DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1-8 in the reply filed on 05/04/2026 is acknowledged.
Claim Objections
Claims 7 and 8 are objected to because of the following informalities:
in claim 7, line 3, “as iron oxide” should read “iron oxide”;
in claim 8, line 3, “colored translucent” should read “colored translucent composition” to be consistent with Specification, paragraph [0012].
Appropriate correction is required.
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 1-8 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.
Claim 1 recites the limitation "the colored coating composition" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Please note, claims 2-8 are rendered indefinite as a result of their dependency on claim 1.
The term “about” in claims 2-5 is a relative term which renders the claim indefinite. The term “about” 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.
Claim 8 recites the limitations "the color family" in line 2, “the area” in line 3, “the appearance” and “the underlying surface” in line 4. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yun et al. (US 10030162 B2), hereinafter referred to as YUN.
Regarding claim 1, YUN teaches a colored composition comprising:
a carrier (Col. 3, lines 23-24: the composition comprises water);
a polymeric resin selected from the group consisting of alkyds, epoxides, polyurethanes, acrylics, vinyls, hydrocarbon resins, and rubbers (Col. 3, lines 26-45: the polymer particles used in the protective composition and optionally the first colorant dispersion of the present invention are preferably the polymerization product of at least one ethylenically unsaturated nonionic monomer; the ethylenically unsaturated nonionic monomers used in the present invention include (meth)acrylic ester monomers; (meth)acrylonitrile; (meth)acrylamide; amino-functional and ureido-functional monomers; monomers bearing acetoacetate-functional groups; styrene and substituted styrenes; butadiene; ethylene, propylene, α-olefins such as 1-decene; vinyl acetate, vinyl butyrate, vinyl versatate and other vinyl esters; and vinyl monomers such as vinyl chloride and vinylidene chloride); and
a colorant selected from a white, gray, bronze, green, red, blue, orange, yellow, or violet colorant (Col. 2, lines 44-52: examples of the colorant particles include titanium dioxide white, carbon black, lampblack, black iron oxide, red iron oxide, transparent red oxide, yellow iron oxide, transparent yellow oxide, brown iron oxide, phthalocyanine green, phthalocyanine blue, naphthol red, quinacridone red, quinacridone violet, and organic yellow),
wherein the colored coating composition is translucent or semi-transparent (Col. 2, line 32: the semitransparent color dispersion).
Regarding claim 6, YUN teaches the colored composition of claim 1, wherein the polymeric resin is a member selected from the group consisting of styrene butadiene resins, polybutadiene resins, ethylene propylene resins, acrylonitrile butadiene resins, polyisoprene resins, thermoplastic alpha-methyl styrene polymers, hydrogenated hydrocarbon resins, hydrogenated polyolefin having 6 to 20 carbon atoms, hydrogenated terpene resins, rosin ester resins, hydrogenated rosin glycerol ester resins, and combinations thereof (Col. 3, lines 26-45: the polymer particles used in the protective composition and optionally the first colorant dispersion of the present invention are preferably the polymerization product of at least one ethylenically unsaturated nonionic monomer; the ethylenically unsaturated nonionic monomers used in the present invention include (meth)acrylonitrile; styrene and substituted styrenes).
Regarding claim 7, YUN teaches the colored composition of claim 1, wherein the colorant is a pigment selected from the group consisting of titanium dioxide, zinc oxide, antimony oxide, iron oxide, carbon black, phthalocyanine blue, quinacridone red, perylene violet, lead chromate, silicochromates, barium carbonate, china clay, zinc sulfide, zirconium oxide, antimony oxide, titanium dioxide, chrome green, chrome yellow, thio-indigo red, phthalo blue, pthalo green, cobalt blue, cadmium yellow, cadmium red, toluidine red, graphite, carbon black, metallic aluminum, metallic zinc, and a combination of two or more thereof (Col. 2, lines 44-52: examples of the colorant particles include titanium dioxide white, carbon black, lampblack, black iron oxide, red iron oxide, transparent red oxide, yellow iron oxide, transparent yellow oxide, brown iron oxide, phthalocyanine green, phthalocyanine blue, naphthol red, quinacridone red, quinacridone violet, and organic yellow).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baikerikar et al. (JP 2009541196 A) with reference to the provided machine translation, hereinafter referred to as BAIKERIKAR.
Regarding claim 1, BAIKERIKAR teaches a colored composition comprising:
a carrier (paragraph 1, p. 9: the composition comprises a reactive diluent);
a polymeric resin selected from the group consisting of alkyds, epoxides, polyurethanes, acrylics, vinyls, hydrocarbon resins, and rubbers (paragraph 4, p. 8: one component of the composition is a film-forming resin; the preferred types of oligomers and prepolymers are urethane acrylates such as aliphatic and
aromatic urethane acrylates, epoxy acrylates, melamine acrylates, polyester acrylates, polyether acrylates, silicone acrylates, dendritic acrylates, polybutadiene acrylates, amine acrylates, acrylic acrylates, amides or mixtures thereof); and
a colorant selected from a white, gray, bronze, green, red, blue, orange, yellow, or violet colorant (paragraph 3, p. 11: the composition further comprises a pigment or a dye; preferred inorganic pigments include black iron oxide, zinc oxide, cerium oxide and titania (TiO2), while preferred organic pigments include carbon black, phthalocyanine, anthraquinone, perylene, carbazole, monoazo and diazobenzimidazolone),
wherein the colored coating composition is translucent or semi-transparent (paragraph 2, p. 25: the coating comprises one or more pigments or dyes that render the coating translucent or opaque).
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
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.
Claims 2-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over YUN.
Regarding claims 2-4, YUN teaches the colored composition of claim 1, wherein the colorant is present in an amount of from about 0.00001% to about 0.02% (claim 2), from about 0.00005% to about 0.015% (claims 3), from about 0.0001% to about 0.01% (claims 4) by weight of the composition (Col. 9, lines 20-22: a semi-transparent aqueous color dispersion comprising a first colorant dispersion and a protective composition; Col. 9, lines 23-25: the first colorant dispersion comprises from 0.05 wt.% to 10 wt.% of a first colorant; and Col. 10, lines 1-3: the weight to weight ratio of the first colorant dispersion to the protective composition is from 1:30 to 5:1). Thus, YUN teaches aqueous color composition comprising 0.00165 wt.% to 8 wt.% of colorant, which overlaps and renders obvious the claimed range. 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. See MPEP §2144.05(I).
Regarding claim 8, YUN teaches the colored composition of claim 1. According to MPEP §2111.04: “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure”. Since claim 8 is dependent on claim 1, and claim 1 as set forth is drawn to a colored composition, the phrase “wherein when applied to a surface having a shade of a color within the color family of the colored translucent, and the area of the surface to which the colored composition is applied has the appearance of the shade of the color of the underlying surface” is a statement of intended use and is not considered further limiting structurally the colored composition. However, it is noted, that since YUN teachers all structural limitations of colored composition set forth in claim 1, the claimed properties and functions are presumed to be inherent. See MPEP §2112.01(I): “where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best”.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over BAIKERIKAR.
Regarding claim 5, BAIKERIKAR teaches the colored composition of claim 1, wherein the colorant is present in an amount of about 0.00025% to about 0.0005% by weight of the composition (paragraph 3, p. 11: the pigment should be present in an amount such that the cured coating exhibits the desired light transmission at the desired coating thickness, preferably less than 1 percent). BAIKERIKAR teaches a range which overlaps with the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Batdorf et al. (US 6342556 B1) discloses a coating composition comprising latex polymer and water (Col. 2, lines 22-24); wherein the latex binder is made by the polymerization of at least one ethylenically unsaturated monomer or the latex from the post emulsification of condensation polymers such as esters of acrylic acid and methacrylic acid, vinyl esters, dienes and the like (Col. 2, lines 12-27), and various pigments can also be used to provide the appropriate color to the system; these pigments are used at a low level where desired to maintain semi-transparency; pigments can be classified as micas, graphite, talcs, aluminum hydrate, carbon black, lithopone, ferric/ferrous oxides, whiting, magnesium oxide or carbonate and so forth (Col. 5, lines 4-15).
Kelly et al. (EP 0178096 A2) discloses a process for matching the color characteristics of a paint containing film forming binder, a liquid carrier, colored pigments and flake pigments to the color characteristics of a surface layer that contains flake pigments; the improvement comprises the following: adding to the paint a dispersion comprising a liquid carrier, a dispersing agent and transparent or semitransparent extender pigments or rigid or semirigid organic particles, particularly preferred are hollow glass spheres, in an amount sufficient to match the color characteristics of the surface layer (Abstract).
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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