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 .
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/JP2023/001932, filed 01/23/2023 and published as WO 2023/149263 A1 on 08/10/2023. The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit from JP 2022-015250, filed 02/02/2022.
Response to Amendment
Applicant’s amendment and reply to the non-final Office action (“non-final action”), mailed 09/09/2025, are noted with appreciation.
Claims 1-10 remain pending.
Support for the amendment to independent claim 1 can be found, inter alia, at Table 11, Ex. 24 in the originally-filed specification.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/08/2025 was filed after the mailing date of the non-final action on 09/09/205. The submission is in compliance with the provisions of 37 CFR 1.97 (statement). Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments in the remarks have been fully considered.
Abstract
The objection to the abstract in the non-final action is withdrawn in view of the amendment.
Claim Rejections – 35 USC § 112
The rejection under 35 U.S.C. § 112(b) in the non-final action is withdrawn in view of the amendment
Claim Rejections – 35 U.S.C. § 102
The rejection under 35 U.S.C. § 102 in the non-final action is withdrawn in view of the amendment. US 896 teaches at best a range of 18 mass % – 35 mass %, which is outside the range as amended of 1 – 16 mass %.
Claim Rejections – 35 U.S.C. § 103
The rejection under 35 U.S.C. § 103 in the non-final action is maintained in view of the amendment. A new, alternative rejection necessitated by the amendment is also set-forth herein below.
The amendment changed the claims [(PVP2)] from 1 – 20 mass % to 1 – 16 mass %. US 896 teaches at best a range of 18 mass % – 35 mass %. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, where the general conditions of a claim are disclosed in the prior art, it into inventive to discover the optimum or workable ranges by routine experimentation. Id. This rule is limited, however, to cases in which the optimized variable is a “result-effective variable.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012).
Here, because US 896 teaches or renders obvious all of the other process and compositional limitations of independent claim 1 as amended, and because a mere 2 mass % separate the [(PVP2)] taught by the prior art and the [(PVP2)] now claimed, it is the Primary Examiner’s position that the “general conditions” of the claim are disclosed. Moreover, because the solids content of an effect-pigment containing coating composition is a result-effective variable affecting various properties of both uncured as well as the cured coating, such as viscosity and spread-ability, hiding power, degree of metallic effect, and overall drying/during time for the multilayer structure, it is the Primary Examiner’s position that it would have been obvious to one of ordinary skill in the art to optimize the [(PVP2)] in the process of US 896, by routine experimentation.
The outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are “critical” and “produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. Similarly, a prima facie case of obvious ness established by the overlap of prior art values with the claimed range can be rebutted by evidence the claimed range is “critical” because it “achieves unexpected results.” 692 F.3d at 1297.
Here, Applicant has provided no such evidence of criticality arising from unexpected results. Rather, Applicant refers to the results of the newly-claimed range as “acceptable” and “advantageous . . . with regard to the metallic unevenness and brightness of the paints.” Reply at 8. Applicant’s characterization is of workable or optimum, results. As such, there is nothing of record indicating that optimizing [(PVP2)] to fall within a range of 1 mass % – 16 mass % was anything other than the exercise of ordinary skill in the art. See 692 F.3d at 1297.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as obvious over US 8,758,896 B2 alone or, in the alternative, further in view of US 2019/0001370 A1.
Claim 1
US 896 teaches a 3-coat, 1-bake process for forming a multilayer coating film. The process comprises:
(1) forming a first coating film from a first coating composition (A);
(2) forming a second, colored coating film from an effect pigment-containing composition (B) on the first coating film;
(3) forming a third, clear coating film from a clear coating composition (C) on the second, colored coating film; and
(4) heating the three coating films formed in steps (1)-(3) to simultaneously cure these three coating films.
See, e.g., the abstract. Here, (A), (B), and (C) correspond to the claimed (P1), (P2), and (P3) respectively.
With respect to Applicant’s claimed (P1), US 896 teaches that first coating composition (A) is aqueous [4:3] and applied to obtain a cured film thickness of 5-40 microns, preferably 10-30 microns, and most preferably 15-25 microns [15:21-25]. These specifically taught endpoints of 5, 10, and 15 microns anticipate the claimed range of 5-20 microns. MPEP § 2131.03(I).
Moreover, US 896 teaches that first coating composition (A) comprise a combination of base resins, preferably a hydroxy-containing acrylic resin and a hydroxy-containing polyester resin [5:54-62]. The hydroxy-containing acrylic resin has an acid value of preferably 0.1-200 mg KOH/g, more preferably 2-150 mg KOH/g, and most preferably 5-100 mg KOH/g; and a hydroxy number of preferably 0.1-200 mg KOH/g, more preferably 2-150 mg KOH/g, and most preferably 5-100 mg KOH/g [8:14-24]. The hydroxy-containing polyester resin has an acid value of preferably 5-150 mg KOH/g, more preferably 10-100 mg KOH/g, and most preferably 15-80 mg KOH/g; and a hydroxy number of preferably 1-200 mg KOH/g, 2-180 mg KOH/g, and most preferably 5-170 mg KOH/g [11:10-17]. Consequently, whether one chooses the acrylic resin to read on applicant’s claimed compound (A) and the polyester resin to read on applicant’s claimed film-forming resin (B), or vice versa, at least the specifically taught end point acid value of 150 mg KOH/g for both resins anticipates the claimed range of 50-150 mg KOH/g. Id. Similarly, the specifically taught hydroxy numbers of 100, 150, 170, 180, and 200 mg KOH/g anticipate the claimed range of 100-300 mg KOH/g. Id.
With respect to the claimed average molecular weight, US 896 teaches, for the hydroxy-containing polyester resin, a value of about 500-50,000, the endpoint of which, at least, anticipates the claimed range of 500-8,000. Id. While US 896 does not teach a specific average molecular weight for the hydroxy-containing acrylic resin, US 896 teaches the same resin prepared in the same manner as disclosed by Applicant. Consequently, one of ordinary skill in the art would have expected the resin of the prior art and Applicant’s claimed resin to have the same physical properties. MPEP § 2112.01.
In the alternative, the molecular weight of a resin affects many physical properties of the resin, such as viscosity, tensile strength, impact resistance. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the molecular weight of the hydroxy-containing acrylic resin by routine experimentation. MPEP § 2144.05.
With respect to Applicant’s claimed (P2), US 896 teaches that the second, colored coating composition (B) is an aqueous [4:5] and is applied to obtain a cured film thickness of 7-13 microns [15:37]. The shared endpoint of 7 microns anticipates the claimed range of 0.5-7 microns. MPEP § 2131.03(I). US 896 further teaches that second, colored coating composition (B) contains a binder component [15:39-18:29] and an effect pigment [18:30-46].
US 896 teaches the solid content concentration is 18-35 mass%, preferably 20-30 mass%, and most preferably 23-27 mass% [18:30-46]. The amendment changed the claims [(PVP2)] from 1 – 20 mass % to 1 – 16 mass %. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, where the general conditions of a claim are disclosed in the prior art, it into inventive to discover the optimum or workable ranges by routine experimentation. Id. This rule is limited, however, to cases in which the optimized variable is a “result-effective variable.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012).
Here, because US 896 teaches or renders obvious all of the other process and compositional limitations of independent claim 1 as amended, and because a mere 2 mass % separate the [(PVP2)] taught by the prior art and the [(PVP2)] now claimed, it is the Primary Examiner’s position that the “general conditions” of the claim are disclosed. Moreover, because the solids content of an effect-pigment containing coating composition is a result-effective variable affecting various properties of both uncured as well as the cured coating, such as viscosity and spread-ability, hiding power, degree of metallic effect, and overall drying/during time for the multilayer structure, it is the Primary Examiner’s position that it would have been obvious to one of ordinary skill in the art to optimize the [(PVP2)] in the process of US 896, by routine experimentation.
The outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are “critical” and “produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. Similarly, a prima facie case of obvious ness established by the overlap of prior art values with the claimed range can be rebutted by evidence the claimed range is “critical” because it “achieves unexpected results.” 692 F.3d at 1297.
Here, Applicant has provided no such evidence of criticality arising from unexpected results. Rather, Applicant refers to the results of the newly-claimed range as “acceptable” and “advantageous . . . with regard to the metallic unevenness and brightness of the paints.” Reply at 8. Applicant’s characterization is of workable or optimum, results. As such, there is nothing of record indicating that optimizing [(PVP2)] to fall within a range of 1 mass % – 16 mass % was anything other than the exercise of ordinary skill in the art. See 692 F.3d at 1297.
In the alternative, US 370 teaches a process for forming a multi-layer coating film including a first, aqueous, hydroxy-functional polyester and/or acrylic resin-based color base coating composition (X), an aqueous effect pigment-containing composition (Y), and a clear coat (Z). The effect pigment-containing composition (Y) has a solid content of 0.1 – 15 mass %, preferably 0.2 – 5.0 mass % to give the desired coating film with excellent metallic luster [0084].
It would have been obvious to one of ordinary skill in the art to modify the process of US 896 so as to formulate the effect pigment-containing composition to have a solids content [(PVP2)] in the range of 0.1 – 15 mass %, preferably 0.2 – 5.0 mass %. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully forming a multi-layer effect layer-containing film with excellent metallic luster, based on the teaching by US 370 that such a solids content is known in the art to yield an aqueous effect pigment-containing layer that can be incorporated into a multi-layer structure. The range of 0.1 – 15 mass % overlaps the claimed range of 1 – 16 mass %. Overlapping ranges are prima facie obvious. MPEP § 2144.05(I).
Claim 2
US 896 teaches that the substrate may be steel [4:54] (cold rolled steel plate [63:32]), the surface of which has optionally been treated and on which undercoating and intermediate films have been formed by electrodeposition coating [5:5-15].
Claim 3
While US 896 does not specify that the intermediate coating paint is water-based, aqueous intermediate coating paints are well-known in the art. Moreover, use of an aqueous paint is more environmentally friendly and safer for workers because it contains little to no VOCs. Consequently, it would have been obvious to one of ordinary skill in the art to modify the process of US 896 so as to utilize an aqueous paint to form the intermediate coating film.
Claim 4
While US 896 does not specify the thickness of the intermediate coating, this thickness is a result-effective variable affecting the degree of adhesion between the underlying substrate and the overlying multilayer coating as well as the total weight of the overall coated product. Consequently, it would have been obvious to one of ordinary skill to optimize the intermediate coating thickness by routine experimentation. MPEP § 2144.05.
Claim 5
US 896 teaches that the acid group is a carboxy group [5:35-36 and 11:14].
Claim 6-7
US 896 teaches the hydroxy-functional acrylic resin anticipates the claimed acid and hydroxyl numbers, supra.
While US 896 does not teach a specific average molecular weight for the hydroxy-containing acrylic resin, US 896 teaches the same resin prepared in the same manner as disclosed by Applicant. Consequently, one of ordinary skill in the art would have expected the resin of the prior art and Applicant’s claimed resin to have the same physical properties. MPEP § 2112.01.
In the alternative, the molecular weight of a resin affects many physical properties of the resin, such as viscosity, tensile strength, impact resistance. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the molecular weight of the hydroxy-containing acrylic resin by routine experimentation. MPEP § 2144.05.
Claim 8
US 896 teaches that the effect pigment is present in 15-30 parts by mass based on 100 parts by mass of the binder component [4:9 and 19:10-18]. The value of 15 parts by mass, which falls within the claimed range anticipates the claimed range of 5-500 parts by mass. MPEP § 2131.03(I).
Claim 9
US 869 does not define the concentration of the effect pigment in term of a mass% of the total solid content of the effect pigment-containing composition. Nevertheless, because US 869 otherwise teaches all of the components of the composition prepared in the same way, one of ordinary skill in the art would have expected them to have the same properties, including mass% -- especially since US 869 already teaches the claimed effect pigment concentration in parts by mass.
In the alternative, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05. Moreover, the concentration of effect pigment determines the degree to which the pigments visual properties are observed, as well as the viscosity of the effect pigment-containing composition and the overall weight of the cured multilayer coating. Consequently, it would have been obvious to optimize the concentration of the effect pigment as expressed in mass% based on a paint solid content of the effect pigment-containing coating composition. Id.
Claim 10
US 896 does not specify a particular L*25 value. As noted above, US 896 teaches the preparation of the claimed multilayer coating from the claimed materials according to the claimed steps. Consequently, one ordinary skill in the art would have expected the resulting multilayer coating film to have the same properties. MPEP § 2112.01.
In the alternative, the CIELAB perceptual lightness L* can be determined by the pigment choice, layer thickness, etc. Consequently, it would have been obvious to one of ordinary skill in the art to select at least these parameters to give a desired coating lightness.
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 WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759 22 December 2025