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 § 102
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 1-6 and 8-20 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by US 7,183,000 to Hall et al. (“Hall”).
With regard to Claims 1-5, 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).
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).
Claim Rejections - 35 USC § 103
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.
2. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hall.
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.
3. 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). 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.
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 02 December 2025 have been fully considered. Applicant argues terms previously alleged as indefinite under 35 USC § 112 are in fact sufficiently clear and otherwise defined by the instant Specification (see Response at Pgs. 6-7). This argument is found persuasive. Accordingly the rejection set forth under § 112 is withdrawn.
Applicant argues that Hall does not disclose a pigment premixture as claimed (see Response at Pgs. 7-8). This argument is not found persuasive. Claim 1 recites inclusion of a “… pigment premixture (PP) comprising at least one pigment …” Hall teaches inclusion of a pigment comprising at least one pigment, as claimed. Furthermore, Hall is also noted as disclosing additional pigment material constituents (see Col. 7 Lns. 11-14), though this is not currently required by the instant claims. Accordingly, the rejection is maintained.
Applicant argues that one of ordinary skill in the art would not have practiced the invention of Hall in pursuit of the objectives of the instant application (see Response at Pgs. 8-9). This argument is deemed moot. As discussed herein, Hall teaches the claimed composition.
The rejections under 35 USC §§ 102 and 103, and the nonstatutory double patenting rejection are maintained.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1715