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 .
Election/Restrictions
Applicant's election with traverse of Group I, claim 1-12 and 30-32 in the reply filed on 05/18/2026 is acknowledged. The traversal is on the ground(s) that there would not be an undue burden in examining the original claims together. This is not found persuasive because the examiner's position remains that there would be undue burden for the reasons established in paragraphs 3-6 of the office action mailed 03/17/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 26-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/18/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 and 30-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a light blocking layer comprising specific chemical blocker(s) in specific amounts and thickness as well as specific colorant, does not reasonably provide enablement for any light blocking layer comprising any chemical blocker(s) in any amount and any thickness as well as any type of colorant. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1-12 and 30-32 can be used as claimed and whether claims 1-12 and 30-32 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-12 and 30-32, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-12 and 30-32 read on any light blocking layer comprising any chemical blocker(s) in any amount and any thickness as well as any type of colorant while the specification discloses a light blocking layer comprising specific chemical blocker(s) in specific amounts and thickness as well as specific colorant.
(b) There is no direction or guidance presented for any light blocking layer comprising any chemical blocker(s) in any amount and any thickness as well as any type of colorant.
(c) There is an absence of working examples concerning any light blocking layer comprising any chemical blocker(s) in any amount and any thickness as well as any type of colorant.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-12 and 30-32.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-12 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al. (US 2019/0152197).
Regarding claims 1, 5, 6, 7, 8, 29 and 31, Zheng et al. teaches a multilayer structure comprising a blocking layer comprising an ultraviolet blocking layer (See Abstract), wherein the ultraviolet blocking layer comprising an ultraviolet layer polymer matrix including polyurethane, an acrylic polymer, an epoxy, etc. (paragraph [0032]), a metal oxide including titanium oxide, in an amount of 20 to 80 wt % (paragraphs [0033]-[0034]) and having a thickness of 1 to 100 micrometers (paragraph [0035]). Zheng et al. further teaches wherein the ultraviolet blocking layer can comprise an ultraviolet blocking agent including benzophenone (paragraph [0038]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); see MPEP 2144.05.
While there is no disclosure that the coating system is “for a composite component” as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for a composite component, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art coating system and further that the prior art structure which is a coating system identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
The limitation regarding the light blocking layer being “configured to prevent transmission of at least one of ultraviolet light or visible light within desired wavelengths and configured to reflect infrared components of sunlight using a colorant” is merely intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Zheng et al. disclose light blocking layer as presently claimed, it is clear that the light blocking layer of Zheng et al. would be capable of performing the intended use, i.e. configured to prevent transmission of at least one of ultraviolet light or visible light within desired wavelengths and configured to reflect infrared components of sunlight using a colorant, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 2, it is noted limitations regarding the composite component is merely intended use as set forth above.
Regarding claim 3, given that Zheng et al. teaches a light blocking layer comprising materials and structure identical to those presently claimed, the light blocking layer would necessarily have a desired exterior color as presently claimed, absent evidence to the contrary.
Regarding claim 4, given that Zheng et al. teaches a light blocking layer comprising materials and structure identical to those presently claimed, the light blocking layer would necessarily have a white or gray color as presently claimed, absent evidence to the contrary.
Regarding claim 9, given that Zheng et al. teaches a light blocking layer comprising materials and structure identical to those presently claimed, the light blocking layer would necessarily provide thermal control as presently claimed, absent evidence to the contrary.
Regarding claim 10, given that Zheng et al. teaches a light blocking layer comprising materials and structure identical to those presently claimed, the light blocking layer would necessarily provide a solar absorptivity as presently claimed, absent evidence to the contrary.
Regarding claim 11, given that Zheng et al. teaches a coating system comprising materials and structure identical to those presently claimed, the coating system would necessarily have the desired wavelengths as presently claimed, absent evidence to the contrary.
Regarding claims 12 and 30, Zheng et al. teaches wherein the ultraviolet blocking layer can comprise one homogenous layer or can comprise multiple sub-layers, such as a primer layer and a topcoat layer (paragraph [0037]).
Regarding claim 32, given that Zheng et al. teaches a light blocking layer comprising materials and structure identical to those presently claimed, the light blocking layer would necessarily selectively absorb or reflect specific wavelengths as presently claimed, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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