DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 06/23/2023 is considered and signed IDS form is attached.
Claim Objections
Claim 2 is objected to because of the following informalities: Claim 2, line 2 recites “aluminum flakes”, which should be “aluminum microflakes”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: Claim 2, line 2 recites “NBR-U polymer layer”, which should be “NBR-U polymer binder”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: Claim 3, line 2 recites “aluminum flakes”, which should be “aluminum microflakes”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: Claim 3, line 2 recites “NBR-U polymer layer”, which should be “NBR-U polymer binder”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: Claim 4, line 2 recites “aluminum flakes”, which should be “aluminum microflakes”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: Claim 4, line 2 recites “NBR-U polymer layer”, which should be “NBR-U polymer binder”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Claim 5, line 2 recites “NBR-U polymer layer”, which should be “NBR-U polymer binder”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Claim 6, line 2 recites “NBR-U polymer layer”, which should be “NBR-U polymer binder”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Claim 7, line 2 recites “NBR-U polymer layer”, which should be “NBR-U polymer binder”. Appropriate correction is required.
Claims 2-12 are objected to because of the following informalities: Each of claims 2-12, lines 1-2 recite “The bilayer coating of claim 1 wherein”, which should be “The bilayer coating of claim 1, wherein”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites “substantially equal”. The scope of the claim is confusing given that it is not clear what is meant by “substantially equal”. It is not clear what is encompassed by “substantially equal” or how close the values have to be to be considered “substantially equal”.
Claim 7 recites “substantially equal”. The scope of the claim is confusing given that it is not clear what is meant by “substantially equal”. It is not clear what is encompassed by “substantially equal” or how close the values have to be to be considered “substantially equal”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Eibon et al. (US 2012/0107584 A1) in view of Harris et al. (US 2004/0180213 A1) and Pasatta (EP 3786206 A1).
Regarding claims 1-8, 11 and 12, Eibon et al. disclose a coating system (bilayer coating) comprising a first coating layer (top layer) and a second coating layer (bottom layer) deposited beneath the first coating layer (see paragraph 0008). The first coating layer is dark in appearance but substantially transparent to infrared radiation and the second coating reflects infrared radiation but exhibits a darkness appearance similar to the first coating layer (see paragraph 0001). The coatings can comprise any thermosetting composition known in the art (see paragraph 0030). The thermosetting composition includes a thermosetting film-forming resin and a crosslinking agent (see paragraphs 0029-0031). The thermosetting film-forming resin has a functional group that are reactive with the crosslinking agent, wherein the functional group can include epoxide groups (see paragraph 0032). The coating composition can be automotive coating composition (see paragraph 0028).
The first coating layer (top layer) comprises a visibly absorbing infrared transparent pigment (pigment) such as iron oxide brown pigment, iron oxide red pigment, etc. (see paragraphs 0034, 0035). The amount of the pigment is 0.5 to 20 wt% based on the total solids weight of the composition (see paragraph 0039). The first coating layer comprises the thermosetting composition comprising a thermosetting film-forming resin having epoxide groups and a crosslinking agent as noted above.
The second coating layer (bottom layer) comprises thin flake metal infrared reflective pigments such as aluminum flakes (aluminum microflakes) (see paragraph 0043). The thin flake metal pigment has a thickness of 0.05 to 10 microns and a maximum width (lateral dimension) of 10 to 150 microns (see paragraph 0046). The amount of the thin flake metal pigment is 1 to 50 wt% based on the total solids weight of the coating composition (see paragraph 0049). The second coating layer comprises the thermosetting composition comprising a thermosetting film-forming resin having epoxide groups and a crosslinking agent as noted above.
While Eibon et al. disclose the first coating layer (top layer) comprising pigments such as iron oxide brown pigment or iron oxide red pigment, Eibon et al. do not disclose pigments are nanoparticle pigments. Eibon et al. do not disclose the first coating layer (top layer) and the second coating layer (bottom layer) comprises a Nitrile Butadiene Rubber-co-Urea (NBR-U) polymeric binder.
Harris et al. disclose a coating composition comprising a carrier having film-forming characteristics and a nanoparticle pigment of a UV light absorber (see Abstract and paragraphs 0032, 0035). The nanoparticle pigment can be red iron oxide (see paragraph 0030). The diameter of nanoparticle pigment is 5 to 100 nm (see paragraph 0119). The coating composition provides protection from exposure to ultraviolet (UV) light and visible light having wavelengths from less than 200 nm and upto 500 or 550 nm (see paragraph 0001). The red iron oxide nanoparticle pigment is identical to that utilized in the present invention (see page 8, line 10-14 of the present specification).
In light of motivation for using red iron oxide nanoparticle pigment having diameter of 5 to 100 nm disclosed by Harris et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use red iron oxide nanoparticle pigment having diameter of 5 to 100 nm as iron oxide red pigment in the first coating layer (top layer) of Eibon et al. in order to provide protection from exposure to ultraviolet (UV) light and visible light having wavelengths from less than 200 nm and upto 500 or 550 nm, and thereby arrive at the claimed invention.
Eibon et al. in view of Harris et al. do not disclose the first coating layer (top layer) and the second coating layer (bottom layer) comprises a Nitrile Butadiene Rubber-co-Urea (NBR-U) polymeric binder.
Pasatta disclose an epoxy formulation (thermosetting composition) comprising an epoxy resin, a curing agent and a toughener comprising a urea-terminated polybutadiene acrylonitrile copolymer (NBR-U polymer binder) (see page 13, claim 9). The curing agent is present in an amount of 2 to 8 parts by mass per 100 parts by mass of epoxy resin (see paragraph 0038). The urea-terminated polybutadiene acrylonitrile copolymer is present in an amount of 5 to 18 parts by mass per 100 parts of epoxy resin (see paragraph 0040). Accordingly, the amount of urea-terminated polybutadiene acrylonitrile copolymer in the epoxy formulation (thermosetting composition) is 4.7 to 14.3 wt% (4.7 = 5/107 x 100 and 14.3 = 18/126 x 100). The urea-terminated polybutadiene acrylonitrile copolymer is useful as both accelerator and toughener in the epoxy formulations (see paragraph 0009). The urea-terminated polybutadiene acrylonitrile copolymer increases the toughness of the epoxy formulation which can be evaluated by, for example, increase in T-peel strength, fracture toughness as well as notched and unnotched impact strength (see paragraph 0044). The epoxy formulations are useful in automotive industry (see paragraph 0043).
The urea-terminated polybutadiene acrylonitrile copolymer has urea at the terminal ends of the polymer or copolymer and do not include multiple urea linkages throughout the backbone of the polymer chain (see paragraph 0024). The urea-terminated polybutadiene acrylonitrile copolymer is prepared by reaction of amine terminated polybutadiene acrylonitrile copolymer (ATBN) with diisocyanate (see paragraph 0028). The urea-terminated polymer is identical to that utilized in the present invention (see page 16, lines 24-27 of the present specification). Accordingly, the urea-terminated polybutadiene acrylonitrile copolymer reads on a Nitrile Butadiene Rubber-co-Urea (NBR-U) polymer binder.
In light of motivation for using an epoxy formulation (thermosetting composition) disclosed by Pasatta as described above, it therefore would have been obvious to one of the ordinary skill in the art to use epoxy formulation (thermosetting composition) of Pasatta as the thermosetting composition in both the first coating layer (top layer) and the second coating layer (bottom layer) of Eibon et al. in view of Harris et al. in order to provide an increase in T-peel strength, fracture toughness as well as notched and unnotched impact strength of the first coating layer and the second coating layer, and thereby arrive at the claimed invention.
Accordingly, Eibon et al. in view of Harris et al. and Passatta disclose the first coating layer (top layer) comprises thermosetting composition comprising epoxy resin, curing agent, 4.7 to 14.3 wt% of NBR-U and 0.5 to 20 wt% of nanoparticle pigments. Therefore, the ratio of nanoparticle pigments to NBR-U is 0.04 to 4.26 (0.04 = 0.5/14.3 and 4.26 = 20/4.7). The mass ratio overlaps with that presently claimed. Given that the first coating layer (top layer) comprises nanoparticle pigments and NBR-U polymer binder identical to that presently claimed including mean diameter of nanoparticle pigments, amounts of nanoparticle pigments and NBR-U polymer binder, and mass ratio of nanoparticle pigments and NBR-U polymer binder that overlap with that presently claimed, within the overlapping ranges, it is clear that the first coating layer (top layer) necessarily inherently has a transmittance as presently claimed.
Accordingly, Eibon et al. in view of Harris et al. and Passatta disclose the second coating layer (bottom layer) comprises thermosetting composition comprising epoxy resin, curing agent, 4.7 to 14.3 wt% of NBR-U and 1 to 50 wt% of aluminum flakes. Therefore, the ratio of aluminum flakes to NBR-U is 0.07 to 10.6 (0.07 = 1/14.3 and 10.6 = 50/4.7). The mass ratio overlaps with that presently claimed. Given that the second coating layer (bottom layer) comprises aluminum microflakes and NBR-U polymer binder identical to that presently claimed including lateral size and thickness of aluminum microflakes, amounts of aluminum microflakes and NBR-U polymer binder, and mass ratio of aluminum microflakes and NBR-U polymer binder that overlap with that presently claimed, within the overlapping ranges, it is clear that the second coating layer (bottom layer) necessarily inherently has an emissivity and a reflectance as presently claimed.
Eibon et al. in view of Harris et al. and Pasatta do not disclose a bilayer coating for thermal management.
However, the recitation in the claims that the bilayer coating is “for thermal management” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Eibon et al. in view of Harris et al. and Pasatta et al. disclose the bilayer coating as presently claimed, it is clear that the bilayer coating of Eibon et al. in view of Harris et al. and Pasatta et al. would be capable of performing the intended use, i.e. for thermal management, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 9, Eibon et al. in view of Harris et al. and Pasatta disclose the bilayer coating as set forth above. Further, Eibon et al. disclose due to presence of thin flake metal pigment in the second coating layer (bottom layer), the second coating layer has the requisite hiding at low dry film thickness such as no more than 2 mils, i.e. 50.8 microns (see paragraph 0058). That is, the second coating layer can have thickness of no more than 2 mils, i.e. no more than 50.8 microns.
Regarding claim 10, Eibon et al. in view of Harris et al. and Pasatta disclose the bilayer coating as set forth above. Further, Harris et al. disclose a coating composition comprising a carrier having film-forming characteristics and a nanoparticle pigment such as red iron oxide as noted above. The thickness of coating is no more than 100 microns (see paragraph 0041). Further, the thickness of coating is related to level of protection required (see paragraph 0043).
In light of motivation for using coating comprising nanoparticle pigment that has thickness of no more than 100 microns disclosed by Harris et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the first coating layer (top layer) comprising nanoparticle pigment that has thickness of no more than 100 microns in Eibon et al. in view of Harris et al. and Pasatta in order to provide required level of protection, and thereby arrive at the claimed invention. Alternatively, it would have been obvious to one of the ordinary skill in the art to use thickness of the first coating layer (top coat layer) including that presently claimed depending on required level of protection in Eibon et al. in view of Harris et al. and Pasatta, and thereby arrive at the claimed invention.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dossel et al. (US 2012/0269975 A1) disclose a dark color multi-layer coating comprising a coating layer B’ (top layer) applied to a NIR-opaque coating layer A’ (bottom layer) (see Abstract). The coating layer B’ comprises a binder, ureas SCA and iron oxide black pigment (see paragraphs 0066, 0078 and 0079). The coating layer A’ comprises a binder, urea SCA and aluminum flake pigments (see paragraphs 0037, 0049 and 0050). The thickness of coating layer B’ is 8 to 30 microns (see paragraph 0099). The thickness of coating layer A’ is 7 to 45 microns (see paragraph 0097).
Harris (5,264,524) discloses a block copolymer prepared by reaction of isocyanate prepolymer with amine terminated butadiene-acrylonitrile oligomer (see Abstract). The polymeric product exhibits both plastic and elastomeric characteristics (see col. 1, lines 11-16).
Itoh et al. (US 2021/0276042 A1) disclose a multilayer coating film comprising a colored paint, a base paint, an effect coating film (bottom layer) and a clear paint (see page 24, claim 1). The effect coating film comprises a flake-effect pigment such as aluminum flake pigments and the effect coating film has a dry film thickness of 0.02 to 5 microns (see page 24, claims 1 and 6, and paragraphs 0117).
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787