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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/08/2026 has been entered.
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa (JP 2021-115856) in view of Corten et al. (US 2017/0267875).
Regarding claim 1, Tomizawa teaches a multilayer coating film (Paragraph [0001]). The coating includes a colored base coating film containing a coloring pigment (“a least one ground coat layer”), a bright base coating film containing a light interference pigment (“at least one midcoat layer on top of the at least one ground coat layer”), and a clear coating film successively formed on a substrate (“at least one clearcoat layer on top of the at least one midcoat layer”) (Paragraph [0018]). The coatings provide an L* at 45° of at least 85 and an L* at 110° of 78 or more (“having a lightness L* according to CIELab of (i), (ii) and (iii)”) (Paragraphs [0009]-[0010]). The colored base coating film preferably contains a coloring pigment, a resin component and a medium consisting of water or an organic solvent wherein the coloring pigment includes titanium dioxide (Paragraphs [0042]-[0043]). The colored base coating film provides good hiding power for the substrate (Paragraph [0043]). The bright base coating film is formed from a light interference pigment, a viscosity adjuster, a resin component and water (Paragraph [0060]). The interference pigment may be a metal oxide, such as alumina, or mica with a flake or scaly shape coated in a metal oxide such as titanium oxide and may also be used in combinations of two or more (“at least one platelet-shaped titanium oxide pigment (P) selected from the group consisting of hydrogen titanium oxide (P1), titanium dioxide coated fluorinated mica (P2) and titanium dioxide coated aluminum (P3)”) (Paragraphs [0061]-[0064]). The bright base coating film provides bright highlights and a pearlescent appearance with little change in particle appearance depending on the viewing direction (Paragraph [0070]). The preferred substrates are automobile parts such as metallic materials which may be provided with primer coatings films (Paragraphs [0034]-[0037]).
Tomizawa is silent with respect to the coloring pigments being non-platelet shaped.
Corten teaches coating compositions for use on automobile bodies (Paragraphs [0001]; [0138]). The compositions include effect pigments which are defined as having platelet shapes and non-effect pigments having non-platelet shapes (Paragraphs [0117]-[0121]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention that the coloring pigments of titanium oxide would be in non-platelet form and the interference pigments, being equivalent to effect pigments, would have platelet shaped as taught by Corten.
Tomizawa is silent with respect to the coating films having the colored base coat and the bright base coat together providing a graininess of ≤ 2.5 and a liquid metal index LMI of ≥ 0.9.
However, it would have been obvious to one of ordinary skill in the art before the filing of the invention to optimize the graininess of the coating films taught by Tomizawa such that the films are directed to multilayer coating films which are used for automobile parts, as discussed above, and applicant’s invention is directed to the same (Instant Specification, PGPUB, Paragraph [0001]). Additionally, the films of Tomizawa and the coatings of applicant’s invention are substantially identical in materials and purposes. The base coat film of Tomizawa includes a coloring pigment, a resin component and a medium consisting of water or an organic solvent wherein the coloring pigment includes titanium dioxide and is designed to have good hiding power from the substrate it is applied to (Discussed Above) and applicant’s ground coat layer is directed towards the same (Instant Specification, PGPUB, Paragraphs [0053]-[0066]). The bright base coating film aims to improve bright highlights and a pearlescent appearance with little change in particle appearance depending on the viewing direction through the use of platelet-shaped pigments which are titanium dioxide based pigments (Discussed Above) and applicant’s midcoat layer is directed to the same (Instant Specification, PGPUB, Paragraphs [0067]-[0111]). Lastly, the film of Tomizawa and applicant’s invention both require clearcoat top layers. Therefore, the property of a coating system having a graininess of ≤ 2.5 is well within the purview of one of ordinary skill in the art and one of ordinary skill in the art would have found it obvious to optimize the graininess of the multilayer coating films of Tomizawa to overlap with the claimed range of less than or equal to 2.5. MPEP 2144.05(II): "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, each of the layers of the films of Tomizawa, in view of Corten, are identical in structure to their equivalents in the instant claims as discussed above. MPEP 2112.01: 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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). As such, one of ordinary skill in the art would recognize that the identical structures of Tomizawa in view of Corten and that of the instantly claimed invention would have identical properties as well, including the colored base coat and the bright base coat together providing a graininess of ≤ 2.5 and a liquid metal index LMI of ≥ 0.9 as claimed.
Regarding claim 2, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. The bright base coating films are further taught to include coloring pigments, which include the non-platelet titanium oxide coloring pigments as discussed above (Paragraph [0098]).
Regarding claim 3, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. As discussed above, the interference pigment may be a metal, metal oxide or mica with a flake or scaly shape coated in a metal oxide such as titanium oxide and may also be used in combinations of two or more.
Regarding claim 4, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. The bright base coating films are further taught to include coloring pigments, which include the non-platelet titanium oxide coloring pigments as discussed above (Paragraph [0098]). Additionally, the titanium dioxide coated mica includes fluorine phlogopite (Paragraphs [0061]-[0063]). This combination of teachings ultimately teaches “at least one non-platelet-shaped titanium dioxide pigment (T*) and at least one platelet-shaped titanium oxide (P) selected from the group consisting of hydrogen titanium oxide and titanium dioxide coated fluorinated mica.”
Regarding claim 5, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. As discussed above, the bright base coating film may include titanium dioxide coated alumina.
Regarding claim 6, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. The titanium dioxide coated mica includes fluorine phlogopite (Paragraphs [0061]-[0063]).
Regarding claim 7, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1.
Tomizawa is silent with respect to the coating films having a* being from -3.8 to +3.8 and b* being from -5 to +4, according to CIELab system at viewing angles of -15°, +15°, +25°, +45°, +75°, +110°.
As discussed above, the coating systems of Tomizawa and those of applicant’s invention are formed from identical materials for identical purposes. As such, it would have been obvious to one of ordinary skill in the art to optimize the visual properties of the coating films of Tomizawa including the properties of a* being from -3.8 to +3.8 and b* being from -5 to +4, according to CIELab system at viewing angles of -15°, +15°, +25°, +45°, +75°, +110°.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa (JP 2021-115856) in view of Corten et al. (US 2017/0267875) as applied to claim 1 above, and further in view of Sakai et al. (WO 2021/002196) with (US 2022/0348773) as an English language translation.
Regarding claim 15, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. As discussed above, the bright base coating layer is provided with light interference pigments, which may be titanium oxide, titanium oxide coating fluorinated mica, and titanium oxide coated aluminum (Paragraphs [0061]-[0066]).
Tomizawa is silent with respect to the light interference pigments having a particle size of 5 to 50 microns.
Sakai teaches effect paints for automobiles (Paragraph [0001]). The paints include effect pigments including light interference pigments which have an average particle size of 5 to 30 microns in order to provide an excellent pearly luster (Paragraphs [0072]-[0098]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the light interference pigments of Tomizawa such that they having an average particle size of 5 to 30 microns in order to provide an excellent pearly luster, as taught by Sakai.
Regarding claim 16, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. As discussed above, the bright base coating layer is provided with light interference pigments, which may be titanium oxide, titanium oxide coating fluorinated mica, and titanium oxide coated aluminum (Paragraphs [0061]-[0066]).
Tomizawa is silent with respect to the light interference pigments having a particle size of 2 to 40 microns.
Sakai teaches effect paints for automobiles (Paragraph [0001]). The paints include effect pigments including light interference pigments which have an average particle size of 5 to 30 microns in order to provide an excellent pearly luster (Paragraphs [0072]-[0098]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the light interference pigments of Tomizawa such that they having an average particle size of 5 to 30 microns in order to provide an excellent pearly luster, as taught by Sakai.
Regarding claim 17, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 1. As discussed above, the bright base coating layer is provided with light interference pigments, which may be titanium oxide, titanium oxide coating fluorinated mica, and titanium oxide coated aluminum (Paragraphs [0061]-[0066]).
Tomizawa is silent with respect to the light interference pigments having a particle size of 5 to 20 microns.
Sakai teaches effect paints for automobiles (Paragraph [0001]). The paints include effect pigments including light interference pigments which have an average particle size of 5 to 30 microns in order to provide an excellent pearly luster (Paragraphs [0072]-[0098]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the light interference pigments of Tomizawa such that they having an average particle size of 5 to 30 microns in order to provide an excellent pearly luster, as taught by Sakai.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa (JP 2021-115856).
Regarding claim 8, Tomizawa teaches a multilayer coating film (Paragraph [0001]). The coating includes a colored base coating film containing a coloring pigment (“a least one ground coat layer”), a bright base coating film containing a light interference pigment (“at least one midcoat layer on top of the at least one ground coat layer”), and a clear coating film successively formed on a substrate (“at least one clearcoat layer on top of the at least one midcoat layer”) (Paragraph [0018]). The coatings provide an L* at 45° of at least 85 and an L* at 110° of 78 or more (“having a lightness L* according to CIELab of (i), (ii) and (iii)”) (Paragraphs [0009]-[0010]). The colored base coating film preferably contains a coloring pigment, a resin component and a medium consisting of water or an organic solvent wherein the coloring pigment includes titanium dioxide (Paragraphs [0042]-[0043]). The colored base coating film provides good hiding power for the substrate (Paragraph [0043]). The bright base coating film is formed from a light interference pigment, a viscosity adjuster, a resin component and water (Paragraph [0060]). The interference pigment may be a metal oxide, such as alumina, or mica with a flake or scaly shape coated in a metal oxide such as titanium oxide and may also be used in combinations of two or more (Paragraphs [0061]-[0064]). The bright base coating film provides bright highlights and a pearlescent appearance with little change in particle appearance depending on the viewing direction (Paragraph [0070]). The preferred substrates are automobile parts such as metallic materials which may be provided with primer coatings films (Paragraphs [0034]-[0037]).
Tomizawa is silent with respect to the coating films having an L* at a viewing angle of +15° of at least 105. Tomizawa is also silent with respect to the coating films having the colored base coat and the bright base coat together providing a graininess of ≤ 2.5 and a liquid metal index LMI of ≥ 0.9.
However, it would have been obvious to one of ordinary skill in the art before the filing of the invention to optimize the visual properties of the coating films taught by Tomizawa, including L*, graininess and LMI, such that the films are directed to multilayer coating films which are used for automobile parts, as discussed above, and applicant’s invention is directed to the same (Instant Specification, PGPUB, Paragraph [0001]). Additionally, the films of Tomizawa and the coatings of applicant’s invention are substantially identical in materials and purposes. The base coat film of Tomizawa includes a coloring pigment, a resin component and a medium consisting of water or an organic solvent wherein the coloring pigment includes titanium dioxide and is designed to have good hiding power from the substrate it is applied to (Discussed Above) and applicant’s ground coat layer is directed towards the same (Instant Specification, PGPUB, Paragraphs [0053]-[0066]). The bright base coating film aims to improve bright highlights and a pearlescent appearance with little change in particle appearance depending on the viewing direction through the use of platelet-shaped pigments which are titanium dioxide based pigments (Discussed Above) and applicant’s midcoat layer is directed to the same (Instant Specification, PGPUB, Paragraphs [0067]-[0111]). Lastly, the film of Tomizawa and applicant’s invention both require clearcoat top layers. Therefore, the properties of a coating system having having an L* at a viewing angle of +15° of at least 105, a graininess of ≤ 2.5 and a liquid metal index of ≥ 0.9 are well within the purview of one of ordinary skill in the art and one of ordinary skill in the art would have found it obvious to optimize the visual properties of the multilayer coating films of Tomizawa to overlap with the claimed ranges required as discussed above. MPEP 2144.05(II): "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, each of the layers of the films of Tomizawa are identical in structure to their equivalents in the instant claims as discussed above. MPEP 2112.01: 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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). As such, one of ordinary skill in the art would recognize that the identical structures of Tomizawa and that of the instantly claimed invention would have identical properties as well, including the colored base coat and the bright base coat together providing a graininess of ≤ 2.5 and a liquid metal index LMI of ≥ 0.9 as claimed.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa (JP 2021-115856) as applied to claim 8 above, and further in view of Corten et al. (US 2017/0267875).
Regarding claim 9, Tomizawa teaches the multilayer coating films as discussed above with respect to claim 8. As discussed above, the interference pigment of the bright base coating film may be a metal oxide, such as alumina, or mica with a flake or scaly shape coated in a metal oxide such as titanium oxide and may also be used in combinations of two or more.
Tomizawa is silent with respect to the coloring pigments being non-platelet shaped.
Corten teaches coating compositions for use on automobile bodies (Paragraphs [0001]; [0138]). The compositions include effect pigments which are defined as having platelet shapes and non-effect pigments having non-platelet shapes (Paragraphs [0117]-[0121]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention that the coloring pigments of titanium oxide would be in non-platelet form and the interference pigments, being equivalent to effect pigments, would have platelet shaped as taught by Corten.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tomizawa (JP 2021-115856) in view of Corten et al. (US 2017/0267875).
Regarding claim 12, Tomizawa in view of Corten teaches the multilayer coating films as discussed above with respect to the 35 U.S.C 103 rejection of claim 1. The films may be applied to metal substrates (Paragraph [0034]).
Regarding claim 13, Tomizawa teaches the films as discussed above with respect to claim 12. The metal substrates may be provided with a primer coating film (Paragraph [0037]).
Regarding claim 14, Tomizawa teaches the films as discussed above with respect to claim 12. The substrate may be an automobile part (Paragraph [0034]).
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive.
On pages 7-13, applicant argues that neither Tomizawa nor Corten teaches each of the limitations of claims 1 and 8 such that neither reference teaches the combination of at least one ground coat layer and at least one midcoat layer together providing a graininess of ≤ 2.5 and an LMI of ≥ 0.9. Neither reference mentions either of the claimed properties and, therefore, fails to recognize them as result effective variables. As such, none of the references can be relied upon in order to teach the claimed invention.
The examiner is unpersuaded by applicant’s arguments. As noted by the applicant and in the rejection above, Tomizawa and Corten are silent with respect to the claimed properties. However, one of ordinary skill in the art would recognize that these properties are reliant upon the materials in the ground coat layer, the midcoat layer and the clear coat layer.
MPEP 2112.01: 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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Based on the MPEP section above, one of ordinary skill in the art would note that identical structures must have identical properties and the identical uses of each of those layers further provides motivation that the identical structures must have identical properties. This is noted in the rejection above. Tomizawa teaches the films are directed to multilayer coating films which are used for automobile parts, as discussed above, and applicant’s invention is directed to the same (Instant Specification, PGPUB, Paragraph [0001]). Additionally, the films of Tomizawa and the coatings of applicant’s invention are substantially identical in materials and purposes. The base coat film of Tomizawa includes a coloring pigment, a resin component and a medium consisting of water or an organic solvent wherein the coloring pigment includes titanium dioxide and is designed to have good hiding power from the substrate it is applied to (Discussed Above) and applicant’s ground coat layer is directed towards the same (Instant Specification, PGPUB, Paragraphs [0053]-[0066]). The bright base coating film aims to improve bright highlights and a pearlescent appearance with little change in particle appearance depending on the viewing direction through the use of platelet-shaped pigments which are titanium dioxide based pigments (Discussed Above) and applicant’s midcoat layer is directed to the same (Instant Specification, PGPUB, Paragraphs [0067]-[0111]). Lastly, the film of Tomizawa and applicant’s invention both require clearcoat top layers.
Therefore, Tomizawa and Corten teaches the structural limitations as required by the instant claims and one of ordinary skill in the art would recognize that the properties included with the claimed structure would also be obvious in view of the combination. Additionally, it is noted that applicant has not argued as to how the claimed inventions have a structure which is different, or a different method step, which results in the films of Tomizawa not having the claimed properties.
It is further noted that on page 8 of the response provided by the applicant, an argument is made that the specific materials and particle sizes impact the claimed properties. However, these are not reflected in the claims such that the midcoat layer only requires a platelet-shaped titanium oxide pigment selected from a group of materials and there is no requirement for a particular particle size for the materials until dependent claims 15-17. As such, the claim is still broad with respect to the structure of the claims and the associated properties.
Ultimately, the examiner contends that the claimed structures are taught by the combination of Tomizawa in view of Corten. In addition, the examiner contends that the claims themselves are broad with respect to what parameters result in the claimed properties. Thus, because the prior art combination renders obvious the claimed structure and composition, the examiner contends that the properties would be expected, including the graininess and LMI.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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