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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ogura et al. (US 2005/0165159).
Regarding claim 1
Ogura discloses a water dispersed resin composition comprising a water dispersible isocyanate compound, a neutralizing base, and an acrylic resin that includes a carboxy group containing monomer and a hydroxy group containing monomer (abstract).
Ogura discloses that the composition has 55 wt % solids, and that the acid value of the acrylic resin is preferably 50 mg mgKOH/g (para 0084).
The acrylic resin composition having an acid value of 50 mgKOH/g, in the broadest reasonable interpretation is considered to be a mixture of an acrylic having an acid value of 0-30 mgKOH/g and an acrylic acid having an acid value of 60-120 mgKOH/g. In the alternative, it would have been prima facie obvious to mix two acrylic acid resins with different acid values to arrive at an acrylic resin having an acid value of 50 mgKOH/g, as a composition obtained by mixing these components cannot be distinguished from a composition made with a single resin type.
Regarding claim 6
Ogura discloses a coating method and hardening method using the composition, and that the composition can be a solid color, metallic base (i.e., brilliant coating), and clear top coating (i.e., high-solid-content coating) for finishing automobiles, which would necessarily imply a multilayer coating. Ogura also teaches that the hardening method (i.e., curing) can be heat hardening (paras 0110-0112).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ogura et al. (US 2005/0165159), as applied to claims 1 and 6 above.
Regarding claims 2-3
Ogura discloses that the molecular weight of the acrylic resin is preferably from 3,000 to 30,000 (para 0090). As the molecular weight of the reference and the instant invention overlap the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 4
The ratio of the two different acrylic acid resins would have been determined through routine experimentation in the art in an effort to optimize the performance of the composition taking into account the desired acid value of the acrylic resin mixture as Ogura teaches that if the acid value is too high the solubility is so high that good durability may not be obtained, and if it is too low then the dispersion stability of the composition is decreased to result in impossibility of producing a stable dispersion (para 0084).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ogura et al. (US 2005/0165159), as applied to claims 1-4 and 6 above, in view of Kai et al. (JP-2012096213-A).
Regarding claim 5
Although, Ogura does not disclose the inclusion of a hydroxyl group-containing polyester, Ogura does disclose or make obvious the other limitations of the claim. However, Kai discloses similar coating compositions and teaches that as the hydroxyl-containing resin that a hydroxyl-containing acrylic resin or a hydroxyl-containing polyester resin may be used, alone or in combination. Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Ogura by including a hydroxyl-containing polyester resin to the composition, with a reasonable expectation of success in forming a useful coating composition, as suggested by Kai.
It would be further obvious to combine both the acrylic and polyester resins
because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734