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 .
The amendment filed 2/26/2026 has been entered. Claim 7 been canceled. Claims 1-6 and 8-20 are pending in the application. Claims 17-20 have been withdrawn from consideration as being directed to a non-elected invention. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 15 is objected to because of the following informalities: “topcoat layer” on line 1 should read “top coat layer” to be consistent with the remaining claims, particularly claim 11 from which claim 15 depends. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 13 is 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 13 recites the limitation "the solid-state" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 recites, “The coated article according to claim 11, wherein the topcoat layer is substantially transparent such that a visual design of the print coat layer is visible through the top coat layer.” However, claim 11 has been amended on lines 19-20 to recite “wherein the top coat layer is substantially transparent such that a visual design of the print coat layer is visible through the top coat layer” and hence claim 15 does not further limit claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Hence, given the above, it is noted that the claimed weight percentages with respect to the various coat compositions as recited in claims 4-6, 8-9, and 13-14 have been interpreted with respect to the “active weight of the material” or solids content thereof, e.g., coat composition in a “solid-state” in light of the present specification, see Paragraphs 0014 and 0017.
Claim Rejections - 35 USC § 103
Claims 1-6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ikenaga (JPH1133453A, please refer to the attached machine translation for the below cited section). Ikenaga teaches a coated metal substrate (16,37) comprising a cut metal plate (1) or coiled metal plate (22) and a multilayer coating on a front surface thereof including a primer or undercoating (42) on the metal plate (reading upon the instantly claimed primer coat layer), an upper coating or topcoating (43) (reading upon the instantly claimed base coat layer) on the primer or undercoating (42), a design coating (44) (reading upon the instantly claimed print coat layer) on the topcoating (43), and a top clear coating (45) (reading upon the instantly claimed top coat layer) on the design coating (44); wherein the top clear coating (45) is transparent such that the design coating (44) is visible therethrough and provides a decorative finish enhancing the aesthetic appeal of the painted metal (reading upon the instantly claimed “substantially transparent such that a visual design of the print coat layer is visible through the top coat layer” as recited in instant claims 11 and 15; Entire document, particularly Paragraphs 0001, 0005, 0008, 0023-0025, and 0033; Figures). Ikenaga teaches that the decorative coating is formed from a colored paint that can be basically the same colored paint used in the topcoat painting (reading upon the instantly claimed “print coat composition comprising colorant” as in instant claims 1 and 11; Paragraph 0032); while the composition of the top clear coating used is almost the same as that of the topcoat paint, however, “unlike the topcoat paint, since this is a transparent clear paint, titanium dioxide, coloring pigments, and extender pigments are either not included at all, or if coloring is used, only small amounts of these pigments or dyes are added” (Paragraph 0033), although various additives may be added to the top clear coating including organic cross-linked fine (micro)particles or inorganic fine (micro)particles (“fine particles” or “microparticles” depending upon translation), surface modifiers, and anti-sagging agents (Paragraph 0071, wherein it is noted that inorganic fine (micro)particles is a genus encompassing the instantly claimed “silica” of instant claims 1 and 11). Ikenaga teaches that the thermosetting resins recited in Paragraph 0046 may be used as the base of the primer paint, such as epoxy resins, epoxy urethane resins, polyester resins, various modified polyester resin, and urethane resins; wherein crosslinking agents such as amino resins or blocking isocyanates may be added as needed, and the resin can be given flexibility by adding oils or fatty acids as needed (Paragraph 0046). Ikenaga teaches that the primer layer may optionally contain coloring pigments, extender pigments, and other rust-preventative pigments such as chromate-based rust-preventative pigments (Paragraph 0049), and given the essential components of the primer as taught by Ikenaga and that such chromate-based rust-preventative pigments are optional, Ikenaga provides a clear teaching and/or suggestion of a “primer coat layer being substantially free of chromium” as in instant claims 2 and 11 (Paragraph 0046-0049).
Ikenaga teaches that the paint composition of the topcoat paint for the upper coating or topcoating (43) is primarily used for pre-coating metal sheets, and “[t]herefore, this paint composition contains resins that have been conventionally used in baked paints for pre-coated steel sheets, such as acrylic resin, alkyd resin, polyester resin, silicone-modified polyester resin, silicone-modified acrylic resin, and also contains an amino or blocked polyisocyanate as a resin vehicle” (Paragraph 0050) with examples of the polyester resin specifically preferred for the production of pre-coated metals described in Paragraphs 0050-0051, wherein when used with an amino resin as a crosslinking agent, the polyester resin makes up 60 to 80% by weight and the amino resin makes up 40 to 20% by weight (Paragraph 0055). Ikenaga teaches that suitable urethane resins as crosslinking agents include the diisocyanate compounds recited in Paragraph 0056, wherein when these urethane resins are used as crosslinking agents, the (-NCO)/(-OH) equivalent ratio is preferably 6/4 to 2/8 (Paragraph 0056). Ikenaga teaches that the amount of resin in the paint composition is preferably 25% by weight or more (Paragraph 0057), and that the paint composition can contain commonly used components such as pigments including those as recited in Paragraph 0059 as well as various additives (Paragraphs 0059-0060).
Ikenaga teaches that the composition of the top clear coating contains resins that have been conventionally used in baked coatings for pre-coated steel sheets such as acrylic resins, alkyd resins, polyester resins, silicone-modified polyester resins, and silicone-modified acrylic resins, wherein the silicone-modified polyester resins can be obtained by reacting 5 to 50 parts by weight of an organic silicone such as an organic silicone with an average molecular weight of 300 to 1000 having -SiOCH3 and -SiOH as functional groups, with 100 parts by weight of the polyester resins as described in Paragraphs 0061-0062 and having a molecular weight of preferably 500 to 30,000 (Paragraphs 0061-0063), thereby clearly teaching and/or suggesting that the top clear coating (45) may be formed from a silicone-modified polyester or “siliconized polyester” comprising one or more —SiO— units in a polymer backbone as in instant claims 1 and 11. Similarly, Ikenaga teaches that the silicone-modified polyester resin that may be contained in the colored paint composition that may be used for the decorative paint for the design coat (44) can also be obtained by reacting 5 to 50 parts by weight of organic silicone resin of MW 300 to 1000 having -SiOCH3 and -SiOH as functional groups, with 100 parts by weight of the polyester resins as described in Paragraphs 0050-0051 (Paragraphs 0050-0052) such that the design coat (44) as the claimed “print coat layer” may be formed from “a composition comprising colorant and siliconized polyester comprising one or more —SiO— units in a polymer backbone” as recited in instant claims 1 and 11; and given again that the clear top coating may include inorganic fine (micro)particles while maintaining sufficient transparency to allow the decorative design coat to be visible therethrough, Ikenaga clearly teaches and/or suggests a coated metal article as recited in instant claims 1-2, 10-11, and 15-16 comprising a first major exposed surface opposite a second major exposed surface, the coated article comprising: a substrate, particularly a substrate formed of a metal (as in instant claims 10 and 16), comprising an upper surface opposite a lower surface; a coil coating applied to the substrate, the coil coating having an upper surface opposite a lower surface and the coil coating comprising: a primer coat layer comprising an upper surface opposite a lower surface, the primer layer formed from a primer composition that is substantially free of chromium (as in instant claims 2 and 11); a base coat layer comprising an upper surface opposite a lower surface, the base coat layer formed from a base coat composition comprising polyester that is substantially free of silicon (given that the colored topcoat paint may be formed from preferred polyester resins that are not silicone-modified and do not specifically include any silicon component); a print coat layer comprising an upper surface opposite a lower surface, the print coat formed from a print coat composition comprising colorant and siliconized polyester comprising one or more —SiO— units in a polymer backbone; and a top coat layer comprising an upper surface opposite a lower surface, the top coat layer formed from a top coat composition comprising inorganic particles and siliconized polyester comprising one or more —SiO— units in a polymer backbone; wherein the top coat layer is substantially transparent such that a visual design of the print coat layer is visible through the top coat layer; and wherein the first major exposed surface of the coated article comprises the upper surface of the top coat layer, such that the only difference between the teachings and/or suggestions of Ikenaga and the claimed invention as recited in instant claims 1-2, 10-11 and 15-16 is that Ikenaga does not specifically teach that the inorganic (micro)particles or fine particles present in the clear top coating are silica particles as in instant claims 1 and 11. However, the Examiner takes the position that silica particles are an obvious species of inorganic particles utilized in the art as a coating additive including for incorporation into transparent or clear coating layer (as evidenced by, see for example, Furukawa, JP2006159495A, see Paragraphs 0085 and 0089 of the attached machine translation) and/or are an obvious species of extender pigment in the art (as evidenced by, for example, Ikenaga, JPH11156291A, see Paragraph 0032 of the attached machine translation); and given the absence of any clear showing of criticality and/or unexpected results with respect to utilizing silica over other known inorganic particles in the art, the Examiner takes the position that the claimed invention as recited in instant claims 1-2, 10-11 and 15-16 would have been obvious over the teachings of Ikenaga given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claims 3 and 12, as noted above, Ikenaga teaches that suitable thermosetting resins to be utilized as the base of primer paint may be polyester resins, various modified polyester resins, and urethane resins, which can be used with the addition of crosslinking agents such as blocked isocyanates thereby suggesting a urethane modified polyester, and given that Ikenaga does not specifically teach silicone-modified polyesters as recited with respect to the topcoat composition and only teaches silicone surface modifiers as optional components to be incorporated into the primer and thus does not require incorporation of any silicon-containing component as a required or essential component of the primer paint, the Examiner takes the position that the claimed invention as recited in instant claims 3 and 12 would have been obvious over the teachings of Ikenaga (Paragraphs 0046-0049).
With respect to instant claim 4, as noted above, Ikenaga teaches that the amount of resin, e.g., polyester resin, in the top coat paint as the claimed base coat composition is preferably 25% by weight or more (Paragraph 0057), thereby encompassing and hence rendering obvious the claimed about 60wt% to about 100wt%, based on the total (active) weight of the base coat composition such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 4 would have been obvious over the teachings of Ikenaga.
With respect to instant claims 5-6 and 13, although Ikenaga does not specifically teach a content of the resin and pigment/dyes as the claimed colorant to be utilized in the decorative paint as recited in instant claims 5-6 and 13, given that Ikenaga clearly teaches that the decorative paint provides desired aesthetic properties to the painted metal, and that in general, the amount of film-forming resin is preferably 25% by weight or more in the topcoat paint (Paragraph 0057) as well as the top clear coating (Paragraph 0068), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum content of resin and colorant to utilized in the decorative paint to provide the desired aesthetic properties for a particular end use, wherein a resin content of 25% by weight or more encompassing the claimed resin content would have been obvious to one skilled in the art based upon the teachings of Ikenaga, and hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 5-6 and 13 would have been obvious over the teachings of Ikenaga.
With respect to instant claims 8-9 and 14, as discussed above, Ikenaga teaches that since the top clear coating is transparent, only a small amount of coloring pigments and extender pigments may be added to the top clear coating composition, and although Ikenaga teaches that the top clear coating composition may further include inorganic microparticles and various additives, wherein the Examiner again takes the position that silica is an obvious species of extender pigment and/or inorganic microparticles in the art, Ikenaga does not specifically teach that the top clear coating composition includes silica in an amount ranging from about 0.1 wt% to about 10 wt% and/or siliconized polyester in an amount ranging from about 85 wt% to about 99.9wt% as instantly claimed. However, given that Ikenaga does teach that the resin of the top clear coating may be siliconized polyester as instantly claimed as discussed above (Paragraphs 0061-0063), provided in a content of 25 wt% or more (Paragraph 0068), with only a “small amount” of coloring/extender pigments, and that it is well established in the art that additives are typically provided in minor amounts such as about 10wt% or less as claimed based upon the desired additive effect to be provided, and that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum content of such pigments and/or additives to incorporate into the top clear coating composition without deteriorating the transparency of the top clear coating as taught by Ikenaga, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention would have been obvious over the teachings of Ikenaga.
Claims 1-6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ikenaga (JPH1133453A) as applied above and in further view of Yoon (KR20200117658A, please refer to the attached machine translation for the below cited sections).
The teachings of Ikenaga are discussed in detail above, and incorporated herein by reference, wherein with respect to the inorganic microparticles present in the top clear coating composition of Ikenaga being silica, it is further noted that Yoon teaches a similar pre-coated metal sheet comprising a coil-coating wherein the coating comprises a first coating layer as a base layer formed by applying a first paint comprising a polyester resin, blocked isocyanate resin, and pigment onto a pretreated, plated steel sheet (Paragraphs 0017-0020 and 0144); a second coating layer applied as a topcoat layer formed by applying a second paint to at least one surface of the first coating layer, wherein the second paint comprises a silicone-modified polyester resin (Paragraphs 0021 and 0070) which is the reaction product of a silicone intermediate and a polyester resin as described in Paragraphs 0092-0095 (thus a silicone-modified polyester as in Ikenaga or a siliconized polyester comprising one or more —SiO— units in a polymer backbone as in the instant invention) and further includes 1 to 10 wt% of additive (Paragraphs 0021-002, supporting the Examiner’s position above with respect to a typical “additive” content of 10 wt% or less) such as matting agents provided by amorphous silica, polymethylmethacrylate (PMMA), polyacrylonitrile, polyamide particles, and mixtures thereof (Paragraphs 0026-0027 and 0124), particularly in a content of 0.1 to 5 wt% based on the total weight of the paint composition (Paragraph 0131, as in instant claims 8 and 14) and having an average particle size of preferably 5 to 40 µm (Paragraphs 0130, e.g., inorganic or organic microparticles as in in Ikenaga) to achieve a desired gloss on the film surface of the second coating layer which is the top layer of the coating as well as excellent scratch resistance (Paragraphs 0124-0131). Hence, given that above and that Yoon teaches that the color steel sheet can have different laminated layers depending on the intended use (Paragraph 0053), that the content of pigment in the first paint is such that it provides desired hiding power and desired color when the second paint is applied as a topcoat (Paragraph 0070), and that the general manufacturing method for color steel sheets is to apply a primer and top coat, or a primer and an intermediate coat followed by a transparent top coat (Paragraph 0005), Yoon provides a clear teaching and/or suggestion that the incorporation of the silica (as inorganic microparticles) or organic microparticles as matting agents in the second coating layer or top coat in a content of 0.1 to 5wt% does not prevent the color of the first paint from being visible therethrough; and further given that Yoon also provides a clear teaching and/or suggestion of utilizing the silicone-modified polyester resin in the top coat while utilizing a general polyester resin in the base coat, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize silica microparticles as in the teachings of Yoon for the inorganic fine particles or microparticles in the invention taught by Ikenaga in an additive content of 10wt% or less, or more particularly, in a content of 0.1 wt% to 5wt% as in the invention taught by Yoon, thereby further rendering the claimed invention as recited in instant claims 1-6 and 8-16 obvious over the teachings of Ikenaga in further view of Yoon given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant’s arguments filed 2/26/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. However, with respect to any potential arguments of alleged unexpected results as argued by the Applicant in the response filed 2/26/2026, as may be applied over the above teachings of Ikenaga taken alone or in further view of Yoon, the Examiner would like to note that the results and data presented in the specification and potentially relied upon by the Applicant are not commensurate in scope with the instant claims and/or are inconclusive with respect to any showing of criticality and/or unexpected results over the closet prior art, particularly given that the specification fails to fully describe the working examples and coating compositions utilized to produce each coating layer of the examples in order to properly compare the examples and come to any conclusions with respect to the results of the performance tests.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 2/26/2026.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hayes (US2016/0297987A) teaches a silicone-modified polyester coil coating having excellent weatherability and durability as well as “other useful performance characteristics such as, for example, pencil hardness, flexibility, and the like”, wherein the coating includes a binder comprising a durable polyester resin and a siliconized polyester that has a silicone backbone including up to about 45 wt% silicone and is predominantly silyl ether groups rather than the silanol groups present in conventional siliconized polymer resins, such that the cured coating, which may be applied as an intermediate coat and/or as a topcoat, does not experience a loss in weatherability over time as with conventional siliconized polyester coating compositions; and the composition may include one or more pigments or tint pastes in an amount of up to about 60wt% to provide the desired color or shade; as well as other additives known in the art such as flatting agents, wherein Hayes teaches that in an embodiment, the composition includes up to about 6 wt% of one or more flatting agents such as silica or silica-based particles in a content thereof depending on the desired gloss or reflectivity of the cured coating, but preferably 1 to 5 wt% of the silica or silica-based flattening agent, based on the total weight of resin solids in the composition.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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