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 .
Status of Application
Claims 1-16 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive. The Applicant argues that the effective filing date of the claimed invention is November 26, 2021 based on priority to European Patent Application No. 21210729.6. Applicant further notes that Maile only qualifies as prior art under 102(a)(2) as it was filed before the effective filing date of the claimed application but was not published before the effective filing date of the claimed application. Applicant then attempts to remove Maile as prior art based on a statement of common ownership.
However, the current effective filing date of the claimed application is 10/13/2022 as the priority document is not in English. To obtain the priority date of 11/26/2021 Applicant must perfect their claim for foreign priority by providing a certified translation of the priority document. Based on the current effective filing date of the claimed application, Maile is 102(a)(1) prior art as it was published (1/20/2022) which is before the effective filing date of the claimed application (10/13/2022). Therefore, a statement of common ownership cannot be used to remove Maile as prior art. Thus, the rejections of record are maintained as presented below.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maile (WO 2022/012718, of which reference is made to U.S. PGPUB No. 2023/0166324 as an English equivalent) in view of Schmitt et al. (U.S. PGPUB No. 2021/0179856) as evidenced by PCI Paint and Coatings Industry (“Effect Pigment from Schlenk Metallic Pigments”, hereinafter PCI).
I. Regarding claims 1-8, 11, 15 and 16, Maile teaches a method comprising painting an item, such as a motor vehicle (0004 and 0030, note that motor vehicles are self-propelled as they move under their own power), which includes RADAR sensors (0004), wherein the paint formulation includes a metallic effect pigment comprising a vacuum metallized aluminum flake substrate (0063 and 0095) that is enveloped with silicon dioxide (0064) and includes a surface coating yielding an interference pigment (0085). Maile teaches the absence of carbon black (see throughout) and that the effect pigment can be Zenexo Golden Shine (see Maile at 0053 and not that this pigment appears to be the same or comparable to the Zenexo WB 21 YY pigment disclosed in Applicant’s Table 1 as evidenced by PCI where Zenexo WB 21 YY is referred to as “GoldenShine”, and is expected to have a particle diameter, particle thickness and standard deviation as claimed in claims 1, 6 and 7, as disclosed in Applicant’s Table 1). Maile teaches that the resultant effect pigment can be made radar transparent for application on substrates that require radar transparency (abstract and 0030). Maile fails to explicitly teach the method of painting being applied to a motor vehicle also including LIDAR sensors.
However, Schmitt teaches applying paint (abstract) comprising metallic effect pigments (abstract and 0009) that are radar transparent (0052) for use on autonomous vehicles that utilize LIDAR and RADAR sensors (0052). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Maile’s process by applying Maile’s paint that can be made radar transparent to an autonomous motor vehicle having LIDAR and RADAR sensors. One would have been motivated to make this modification as one could have substituted an autonomous vehicle including both sensors for Maile’s vehicle which has RADAR sensors with a reasonable expectation of success, particularly given that Schmitt teaches similar metallic effect pigments for application to a vehicle including both types of sensors, and the predictable result of providing a painted vehicle.
II. Regarding claims 9 and 10, Maile in view of Schmitt as evidenced by PCI make obvious the process of claim 1. Additionally, Schmitt teaches the inclusion of multiple effect pigments and colorant pigments in combination with the radar transparent pigment (0057-0063) in the preparation of coatings for autonomous vehicles including LIDAR and RADAR sensors (see above). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Maile in view of Schmitt as evidenced by PCI’s process by including further effect and colorant pigments as disclosed by Schmitt. One would have been motivated to make this modification to allow for achieving different desirable aesthetic paint finishes (see Schmitt at 0063).
III. Regarding claims 12-14, Maile in view of Schmitt as evidenced by PCI make obvious coating a motor vehicle with a paint formulation including Zenezo Golden Shine effect pigment (which is the same as used in Applicant’s disclosure as noted above). Therefore, Maile in view of Schmitt as evidenced by PCI’s resultant paint layer would be expected to have the color distance, hue, brightness, chroma, permittivity, reflectivity and flop index properties in the range as claimed as Maile in view of Schmitt as evidenced by PCI teach application of a coating including an identical pigment. Alternatively, Maile in view of Schmitt as evidenced by PCI’s coating process and concentration of pigments could readily be adjusted to optimize visual characteristics of the finished painted coating. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize painting parameters to arrive at paintwork having the instantly claimed ranges for properties through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Conclusion
Claims 1-16 are pending.
Claims 1-16 are rejected.
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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
June 11, 2026Primary Examiner, Art Unit 1717
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