DETAILED ACTION
Response to Amendment
In response to the amendment received on 08/06/2026:
claims 1 and 3-22 are currently pending
claims 9-22 are withdrawn from consideration
claims 1, 3-5 and 8 are amended
previously presented claim 8 objection is withdrawn in light of the amendment to the claim
previously presented claim 7 objection is maintained
previously presented rejections under 35 U.S.C. 112(b) are withdrawn in light of the amendment to the claims
previously presented prior art grounds of rejection are withdrawn in light of the amendment to the claims
new prior art grounds of rejection applying Sheerin and Baikerikar are presented herein
Claim Objections
Claim 7 is objected to because of the following informalities:
in claim 7, line 3, “as iron oxide” should read “iron oxide”.
Appropriate correction is required.
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 text of those sections of Title 35 U.S. Code not included in this action can be found in a prior Office Action.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sheerin et al. (US 20070155886 A1), hereinafter referred to as SHEERIN, in view of Baikerikar et al. (JP 2009541196 A) with reference to the provided machine translation, hereinafter referred to as BAIKERIKAR.
Regarding claim 1, SHEERIN teaches a colored composition comprising:
an organic solvent as a carrier, wherein the organic solvent is one or more members selected from the group consisting of alkylene carbonates, aliphatic hydrocarbons, aromatic hydrocarbons, alcohol, ketones, ethers, and glycols (see SHEERIN at paragraph[0034]: examples of organic solvents useful in the compositions, but are not limited to, alkyl ethers of alkylene glycols (e.g., 2-ethylhexyl ether of ethylene glycol), alkyl carbitols such as methyl carbitol, alkylene glycols (e.g., propylene glycol, ethylene glycol, and the like, and combinations thereof), fatty acid alkylene glycol monoesters);
a polymeric resin selected from the group consisting of alkyds, epoxides, polyurethanes, acrylics, vinyls, hydrocarbon resins, and rubbers (see SHEERIN at claim 2: the polymer particles are made from the following monomer repeat units: acrylic acid, ionic acrylate salts, alkacrylic acids, ionic alkacrylate salts, haloacrylic acids, ionic haloacrylate salts, polymerizable anhydrides, acrylamide, alkacrylamides, monoalkyl acrylamides, monoalkyl alkacrylamides, alkacrylamidoalkyl ethyleneureas, alkenyloxyamidoalkyl ethyleneureas, vinyl dicarboxylic organic acids, monoalkyl esters of vinyl dicarboxylic organic acids, monoisopropenyl esters of saturated vinyl dicarboxylic organic acids, alkyl acrylates, alkyl alkacrylates, alkyl esters of vinyl monocarboxylic organic acids other than acrylates and alkacrylates, dialkyl esters of vinyl dicarboxylic acids, styrene, alkylstyrenes, halostyrenes, isopropenyl esters of saturated monocarboxylic organic acids, monoisopropenyl monoalkyl esters of saturated dicarboxylic organic acids, vinyl carboxylate alkyl ethers, vinyl alkyl ethers, acrylonitrile); and
a colorant selected from a white, gray, bronze, green, red, blue, orange, yellow, or violet colorant (see SHEERIN at paragraph [0043]: examples of pigments/colorants useful according to the invention can include, but are not limited to, carbon black, iron oxide black, iron oxide yellow, iron oxide red, iron oxide brown, organic red pigments, including quinacridone red and metallized and non-metallized azo reds (e.g., lithols, lithol rubine, toluidine red, naphthol red), phthalocyanine blue, phthalocyanine green, mono- or di- arylide yellow, benzimidazolone yellow, heterocyclic yellow, DAN orange, quinacridone magenta, quinacridone violet, talc, clays, nepheline, syenite, titanium oxides, zinc oxides, and the like, and any combination thereof),
wherein the colored coating composition is translucent or semi-transparent; and wherein the colored composition is formulated for adherence to a metal surface (see SHEERIN at paragraphs [0024]: the coating composition can be transparent, translucent or semi-transparent; and [0027]: examples of substrates can include, but are not limited to: metals, including metal alloys, metal composites, coated metals, metallic surfaces, and the like, and combinations thereof; ceramics, including metal oxides, metal nitrides, metal oxynitrides, metal sulfides, metal carbides, and the like, and combinations thereof; transparent and/or translucent substrates such as glasses).
While SHEERIN discloses that any desired pigments/colorants of various colors can optionally be added to the composition (see SHEERIN at paragraph [0043]), SHEERIN is silent with respect to the colorant being present in an amount of from 0.00001% to 0.02% by weight of the composition.
However, BAIKERIKAR discloses a pigment or dye-containing coating having different colored pigments or dyes (see BAIKERIKAR at paragraph 3, p. 7). BAIKERIKAR also discloses the composition comprising 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 (see BAIKERIKAR at paragraph 4, p. 8); and one or more pigments or dyes that render the coating translucent or opaque (see BAIKERIKAR at paragraph 2, p. 25). Additionally, BAIKERIKAR teaches that 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 (see BAIKERIKAR at paragraph 3, p. 11).
Both SHEERIN and BAIKARIKAR disclose translucent coatings comprising pigments (see SHEERIN at paragraphs [0024] and [0043]; and BAIKERIKAR at paragraph 2, p. 25). Furthermore, similarly to SHEERIN describing that examples of substrates can include metals and glass (see SHEERIN at paragraph [0027]), BAIKARIKAR discloses coating a glass substrate (see BAIKERIKAR at paragraph 3, p. 7).
MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05(II)(A)). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by BAIKERIKAR, because there is a reasonable expectation of success that adding pigment in an amount of less than 1 percent disclosed by BAIKERIKAR (see BAIKERIKAR at paragraph 3, p. 11) would be suitable.
Regarding claims 3-5, SHEERIN as modified by BAIKERIKAR teaches the colored composition of claim 1, wherein the colorant is present in an amount of from about 0.00005% to about 0.015% (claims 3), from about 0.0001% to about 0.01% (claims 4), from about 0.00025% to about 0.0005% (claim 5) by weight of the composition. (see BAIKERIKAR at 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. 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 6, SHEERIN as modified by BAIKERIKAR 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 (see SHEERIN at claim 2: the polymer particles are made from the following monomer repeat units: acrylic acid, ionic acrylate salts, alkacrylic acids, ionic alkacrylate salts, haloacrylic acids, ionic haloacrylate salts, polymerizable anhydrides, acrylamide, alkacrylamides, monoalkyl acrylamides, monoalkyl alkacrylamides, alkacrylamidoalkyl ethyleneureas, alkenyloxyamidoalkyl ethyleneureas, vinyl dicarboxylic organic acids, monoalkyl esters of vinyl dicarboxylic organic acids, monoisopropenyl esters of saturated vinyl dicarboxylic organic acids, alkyl acrylates, alkyl alkacrylates, alkyl esters of vinyl monocarboxylic organic acids other than acrylates and alkacrylates, dialkyl esters of vinyl dicarboxylic acids, styrene, alkylstyrenes, halostyrenes, isopropenyl esters of saturated monocarboxylic organic acids, monoisopropenyl monoalkyl esters of saturated dicarboxylic organic acids, vinyl carboxylate alkyl ethers, vinyl alkyl ethers, acrylonitrile).
Regarding claim 7, SHEERIN as modified by BAIKERIKAR 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 (see SHEERIN at paragraph [0043]: examples of pigments/colorants useful according to the invention can include, but are not limited to, carbon black, iron oxide black, iron oxide yellow, iron oxide red, iron oxide brown, organic red pigments, including quinacridone red and metallized and non-metallized azo reds (e.g., lithols, lithol rubine, toluidine red, naphthol red), phthalocyanine blue, phthalocyanine green, mono- or di- arylide yellow, benzimidazolone yellow, heterocyclic yellow, DAN orange, quinacridone magenta, quinacridone violet, talc, clays, nepheline, syenite, titanium oxides, zinc oxides, and the like, and any combination thereof).
Regarding claim 8, SHEERIN as modified by BAIKERIKAR 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 SHEERIN as modified by BAIKERIKAR 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”.
Response to Arguments
Applicant’s arguments, see Remarks filed on 08/06/2026, with respect to the rejection(s) of claims 1-4 and 6-8 under YUN have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of SHEERIN.
Applicant argues that BAIKERIKAR discloses coating for glass; adherence to a glass surface and adherence to a metal surface are very different requirements, and require very different compositions; additionally, it is questionable whether BAIKERIKAR provides an enabling disclosure or adequate written description with respect to providing a translucent coating as required by the present claimed invention, since there is no disclosure of such a coating within the written description of BAIKERIKAR and the term "translucent" only appears to occur in the claims themselves (see Remarks received on 08/06/2026 spanning paragraphs on pages 7-8).
It is noted that the rejection of claim 1 as being anticipated by BAIKERIKAR and the rejection of claim 5 as being obvious over BAIKERIKAR have been withdrawn. However, according to MPEP §2123(I) “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))” and “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)”. Thus, BAIKERIKAR’s disclosure of the coating comprising one or more pigments or dyes that render the coating translucent or opaque in claims (see BAIKERIKAR at paragraph 2, p. 25) reasonably suggested to one having ordinary skill in the art that BAIKERIKAR teaches a translucent composition.
Furthermore, as was discussed in the rejection of claim 1 above, SHEERIN discloses the coating composition can be transparent, translucent or semi-transparent; and examples of substrates can include, but are not limited to: metals, including metal alloys, metal composites, coated metals, metallic surfaces, and the like, and combinations thereof; ceramics, including metal oxides, metal nitrides, metal oxynitrides, metal sulfides, metal carbides, and the like, and combinations thereof; transparent and/or translucent substrates such as glasses (see SHEERIN at paragraphs [0024] and [0027]). Thus, since SHEERIN teaches metal and glass among suitable substrates, one of ordinary skill in the art would have anticipated success when modifying the coating composition of SHEERIN by selecting amount of pigments disclosed by BAIKERIKAR.
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 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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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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