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 .
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.
Claims 1-20 are pending. Applicant’s previous election of Group I, claims 1-14, 18-20, still applies and claims 15-17 remain withdrawn.
Response to Amendment
Applicant’s amendment of 01/23/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Claim 6 recites a C* property that appears to only be enabled via the present examples which seem to achieve the property via a combination of the claimed block copolymer in combination with other polymer ingredients (certain types of homopolymers and amounts), while claim 6 does not require such additional homopolymer ingredients. Claim 6 thus encompasses a broader scope for which there is no guidance on achieving the claimed property (i.e., no guidance for achieving the property without the additional homopolymer ingredients). Therefore, the scope of claim 6 constitutes an undue amount of experimentation (i.e., experimenting with all possible types and amounts of additional polymers, i.e., homo and copolymers, to determine which if any, would be able to achieve the claimed C* property when combined with the claimed block copolymers).
It would appear remedial to recite the presence of an additional homopolymer, a Markush group of the types of such homopolymers, and a range of amounts of such homopolymers in the second layer, based on [0116] of the present PGPub, (which limitations would define a reasonably commensurate claim scope in relation to the enabled examples, i.e., would define a reasonable amount of experimentation for achieving the claimed property)
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon applying the Wands factors to claim 6, undue experimentation would be required:
(A) The breadth of the claims; (as explained above, the claims are broad in terms of the composition of the second layer relative to the much narrower guidance provided in the specification)
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the property as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various compositions without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain a composition comprising a certain type of block copolymer in combination with other polymer ingredients (see above), without any corresponding direction provided for achieving the claimed property with the broader compositions as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
Claim Rejections - 35 USC § 103
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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 1-5, 7-12, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chabinyc (U.S. 2020/0362117).
Regarding claims 1-5, 7-12, and 18-20, Chabinyc discloses a multilayer coating on a substrate comprising a substrate, a pigmented first layer (i.e., carbon black paint/ink electrode, [0173], [0264] as in claims 2, 3, and 18, with limitations related to the composition that forms the first layer having limited patentable weight as a product by process limitation), followed immediately by a transparent compressible dielectric layer (as in claims 3, 4, 5, 7, and 19, with limitations related to the composition that forms the second layer having limited patentable weight as a product by process limitation) comprising bottlebrush polymer which may be a block copolymer, having blocks with different polymer (M1 and M2) side chains selected from the same side chains as claimed (as in claims 1, 8, 9, and 11), as well as a crosslinker for crosslinking the block copolymer ([0013]-[0015], [0021]-[0022], [0084], [0131], [0134], [0149], [0172]-[0174], [0308]). In light of the overlap between the claimed system and the multilayer coating disclosed by Chabinyc, it would have been obvious to one of ordinary skill in the art to use a system that is both disclosed by Chabinyc and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
As explained above, the black first layer absorbs visible light that is transmitted and not reflected by the transparent second layer, as in claim 3.
The product by process limitations of claims 7 and 19 related to curing/drying/using a solvent are not given patentable weight as product by process limitations, because the resulting final product does not have a structural distinction compared to the final product of the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
The molecular weight of the block copolymer is not disclosed, but molecular weight/molecular mass of the block copolymer is disclosed as effecting the number of inter-bottlebrush crosslinks per volume which affects the modulus and crosslinker efficiency ([0216]-[0218]), such that it would have been obvious to have adjusted the molecular weight of the block copolymer, including to values in claim 10, as part of optimizing the modulus/number of inter-bottlebrush crosslinkers per volume and crosslinker efficiency.
The transparent composition is also disclosed as having a crosslinker (see above), with the amount of crosslinker (and corresponding amount of block copolymer) in the layer being obvious to adjust, including to values within claim 12, as part of optimizing the shear modulus and mechanical properties ([0060]).
After applying the transparent block copolymer layer to the black paint first layer, the transparent block copolymer layer is the outermost coating layer of the coating system, as in claim 20.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chabinyc (U.S. 2020/0362117) in view of Macfarlane (U.S. 2016/0068669).
Regarding claims 13-14, Chabinyc discloses all of the above subject matter but does not disclose additional homopolymer/resin in the topcoat composition. However, Macfarlane is also directed to brush block copolymer compositions and discloses that homopolymers or copolymers (resins) may be added to brush block copolymers with the benefit of controlling periodicity, swelling, refractive index, and/or stability ([0065], [0091], [0163]) such that it would have been obvious to have added such homopolymers/resin to the block copolymer layer of Chabinyc for the benefits taught by Macfarlane.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the amendment to claim 6 resolves the 112 1st issue but ignores the portion of the rejection related to the homopolymer. The rejection is therefore maintained.
Applicant argues against the prior art-based rejection on the grounds that the present invention is distinct from the field of invention of the prior art. This is not persuasive because Applicant describes the present invention in ways that are not reflected in the present claims. That is, the present claims are not limited to the automobile industry and are broadly directed to a “multilayer coating system” that encompass the invention described in the prior art in terms of layer order and layer composition. Chabinyc is also directed to a “multilayer coating system.” Therefore, the prior art is related to the claimed invention sufficiently to render the claimed invention prima facie obvious.
Applicant then argues that Chabinyc’s layer order cannot render obvious the claimed layers based on FIG. 12. However, the reference is not limited to that figure. As cited in the rejection above (i.e., [0173]), the elastomeric dielectric layer, corresponding to the claimed layer L2, may be applied in Chabinyc to an electrode material which may be a non-conductive substrate (e.g., PET or glass) with a conductive coating thereon (e.g., carbon black, i.e., pigmented paint/coating, corresponding to the claimed layer L1), which would result in the multilayer including a substrate, an L1 layer, and an L2 layer, in that order, as claimed. Furthermore, FIG. 15 is mentioned in the cited [0173] paragraph, and shows that such electrodes may be further provided with wires so that the signal from the electrodes can be measured, and such wires would further constitute a substrate that contacts the carbon black electrode L1 that contacts the elastomeric L2 layer, as claimed. If Applicant is referring to the “applied over” language in claim 1 as being a point of distinction (i.e., implying an order in which the layers are formed), this is not given patentable weight in terms of limiting the order in which the layers are formed due to product by process analysis, as long as in the final product the layers are “over” one another as claimed, which is the case in Chabinyc as explained above.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787