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 .
Response to Restriction Election with Traverse
1. Applicant's election with traverse of group I, claims 1-11 and 18-20 in the reply filed on 9/30/25 is acknowledged. The traversal is on the ground(s) that:
The applicant argues “As an initial note, the Written Opinion of the International Searching Authority (PCT
/EP2023/050260) found unity of invention (Box IV on the Written Opinion is not checked which would indicate the absence of a "lack of unity of invention").” The lack of a check in Box IV is not an express statement that there is unity of invention. There is no requirement that a unity of invention restriction be made. It is optional. This argument is therefore not persuasive.
The applicant argues “This is a national stage application
submitted under 35 U.S.C. §371 and should be analyzed under that standard. Applicant
respectfully submits, that on this basis alone, the Restriction Requirement is unwarranted and should be withdrawn, and that all claims should be examined together in this application.” The applicant’s response of 9/30/25, page 7 notes that the examiner made the restriction under unity of invention PCT Rule 13.1 and 35 USC 121 and 372 and the unity of invention standard has been used in the examiner’s restriction requirement of 8/19/25.
This argument is therefore not persuasive.
The applicant argues “Additionally, the claims of Group I are drawn to a composition, and the claims of Group II are drawn to a method of making the composition claimed in the claims of Group I. The claims of Group III are drawn to a method of coating comprising the composition claimed in the claims of Group I. Similarly, the claims of Group IV are drawn to a method of using the composition claimed in the claims of Group I. In other words, these four Groups are inexorably linked.” These groups are not inexorably linked. Note the examiner’s restriction requirement of 8/19/25 showing that the groups of inventions lack a special technical feature that would link the inventions. Additionally, compositions are classified in different areas than methods of coating. Methods of using, per se, of the instant claims 16-17 appear to be indefinite and non-statutory material. See MPEP 2173.05(q) "Use" Claims [R-10.2019]. Therefore, it is not seen where such material is required to be classified. It would require search in the coating method areas since these are methods of using the claimed tinted clearcoat compositions.
This argument is therefore not persuasive.
The applicant argues “No additional search burden would be present during examination.” The examiner is given about 18.15 hours to examine the entirety of this application including this response to a restriction requirement. He cannot examine all of the claimed inventions and search all of the claimed inventions in that time. It is a clear burden.
The applicant argues “Any art relevant to a composition (Group I claims) would be relevant to a method of making a composition (Group II claims), a method of coating (Group III claims) and a method of using (Group IV claims).” The applicant provides no evidence to support this statement. The examiner has made obviousness rejections using clearcoat compositions as the basis for using a particular binder polymer and argued that adding pigment to the clearcoat to give an opaque, i.e. not clearcoat, coating composition is obvious because the benefits of the clearcoating resin, e.g. their particularly high degree of clarity, would be beneficial in pigmented coatings because the clarity of the polymer film would allow the pigment to be better viewed without discoloration which materially affects lighter colored pigments, such as titanium dioxide, which show yellow polymer significantly due to the contrast between white and even slightly yellow polymer. It is clear that one could add sufficient pigment to the instantly claimed clearcoat composition to make it an opaque coating. It is therefore clear that the tinted clearcoat composition in such a case need not be used according to the method of claim 13, noting that such an opaque coating composition is not used as a clearcoating. The instantly claimed compositions can be made by adding all of the ingredients in one step. See MPEP 2113. Additionally, the instantly claimed coating compositions can be used in a single layer coating, which is distinct from the instant method claims.
Therefore, the applicant’s argument is not correct. The applicant’s argument is therefore not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
2. Claims 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/30/25.
Rejections
Double Patenting
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1-11 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 19-20 of copending Application No. 18/718914. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, they overlap to the extent that one practicing the copending claimed invention would practice the instantly claimed invention and vice versa. The recitation of “the constituents” of the copending claims, steps (b) and (c) gives a slight difference in scope between the instant claims and the copending claims which is sufficient to avoid a statutory double patenting rejection.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
6. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
7. Claims 1-8, 10, and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 7183000 Hall et al.
The instant claims are directed to the tinted clearcoat composition per se. The instant claims are not directed to the method of making the tinted clearcoat composition though the instant claims recite a product by process. Any tinted clearcoat composition which is the same composition as that of the instant claims reads on the instantly claimed tinted clearcoat compositions even if they are made by a different process. See MPEP 2113.
The instantly claimed mixing steps and milling steps do not recite sufficient particulars to require any particular structural particulars of the claimed tinted clearcoat compositions which stem from these method steps. For example, the mixing and milling times are not specified, which materially affects how these steps effect the claimed compositions. The mixing and milling power, time, mixing blades, and other mixing and milling particulars which materially affect the structural features of the instantly claimed tinted clearcoat compositions.
The instantly claimed method steps are therefor not seen as distinguishing the instantly claimed tinted clearcoat compositions from other tinted clearcoat compositions containing the same ingredients mixed by a different process.
Regarding claims 1-5:
Hall discloses a clearcoat composition which is cross-linkable and which may contain a phosphorescent pigment. See Hall, the abstract, column 2, lines 23-27, 29-30, and 64-67, column 3, lines 1-5 and 7-10, column 4, lines 5-11, 12-15, 17-20, noting “cross-linkable with melamine or isocyanate” which necessarily possess the instantly claimed curing agent functional groups, lines 20-24, noting the polymer’s cross-linkable functional groups which fall within the scope of the instantly claimed binder resin functional groups, lines 24-42, 49-54, and 54-67, column 5, lines 1-5 and 6-47, column 6, lines 45-47, particularly noting the reference to “tinted clearcoat compositions”, column 7, lines 11-15, column 8, lines 45-48 and 62-63, column 9, lines 5-9, column 10, lines 13-21, 25-26, and 32-43, and the remainder of the document. Hall necessarily gives step (a) of the instant claims. The pigment of Hall’s clearcoats is not provided in a premixture but this step does not differentiate the instantly claimed tinted clearcoat composition from those of Hall discussed above. Mixing all of Halls ingredients gives the same result as the instantly claimed step (c). Hall, column 5, lines 26-37, particularly noting the grinding media of lines 35-37 and the intended results discussed in the entirety of lines 26-37, falls within the scope of the milling of the instantly claimed step (d) and the entirety of lines 26-37 gives a mixing effect which falls within the scope of that of the milling of the instantly claimed step (d), particularly because the instant claimed milling does not recite sufficient parameters, such as milling time, milling power, milling apparatus, milling media, and other particulars which materially affect the properties of the resulting tinted clearcoat composition. The process steps of the instant claims therefore do not distinguish the instantly claimed tinted clearcoat compositions from those of Hall. The above disclosure of Hall thereby anticipates the instant claims 1-5,
Regarding claim 6:
Based on the amounts of binder component and pigment used in Hall, column 10, lines 13-21, the final tinted clearcoat composition of Hall could have been made by the particulars of the instant claim 6. The instant claim 6 therefore does not distinguish the tinted clearcoat composition, to which the instant claim 6 is ultimately directed, over the composition of Hall. See MPEP 2113.
Regarding claims 7 and 19:
“Clearcoat” of Hall implies that the haze of Hall’s tinted clearcoat compositions discussed above do not have amounts of haze above the relatively large amounts of haze allowed by the instant claims 7 and 18 necessarily and inherently because such high amounts of haze would not be useful clearcoats. See MPEP 2112.
Furthermore, the degrees of DOI and gloss required by Hall’s clearcoats at column 7, lines 40-52, imply that Hall’s clearcoats have amounts of Haze within the scope of the instant claims 7 and 18, particularly when they are homogenous solutions.
If the compositions of Hall had hazes above those of the instant claims 7 and 19, they would not be “transparent”, as required by Hall, column 6, lines 38-47, particularly line 46, noting “transparent”.
Hall is therefore taken as inherently anticipating the instant claims 7 and 19. See MPEP 2112.
Regarding claim 8:
Hall exemplifies polyisocyanate curing agent in their tinted clearcoat at column 10, lines 13-21 and discloses using OH functionalities on the binder resins of their clearcoat compositions at column 4, lines 12-24, particularly line 22, noting the hydroxy group. The hydroxy group is one of only six choices which discloses using hydroxy functional binder resins with sufficient specificity to anticipate the instant claim 8.
Regarding claim 10:
Hall, column 4, lines 12-15 discloses using solventborne or waterborne clearcoat compositions. The choice of solvent-based clearcoat compositions is therefore one of two which discloses solvent-based compositions with sufficient specificity to anticipate them.
Regarding claim 18:
The particulars of step (c) of the instant claim 18 do not distinguish the final tinted clearcoat composition of the instant claim 18 from that of Hall, which could be made using the particulars of the instant claim 18 and is therefore not different from the ultimate subject matter of the instant claim 18. See MPEP 2113.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 8-11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 7183000 Hall et al.
The entire discussion of the disclosure of Hall of paragraph 7 above is repeated here.
Hall does not describe the particulars of the instant claims 9, 11, and 20 with sufficient specificity to anticipate them. It is possible that an authority exists which will disagree that Hall discloses the particulars of the instant claims 8 and 10 with sufficient specificity to anticipate them.
Regarding claim 8:
Hall discloses using binders having hydroxyl groups and crosslinking agents having isocyanate groups at column 4, lines 11-30, noting particularly lines 20, 22, and 30, and column 10, lines 15-21.
In the event that this disclosure is not seen as being sufficient to anticipate the instant claim 8, it would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the hydroxyl group containing binder and isocyanate containing crosslinker of Hall in their clearcoat compositions containing pigment because these binders and crosslinkers are encompassed by Hall and would have been expected to give only predictable results to the clearcoat compositions of Hall containing pigments.
Regarding claim 9:
Hall does not specify the use of organic pigment in their clearcoat compositions. Hall, column 6, lines 44-47, particularly line 47, discloses “tinted clearcoat compositions as known in the art”. Hall discusses organic and inorganic pigments with regard to their pigmented color coatings. Hall’s clearcoat compositions are only required to be partially clear, noting column 6, lines 44-46.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use small amounts of inorganic pigments of Hall, column 6, line 43 and column 8, lines 7-10 and 11-40 because such small amounts of organic pigments, particularly the more translucent organic pigments of Hall, would have been expected to give the tinted clearcoat compositions of Hall, column 6, line 47, the partial clarity of Hall, column 6, line 46, and predictable coloring, shade, hue, and chroma to the clearcoat compositions of Hall. Therefore, Hall makes the instant claim 9 obvious.
Regarding claim 10:
Hall discloses solventborne and waterborne clearcoat compositions at column 4, lines 12-14.
In the event that this disclosure is not seen as being sufficient to anticipate the instant claim 10, it would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use solvent as the diluent for the tinted clearcoat compositions of Hall because they are described as one of only two choices therefore and solvents would have been expected to give the properties they give to solvent based coatings to the solventborne, tinted clearcoat compositions of Hall.
Regarding claim 11:
Hall discloses using the amounts of pigment of column 7, lines 7-11. The smaller amounts of pigment therein fall within the scope of the amounts of pigment of the instant claim 11.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the smaller amounts of pigment of Hall, column 7, lines 7-11 in their pigmented clearcoat compositions because they are encompassed by Hall and would have been expected to give only predictable properties including predictable color, shade, hue, and chroma.
Regarding claim 20:
It is noted that Hall discloses using the amounts of pigment of column 7, lines 7-11. Even the smaller amounts of pigment therein are slightly more than the amounts of pigment of the instant claim 20. It is noted that Hall, column 7, lines 7-8, recites “Also depending on the embodiment”, which clearly shows there are other embodiments in which these amounts do not apply. Hall, column 6, lines 45-47, describes “partially-clear or transparent binder compositions such as tinted clearcoat compositions as known in the art.” The higher clarity and more transparent tinted clearcoat compositions would require lower amounts of pigment, including amounts within the scope of the instant claim 20 to give “tinted clearcoat compositions” which have greater clarity or transparency. It is within the ability of the ordinary skilled artisan to choose amounts of the pigments of the instant claim 20 to give predictable color, shade, hue, chroma, clarity, and transparency of Hall.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the amounts of pigment of the instant claim 20 in the pigmented clearcoat compositions of Hall because Hall desires partially clear to transparent tinted clearcoat compositions and the amounts of pigment of the instant claim 20 would have been expected to give only predictable properties including predictable color, shade, hue, and chroma, clarity, and transparency as is desired by Hall.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762