DETAILED ACTION
This is in response to communication received on 11/12/25.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 12/18/24, 4/11/25 and 8/11/25.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Moore et al. US PGPub 2020/0291261 hereinafter MOORE in view of Yokoyama et al. US PGPub 2015/0337166 hereinafter YOKOYAMA on claim 1-9 and 13-20 is maintained. The rejection is repeated below for convenience.
As for claim 1, MOORE teaches "A coating composition for application to a substrate utilizing a high transfer efficiency applicator" (abstract, lines 1-2), "A method of forming a coating com position for application to the substrate 10 utilizing the high efficiency transfer applicator 12 is provided herein" (paragraph 63, lines 1 -3) and "A system 50 for applying a first coating composition and a second coating composition is provided herein ... the system 50 includes a first high transfer efficiency applicator ... The system further includes a second high transfer efficiency applicator" (paragraph 76, lines 1-8), i.e. a method of applying a first coating composition and a second coating composition to a substrate.
MOORE teaches "The system 50 further includes a substrate 10 defining a first target area 80 and a second target area 82" (paragraph 99, lines 14-16). Examiner notes that MOORE's first target area and second target area is not analogous to the target areas of the claim, but rather to the area of application of the coating compositions. As discussed in the claim interpretation section of the Non-Final Rejection dated 8/11/25, the first target area and second target area of the claim are arbitrary areas drawn on the surface of the substrate, and it is well within the skill of the ordinary artisan to draw arbitrary conceptual ideas of areas on a surf ace, i.e. providing the substrate defining a first target area and a second target area which define a gap there between of from greater than 0 mm and up to less than 2 mm.
Furthermore, Examiner can find no evidence in the specification that these target areas provide any kind of patentable distinction or effect, particularly considering the claims and the prior art of MOORE (USPGPub 2020/0291261) are nearly identical down to the wording. The only difference is that MOORE is silent on the wet thickness of its layers, but this is remedied easily by YOKOYAMA (US PG Pub 2015/0337166) as shown in this rejection.
Examiner will also note that the discovery of a property inherent to a material or process previously is not enough to establish patentability because it was inherently present in the past iteration.
MOORE teaches "The first high transfer efficiency applicator is configured to receive the first coating composition from the first reservoir and configured to expel the first coating composition through the first nozzle orifice 92 to the first target area 80 of the substrate 10. The second high transfer efficiency applicator 90 is configured to receive the second coating composition from the second reservoir and configured to expel the second coating composition through the second nozzle orifice 94 to the second target area 82 of the substrate 1 O" (paragraph 99, lines 15-24), i.e. applying the first coating composition via a first high transfer efficiency applicator to the first target area ... applying the second coating composition via a second high transfer efficiency applicator to the second target area at a wet film thickness of from about 5 to about 150 microns.
MOORE is silent on applying the first coating composition and the second coating com position at a wet film thickness of from about 5 to about 150 microns.
MOORE does teach that the final coating layer having "a thickness of at least 5 microns in accordance with ASTM D7091-13" (paragraph 18).
MOORE is silent on wet thickness.
YOKOYAMA teaches "The present disclosure is directed to a coating composition for producing coatings sag-free at high coating thicknesses, being quick dry and having good appearance" (abstract, lines 1-3), and "In some industrial applications, such as coating metal pipes, trucks, large industrial equipments, and large entertainment equipments, it is often desired to complete the coating process in a short period of time while still achieving good adhesion, protection, durability and appearance" (paragraph 3, lines 1-5).
YOKOYAMA teaches "Such single wet coating layer can be formed by any conventional coating application methods known to those skilled in the art, such as spraying, brushing, dipping, rolling, or wet draw down" (paragraph 27, lines 3-6).
YOKOYAMA further teaches "The coating composition can be applied to a substrate to form a sag-free coating layer having a wet coating thickness, also known as wet film thickness (wft), in a range of, in one example from 5 to 36 mils (about 127 to 914 microns)" (paragraph 91, lines 3-9), i.e. a range that overlaps with at a wet film thickness of from about 5 to about 150 microns.
YOKOYAMA teaches "After curing and drying, dry coating thickness can be typically in a range of from 2 to 20 mils" (paragraph 91, lines 17-19).
YOKOYAMA further teaches "To form a 5 m ii dry coating layer, typically a wet coating layer having a wet coating thickness of 10 mils or more can be needed" (paragraph 99, lines 11-12), i.e. wherein the wet film thickness effects the final dry thickness.
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the wet thickness of the coating layer such that the desired dry thickness is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date to apply the coatings of MOORE at a thickness range of YOKOYAMA which overlaps with at a wet film thickness of from about 5 to about 150 microns because YOKOYAMA teaches that such a thickness removes multiple coating steps which can be time consuming leads to low productivity (paragraph 99). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir.1997). See MPEP 2144.05.
MOORE teaches "The first high transfer efficiency applicator 88 and the second high transfer efficiency applicator 90 are configured to expel the coating composition through the first nozzle orifice 92 and the second nozzle orifice 94 to the first target area 80 and the second target area 82 to form a uniform coating layer during the single pass" (paragraph 117, lines 4-10) i.e. wherein, to form a continuous layer of a combination of the first and second coating compositions that extends across the gap and also extends across at least an additional portion of the substrate wherein the first and second coating compositions are applied either simultaneously.
MOORE teaches "at least 99.9% of the droplets 74 of the coating composition expelled from the high transfer efficiency applicator 12 contact the substrate 10" (paragraph 94, see further paragraph 95 and 96), i.e. wherein each of the first and second high transfer efficiency applicators independently applies the first and second coating compositions respectively to the substrate without atomization such that at least about 99.9% of the applied coating compositions contact the respective first and second target areas.
MOORE teaches "In certain embodiments, the first high transfer efficiency applicator includes a plurality of the first nozzles 72 with each of the first nozzles 72 defining the first nozzle orifice 92. In these embodiments, the second high transfer efficiency applicator 90 includes a plurality of the second nozzles with each of the second nozzles defining the second nozzle orifice 94" (paragraph 100, lines 1-7), i.e. wherein each of the first and second high transfer efficiency applicators comprises an array of nozzle.
MOORE teaches "The nozzle defining a nozzle orifice and may have a nozzle diameter of from about 0.00002 m to about 0.0004 m" (paragraph 92, lines 5-7), i.e. wherein each nozzle in each array defines a nozzle orifice having a diameter of from about 0.00002 m to about 0.0004 m.
MOORE teaches" "The coating composition includes the carrier and the binder" (paragraph 244, lines 5-6), and "The coating composition may include the binder in an amount of from about 5 to about 70 wt. %" (paragraph 239, lines 1 -2) i.e. wherein each of the first and second coating compositions independently comprises a carrier, and a binder that is present in an amount of from about 5 to about 70 weight percent based on a total weight of the respective coating composition.
MOORE teaches "In an embodiment, coating compositions are employed, including, for example, pigments" (paragraph 214, lines 1-2), i.e. wherein the first coating composition and optionally the second coating composition comprises a pigment.
MOORE teaches "As also introduced above, the coating composition may further include dyes" (paragraph 225, lines 1-2), wherein it is an optional embodiment such that it can be omitted, i.e. wherein each of the first and second coating compositions has a soluble dye colorant content of less than about 2 weight percent based on a total weight of the respective coating composition.
MOORE teaches "The coating composition may have a solids content of from about 5 to about 90, alternatively from 5 to about 80, or alternatively about 15 to about 70, wt.%. The solids content may be determined in accordance with ASTM D2369-10" (paragraph 237, lines 1-5), i.e. each independently has a solids content of from about 5 to about 70 weight% based on a total weight of the respective coating composition as measured in accordance with ASTM 02369.
MOORE teaches "The coating composition may have a viscosity of from about 0.002 Pa*s to about 0.2 Pa*s, a density of from about 838 kglm3 to about 1557 kg/m3, a surface tension of from about 0.015 N/m to about 0.05 N/m" (paragraph 92, lines 11-14) and "In embodiments, the step of obtaining the viscosity (ri) of the coating composition further includes the step of performing a viscosity analysis on the coating composition according to ASTM 7867-13 with cone-and-plate or parallel plates" (paragraph 68, lines 1-5), i.e. a viscosity of from about 0.002 Pa*s to about 0.2 Pa*s as measured according to ASTM 7867-13 with cone-and-plate or parallel plates at a shear rate of 1000 sec-1, a density of from about 838 kg/m3 to about 1557 kg/m3, and a surface tension of from about 0.015 N/m to about 0.05 N/m.
As for claim 2, MOORE teaches "wherein the coating composition has an Ohnesorge number Oh) of from about 0.01 to about 12.6; wherein the coating composition has a Reynolds number (Re) of from about 0.02 to about 6,200; wherein the coating composition has a Deborah number (De) of from greater than Oto about 1730" ( claim 1, lines 14-19), i.e. wherein each of the first and second coating compositions independently has: an Ohnesorge number (Oh) of from about 0.01 to about 12.6; a Reynolds number (Re) of from about 0.02 to about 6200; and a Deborah number (De) of from greater than about 0 to about 1730.
As for claim 3, MOORE only mentions halftone in the following quotation: "the target area defines a plurality of sub-areas and wherein one or more of the first high transfer efficiency applicator 88, the second high transfer efficiency applicator 90, and the third high transfer efficiency applicator is configured to expel one or more of the first coating composition, the second coating composition, and the third coating composition to the one or more of the plurality of sub-areas to generate a halftone pattern of one or more of the first color space, the second color space, and the third color space" (paragraph 128, lines 7-16).
MOORE also teaches "The system 50 may include more than one high transfer efficiency applicator 12 with each configured to apply a different coating composition (e.g., different colors, solid or effect pigments, basecoat or clearcoat)" (paragraph 86, lines 11-15) i.e. wherein at least one of the first and second coating compositions exhibits a uniform color without a halftone.
As for claim 4, MOORE teaches "In embodiments, the first coating composition includes a pigment and the second coating composition includes an effect pigment" (paragraph 107, lines 11-13), i.e. wherein each of the first and second coating compositions comprises a pigment.
As for claim 5, MOORE teaches "The second coating composition may include an effect pigment" (paragraph 109, lines 1-2) and "The second coating composition may include a functional pigment" (paragraph 110, lines 1-2), wherein the addition of these pigments is options such that wherein the second coating composition is free of a pigment.
As for claim 6, MOORE teaches "As also introduced above, the coating composition may further include dyes" (paragraph 225, lines 1-2), wherein it is an optional embodiment such that it can be omitted, i.e. wherein at least one of the first and second coating compositions is free of the soluble dye colorant content.
As for claim 7, MOORE is silent on the first and second coating composition sharing the same carrier and binder. However, Examiner also notes that MOORE is silent on the first and second coating composition having different carriers and binders. Examiner also notes that both the first and second coating compositions are composition suitable for the high efficiency applicators, and discusses suitable binders in paragraph 159 and carriers in 158. With this in mind, it is well within the skill of the ordinary artisan to have wherein the carrier and the binder of the first coating composition are the same as the carrier and the binder of the second coating composition, respectively as both compositions have to achieve the same specific properties to be useable in the process and they share the same list of materials for those components.
As for claim 8, MOORE teaches "The coating layer may be utilized as a basecoat, a clearcoat, a color coat, a top coat, a single-stage coat, a mid coat, a primer, a sealer, or combinations thereof" (paragraph 73, lines 1-3) and "The term "mid coat" or "mid coat layer" refers to a colored non-opaque coating positioned between a basecoat layer and a clearcoat layer in a multi-layer coating system" (paragraph 75 lines 1-4, see paragraph 74 for discussion of placement of basecoat), i.e. wherein the substrate comprises a basecoat disposed on and in direct contact with the substrate and wherein the first and second coating compositions are each applied over the basecoat as a topcoat disposed on and in direct contact with the basecoat.
As for claim 9, MOORE teaches "The coating layer may be utilized as a basecoat, a clearcoat, a color coat, a top coat, a single-stage coat, a mid coat, a primer, a sealer, or combinations thereof" (paragraph 73, lines 1-3) and "In certain embodiments, a system 50 for applying a coating composition to a substrate 10 utilizing a high transfer efficiency applicator 12 is provided herein" (paragraph 92, lines 1 -3), "A second, transparent coat consisting of one or more covering layers ( or top coats) is superposed on this first coat for the purpose of protecting said first, colored coat" (paragraph 213, lines 4-7) i.e. wherein each of the first and second coating compositions are applied to the substrate as a basecoat that is disposed on and in direct contact with the substrate and the method further comprises the step of applying a clearcoat on and in direct contact with the basecoat.
As for claim 13, MOORE teaches "The system 50 further includes a substrate 10 defining a first target area 80 and a second target area 82" (paragraph 99, lines 14-16). Examiner notes that MOORE's first target area and second target area is not analogous to the target areas of the claim, but rather to the area of application of the coating compositions. As discussed in the claim interpretation section, the first target area and second target area of the claim are arbitrary areas drawn on the surface of the substrate, and it is well within the skill of the ordinary artisan to draw arbitrary conceptual ideas of areas on a surf ace, i.e. providing the substrate defining a first target area and a second target area which define a gap there between of from greater than 0 mm and up to less than 0.5 mm.
Furthermore, Examiner can find no evidence in the specification that these target areas provide any kind of patentable distinction or effect, particularly considering the claims and the prior art of MOORE (USPGPub 2020/0291261) are nearly identical down to the wording. The only difference is that MOORE is silent on the wet thickness of its layers, but this is remedied easily by YOKOYAMA (US PG Pub 2015/0337166) as shown in this rejection.
Examiner will also note that the discovery of a property inherent to a material or process previously is not enough to establish patentability because it was inherently present in the past iteration.
As for claim 14, MOORE teaches "The first high transfer efficiency applicator 88 and the second high transfer efficiency applicator 90 are configured to expel the coating composition through the first nozzle orifice 92 and the second nozzle orifice 94 to the first target area 80 and the second target area 82 to form a uniform coating layer during the single pass" (paragraph 117, lines 4-10), wherein the coating layer is uniform such that there is no difference in thickness i.e. wherein the dry film thickness of the first coating composition is within about 10 micrometers of the dry film thickness of the second coating composition.
As for claim 15, MOORE teaches "The first high transfer efficiency applicator 88 and the second high transfer efficiency applicator 90 are configured to expel the coating composition through the first nozzle orifice 92 and the second nozzle orifice 94 to the first target area 80 and the second target area 82 to form a uniform coating layer during the single pass" (paragraph 117, lines 4-10), i.e. wherein each of the first and second high transfer efficiency applicators independently applies the first and second coating compositions respectively to the substrate as individual droplets.
As for claim 16, MOORE teaches "The first high transfer efficiency applicator 88 and the second high transfer efficiency applicator 90 are configured to expel the coating composition through the first nozzle orifice 92 and the second nozzle orifice 94 to the first target area 80 and the second target area 82 to form a uniform coating layer during the single pass" (paragraph 117, lines 4-10), i.e. wherein each of the first and second high transfer efficiency applicators independently applies the first and second coating compositions respectively to the substrate as a stream of the first and second coating compositions, respectively.
As for claim 17, MOORE teaches "This improved flow may be desirable when printing the coating composition on a full panel of a vehicle" (paragraph 152, lines 12- 15), and "In embodiments, the substrate 10 is a vehicle, automobile, or automobile vehicle" (paragraph 79, lines 8-9), i.e. wherein the substrate is further defined as a single automotive panel.
As for claim 18, MOORE teaches "In embodiments, the substrate 10 is a vehicle, automobile, or automobile vehicle" (paragraph 79, lines 8-9), i.e. wherein the substrate is a vehicle.
As for claim 19, MOORE teaches "In embodiments the carrier is selected from the group of water, a non-aqueous solvent, and a combination thereof" (paragraph 158, lines 5-7), i.e. wherein both the first and second coating compositions are waterborne.
As for claim 20, MOORES teaches "In embodiments the carrier is selected from the group of water, a non-aqueous solvent, and a com bi nation thereof" (paragraph 158, lines 5-7), i.e. wherein both the first and second coating compositions are solventborne.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Moore et al. US PGPub 2020/0291261 hereinafter MOORE in view of Yokoyama et al. US PG Pub 2015/0337166 hereinafter YOKOYAMA as applied to claim 1 above, and further in view of Panza-Giosa et al. US PGPub 2017/0023454 hereinafter PANZA-GIOSA on claim 10 is maintained. The rejection is repeated below for convenience.
As for claim 10, MOORE is silent on wherein the first coating composition and the second coating composition contact each other at an interface that is disposed across the gap thereby forming the continuous layer wherein the continuous layer does not adhesively fail at the interface when strained using the ASTM 522 mandrel bend test in a direction either perpendicular or parallel to the interface.
MOORE does teach including additives and picking particular materials to improve the adhesion of layers (paragraphs 111, 159, 177, 191).
PANZA-GIOSA teaches" The above method can be used to design a variety of devices which are typically subject to strain and forces sue h as stress and/or bending during operation. Such devices may include, for example, components such as pistons, cylinder piston housings, and pins, such as used in the aerospace or automotive industries and the like, or any other coated devices and/or components that bear coatings that are susceptible to cracking under their various operating conditions" (paragraph 18).
PANZA-GIOZA teaches that "According to various embodiments, disclosed is a test method for determining the effects of strain on a material, preferably a coating material and/or a coated substrate, and in particular for determining strain limits before cracking (which may also be referred to herein as "bending limits," "upper strain limit," and/or "max strain") of a material" (paragraph 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the adhesion and strain of the coating layers such that the desired crack resistance is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Moore et al. US PGPub 2020/0291261 hereinafter MOORE in view of Yokoyama et al. US PGPub 2015/0337166 hereinafter YOKOYAMA and Roberts et al. US PG Pub 2011/0242154 hereinafter ROBERTS on claim 21 is maintained. The rejection is repeated below for convenience.
As for claim 21, MOORE teaches "A coating composition for application to a substrate utilizing a high transfer efficiency applicator" (abstract, lines 1-2), "A method of forming a coating com position for application to the substrate 10 utilizing the high efficiency transfer applicator 12 is provided herein" (paragraph 63, lines 1 -3) and "A system 50 for applying a first coating composition and a second coating composition is provided herein ... the system 50 includes a first high transfer efficiency applicator ... The system further includes a second high transfer efficiency applicator" (paragraph 76, lines 1-8), i.e. a method of applying a first coating composition and a second coating composition to a substrate.
MOORE teaches "The system 50 further includes a substrate 10 defining a first target area 80 and a second target area 82" (paragraph 99, lines 14-16). Examiner notes that MOORE's first target area and second target area is not analogous to the target areas of the claim, but rather to the area of application of the coating compositions. As discussed in the claim interpretation section of the Non Final Rejection 8/11/25, the first target area and second target area of the claim are arbitrary areas drawn on the surface of the substrate, and it is well within the skill of the ordinary artisan to draw arbitrary conceptual ideas of areas on a surf ace, i.e. providing the substrate defining a first target area and a second target area which define a gap there between of from greater than 0 mm and up to less than 2 mm.
Furthermore, Examiner can find no evidence in the specification that these target areas provide any kind of patentable distinction or effect, particularly considering the claims and the prior art of MOORE (USPGPub 2020/0291261) are nearly identical down to the wording. The only difference is that MOORE is silent on the wet thickness of its layers, but this is remedied easily by YOKOYAMA (US PG Pub 2015/0337166) as shown in this rejection.
Examiner will also note that the discovery of a property inherent to a material or process previously is not enough to establish patentability because it was inherently present in the past iteration.
MOORE teaches "The system 50 further includes a substrate 10 defining a first target area 80 and a second target area 82" (paragraph 99, lines 14-16), and further shows in Fig. 115 where in first target area 80 and second target area 82 are touching without a gap between them i.e. said method comprising: providing the substrate defining a first target area and a second target area which define a gap there between of less than about 2 mm.
MOORE teaches "The first high transfer efficiency applicator is configured to receive the first coating composition from the first reservoir and configured to expel the first coating composition through the first nozzle orifice 92 to the first target area 80 of the substrate 10. The second high transfer efficiency applicator 90 is configured to receive the second coating composition from the second reservoir and configured to expel the second coating composition through the second nozzle orifice 94 to the second target area 82 of the substrate 1 O" (paragraph 99, lines 15-24), i.e. applying the first coating composition via a first high transfer efficiency applicator to the first target area ... applying the second coating composition via a second high transfer efficiency applicator to the second target area at a wet film thickness of from about 5 to about 150 microns.
MOORE is silent on applying the first coating composition and the second coating com position at a wet film thickness of from about 5 to about 150 microns.
MOORE does teach that the final coating layer having "a thickness of at least 5 microns in accordance with ASTM D7091-13" (paragraph 18).
MOORE is silent on wet thickness.
YOKOYAMA teaches "The present disclosure is directed to a coating composition for producing coatings sag-free at high coating thicknesses, being quick dry and having good appearance" (abstract, lines 1-3), and "In some industrial applications, such as coating metal pipes, trucks, large industrial equipments, and large entertainment equipments, it is often desired to complete the coating process in a short period of time while still achieving good adhesion, protection, durability and appearance" (paragraph 3, lines 1-5).
YOKOYAMA teaches "Such single wet coating layer can be formed by any conventional coating application methods known to those skilled in the art, such as spraying, brushing, dipping, rolling, or wet draw down" (paragraph 27, lines 3-6).
YOKOYAMA further teaches "The coating composition can be applied to a substrate to form a sag-free coating layer having a wet coating thickness, also known as wet film thickness (wft), in a range of, in one example from 5 to 36 mils (about 127 to 914 microns)" (paragraph 91, lines 3-9), i.e. a range that overlaps with at a wet film thickness of from about 5 to about 150 microns.
YOKOYAMA teaches "After curing and drying, dry coating thickness can be typically in a range of from 2 to 20 mils" (paragraph 91, lines 17-19).
YOKOYAMA further teaches "To form a 5 m ii dry coating layer, typically a wet coating layer having a wet coating thickness of 10 mils or more can be needed" (paragraph 99, lines 11-12), i.e. wherein the wet film thickness effects the final dry thickness.
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the wet thickness of the coating layer such that the desired dry thickness is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
In the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date to apply the coatings of MOORE at a thickness range of YOKOYAMA which overlaps with at a wet film thickness of from about 5 to about 150 microns because YOKOYAMA teaches that such a thickness removes multiple coating steps which can be time consuming leads to low productivity (paragraph 99). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir.1997). See MPEP 2144.05.
MOORE teaches "The first high transfer efficiency applicator 88 and the second high transfer efficiency applicator 90 are configured to expel the coating composition through the first nozzle orifice 92 and the second nozzle orifice 94 to the first target area 80 and the second target area 82 to form a uniform coating layer during the single pass" (paragraph 117, lines 4-10) i.e. to form a continuous layer of a combination of the first and second coating compositions that extends across the gap and also extends across at least an additional portion of the substrate wherein the first and second coating compositions are applied either simultaneously.
MOORE teaches "at least 99.9% of the droplets 74 of the coating composition expelled from the high transfer efficiency applicator 12 contact the substrate 1 O" (paragraph 94, see further paragraph 95 and 96), i.e. wherein each of the first and second high transfer efficiency applicators independently applies the first and second coating compositions respectively to the substrate without atomization such that at least about 99.9% of the applied coating compositions contact the respective first and second target areas.
MOORE teaches "In certain embodiments, the first high transfer efficiency applicator includes a plurality of the first nozzles 72 with each of the first nozzles 72 defining the first nozzle orifice 92. In these embodiments, the second high transfer efficiency applicator 90 includes a plurality of the second nozzles with each of the second nozzles defining the second nozzle orifice 94" (paragraph 100, lines 1-7), i.e. wherein each of the first and second high transfer efficiency applicators comprises an array of nozzle.
MOORE teaches "The nozzle defining a nozzle orifice and may have a nozzle diameter of from about 0.00002 m to about 0.0004 m" (paragraph 92, lines 5-7), i.e. wherein each nozzle in each array defines a nozzle orifice having a diameter of from about 0.00002 m to about 0.0004 m.
MOORE teaches" "The coating composition includes the carrier and the binder" (paragraph 244, lines 5-6), and "The coating composition may include the binder in an amount of from about 5 to about 70 wt. %" (paragraph 239, lines 1 -2) i.e. wherein each of the first and second coating compositions independently comprises a carrier, and a binder that is present in an amount of from about 5 to about 70 weight percent based on a total weight of the respective coating composition.
MOORE teaches "In an embodiment, coating compositions are employed, including, for example, pigments" (paragraph 214, lines 1-2), i.e. wherein the first coating com position and optionally the second coating com position comprises a pigment.
MOORE teaches "As also introduced above, the coating composition may further include dyes" (paragraph 225, lines 1-2), wherein it is an optional embodiment such that it can be omitted, i.e. wherein each of the first and second coating compositions has a soluble dye colorant content of less than about 2 weight percent based on a total weight of the respective coating composition.
MOORE teaches "The coating composition may have a solids content of from about 5 to about 90, alternatively from 5 to about 80, or alternatively about 15 to about 70, wt.%. The solids content may be determined in accordance with ASTM D2369-10" (paragraph 237, lines 1-5), i.e. each independently has a solids content of from about 5 to about 70 weight% based on a total weight of the respective coating composition as measured in accordance with ASTM 02369.
MOORE teaches "The coating composition may have a viscosity of from about 0.002 Pa*s to about 0.2 Pa*s, a density of from about 838 kglm3 to about 1557 kg/m3, a surface tension of from about 0.015 N/m to about 0.05 N/m" (paragraph 92, lines 11-14) and "In embodiments, the step of obtaining the viscosity (ri) of the coating composition further includes the step of performing a viscosity analysis on the coating composition according to ASTM 7867-13 with cone-and-plate or parallel plates" (paragraph 68, lines 1-5), i.e. a viscosity of from about 0.002 Pa*s to about 0.2 Pa*s as measured according to ASTM 7867-13 with cone-and-plate or parallel plates at a shear rate of 1000 sec-1, a density of from about 838 kg/m3 to about 1557 kg/m3, and a surface tension of from about 0.015 N/m to about 0.05 N/m.
MOORE is silent on wherein the first coating composition and the second coating composition contact each other at an interface that is disposed across the gap thereby forming the continuous layer wherein the continuous layer is free of bleeding of the first coating composition into the second and/or the second coating composition into the first that exceeds about 20 microns as measured perpendicularly from the interface towards an edge of the substrate.
MOORE does teach "As another non-limiting example, the surface tension of the first basecoat layer may be decreased to improve improved boundary retention and/or resolution of the coating composition as being applied to the first basecoat layer utilizing the high transfer efficiency applicator 12. This improved boundary retention and/or resolution may be desirable when printing the coating composition as a design, a writing, and the like. Further, one may consider the impact of wet-on-wet application between the first basecoat layer and the second basecoat layer. For example, carrier selection and additive selection may have an effect on the suitability for the coating composition to be applied to the first basecoat as a wet-on-wet application" (paragraph 156, lines 14-26), i.e. wherein the boundary retention of an applied layer is affected by the surf ace tension.
MOORE also teaches using additives to control the flow characteristics of the coating compositions (234).
MOORE is silent on the bleeding of adjacent color layers. ROBERTS teaches "The present disclosure provides an ink-jet ink ... Still further, the disclosure pertains to a method of printing wherein the first ink and second ink of the ink set are printed in an adjacent relationship, thereby minimizing penetration, feathering and/or bleed of the colorant and improving print quality" ( abstract, lines 1 and 14-18).
ROBERTS teaches that the bleed control is achieved by additives (paragraph 55).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the minimization of color penetration such that the desired print quality is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Arguments
Applicant's arguments filed 11/12/25 and Affidavit dated 11/12/25 have been fully considered but they are not persuasive.
Applicant’s principal arguments from the Remarks dated 11/12/25 are summarized and addressed here below:
a) Applicant references the Affidavit, stating that “After the application of the coating compositions to the target areas of the substrate, these compositions physically flow together, bridging the gap to form the continuous layer”.
Examiner notes there is nothing in the claim about the compositions physically flowing together to bridge a gap between the applied compositions. The gap of the claims is defined completely independently of the applied compositions, only existing in context of the conceptual idea of target areas. Those target areas are explicitly defined in the claim as being different from the application area, as only 99.9% of the coating needs to be applied to the target area. The 0.1% leftover can be applied to the gap to form a continuous and still fall within the claim.
Applicant’s argument is not germane with the scope of the claim. Examiner will address the Affidavit more specifically below.
b) Applicant argues that the desired continuous layer (i.e. an aesthetically defect-free coating) would form only where the gap is present.
MOORE explicitly states that its process forms a uniform coating from the first and second composition. A uniform coating is inherently continuous. Applicant’s assertion is directly contradicted by the plain language of MOORE. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
Applicant’s arguments cannot be considered persuasive as they are not germane with the scope of the claim, only applying to an unclaimed embodiment wherein there is flow of the compositions across a gap that exists between application areas, and directly contradict statements of the art.
The Affidavit filed 11/12/25 is discussed below:
Within the Affidavit, Declarant makes that assertion that the "gap between the target areas exists prior to and during application of the coating compositions". Declarant goes on to describe that this gap allows for the flowing of the composition after application, giving space so that the coatings do not bleed/mix into each other, and then asserts that this proves that the gap is not arbitrary.
Examiner respectfully points out that the gap as described and discussed by Declarant in the Affidavit is not germane with the scope of the claim.
Firstly, there is no 'flowing after the application' in the claim, a fact which is integral to Declarant's argumentation in the Affidavit and renders much of the discussion irrelevant to the claims. All the independent claims, 1, 21 and 22 are completely silent on the gap existing between the compositions at application, only that the gap exist between 'target areas'. Declarant's arguments are all drawn to the existence of the gap between the compositions which the compositions flow over to cover, which is not the scope of the claim. The gap of the claims is ill-defined, as demonstrated by Declarant's own examples. Further, it would be improper to read in a step of flowing compositions into the claim when there is no language relating to that within the claims.
Secondly the language relating to this in the independent claim 1 and 22 is very general, merely requiring "to form a continuous layer of a combination of the first and second coating compositions that extends across the gap". There is no requirement that there is no mixing between the layers or that an aesthetic partition be achieved. As such, a gap with a mixture of the two compositions falls within the scope of the claim as it achieves the 'a continuous layer' required. Further, considering the gap can be as small as 0.0001 mm, and that the application of the first and second composition only requires that 99.9% to strike the target areas, the leftover 0.1% of the application area can be applied to the gap to close it and still fall within the scope of the claim.
Thirdly, Declarant's assertion that the rheology must be balanced to achieve these results is not particularly persuasive because the rheology of the claims is directly anticipated by MOORE. MOORE has matching ranges for viscosity, density and surface tension of the claims, as well as having a nearly identical device and coverage. MOORE even has identical rheology in later dependent claim 2, sharing the same Ohnesorge, Reynolds and Deborah numbers. Arguing that his rheology is integral in achieving the result of the invention undermines the asserting of allowability because MOORE directly anticipates those aspects of the invention.
Fourthly, Declarant's conception of the invention is not germane with the scope of the claim, any comparison to MOORE is fundamentally irrelevant to the discussion at hand and cannot be considered persuasive. Declarant's assertion that the existence of the gap ensures a continuous coating is contradicted directly by MOORE as it explicitly forms a uniform coating from the first and second compositions.
Simply put, the Declarant's arguments, examples and testimony are not germane with the scope of the claim and cannot be considered persuasive as a result. Examiner welcomes an amendment so an embodiment of the invention wherein the gap between the application areas avoids bleeding between the two compositions can be considered, however proper support of that must be found within the specification and not outside of it.
As currently written, the limitation of "defining a first target area and a second target area which define a gap there between of from greater than 0 mm and up to less than about 2 mm" is arbitrary as it only limits conceptual aspects of the invention (TARGET areas, which are not analogous to APPLICATION areas by the claims own definition), and as such doesn't provide patentable distinction over the art.
Declarant's conception of the invention is not germane with the scope of the claim, any comparison to MOORE or attempt to rebut the rejection is fundamentally irrelevant and cannot be considered persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717