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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/5/26 has been entered.
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 1-4 & 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kanada (US PG Pub 2015/064476; hereafter ‘476).
Claim 1: ‘076 is directed towards a method a multilayer coating film (title), the method comprising:
(1) applying a first water-based paint (P1) onto an object to be coated to form a first film having a cured film thickness (TP1) of 5-70 µm (¶s 21, 322);
(2) applying a second water-based colored paint (P2) onto the first coating film formed in (1) to form a second colored coating film having a cured film thickness (TP2) of 5-70 µm, the second water-based color paint (P2) comprising a binder component (AP2) and an effect pigment (BP2) and having a paint solid content concentration (NVP2) of 25% (¶s 21, 281, 318, 322, 336-346, 391-392);
(3) applying a clear coat paint (P3) onto the second colored coating film formed in (2) to form a clear coating film (¶ 21); and
(4) heating the multilayer coating film including the first coating film formed in (1), the second coating film formed in (2), and the clear coating film formed in (3), and thereby simultaneously curing the multilayer coating film (¶ 21),
the first water-based paint (P1) comprising
a hydroxyl group-containing acrylic resin (A) (¶ 21),
a crosslinking agent (B) (¶ 21), and
acrylic-urethane composite particles (C) containing an acrylic resin component having an acid value of 0-20 mg KOH/g (¶s 21, 235), wherein
the hydroxyl group-containing acrylic resin (A) contains a water-dispersible hydroxyl group-containing acrylic resin (A1’) having an acid value of 5-60 mg KOH/g (¶s 61-88), and wherein
the hydroxyl group-containing acrylic resin (A) contains a water-dispersible hydroxyl group-containing acrylic resin (A1’) having an acid value of 5-60 mg KOH/g (¶s 61-88).
Although the taught range of 5-60 is not explicitly the claimed range of less than or equal to 20, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Although the taught range of TP1 of 5-70 µm is not explicitly the claimed range of 5-20 µm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Although the taught range of TP2 of 5-70 µm is not explicitly the claimed range of 0.5-7 µm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
The taught value of NVP2 of 25% is not the claimed range of 1-18 mass%.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the solids concentration of the second water-based colored paint because concentration is prima facie obvious to optimize. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 2: The substrate is a steel sheet on which a cured electrodeposited coating film is formed, on which an intermediate coating paint is applied to form an intermediate coating film (¶ 321).
Claim 3: ‘476 teaches that the substrate can be coated with an intermediate coating paint prior to applying the multilayer coating film as discussed above (¶ 321).
‘476 also discloses that the prior art teaches that the intermediate coating film in the art can be an aqueous paint (¶ 6).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a water-based paint for forming the intermediate coating because aqueous intermediate paints are art recognized as suitable for forming the intermediate coatings in the field and would have predictably been suitable for the process of ‘476.
Claim 4: The cured film thickness of the intermediate coating film is not taught by ‘476.
However, the thickness of a coating is are result effective variable based on the desired hiding power of a coating as well as other desired properties.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the thickness of the coatings to obtain the desired results because thickness of a coating is a result effective variable and it is prima facie obvious to optimize result effective variables.
Claim 7: ‘476 discloses a polyisocyanate compound component contained in a urethane resin component of the acrylic-urethane composite resin particles (C) comprises, as at least one type of the polyisocyanate compound component, an aliphatic polyisocyanate compound (c1-1) (¶ 195).
Claim 8: ‘476 discloses that the monomer component contained in the acrylic resin component in the acrylic-urethane composite resin particles (C) comprises, as at least one type of the monomer component, a polymerizable unsaturated monomer (c2-1) having one polymerizable unsaturated group per molecule and an alkyl group having from (¶ 209-210).
Claim 9: The monomer component contained in the acrylic resin component of the acrylic-urethane composite resin particles (C) comprises, as at least one type of the monomer component, a polymerizable unsaturated monomer (c2-2) having two or more polymerizable unsaturated groups per molecule (¶ 208).
Claim 10: The content portion of the binder component (AP2) and the effect pigment (BP2) in the second water-based colored paint (P2) is such that a content of the effect pigment (BP2) is in a range of 1-200 parts by mass of 100 parts by mass of total solid content (¶ 282).
Although the taught range of 1-200 parts by mass of 100 parts is not explicitly the claimed range, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Additionally, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentration of the pigment because the concentration of pigment is a result effective variable based on the desired hiding power of the coating and concentrations are also prima facie obvious to optimize.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 11: The content portion of the effect pigment (BP2) in the second water-based colored paint (P2) is in a range of in a range of 1-200 parts by mass of 100 parts by mass of total solid content (¶ 282).
Although the taught range of 1-200 parts by mass of 100 parts is not explicitly the claimed range, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Additionally, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentration of the pigment because the concentration of pigment is a result effective variable based on the desired hiding power of the coating and concentrations are also prima facie obvious to optimize.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Response to Arguments
Applicant's arguments filed 5/5/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that there is a “cooperative relationship between P1 and P2”; the Office does not find this argument convincing because ‘476 also recognizes a relationship between P1 & P2 and teaches that film interaction can be controlled (see ¶s 326-336) and applicant has not provided any evidence that there is any unexpected results related to the solids concentration of the second coating. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.").
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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