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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 May 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 7,183,000 to Hall et al. (“Hall”) in view of WO 2020/074297 to Eierhoff et al., an English translation of which is US 2021/0402434 which is referred-to herein (“Eierhoff”).
With regard to Claims 1-5, 7-8, 12-15, and 17-18, Hall teaches a tinted clearcoat composition comprising a binder resin featuring functional groups, a curing agent featuring functional groups reactive with that of the binder resin functionality, and pigment, wherein the composition is ground via grinding media (see Abstract; Col. 4, Lns. 12-39; Col. 5, Lns. 6-47). Hall further teaches a process of producing a multilayer coating featuring said tinted clearcoat composition via wet-on-wet application and joint curing (see Abstract; Col. 8, Ln. 45 through Col. 9, Ln. 56). According to Hall, the clearcoat system can be a two-component system comprising hydroxy-functional binder, hardener, and isocyanate curing agent (see Col. 4, Lns. 1-4).
Hall teaches solventborne and stabilized clearcoat compositions (see Col. 4, Lns. 12-39) and aluminum and mica pigment (see Col. 6, Lns. 19-21; Col. 8, Lns. 40-43); however the reference does not expressly teach a pigment premix as claimed. Eierhoff is similarly directed to clearcoat methods and compositions, and teaches provision of a premixes of aluminum and mica pigment comprising solvent and stabilizer (see Abstract; ¶¶ [0327]-[0330]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed pigmented premix as claimed in the method of Hall, as taught by Eierhoff, in order to add a desired amount of pigment to the clearcoat layer in a controlled manner.
With regard to Claims 6, 11, and 19-20, Hall teaches inclusion of pigment at amounts within the claimed range (see Col. 8, Lns. 55-58; Col. 10, Lns. 1-20).
With regard to Claim 9, Hall teaches organic pigments (see Col. 6, Lns 38-47).
With regard to Claims 10 and 16, Hall teaches aqueous and solvent-borne compositions (see Col. 3, Ln. 47 through Col. 4, Ln. 39).
With regard to Claim 7, Hall does not expressly teach the claimed energy inputs or sub-step arrangement. Hall is noted as teaching grinding to any preferred particle size (see Col. 5, Lns. 6-47). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed energy input and grinding steps as claimed in obtaining a desired film build.
Double Patenting
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.
2. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of copending Application No. 18/718,888 (reference application) in view of Eierhoff. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to tinted clearcoat compositions featuring the same constituents and made by the same process. One of ordinary skill in the art would have found it obvious to incorporate pigment premix as taught by Eierhoff.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 27 May 2026 have been fully considered but are moot in view of the new grounds of rejection presented herein in response to the claims as amended.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1715
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