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 § 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.
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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US PG Pub 2020/0291261; hereafter ‘261) in view of Resene (Resene, A basic guide to field paint testing, 8/13/2020, https://web.archive.org/web/20200813020331/https://www.resene.co.nz/paint-testing.htm; hereafter Resene).
Claim 1: ‘261 is directed towards a method of preparing a multilayer coated article with a high transfer efficiency applicator comprising a plurality of nozzles each being configured to apply a stream or droplets of a coating composition substantially without atomization (title, abstract, ¶s 23, 33, & 35), the method comprising:
providing a substrate bearing a partially-dehydrated aqueous coating layer thereon (a wet-on-wet process wherein the solvent is flashed off prior to applying the second coating and the solvent can comprise water, ¶s 158 & 242-243);
preparing a compatible coating composition (¶s 158-243);
formulating the compatible coating composition as a waterborne fluid suitable for overspray-free application comprising the at least one compatible cosolvent, a binder, a crosslinker, and a thickener (¶s 158-243, specifically ¶s 227-228 for the teaching of organic cosolvents with water); and
applying the compatible coating composition to the substrate with the high transfer efficiency applicator via disposing a plurality of lines of the coating composition onto the partially-dehydrated aqueous coating layer of the substrate via the plurality of nozzles, thereby forming an overspray free coating layer thereon (see Figs. 11-12, ¶s 155 & 242-250).
‘261 does not teach the test method for determining a compatible coating composition.
However, Resene, which is directed towards on-site paint testing (pg 1) teaches solvent testing for paint type (pg 1) to differentiate paint types (pg 2) wherein a test area is prepared comprising a coating, a plurality of candidate solvents are applied to the test area to give solvated portions thereof, each candidate cosolvent being allowed to contact the test layer for a dwell time of 30 seconds (pg 2), compatible solvents are identified based on the absence of a failure condition on the solvated portion of the test area (pg 2), selecting a compatible coating composition based on the solvent testing (pg 2).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the paint testing method of Resene into the process of ‘261 when identifying and formulating the coating compositions of ‘261 with the various cosolvents taught by ‘261 because it is an art recognized method of determining compatible coating compositions for applying coatings on a previously applied layer.
Claim 2: Resene does not teach a specific defect observed with the solvent tests.
However, common solvent defects for coating incompatibility includes cracking.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the presence of cracking as the specific defect to determine solvent incompatibility and thus failure because cracking is an art recognized defect in the field and use of observation of cracking would have predictably provided the same desired result of observing solvent incompatibility in the systems.
Claim 3: Resene teaches rubbing the test area with a finger (i.e. scratching the area) after the dwell time and prior to identifying the solvent and wherein the failure condition comprises scratch-off of the solvated portion of the test layer during the scratching (the test area is rubbed with a finger, scratching, to determine if it is sticky – i.e. adheres to the finger and thus scratches off, pg 2).
Claim 4: The cosolvent can be ethyl acetate (i.e. substantially free of unsubstituted hydrocarbons; ¶ 227).
Claim 5: The coating can be applied as stripes as discussed above, and as multiple layers (partially overlapping) wherein the method further comprises conditioning the wet film by flashing to give the overspray coating layer (¶ 243) wherein the multipass process avoids defects (¶ 255).
The combination teaches the claimed invention but fails to explicitly teach that the process produces a wet film free from visible sag or free from visible stripe overlap defects. Since ‘261 teaches the same composition with the same application process and apparatus; it is reasonable to presume the applied coating will have the same properties. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 6: As discussed above, the partially-dehydrated aqueous coating is a water-borne coating (aqueous based) and ‘261 further teaches preparing the partially dehydrated waterborne basecoat layer by applying a film of a waterborne basecoat on the substrate and then conditioning the film of the waterborne basecoat to form the partially dehydrated waterborne basecoat layer (the basecoat is a waterborne coating which is flash dried to form a dehydrated waterborne basecoat in the wet-on-wet process, ¶s 73, 242, & 243).
Claim 7: The same compositions can be used as a primer which can be applied in the same wet-on-wet process such that the primer is a partially dehydrated aqueous primer layer via wet-on-wet process (¶s 73, 242, & 243).
Claim 8: The partially dehydrated aqueous primer layer is prepared by disposing a film of a waterborne primer on the substrate and flashing the solvent (¶s 73, 242, & 243).
Claim 9: ‘261 further teaches applying a film of a clear coat on the overspray free coating layer and curing the clear coat to for a clear coat layer on the overspray free coating layer (¶s 73, 242, & 243).
Claim 10: The primer, basecoat, and clear coat are applied by a wet-on-wet process with a flash between which dehydrates the prior applied film (¶s 73, 242, & 243).
Claims 11-14: ‘261 teaches the claimed near-Newtonian viscosity profile (¶s 68).
The combination teaches the claimed invention but fails to explicitly teach claimed viscosity profile. Since ‘261 discloses the same apparatus with the same application process and the same compositions; it is reasonable to presume the viscosity profile will be inherently present for the compositions. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the composition is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
‘261 also teaches adding rheology modifiers (¶ 159) and viscosity is a result-effective variable based on the desired printing technique and film properties.
Though ‘261 is silent concerning the specific viscosity to obtain the desired results, it does teach that the desired properties/resutls are proportionate to viscosity. Thus, viscosity is a result-effective variable based on properties and results desired and it is obvious to optimize viscosity to obtain the desired properties/results.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
Claims 15-16: The combination teaches the claimed invention but fails to explicitly teach claimed viscosity recovery. Since ‘261 discloses the same apparatus with the same application process and the same compositions; it is reasonable to presume the viscosity recovery will be inherently present for the compositions. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the composition is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claims 17-18: The composition comprises a polyurethane resin as the binder (¶ 169) and phyllosilicate as a thickener (¶ 223).
Claim 19: The composition may further comprises pigment (¶ 74), catalyst (¶ 111), UV absorber (¶ 74), leveling additive (¶ 158), and wetting additive (¶ 158).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US PG Pub 2020/0291261; hereafter ‘261) in view of Resene (Resene, A basic guide to field paint testing, 8/13/2020, https://web.archive.org/web/20200813020331/https://www.resene.co.nz/paint-testing.htm; hereafter Resene) and Element (Element U.S. Space & Defense; Automotive Paint Testing, found at https://www.elementdefense.com/blog/automotive-paint-testing, 10/3/2018; hereafter Element).
Claim 21: ‘261 is directed towards a method of preparing a multilayer coated article with a high transfer efficiency applicator comprising a plurality of nozzles each being configured to apply a stream or droplets of a coating composition substantially without atomization (title, abstract, ¶s 23, 33, & 35), the method comprising:
providing a substrate bearing a partially-dehydrated aqueous coating layer thereon (a wet-on-wet process wherein the solvent is flashed off prior to applying the second coating and the solvent can comprise water, ¶s 158 & 242-243);
preparing a compatible coating composition (¶s 158-243);
formulating the compatible coating composition as a waterborne fluid suitable for overspray-free application comprising the at least one compatible cosolvent, a binder, a crosslinker, and a thickener (¶s 158-243, specifically ¶s 227-228 for the teaching of organic cosolvents with water); and
applying the compatible coating composition to the substrate with the high transfer efficiency applicator via disposing a plurality of lines of the coating composition onto the partially-dehydrated aqueous coating layer of the substrate via the plurality of nozzles, thereby forming an overspray free coating layer thereon (see Figs. 11-12, ¶s 155 & 242-250).
‘261 does not teach the test method for determining a compatible coating composition.
However, Resene, which is directed towards on-site paint testing (pg 1) teaches solvent testing for paint type (pg 1) to differentiate paint types (pg 2) wherein a test area is prepared comprising a coating, a plurality of candidate solvents are applied to the test area to give solvated portions thereof, each candidate cosolvent being allowed to contact the test layer for a dwell time of 30 seconds (pg 2), compatible solvents are identified based on the absence of a failure condition on the solvated portion of the test area (pg 2), selecting a compatible coating composition based on the solvent testing (pg 2).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the paint testing method of Resene into the process of ‘261 when identifying and formulating the coating compositions of ‘261 with the various cosolvents taught by ‘261 because it is an art recognized method of determining compatible coating compositions for applying coatings on a previously applied layer.
The combination does not teach applying the test solvent by dropper.
However, Element, which is directed towards automotive paint testing (title) teaches testing resistance to solvents can be performed by either drop application (i.e. application by a dropper) or by application of a soaked cloth (see pgs 9-10).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a dropper to apply drops of the test solvent while practicing the combination because application by dropper of drops is an art recognized means of testing solvent interaction with a paint coating and would have predictably been suitable as a means for testing the solvent compatibility during the process.
Response to Arguments
Applicant's arguments filed 3/12/26 have been fully considered but they are not persuasive.
In response to applicant's argument that Resene requires the test area to be dry and thus the test layer of the combination cannot be a partially-dehydrated layer, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant’s is advised that ‘261 teaches a wet-on-wet process wherein the solvent is flashed which reads on applying a coating to a partially dehydrated coating as claimed and Resene teaches a known method for determining solvent compatibility of previously applied layers. Though Resene teaches wiping the surface dry it is silent towards the state of the totality of the layer and does not exclude a partially dehydrated layer of ‘261 nor teach away from performing said test on ‘261’s partially dehydrated layer as presented above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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