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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 1/21/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102/103
Claims 16-20 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 Ferencz (US 2006/0189718).
The rejection is adequately set forth in paragraph 3 of Office action mailed on 9/22/2025 and is incorporated here by reference.
Claim Rejections - 35 USC § 103
Claims 1, 2, and 4-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ferencz (US 2006/0189718) in view of Yang (US 8,883,264).
The rejection is adequately set forth in paragraph 4 of Office action mailed on 9/2/2025 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Ferencz does not disclose the claimed powder coating composition because the process in the instant product-by-process claims requiring mixing with acoustic energy and heating to a transition temperature provides for a tangible benefit, i.e., higher performing effect pigment, as shown by the examples of the specification.
The examples have been fully considered, but they are sufficient to distinguish over Ferencz for two reasons. First, the examples of the specification do not directly compare to Ferencz which does not teach a dry mix method or a high shear mixing method (mixing method used in comparative examples in Table 5). Rather, Ferencz binding resinous (polymeric binder) particles to metallic flakelike effect pigments by sufficiently heating the mixture at least 2°F higher than the glass transition temperature (reads on claimed step of heating to a transition temperature) to just soften the resinous particles to adhere the flake-like effect pigments. Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). It is noted that Ferencz teaches away from high shearing mixing in paragraph 0007.
Second, even had the examples shown criticality for the claimed method, the data is not reasonably commensurate in scope with the scope of the claims. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983). Specifically, the inventive examples (details in Table 4) are prepared by a method is that is not representative of claimed process of “mixed with acoustic energy and heated to a transition temperature.” It is unclear under which acoustically mixing parameters are critical for improved performance.
Applicant also argues that Ferencz fails to disclose an acoustic energy mixing step and is not open to the acoustic mixing step taught by Yang with an expectation of improving performance.
Ferencz and Yang are both drawn to powder coating compositions comprising solid additives. While Ferencz does not teach acoustic energy mixing, it clearly teaches that high shear mixing should be avoided because high shear destroys the structure of the flakelike effect pigments (paragraph 0007). Yang teaches that aerogel particles are friable and prone to breakage and therefore applying an acoustic mixer allows for gentle mixing with the polymer powder to separate loosely aggregated particles and maintain intact aerogel particles (col. 11, lines 38-42). Given that they are both within the same field of endeavor of preparing homogeneous coatings and providing gentle mixing additives prone to breakage, the combination of references is completely appropriate.
Finally, Applicant argues that Yang discloses aerogel particles and there is not applicable to a powder coating composition comprising flake-like metallic effect pigments.
While Yang does not disclose all the features of the present claimed invention, it is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention. Specifically, Yang teaches that aerogel particles are friable and prone to breakage and therefore using an acoustic mixer allows for gentle mixing and maintaining intact aerogel particles (col. 11, lines 38-42).
Conclusion
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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