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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tomizaki et al. (US 2008/0108743 A1, “Tomizaki”) in view of Ono (US 2021/0162724 A1), Fujita (JP 2017-082197 A), and Adachi et al. (US 2010/0221442 A1, “Adachi”). The disclosure of Fujita is based off a machine translation of the reference included with the action mailed 24 September 2025.
With respect to claim 1, Tomizaki discloses a base coating composition ([0001], [0012]). The base coating contains a hydroxy-containing resin (A) ([0031]) that is a hydroxy-containing acrylic resin (A1) ([0033]). The hydroxy-containing acrylic resin (A1) is obtained by polymerizing a polymerizable unsaturated monomer component comprising a hydroxy-containing polymerizable unsaturated monomer (a) ([0036]) that contains at least one hydroxy group, such as ε-caprolactone-modified products of monoesterified products of (meth)acrylic acid with a dihydric alcohol having 2-8 carbon atoms ([0037]). The hydroxy-containing acrylic resin (A1) has a weight average molecular weight of about 3,000 to about 300,000 ([0063]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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 hydroxy-containing acrylic resin (A1) has a hydroxyl value of about 0.1-200 mg KOH/g ([0062]), which overlaps the presently claimed range. Therefore, the hydroxy-containing acrylic resin (A1) corresponds to the claimed hydroxy group-containing acrylic resin (B) and the hydroxy-containing polymerizable unsaturated monomer (a) corresponds to the claimed hydroxy group-containing monomer (b). The coating further contains an scaly effect pigment (E) ([0154], [0156]), and therefore corresponds to the claimed pigment (A). The coating further contains a curing agent having crosslinkable functional groups, including blocked polyisocyanate compounds ([0146-0147]), corresponding to the claimed blocked isocyanate compound (C). The coating additionally contains modifier resins, including acrylic resins ([0144]), corresponding to the claimed acrylic resin (E). The solids content of the coating composition is about 5-40 mass% ([0169]), overlapping the presently claimed range.
However, Tomizaki does not disclose the use of crosslinked polymer fine particles (D) that are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin (B), nor wherein the hydroxy group-containing acrylic resin has a glass transition temperature of 10-40°C, nor wherein the acrylic resin (E) has a weight average molecular weight of 3,000-7,500.
Ono teaches a (meth)acrylic resin containing a hydroxyl group (A1) ([0016]) including those containing lactone-modified product ([0052]) and a hydroxyl value of 50-150 mg KOH/g ([0019]). The hydroxyl group containing acrylic resin has a glass transition temperature of -20-100°C in order to provide processability and chemical resistance ([0103]).
Tomizaki and Ono are analogous inventions in the field of coating compositions for vehicles made from hydroxy group containing acrylic resins.
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 hydroxy group containing acrylic resin of Tomizaki to have a glass transition temperature of -20-100°C, including values presently claimed, as taught by Ono in order to provide a hydroxy group containing acrylic resin having processability and chemical resistance (Ono, [0103]).
However, Tomizaki in view of Ono does not disclose the use of crosslinked polymer fine particles (D) that are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin (B), nor wherein the acrylic resin (E) has a weight average molecular weight of 3,000-7,500.
Fujita teaches an undercoat paint composition (i.e., a base coating) ([0012]) containing a lactone-modified acrylic polyol (A) and a lactone-unmodified acrylic polyol (B) ([0014]). The lactone-unmodified acrylic polyol (B) does not contain a lactone-modified hydroxyalkyl (meth)acrylate and is a copolymer of monomers containing a hydroxyl group-containing (meth)acryloyl monomer ([0037]) and has a weight average molecular weight of 5,000-80,000 in order to provide good finished appearance ([0039]).
Tomizaki in view of Ono and Fujita are analogous inventions in the field of base coatings used with automobiles and comprising lactone-modified acrylic resins and additional acrylic resins.
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 acrylic resin modifier resin of Tomizaki in view of Ono to be the lactone-unmodified acrylic polyol (B) having a weight average molecular weight of 5,000-80,000, including values presently claimed, as taught by Fujita in order to provide a base coating have good finished appearance (Fujita, [0039]).
However, Tomizaki in view of Ono and Fujita does not disclose the use of crosslinked polymer fine particles (D) that are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin (B).
Adachi teaches an aqueous intermediate coating composition comprising a resin containing hydroxyl and carboxyl groups, a blocked polyisocyanate curing agent, pigment, and crosslinked resin particles ([0010-0013], [0025]). The resin containing hydroxyl and carboxyl groups is an acrylic resin made from caprolactone modified hydroxyethyl (meth)acrylate ([0057]). The crosslinked resin particles are crosslinked acrylic resin fine particles that improve the sag resistance of the coating ([0101-0102], [0105]). The particles are insoluble in water ([0101]); the coating is aqueous ([0010]) and therefore the particles are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin.
Tomizaki in view of Ono and Fujita and Adachi are analogous inventions in the field of automotive coatings made from lactone-modified hydroxy-functional acrylates, blocked isocyanate curing agents, and pigments.
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 base coating of Tomizaki in view of Ono and Fujita to contain the crosslinked fine resin particles taught by Adachi in order to provide a coating having improved sag resistance (Adachi, [0101-0102], [0105]).
Regarding when, using a cone-place viscometer, a viscosity V1 is measured at a shear rate of 0.1/sec at 23°C, then the shear is changed from 0.1/sec to 25,000/sec and applied for 30 seconds, and subsequently a viscosity V2 is measured after the shear is returned to 0.1/sec and then applied for one second, a viscosity recovery rate V2/V1 is 90% or more, while there may be no explicit disclosure from Tomizaki in view of Ono, Fujita, and Adachi regarding the coating having this property, given that Tomizaki in view of Ono, Fujita, and Adachi disclose an otherwise identical coating made from otherwise identical materials as that presently claimed, it is clear the coating of Tomizaki in view of Ono, Fujita, and Adachi would necessarily inherently have this property, absent evidence to the contrary.
With respect to claim 2, Tomizaki discloses the amount of hydroxy-containing polymerizable unsaturated monomer (a) (corresponding to the claimed monomer (b) as set forth above) used to make the hydroxy-containing acrylic resin (A1) (corresponding to the claimed resin (B) as set forth above) is about 1-50 mass% based on the total mass of the monomer (a) and the other polymerizable monomer(s) copolymerizable with the monomer (a) ([0060]), overlapping the presently claimed range.
With respect to claim 3, Tomizaki discloses applying the base coating to a substrate and then covering the base coating with a clear coating ([0188], [0190-0191]).
With respect to claim 4, Tomizaki discloses applying the base coating to a substrate and then covering the base coating with a clear coating ([0188], [0190-0193]).
With respect to claim 5, Tomizaki discloses applying an intermediate coating to a substrate, applying the base coating on the intermediate layer, and applying a clear coat layer on the base coating ([0198], [0200-0204]).
Response to Arguments
Due to the amendments to claim 1, the objections to claim 1 are withdrawn.
Due to the amendments to claims 4-5, the 35 U.S.C. 112(b) rejections of claims 4-5 are withdrawn.
Applicant's arguments filed 22 December 2025 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues Tomizaki does not disclose the use of crosslinked polymer fine particles (D) that are insoluble and stably dispersed in a solution of the claimed hydroxy group-containing acrylic resin (B), wherein the hydroxy group-containing acrylic resin has a glass transition temperature of 10-40°C, nor wherein the acrylic resin (E) has a weight average molecular weight of 3,000 to 7,500, and that the claimed viscosity recovery rate V2/V1 is not disclosed by the cited references, and that the Office’s position of inherency is incorrect. Applicant points to Comparative Example 12 and argues that it is the same composition as Example 1, except Comparative Example 12 does not include crosslinked polymer fine particles (D). Applicant argues that Comparative Example 12 did not have a high solid content, whereas Example 1 did have a high solid content, such that the technical effects of adhesion, water resistance, and high design property of less unevenness of the coated film is not easily obtained and that the claimed viscosity recovery rate V2/V1 is not inherently present in Tomizaki’s composition. Applicant further argues that Adachi discloses an aqueous intermediate coating composition comprising a resin containing hydroxyl and carboxyl groups, a blocked isocyanate curing agent, pigment, and crosslinked resin particles, and that the resin containing hydroxyl and carboxyl groups can be an acrylic resin, but the acrylic resin should have carboxylic groups; Applicant argues the acrylic resin (B) presently claimed does not contain carboxyl groups. Applicant further argues Adachi does not disclose the claimed viscosity recovery rate V2/V1. Applicant argues Adachi cannot be combined with Tomizaki, Ono, and Fujita to arrive at the base coating of claim 1. The examiner disagrees for the following reasons.
In response to Applicant’s argument that Tomizaki does not disclose the claimed crosslinked fine particles (D), wherein the hydroxy group-containing acrylic resin has a glass transition temperature of 10-40°C, or wherein the acrylic resin (E) has a weight average molecular weight of 3,000 to 7,500, the examiner agrees. However, Tomizaki was not used to meet this limitations. Rather, Ono, Fujita, and Adachi were used. As set forth above, Ono teaches a (meth)acrylic resin containing a hydroxyl group (A1) ([0016]) including those containing lactone-modified product ([0052]) and a hydroxyl value of 50-150 mg KOH/g ([0019]). The hydroxyl group containing acrylic resin has a glass transition temperature of -20-100°C in order to provide processability and chemical resistance ([0103]). Tomizaki and Ono are analogous inventions in the field of coating compositions for vehicles made from hydroxy group containing acrylic resins. Therefore, 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 hydroxy group containing acrylic resin of Tomizaki to have a glass transition temperature of -20-100°C, including values presently claimed, as taught by Ono in order to provide a hydroxy group containing acrylic resin having processability and chemical resistance (Ono, [0103]). However, Tomizaki in view of Ono does not disclose the use of crosslinked polymer fine particles (D) that are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin (B), nor wherein the acrylic resin (E) has a weight average molecular weight of 3,000-7,500. Fujita teaches an undercoat paint composition (i.e., a base coating) ([0012]) containing a lactone-modified acrylic polyol (A) and a lactone-unmodified acrylic polyol (B) ([0014]). The lactone-unmodified acrylic polyol (B) does not contain a lactone-modified hydroxyalkyl (meth)acrylate and is a copolymer of monomers containing a hydroxyl group-containing (meth)acryloyl monomer ([0037]) and has a weight average molecular weight of 5,000-80,000 in order to provide good finished appearance ([0039]). Tomizaki in view of Ono and Fujita are analogous inventions in the field of base coatings used with automobiles and comprising lactone-modified acrylic resins and additional acrylic resins. 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 acrylic resin modifier resin of Tomizaki in view of Ono to be the lactone-unmodified acrylic polyol (B) having a weight average molecular weight of 5,000-80,000, including values presently claimed, as taught by Fujita in order to provide a base coating have good finished appearance (Fujita, [0039]). However, Tomizaki in view of Ono and Fujita does not disclose the use of crosslinked polymer fine particles (D) that are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin (B). Adachi teaches an aqueous intermediate coating composition comprising a resin containing hydroxyl and carboxyl groups, a blocked polyisocyanate curing agent, pigment, and crosslinked resin particles ([0010-0013], [0025]). The resin containing hydroxyl and carboxyl groups is an acrylic resin made from caprolactone modified hydroxyethyl (meth)acrylate ([0057]). The crosslinked resin particles are crosslinked acrylic resin fine particles that improve the sag resistance of the coating ([0101-0102], [0105]). The particles are insoluble in water ([0101]); the coating is aqueous ([0010]) and therefore the particles are insoluble and stably dispersed in a solution of the hydroxy group-containing acrylic resin. Tomizaki in view of Ono and Fujita and Adachi are analogous inventions in the field of automotive coatings made from lactone-modified hydroxy-functional acrylates, blocked isocyanate curing agents, and pigments. 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 base coating of Tomizaki in view of Ono and Fujita to contain the crosslinked fine resin particles taught by Adachi in order to provide a coating having improved sag resistance (Adachi, [0101-0102], [0105]). Thus, Tomizaki in view of Ono, Fujita, and Adachi satisfy the limitations of claim 1.
In response to Applicant’s argument that the Office’s position of inherency is incorrect because Tomizaki does not disclose an identical composition, this is not found persuasive. The examiner agrees that Tomizaki alone does not inherently possess the claimed property of the viscosity recovery rate V2/V1. However, Tomizaki alone was not used to meet this limitation. Rather, the Office’s position of inherency is based off the combination of Tomizaki in view of Ono, Fujita, and Adachi as set forth above. While there may be no explicit disclosure from Tomizaki in view of Ono, Fujita, and Adachi regarding the coating having a viscosity recovery rate V2/V1 is 90% or more, given that Tomizaki in view of Ono, Fujita, and Adachi disclose an otherwise identical coating made from otherwise identical materials as that presently claimed as set forth in the above rejection, it is clear the coating of Tomizaki in view of Ono, Fujita, and Adachi would necessarily inherently have this property, absent evidence to the contrary. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
In response to Applicant’s argument that the data found in Example 1 compared to Comparative Example 12 demonstrates the technical effects of adhesion, water resistance, and high design property of less unevenness of the coated film is not easily obtained, this is not found persuasive. The examiner acknowledges that Comparative Example 12 lacks the claimed crosslinked polymer fine particles. However, the cited references provide reasoning and motivation for the addition of the crosslinked polymer fine particles, which would provide predictable results. Adachi teaches the use of crosslinked resin particles that are crosslinked acrylic resin fine particles that improve the sag resistance of the coating (Adachi, [0101-0102], [0105]). Therefore, the addition of the crosslinked acrylic resin fine particles taught by Adachi to the coating of Tomizaki in view of Ono and Fujita would provide predictable results being an coating that has improved sag resistance. It is noted that “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation.” In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990); In re Tomlinson, 150 USPQ 623 (CCPA 1966). Additionally, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Additionally, if Applicant intends to argue that the data found in the inventive examples demonstrates unexpectedly superior results, this argument is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the inventive examples use specific hydroxy group-containing acrylic resin (B) present in an amount of 55 parts (Examples 1-3 and 5) or 45 parts (Example 4) (instant specification, page 45, Table 3), whereas the present claims are broadly drawn to a broader hydroxy group-containing acrylic resin (B) present in any amount. Specifically, Example 1 uses resin B-1, Examples 2 and 5 use resin B-2, and Examples 3-4 use resin B-3 (instant specification, page 45, Table 3). Resin B-1 has a hydroxyl value of 30 mg KOH/g, a glass transition temperature of 20°C, a weight average molecular weight of 14,500, and is made from 13.3 parts lactone-modified 2-hydroxyethyl methacrylate, 18.1 parts methyl methacrylate, 53.1 parts 2-ethylhexyl methacrylate, 15 parts styrene, and 0.5 parts methacrylic acid (instant specification, page 37, Table 1). Resin B-2 has a hydroxyl value of 50 mg KOH/g, a glass transition temperature of 25°C, a weight average molecular weight of 10,500, and is made from 20 parts lactone-modified 2-hydroxyethyl methacrylate, 1.2 parts 2-hydroxyethyl methacrylate, 22.4 parts methyl methacrylate, 41.1 parts 2-ethylhexyl methacrylate, 15 parts styrene, and 0.3 parts methacrylic acid (instant specification, page 37, Table 1). Resin B-3 has a hydroxyl value of 20 mg KOH/g, a glass transition temperature of 10°C, a weight average molecular weight of 18,900, and is made from 8.9 parts lactone-modified 2-hydroxyethyl methacrylate, 8 parts methyl methacrylate, 67.8 parts 2-ethylhexyl methacrylate, 15 parts styrene, and 0.3 parts methacrylic acid (instant specification, page 37, Table 1). However, the present claims are broadly drawn to any hydroxy group-containing acrylic resin (B) in any amount, where the resin (B) is a polymer of one or more monomers including a hydroxy group-containing monomer (b) that is a lactone-modified product of a monoester compound of (meth)acrylic acid and a dihydric alcohol having 2-8 carbon atoms, a weight average molecular weight of 10,000-20,000, a glass transition temperature of 10°C-40°C, and a hydroxyl value of 10-50 mg KOH/g. There is no data provided at the lower or upper ends of the claimed weight average molecular weight, nor any data provided at the upper end of the claimed glass transition temperature, nor any data provided at the lower endpoint of the claimed hydroxyl value.
Secondly, the data relates to a specific blocked isocyanate compound (C) present in specific amounts, whereas the present claims are broadly drawn to any blocked isocyanate compound (C) present in any amount. Specifically, the blocked isocyanate compound (C) is DURANATE MF-K60B from Asahi Kasei (instant specification, page 47, [0113]) present in an amount of 15 parts (Examples 1-3 and 5) or 20 parts (Example 4) (instant specification, page 45, Table 3). However, the present claims are broadly drawn to any blocked isocyanate compound (C) in any amount.
Thirdly, the data relates to specific crosslinked polymer fine particles in specific amounts, whereas the present claims are broadly drawn to any crosslinked polymer fine particles. Specifically, the data relates to 20 parts crosslinked polymer fine particles D-1 (Example 1), 20 parts crosslinked polymer fine particles D-2 (Examples 2-3), 15 parts crosslinked polymer fine particles D-2 (Example 4), or 30 parts crosslinked polymer fine particles D-2 (Example 5) (instant specification, page 45, Table 3). The crosslinked polymer fine particles D-1 and D-2 are specific compounds made by specific processes (instant specification, pages 39-40, [0099-0100]). However, the present claims are broadly drawn to any crosslinked polymer fine particles (D) present in any amount.
Fourthly, the data relates to a specific acrylic resin (E) present in specific amounts, whereas the present claims are broadly drawn to any acrylic resin (E) having a weight average molecular weight of 3,000-7,500 present in any amount. Specifically, the data relates to an acrylic resin (E-1) made from 16.6 parts 2-hydroxyethyl acrylate, 48.6 parts 2-ethylhexyl acrylate, 33.6 parts methyl methacrylate, 1.2 parts acrylic acid, 67 parts solvent, 10 parts t-butyl peroxide initiator, and 0.2 parts 2-ethylhexanate initiator, and having a weight average molecular weight of 4,500 (instant specification, page 38, Table 2) that is present in an amount of 30 parts (Examples 1-3 and 5) or 35 parts (Example 4) (instant specification, page 45, Table 3). However, the present claims are broadly drawn to any acrylic resin (E) having a weight average molecular weight of 3,000-7,500 present in any amount. There is no data provided at the upper or lower endpoints of the weight average molecular weight.
Lastly, the data relates to a specific pigment (A) in specific amounts, whereas the present claims are broadly drawn to any pigment (A) that is any coloring pigment or scaly pigment and is present in any amount. Specifically, the data relates to a specific scaly aluminum pigment ALPASTE 07-0674 from Toyo Aluminium K.K. (instant specification, page 47, [0113]) having a pigment concentration PWV of 15% (instant specification, page 45, Table 3). However, the present claims are broadly drawn to any pigment (A) that is any coloring pigment or any scaly pigment that is present in any amount.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to Applicant’s argument that Adachi discloses an aqueous intermediate coating composition comprising a resin containing hydroxyl and carboxyl groups, whereas the acrylic resin (B) presently claimed does not contain carboxyl groups, this is not found persuasive. Nothing in the present claims precludes the hydroxy group-containing acrylic resin (B) from containing carboxyl groups, and thus even if Adachi requires its acrylic resin to contain both hydroxyl and carboxyl groups, this would not be excluded from the present claims.
In response to Applicant’s argument that Adachi does not disclose the claimed viscosity recovery rate V2/V1, this is not found persuasive. The examiner agrees that Adachi alone does not disclose the claimed viscosity recovery rate V2/V1. However, Adachi alone is not being used to meet this limitation. Rather, as set forth above, the combination of Tomizaki in view of Ono, Fujita, and Adachi inherently meets this limitation. Further, in response to Applicant’s argument that Adachi discloses additional components, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to Applicant’s argument that Adachi cannot be combined with Tomizaki, Ono, and Fujita to arrive at the base coating of claim 1, this is not found persuasive. It is unclear why Applicant argues Adachi cannot be combined with Tomizaki, Ono, and Fujita. Applicant has provided no evidence that the combination of Adachi with Tomizaki, Ono, and Fujita would be inoperable or unsuitable for its intended use. 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 arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787