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. Priority Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S .C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows: The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc. , 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. PCT/JP202 2 / 015208 , fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The term “photoluminescent” material appears 96 times in the as-filed specification, including the abstract , the specification body and the claims. This does not match the WIPO English abstract, which refers to a “lustrous” coating. It appears that the Japanese term at issue was possibly mistranslated ( 光輝性 ). Please note that since this is a 371 national stage application of an international application and this change is not an obvious error as “photoluminescent” and “lustrous” have clearly different meanings , any change to the national stage translation will require a certified translation. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Specification The disclosure is objected to because of the following informalities: The term “photoluminescent” coating appears 87 times in the as-filed specification, including the abstract and the specification body . This phrase is objected to as this does not appear to be a proper translation from Japanese as noted above. Please note that since this is a 371 national stage application of an international application and this change is not an obvious error as “photoluminescent” and “lustrous” have clearly different meanings, any change to the national stage translation will require a certified translation . Appropriate correction is required. Claim Rejections - 35 USC § 112 Claim s 1-8 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. In claims 1 and 2, t he term “photoluminescent” appears 9 times in the claims . This term renders the claim indefinite as it does not match the WIPO English abstract, which refers to a “lustrous” coating. For purpose of examination, the Examiner will be treating the term as “lustrous”. Claim Rejections - 35 USC § 103 Claim s 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (US 2018/0214912) in view of Kamei (WO 2021/065741) of which US 2022/0340769 is the US national stage application and will be used as a translation . With regard to claims 1 and 3, Itoh et al. teach a multilayer coating film formation method including applying an effect pigment dispersion (Y), which reads on the claimed applying a lustrous coating material to an object, applying a clear coating composition (Z) to the effect coating, wherein the clear coating composition may be a two-component coating of a hydroxy-containing resin and a polyisocyanate compound , and then heating the films simultaneously to cure the coating films [0031], [0058], [0133] and [0134] . The effect pigment dispersion (Y) may comprise a metal flake pigment, which reads on applicants’ indium particle, a fluorine-based surface modifier, which reads on applicants’ surface conditioner as it facilitates uniform orientation of the flake-effect pigment, and an organic solvent [0064], [0067], [0074] and [0091]. The solid content of the effect pigment dispersion may be from 0.1 to 15 mass% [0126]. The metal of the flake-effect pigment is not limited and the paints can be used for automobile bodies [0075] and [0223] ; however, Itoh et al. does not specifically teach using an indium flake pigment. Kamei teaches forming indium scaly composite particles formed using vapor deposition, which reads on indium particles and the flake-effect pigments [0015]. They can be used in an ink and applied for purposes such as automobiles [0020] and [0124]. I t would have been obvious to one having ordinary skill in the art to have used an organic solvent and the fluorine-based surface modifier with the metal flake pigment of Itoh et al. in the effect pigment dispersion (Y) . These are all specifically taught in Itoh et al. as proper for forming an effect pigment dispersion (Y) , and therefore there would have been a reasonable expectation of success in forming a composition from these materials. Since Itoh et al. and Kamei are both drawn to metallic flake pigments for paints such as automobile paints, it would have been obvious to one having ordinary skill in the art to have substituted the flake-effect pigment of Itoh et al. with the indium scaly composite particles of Kamei. The results of such a substitution would have been predictable to one having ordinary skill and the rationale to use the particles of Kamei is that they are excellent in metallic gloss [0005]. With regard to claim 2 and 5, Itoh et al. also teach that the effect pigment dispersion may have the solids be 0. 1 to 10 parts of surface modifier, 0. 05 to 3.0 parts of flake-effect pigment and 0. 1 to 26 parts of viscosity modifier relative to 100 total parts of the composition [0119]-[0123]; however, they do not specifically teach the relative parts by weight of the indium particle relative to 100 parts by weight of the total amount of solids. The Examiner notes that the parts by weight of the solids in the prior art composition overlap with the range claimed , and therefore a prima facie case of obviousness exists. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to have made the flake-effect pigment be from 0.47 to 3 parts by mass relative from 0.2 to 1.28 parts of the combined mass surface modifier and viscosity modifier as these are within the ranges claimed. To illustrate the overlap, 0.47/(0.47 + 0.2) is approximately 70 parts of flake relative to 100 parts total solids, 3/(3 + 0.2) is about 93.75 parts of flake-effect pigment relative to 100 parts total solids and 3/(3 + 1.28) is about 70 parts of flake relative to 100 parts total solids . With regard to claims 4 and 6-8, Itoh et al. teach various organic solvents that may be used in the colored coating composition (X), including alcohols and ethylene glycol monomethyl ether [0053]-[0054]; however, they do not specifically teach what organic solvent they use in the effect pigment dispersion (Y) . It would have been obvious to have used the same organic solvents that are used for the colored coating composition (X) , including alcohols or ethylene glycol monomethyl ether , as the organic solvent in the effect pigment dispersion (Y) . The rationale to do this is that it would save money in the production process as one would not have to buy multiple types of solvents. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . Claim s 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 9-13 of copending Application No. 18/828234 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to a method of forming a multilayer coating film by applying an effect coating composition with a surface conditioner and indium particles having a solid content of 0.1 to 15 mass% , applying a clear coating and then heating to cure the films. The pending claims are broad enough to include all of the limitations of the copending claims; however, the copending claims do not specifically teach an organic solvent or the other materials of the coating material composition (Y) . Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan , 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent . (underlining added by examiner for emphasis) In re Vogel , 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). Consistent with the above underlined portion of the MPEP citation, attention is drawn to page s 6 and 9 of the specification of copending application 18/828234, which defines what is meant by the indium particle in that it may be present at 65 to 90 parts by mass per 100 parts of total solid content of the effect coating composition, that the surface conditioner may be a fluorine-based surface conditioner and that the effect coating composition can contain an alcohol based organic solvent; th erefore, it would have been obvious to one of ordinary skill in the art to include an organic solvent, a fluorine-based surface conditioner and the indium particle at 70-90 parts in the effect coating composition as presently claimed. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT GERARD T HIGGINS whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3467 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 9:30-6pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Mark Ruthkosky can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-1291 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Gerard Higgins/ Primary Examiner, Art Unit 1785