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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 16-26 in the reply filed on March 10, 2026 is acknowledged.
Claims 27-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/21026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed 4/3/2024 and 9/18/2025 have been fully considered Initialed copies of said IDSs are enclosed herein.
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 16-26 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.
With regards to claim 16, the term “laser-engravable” in claim 16 is a relative term which renders the claim indefinite. The term “laser engraveable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For instance, the claim does not state the type of laser or the properties the laser or the “engraveable” layer must possess in order to meet said criteria. For examination purpose, any polymeric primer layer will be considered to be “Laser engraveable”
With regards to claim 18, said claim is held to be indefinite because the term “electrically conductive” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purpose, any layer containing a semi-conductive or conductive component will be understood to be “electrically conductive.”
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(s) 16-17, 19, 22, and 24 is/are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Brown (US 2019/0263957).
With regards to claim 16, Brown anticipates a translucent coating system comprising:
a primer layer (60), a base coat layer which is translucent (40), and a clear coat layer (30) (Figures 1 and 2; 0010-0011). The primer is understood to be laser-engraveable because some laser will be able to heat though and burn said layer (see 0007 of applicant’s disclosure).
With regards to claim 17, Brown teaches the translucent coating system may further comprise an additional clear coat layer which is arranged between the primer layer and the base coat
Layer (3) (0011; Figure 2).
With regards to claim 19, Brown teaches the primer layer comprises one primer coating (see Figures).
With regards to claim 22, Brown teaches the base coat layer comprises one base coat coating (see Figures).
With regards to claim 24, Brown teaches the clear coat layer comprises one clear coat coating (see Figures).
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.
Claim(s) 18, 20, 21, 23, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Brown (US 2019/0263957), as applied to claims 16, 17, 19, 22, and 24 above, and further in view of Rukavina (US 20/21/0253779).
Brown is relied upon as above, but does not teach the primer coating of claim 18, the basecoat binder of claim 23 or the clearcoat composition of claim 25. However, Rukavina teaches the polyurethane compositions are useful as primer coatings, basecoats or top coats in multicoating composition (0334). Said compositions may comprise up to 30pbw pigment (0183-0184), catalysts in amounts of 10ppm-699ppm (0182), other additives in amounts up to 30wt% (0183-0184), and they contain polyols and isocyanates in amounts such that the NCO:OH equivalent ratio is from 0.9:1 to about 1.1:1 (0173). The compositional limitations of Rukavina falls within the primer coating, base coat and clear coat teachings of claims 20, 23, and 25. Thus, it would have been obvious to one of ordinary skill in the art at the time invention was filed to utilize the polyurethane composition disclosed in Rukavina in the primer coat, base coat or clear coat of the laminate disclosed in Brown. The motivation for doing so would have been that Rukavina teaches said composition is useful for primer coats, base coats or clear coats of such systems. Furthermore, said composition are taught to have improved impact resistance, impact strength, optical quality, solvent resistance and weatherability (0005).
With regards to claims 18 and 21, teaches the primer composition may comprise a reinforcing agent such as metal (0248). Said fillers are understood to read on conductive particles of claim 21.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Brown (US 2019/0263957) in view of Rukavina (US 20/21/0253779), as applied to claims above, and further in view of Jan et al (US 2020/0283657).
Brown in view of Rukavina is relied upon as above, but does not teach the upper clear coat may comprise matting agent. However, Jana teaches a protective coating for a metallic substrate (abstract). Jana teaches the clear coat of such films may contain a matting agent (0107) in amounts desired for a particular purpose, such as 01-10wt% (0112). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add matting agents in an amount desired to the clear coat layer of Brown in order to obtain a matted appearance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787