neither Nakamura nor Schafheutle remedy the alleged deficiencies of Wissing ‘356. The examiner respectfully disagrees.
In response to Applicant’s argument that the prior art fails to disclose the putty has a solids content of 70-100% after evaporation, this argument is not found persuasive. Newly cited reference Wissing discloses the coating is subjected to flash-off (i.e., evaporation) to evaporate water and any solvents ([0026], [0093]); thus, the coating contains no liquid and has a solids content of 100%.
In response to Applicant’s argument that the prior art does not name its coating a “putty”, this is not found persuasive. The examiner acknowledges newly cited reference Wissing does not explicitly recite the word “putty”, but Wissing otherwise discloses an identical coating that is highly filled and made from identical components as that presently claimed. Therefore, the coating would be a “putty”. Applicant has provided no evidence demonstrating the coating of Wissing is not a putty. It is noted 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).
In response to Applicant’s argument that multilayer coatings are described in the background of the present specification as coatings to be improved on, this is not found persuasive. Whether the reference discloses a multilayer coating described in the background is irrelevant because the fact remains that Wissing renders the amended claim 11 obvious for the reasons set forth above.
In response to Applicant’s argument that the coatings of the prior art are thinner than the coatings of the present invention, this is not found persuasive. The features upon which applicant relies (i.e., thickness) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant’s argument that the prior art requires pretreatment and Applicant’s reliance on the examples of Wissing ‘356, this is not found persuasive. It is first noted that the claims are newly rejected under 35 U.S.C. 103 as being unpatentable over Wissing (US 2018/0327632 A1) as set forth above. Wissing discloses applying the surfacer coating onto the substrates ([0091]) where the substrates include metal ([0035]). The metal substrate is optionally pretreated ([0103]); when there is no pretreatment (since the pretreatment is optional), there is no primer layer, and thus the putty is applied directly to a substrate surface.
In response to Applicant’s argument that neither Nakamura nor Schafheutle remedy the alleged deficiencies of Wissing detailed above, this is not found persuasive. Newly cited reference Wissing does not contain the alleged deficiencies or the reasons set forth above, and thus it is not required that Nakamura or Schafheutle address them.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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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