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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
Response to Amendment
Applicant’s amendment and reply to the final Office action (“final action”), mailed 12/29/2025, are noted with appreciation.
Claims 1-9 remain pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/24/2026 has been considered by the Primary Examiner.
Response to Arguments
Applicant’s arguments in the remarks have been fully considered.
Claim Rejections – 35 U.S.C. § 103
The rejection under 35 U.S.C. § 103 in the non-final action is withdrawn in view of the amendment. Applicant has amended independent claim 1 to recite that the cured second coloring coating film thickness is 0.7 microns to 5 microns. In US 896’s Table 4, Comparative Example 5, having a film thickness of 5 microns, results in poorer smoothness, DOI, and water resistance. As a result, one of ordinary skill in the art would not have been motivated to select a film thickness below 7 microns. Moreover, since it is clear that a film thickness having US 896’s formulation, but within applicant’s claimed range, significantly impacts visual properties, it is unclear whether such a film would possess the claimed effect pigment orientation, flip-flop value, and L*25 value. See MPEP § 2112.01.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The terms “relatively uniformly,” “relatively parallel,” and “unevenness” in claim 1 are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Here, what constitutes “uniform” and “parallel” effect pigment orientation is unclear. Moreover, these adjectives are relative to some other, unidentified state. While metallic unevenness is disclosed as being graded along a scale of almost none [Wingdings 3 font/0x67] slight [Wingdings 3 font/0x67] observed with excellent appearance [Wingdings 3 font/0x67] large amount with poor appearance, where the lines between almost none, slight, some, and a large amount is unclear. Consequently, the metes and bounds of the claim are impossible to determine.
Claims 2-9 are similarly rejected because they incorporate this indefinite subject matter by virtue of their dependency.
Allowable Subject Matter
Claims 1-9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither teaches nor suggests the claimed method wherein a second, effect pigment containing layer is applied to a thickness of 0.7 – 5 microns and possesses a flip-flop value of 2.8 or more and an L*25 value from 75 – 120.
Conclusion
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, 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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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
1 May 2026
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