DETAILED ACTION
Claim Status
Claim(s) 1-3, 6-20 is/are pending.
Claim(s) 1-3, 6-20 is/are rejected.
Claim(s) 4-5 is/are cancelled by Applicant.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/03/2025 has been entered.
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 Nos. PCT/US2012/070347 (filed 18-DEC-2012) and 14/019,041 (filed 05-SEP-2013), 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.
Application Nos. PCT/US2012/070347 (filed 18-DEC-2012) and 14/019,041 (filed 05-SEP-2013) only provide support for a second coating film build of 20-40 microns, and therefore fail to provide support for a second coating film build with an upper limit of 75 microns as presently recited in claims 10, 19.
Therefore:
Claims 1-3, 6-9, 11-18, 20 have an effective priority date of at least 05-SEP-2013.
Claims 10, 19 have an effective priority date of 23-OCT-2014.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding scope of enablement) in the previous Office Action mailed 08/15/2024 have been withdrawn in view of the Claim Amendments filed 02/14/2025.
The rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph (regarding new matter) in the previous Office Action mailed 06/03/2025 have been withdrawn in view of the Claim Amendments filed 12/03/2025.
Terminal Disclaimer
The terminal disclaimer filed on 12/03/2025 disclaiming the terminal portion of any patents granted on this application which would extend beyond the expiration date of:
U.S. Patent No. 9,751,107;
U.S. Patent No. 11,098,202;
U.S. Patent No. 11,904,355;
U.S. Patent No. 12,064,789;
has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
The rejections on the ground of nonstatutory double patenting based on:
U.S. Patent No. 9,751,107;
U.S. Patent No. 11,098,202;
U.S. Patent No. 11,904,355;
U.S. Patent No. 12,064,789;
in the previous Office Action mailed 06/03/2025 have been withdrawn in view of the Terminal Disclaimer filed 12/03/2025.
Claim(s) 1-3, 6-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-10 of U.S. Patent No. 10,940,505 (DECKER ET AL), or
• claims 1-16 of U.S. Patent No. 11,925,957 (DECKER ET AL), or
• claims 1-15 of U.S. Patent No. 12,291,649 (DECKER ET AL),
in view of OHNISHI ET AL (US 2003/0045613).
NOTE: U.S. Patent No. 12,291,649 (DECKER ET AL) was incorrectly identified as “U.S. Patent No. 12,291,469” in the previous Office Action mailed 06/03/2025. This typographical error has been corrected.
The above U.S. Patents claim methods of forming multilayer systems on substrates utilizing layers of the recited first powder coating composition having the recited flow value and the recited second powder composition with the recited flow value, said methods resulting in articles with multilayer coatings thereon. Features not explicitly claimed are known in the prior art and/or are obvious modifications or optimizations of the prior art. For example:
OHNISHI ET AL ‘613 discloses that it is well known in the art to utilize polymeric resins (e.g., hydroxyl-containing polyester resin cured with blocked isocyanates; hydroxy-containing acrylic resin cured with blocked isocyanates; epoxy resins cured with amides such as dicyandiamide (corresponding to the recited “amines”); etc.) to form useful powder coating compositions for multi-layer coating applications. (paragraph 0031-0033, 0036, 0039, 0041-0042, etc.)
Regarding claims 1-3, 6-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known powder coating compositions as disclosed in OHNISHI ET AL ‘613 in the methods claimed in above U.S. Patents to produce useful articles with multiple coatings.
Regarding claims 6, 16, one of ordinary skill in the art would have applied the first coating claimed in the above U.S. Patents to the substrate under relatively low temperatures (e.g., ambient temperature) in order to minimize the need for additional processing steps (e.g., pre-heating of the substrate, etc.).
Regarding claims 9-10, 18-19, one of ordinary skill in the art would have selected the thickness of the first and second coatings claimed in the above U.S. Patents in order to obtain coating systems with the required performance properties (e.g., visual appearance; durability; hardness; strength; environmental resistance; etc.).
Regarding claim 14, one of ordinary skill in the art would have selected the formulation(s) of the first and/or second coatings claimed in the above U.S. Patents in order to obtain the desired surface characteristics (e.g., gloss, etc.) for specific applications and products.
Regarding claim 15, one of ordinary skill in the art would have selected the formulation(s) of the first and/or second coatings claimed in the above U.S. Patents in order to obtain the desired coverage characteristics for specific applications and products.
Regarding claim 20, one of ordinary skill in the art would have selected the areas of coverage of the first and/or second coatings claimed in the above U.S. Patents in order to obtain the desired coverage characteristics for specific applications and products.
Claim(s) 1-3, 6-20 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-20 of copending Application No. 18/763,261 (US 2025/0001454)
(DECKER ET AL),
in view of OHNISHI ET AL (US 2003/0045613).
The above copending Application claims a method of forming multilayer systems on substrates utilizing layers of the recited first powder coating composition having the recited flow value and the recited second powder composition with the recited flow value, and articles with multilayer coatings thereby. Features not explicitly claimed are known in the prior art and/or are obvious modifications or optimizations of the prior art. For example:
OHNISHI ET AL ‘613 discloses that it is well known in the art to utilize polymeric resins (e.g., hydroxyl-containing polyester resin cured with blocked isocyanates; hydroxy-containing acrylic resin cured with blocked isocyanates; epoxy resins cured with amides such as dicyandiamide (corresponding to the recited “amines”); etc.) to form useful powder coating compositions for multi-layer coating applications. (paragraph 0031-0033, 0036, 0039, 0041-0042, etc.)
Regarding claims 1-3, 6-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known powder coating compositions as disclosed in OHNISHI ET AL ‘613 in the methods claimed in above copending Application No. 18/763,261 to produce useful articles with multiple coatings.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments filed 12/03/2025 with respect to the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph (regarding new matter) in the previous Office Action mailed 06/03/2025 have been withdrawn in view of the Claim Amendments filed 12/03/2025.
However, upon further consideration, a new ground(s) of rejection is made in view of newly discovered U.S. Patents with common inventors and/or common assignees.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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December 27, 2025
/Vivian Chen/
Primary Examiner, Art Unit 1787