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 .
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 a graininess of ≤ 2.5.
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).
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°.
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, a graininess of ≤ 2.5 and a liquid metal index 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).
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/amendments, see page 6, filed 02/13/2026, with respect to the 35 U.S.C 112 rejection of claim 5 have been fully considered and are persuasive. The rejection of 11/19/2025 has been withdrawn.
Applicant's arguments filed 02/13/2026 have been fully considered but they are not persuasive.
On pages 6-9, applicant argues that the rejections in view of Tomizawa and Corten fail to teach each of the limitations of claim 1. Specifically, the combination fails to teach a graininess of less than or equal to 2.5 and a liquid metal index of greater than or equal to 0.9. The applicant specifically argues that these properties are not intrinsic and cannot be optimized, but instead are controlled by the specific selection and adjustment of pigments. The instant specification describes examples which shows that these properties are controlled and adjusted by using specific amounts and types of pigments.
The examiner is unpersuaded by applicant’s arguments such that applicant appears to argue that the use of specific materials results in these claimed properties, however, the claims do not require these specific materials. Specifically, claim 1 only structurally requires the ground coat layer with at least one non-platelet-shaped titanium dioxide pigment, a midcoat layer comprising the platelet shaped titanium dioxide and a clear coat layer. Claim 8 only requires a ground coat, a midcoat layer and a clear coat layer. As such, the claims are still broad in their structural requirements.
Turning to the rejection in view of Tomizawa and Corten, the examiner notes that the combination teaches each of these structural limitations as discussed above. Specifically, Tomizawa teaches a bright base coating film as a midcoat layer with an interference pigment which may be titanium dioxide with a flaky shape thus teaching the limitation of 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). Corten is relied upon to teach the non-platelet shape in the ground/base coat layer (See rejection above). As such, the combination, at the very least, teaches an identical structure as applicant’s claimed invention.
Even further each of the layers are used for the same purposes of applicant’s invention. “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.”
As such, the examiner contends that applicant’s arguments are unpersuasive such that applicant appears to be arguing that specific materials are required to achieve the claimed properties, however, these are not present in the claim. Additionally, the combination of Tomizawa and Corten teaches an identical structure to the claimed inventions. Therefore, the identical combination and identical uses of each of the layers would teach, at minimum, an overlapping range for the LMI and the graininess index.
The current rejection is made FINAL.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783