DETAILED ACTION
Response to Amendment
Applicant's amendment filed 5/15/2026 has been entered. Currently, claims 1-14 are pending and claims 9-14.
Specification
The substitute specification filed 5/15/2026 has been entered.
Claim Rejections - 35 USC § 112
Claims 9, 11 and 12 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 9, 11 and 12, the limitation that the organic solvent has a content “in a range from 85 to 99.9 parts by mass” renders the claims indefinite as it is unclear what these parts by mass are based on or relative to, e.g. relative to the total composition or to the total solids. This rejection can be overcome by inserting immediately preceding the period “with respect to 100 parts by mass of the total of all components of the lustrous coating material composition (Y)” which is how the claims will be interpreted.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4, 6, 9, 11, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Uemura et al. (US 2009/0035476) in view of Itoh et al. (US 2018/0214912).
With regard to claims 1, 2, 4, 6, 9, 11, 13 and 14, Uemura et al. teach a method for forming a coating film on a substrate to be coated, which reads on applicants’ object, wherein the method includes coating a glittering material-containing base coating material, which reads on applicants’ lustrous coating material composition (Y), and a clear coating material on the substrate, which reads on applicants’ applying a clear coating material (Z) [0011], [0059] and [0064]. The glittering material-containing base coating material can be cured by heating [0033]. The glittering material-containing base coating material has a solid content of 1 to 5% by mass and may comprise an organic solvent mixture, which would necessarily be present at the remainder of the composition and would read on the parts by mass claimed, i.e. 95-99% by mass solvent and 95 to 99 parts by mass relative to 100 parts of the composition wherein the solvent includes a glycol ether, indium colloidal particles having a particle diameter from 1 to 100 nm and a surface conditioner [0014]-[0018] and [0058]. Since the indium particles have a particle size of 1 to 100 nm, this necessarily means the indium particles will have a 50% cumulative volumetric particle size D50 of 0.40 microns or less. The colloidal indium particles can be present at 80 to 98% by mass relative to the solid content of the coating material, which reads on the indium parts by weight claimed, i.e. 80-98 parts indium to 100 parts total solid [0014].
The clear coating material can be an ordinary clear coating material, such as a thermosetting polyurethane resin and a crosslinking agent, which reads on a curable coating [0067]. The substrate to be coating can be automobile parts [0060]; however, Uemura et al. do not specifically teach the clear coating claimed.
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 that may be a hydroxy-containing polyurethane resin and a polyisocyanate compound, and then heating the films simultaneously to cure the coating films [0031], [0058] and [0133]-[0136]. The coating film may be used for automobile components [0223].
Since Uemura et al. and Itoh et al. are both drawn to glitter/luster pigment layers with a clear coat for automobile parts, it would have been obvious to one having ordinary skill to have used the known heat curable clear coat materials of Itoh et al. as the curable clear coat materials of Uemura et al. The results of such a substitution would have been predictable to one having ordinary skill.
Claims 3, 5, 7, 8, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Uemura et al. (US 2009/0035476) in view of Itoh et al. (US 2018/0214912) and further in view of Watanabe et al. (JP 2013-184883), machine translation included.
With regard to claims 3, 5, 7, 8, 10 and 12, Uemura et al. in view of Itoh et al. render obvious all of the limitations of claims 1 and 2 above. The type of solvent in claims 7 and 8 is taught for the same reasons as claims 4 or 6 above, the parts by mass of indium particle of claims 10 and 12 are taught for the same reasons as claim 2 above and the content of organic solvent is taught for the same reasons as claim 9 above; however, they do not specifically teach a fluorine-based surface conditioner.
Watanabe et al. teach a silver brilliant lustrous coating film for automobiles that may have a clear coat applied thereon [0008], [0010] and [0032]. The lustrous coating may have a fluorine-based surface conditioner to control the surface tension of the organic solvent to prevent defects in the coating process [0040].
Uemura et al. in view of Itoh et al. and Watanabe et al. are drawn to glitter/luster coating films for automobiles, it would have been obvious to one having ordinary skill in the art to have substituted the surface conditioner of Uemura et al. in view of Itoh et al. with the fluorine-based surface conditioner of Watanabe et al. The results of such a substitution would have been predictable to one having ordinary skill; further, the rationale to use these materials is to control the surface tension of the organic solvent to prevent defects in the coating process as taught in Watanabe et al.
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.
Claims 1-8, 10, 13 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 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 pages 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 indium particle may have a 50% cumulative volumetric average particle size D50 of 0.40 microns or less, that the surface conditioner may be a fluorine-based surface conditioner and that the effect coating composition can contain an alcohol based organic solvent; therefore, 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 having the D50 defined in the copending application 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.
Response to Arguments
Applicant’s arguments, see Remarks, filed 5/15/2026, with respect to the benefit claim concern, the objections to the specification, the 112(b) rejection and the rejection of Itoh et al. in view of Kamei have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
The rejection of Itoh et al. in view of Kamei cannot teach or suggest the 50% cumulative volumetric particle size D50 of the indium particles being 0.7 microns or less as both references would suggest particle sizes of 1 micron to 50 microns.
However, applicants’ arguments have necessitated the rejection based on Uemura et al. (US 2009/0035476) in view of Itoh et al. (US 2018/0214912), and also the rejection further in view of Watanabe et al. (JP 2013-184883) set forth above.
Applicant's arguments filed 5/15/2026 have been fully considered but they are not persuasive.
Applicants argue that the Examiner’s position in the double patenting rejection is untenable because the scope of organic solvent does not fall within the scope of copending claims 9-13.
The Examiner respectfully disagrees and notes that the copending claims are drawn to a “method for forming a multilayer coating film, the method comprising…applying the effect coating composition described in claim 1 onto an object”. This effect coating composition is supported and defined on pages 2-10 of the copending specification. This includes defining the effect coating composition on page 9 that it may contain other components, such as an alcohol-based solvent. The copending claims do not exclude the alcohol-based solvent, and therefore it falls within the scope of the reference claim. Based on all of the evidence, this Examiner concluded it would have been obvious to have included an alcohol-based organic solvent in the copending claims for the reasons noted above, and therefore applicants’ argument are unpersuasive.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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