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 .
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 3, 17 and 19 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 3 recites the limitation "the amount of pigment P-C1 C2" in line 3. There is insufficient antecedent basis for this limitation in the claim. For examination purposes this has been interpreted as “the amount of pigment P-C1”.
Claim 17 recites the limitation "the amount of pigment P-C1 C2" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes this has been interpreted as “the amount of pigment P-C1”.
Claim 19 recites the limitation "the at least one platelet-shaped pearlescent or interference pigment" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, 5-17, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0338987 (Ferris et al.) in view of US 2004/0116554 (Karunaratne et al.).
Regarding claim 1, Ferris discloses a multilayer coating system being present on an optionally pre-coated substrate and comprising at least three coating layers L1, L2 and L3 being different from one another (see paragraphs 0012-0016), namely
A first coating layer L1 (first basecoat) applied over at least a portion of an optionally pre-coated substrate (see paragraph 0047),
A second coating layer L2 (second basecoat) applied over the first coating layer L1 (see paragraph 0081), and
A third top coating layer L3 (topcoat or clearcoat) applied over the second coating layer L2 (see paragraphs 0092 and 0102),
Wherein the first coating layer L1 is formed from a primer coating composition (first basecoat composition) and the second coating layer L2 is formed from a (second) basecoat composition different from the primer (first basecoat) coating composition (see paragraph 0081),
Wherein the primer (first basecoat) coating comprising at least one constituent P-A at least one film-forming polymer (see paragraph 0066), water and/or one or more organic solvents as constituents (see paragraph 0074), and is free of or essentially free of metal effect pigments (see paragraph 0061), but comprises pigment mixture as at least one constituent comprising at least two kinds of pigments being different from one another, namely at least one organic black pigment or inorganic black pigment, which is not a carbon black pigment and which is reflective or substantially reflective to NIR-radiation, and at least one inorganic white pigment, which is reflective or substantially reflective to NIR-radiation (see paragraph 0061).
The reference also discloses that the total pigments are preferably present in a range of at most 40% based on the total solid content of the first basecoat composition (see paragraph 0063), and the black pigment is preferably present from 8.0-16 wt% (see paragraph 0064), thus the white pigment would be present up to 24-32 wt% (40-16=24, 40-8=32) which is within the claimed ranges of 0.1 to 20.0 wt% for the black pigment and 0.2 to 40.0 wt% for the white pigment.
The reference also discloses that the (second) basecoat composition comprises at least one constituent at least one film-forming polymer and at least one effect pigment, (see paragraphs 0086 and 0091). Ferris does not state that at least one pigment in the basecoat composition exceeds the amount of any aluminum metal effect pigments optionally also present therein; however, in the analogous field of automobile coatings, Karunaratne teaches that an aesthetic sparkle effect and assistance with paint flow viscosity control (see paragraph 0030) can be achieved when a white pigment is provided in an amount from 4-7 wt% and a metallic aluminum is provided in an amount from 0.2-3.0% (see paragraphs 0028-0029). It would have been obvious to one having ordinary skill in the art before the effective filing date to use the ratios taught by Karunaratne as the effect pigment in the Ferris coating in order to achieve an aesthetic sparkle effect and assistance with paint flow viscosity control.
Regarding claim 2, Ferris also discloses that the first coating layer formed from the primer (first basecoat) coating is applied over at least a portion of the optionally pre-coated substrate (see paragraph 0081). The reference discloses the brightness values measured at an angle of 110 degrees (see paragraph 0142); however, the brightness at 45 degrees is not stated and the LiDAR reflectivity is not stated. The reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 3, as discussed above, Ferris discloses that the amount of white pigment is present in amount of 24-32 wt% (40-16=24, 40-8=32) while the amount of black pigment is from 8.0-16 wt% (see paragraph 0064), therefore the amount of white pigment is present in an amount that exceeds the amount of black pigment.
Regarding claim 5, as discussed above, Ferris in view of Karunaratne discloses a white pigment provided in an amount from 4-7 wt% and a metallic aluminum is provided in an amount from 0.2-3.0%, yielding a relative weight ratio overlapping the claimed range of 15:1.0 to 1.1:1.0. 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).
Regarding claim 6, Ferris also discloses that the (second) basecoat composition additionally may comprise an effect pigment (see paragraph 0086). As discussed above, Karunaratne teaches that an aesthetic sparkle effect and assistance with paint flow viscosity control (see paragraph 0030) can be achieved when a white pigment and a metallic aluminum are provided as effect pigments (see Karunaratne paragraphs 0028-0029). It would have been obvious to one having ordinary skill in the art before the effective filing date to use a white pigment along with metallic aluminum as the effect pigment in the Ferris coating in order to achieve an aesthetic sparkle effect and assistance with paint flow viscosity control as taught by Karunaratne.
Regarding claim 7, Ferris in view of Karunaratne also discloses an embodiment where at least one pearlescent or interference pigment is provided in an amount of 5.6 wt% (see Karunaratne Table 1, composition 33) based on the total weight of the basecoat composition, which is within the claimed range of 1-15 wt%.
Regarding claim 8, Ferris also discloses that both the primer (first basecoat) coating composition used to form the first (first basecoat) coating layer and the (second) basecoat composition used to form the second coating layer are free or essentially free of any carbon black (see paragraph 0052).
Regarding claim 9, while Ferris does not disclose the LiDAR reflectivity measured at an angle of incidence of 45 degrees, of at least 10% and that the multilayer coating has a flop index of greater than or equal to 8, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 10, Ferris also discloses that the third coating layer is formed from a coating composition, which is a clearcoat composition, wherein the third coating layer is the outermost coating layer of the multilayer coating system (see paragraph 0102).
Regarding claim 11, Ferris also discloses that at least the second and third coating layers are positioned adjacently to each other (see paragraph 0102).
Regarding claim 12, Ferris also discloses that the multilayer coating system is obtained by a method, according to which at least the basecoat composition, which is used for preparing the second coating layer, and the coating composition used for preparing the third coating layer, are jointly cured to obtain the second and third coating layers of the multilayer coating system (see paragraph 0125).
Regarding claim 13, Ferris also discloses a method for preparing the multilayer coating system according to claim 1, comprising the steps of
1) applying a primer (first basecoat) coating composition to at least a portion of an optionally pre-coated substrate and forming a first coating film on at least a portion of the optionally pre-coated substrate (see paragraph 0047),
2) applying a basecoat composition different from the primer coating composition applied in step (1) to the first coating film present on the substrate obtained after step (1) and forming a second coating film (see paragraph 0081),
3) applying a coating composition different from the compositions applied in steps (1) and (2) to the second coating film present on the substrate after step (2) and forming a third coating film (clearcoat) (see paragraph 0102), and
4) jointly curing at least the second and third coating films applied in steps (2) and (3) and optionally also the first coating film applied in step (1) in case said first coating film was not cured prior to performing of step (2) to obtain a multilayer coating system comprising at least the first, the second and the third coating layers (see paragraph 0125).
Regarding clam 14, Ferris also discloses in spatially separated form as part (A), a primer (first basecoat) coating composition used for preparing the first coating layer of the multilayer coating system of claim 1 (see paragraph 0047),
And as part (B), a (second) basecoat composition used for preparing a second coating layer of the multilayer coating system (see paragraph 0081), and optionally as part (C), a clearcoat composition, used for preparing the third coating layer of the multilayer coating system (see paragraph 0107).
While Ferris does not state that the parts are a kit, it would have been obvious to one having ordinary skill in the art that the separate compositions be provided as a kit for ease of use.
Regarding claim 15, utilizing the compositions as disclosed by Ferris would inherently improve LiDAR reflectivity, measured at an angle of incidence of 0 degrees, and the flop index of multilayer coating systems, since the components include all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 16, Ferris also discloses that the first coating layer formed from the primer (first basecoat) coating is applied over at least a portion of the optionally pre-coated substrate (see paragraph 0081). The reference discloses the brightness values measured at an angle of 110 degrees (see paragraph 0142); however, the brightness at 45 degrees is not stated and the LiDAR reflectivity is not stated. The reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 17, Ferris also discloses that the amount of white pigment is present in amount of 24-32 wt% (40-16=24, 40-8=32) while the amount of black pigment is from 8.0-16 wt% (see paragraph 0064), therefore the amount of white pigment is present in an amount that exceeds the amount of black pigment, and yielding a relative weight ratio of the pigments overlaps the claimed range of 15:1 to 1.1:1.
Regarding claim 19, as discussed above, Ferris in view of Karunaratne discloses at least one pearlescent or interference pigment comprising a white pigment provided in an amount from 4-7 wt% and a metallic aluminum is provided in an amount from 0.2-3.0%, yielding a relative weight ratio overlapping the claimed range of 12:1.0 to 1.2:1.0. 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).
Regarding claim 20, Ferris also discloses that the third coating layer (clearcoat) is formed from a coating composition, which is a solventborne composition, wherein the third coating layer is the outermost coating layer of the multilayer coating system (see paragraph 0107).
Claims 4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0338987 (Ferris et al.) in view of US 2004/0116554 (Karunaratne et al.) further in view of US 8,679,617 (Eibon et al.).
Ferris in view of Karunaratne discloses a multilayer coating system as discussed above.
Regarding claim 4, Ferris also discloses that the black pigment may be perylene or azomethine pigments, in particular Paliogen Black L0086 (see paragraph 0051). While the references do not state that the black pigment has a masstone color according to the CIELAB system at 45 degrees with the claimed L* values, applicant’s disclosure at pages 22-23 states that the black pigment may be Paliogen Black L0086 which meets these standards.
Ferris does not state that the white pigment is titanium dioxide; however, Eibon teaches an analogous multilayer coating system wherein it is disclosed that it is known in the art to use titanium dioxide as a white pigment (see column 9, lines 19-56). It would have been obvious to one having ordinary skill in the art before the effective filing date to use titanium dioxide as the white pigment in the Ferris coating as taught by Eibon. Eibon further discloses an embodiment where Ti-Pure is used as the titanium dioxide pigment (see Table 6, including footnote). While the references do not state that the white pigment has a masstone color according to the CIELAB system at 45 degrees with the claimed L* values, applicant’s disclosure at pages 22-23 states that the white pigment may be Ti-Pure which meets these standards.
Regarding claim 18, Ferris also discloses that the black pigment may be perylene or azomethine pigments (see paragraph 0051).
Ferris does not state that the white pigment is titanium dioxide; however, Decker teaches an analogous multilayer coating system wherein it is disclosed that it is known in the art to use titanium dioxide as a white pigment (see column 5, lines 38-47). It would have been obvious to one having ordinary skill in the art before the effective filing date to use titanium dioxide as the white pigment in the Ferris coating as taught by Decker.
Claims 1-5, 7, 8, 10-13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over “Dark colored coatings exhibiting high NIR reflectance with improved coloristic properties and jetness” (of record, hereinafter referred to as “npl document”).
Regarding claim 1, npl document discloses a multilayer coating system being present on an optionally pre-coated substrate (see page 9, paragraph 1) and comprising at least three coating layers L1, L2 and L3 being different from one another (see page 12, paragraph 3), namely
A first coating layer L1 (a primer) applied over at least a portion of an optionally pre-coated substrate (see page 9, paragraph 1 and page 12, paragraph 3),
A second coating layer L2 (a basecoat) applied over the first coating layer L1 (see page 12, paragraph 3), and
A third top coating layer L3 (clearcoat) applied over the second coating layer L2 (see page 12, paragraph 3),
Wherein the first coating layer L1 is formed from a primer coating composition (see page 10, paragraph 1) and the second coating layer L2 is formed from a basecoat composition different from the primer coating composition (see page 10, paragraph 2),
Wherein the primer coating comprising at least one constituent P-A at least one film-forming polymer (see page 3, paragraph 1 and page 9, paragraph 3), water and/or one or more organic solvents as constituents (see page 11, paragraph 3), and is free of or essentially free of metal effect pigments (see page 8, paragraph 3 which states that metal effect pigments are optional and are in the basecoat layer if present, thus an embodiment free of metal effect pigments is envisaged), but comprises pigment mixture as at least one constituent comprising at least two kinds of pigments being different from one another, namely at least one organic black pigment or inorganic black pigment, which is not a carbon black pigment and which is reflective or substantially reflective to NIR-radiation, and at least one inorganic white pigment, which is reflective or substantially reflective to NIR-radiation (see page 10, paragraph 1 which states that the primer may comprise white pigments and may also comprise NIR reflective pigments “as described above”, referring to Page 6, paragraph 3 where it teaches examples of NIR reflective pigments include inorganic Pigment Black).
The reference also discloses that the pigments are preferably present in a range from 5-40% based on the non-volatile part of the coating composition (see page 9, paragraph 3), which overlaps the claimed ranges of 0.1 to 20.0 wt% and 0.2 to 40.0 wt% of the primer coating composition. 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).
The reference also discloses that the basecoat composition comprises at least one constituent at least one film-forming polymer and at least one effect pigment, which is a pearlescent or interference pigment, which is preferably coated mica pigments(see page 7, paragraph 3, page 9, paragraph 2 and page 10, paragraphs 2-3), thus an embodiment where the at least one pigment in the basecoat composition exceeds the amount of any aluminum metal effect pigments optionally also present therein.
Regarding claim 2, the npl document also discloses that the first coating layer formed from the primer coating is applied over at least a portion of the optionally pre-coated substrate (see page 9, paragraph 1). The reference discloses the brightness values measured at an angle of 25 degrees; however, the brightness at 45 degrees is not stated and the LiDAR reflectivity is not stated. However, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 3, the npl document does not specify that the amount of white pigment in the primer coating composition exceeds the amount of black pigment in the primer coating composition; however, at page 8, paragraph 3 it is disclosed that “the amount of black pigment may be varied depending on the desired color of the coating”. It therefore would have been obvious to one having ordinary skill in the art to one having ordinary skill in the art before the effective filing date to vary the ratio of white pigment to black pigment, depending on the desired final color choice (see MPEP 2144.04 (I)).
Regarding claim 5, the npl document does not specify a relative weight ratio of the at least one pearlescent or interference pigment to any one or more aluminum metal effect pigment; however, the claim does not require that the aluminum metal effect is present in the basecoat, thus the claim limitations are met.
Regarding claim 7, the npl document also discloses that the pearlescent or interference pigment is present in the basecoat composition in an amount from 1 to 50 wt% (see page 7, paragraph 4), which overlaps the claimed range of 1 to 15 wt%. 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).
Regarding claim 8, the npl document also discloses an embodiment wherein both the primer coating composition used to form the first coating layer and the basecoat composition used to form the second coating layer are free or essentially free of any carbon black (see page 10, paragraph 1 which states that the primer may comprise white pigments and may also comprise NIR reflective pigments “as described above”, referring to Page 6, paragraph 3 where it teaches examples of NIR reflective pigments include inorganic Pigment Black, and page 12, paragraphs 3-5 where no carbon black is disclosed for use in the basecoat).
Regarding claim 10, the npl document also discloses that the third coating layer is formed from a coating composition, which is a clearcoat composition, wherein the third coating layer is the outermost coating layer of the multilayer coating system (see page 11, paragraph 5).
Regarding claim 11, the npl document also discloses that at least the second and third coating layers are positioned adjacently to each other (see page 11, paragraph 5).
Regarding claim 12, the npl document also discloses that the multilayer coating system is obtained by a method, according to which at least the basecoat composition, which is used for preparing the second coating layer, and the coating composition used for preparing the third coating layer, are jointly cured to obtain the second and third coating layers of the multilayer coating system (see page 14, paragraph 3).
Regarding claim 13, the npl document also discloses a method for preparing the multilayer coating system according to claim 1, comprising the steps of
1) applying a primer coating composition to at least a portion of an optionally pre-coated substrate and forming a first coating film on at least a portion of the optionally pre-coated substrate (see page 9, paragraph 1),
2) applying a basecoat composition different from the primer coating composition applied in step (1) to the first coating film present on the substrate obtained after step (1) and forming a second coating film (see page 10, paragraph 5),
3) applying a coating composition different from the compositions applied in steps (1) and (2) to the second coating film present on the substrate after step (2) and forming a third coating film (clearcoat) (see page 10, paragraph 4), and
4) jointly curing at least the second and third coating films applied in steps (2) and (3) and optionally also the first coating film applied in step (1) in case said first coating film was not cured prior to performing of step (2) to obtain a multilayer coating system comprising at least the first, the second and the third coating layers (see page 14, paragraph 3).
Regarding claim 20, the npl document also discloses that the third coating layer (clearcoat) is formed from a coating composition, which is a solventborne composition, wherein the third coating layer is the outermost coating layer of the multilayer coating system (see page 10, paragraph 4 and page 11, paragraph 5).
Conclusion
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/WENDY L BOSS/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749