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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-9, 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reil et al WO 2020/232011.
Per claims 1, 6-7, 12, 14, Reil teaches a process for applying at least two coating compositions having different leveling properties (low shear viscosity) to an object to achieve low sagging, good leveling [0087] comprising a plurality of target areas (abstract), comprising first providing a first clear coating composition [0094] to a vertical part of the substrate (low shear viscosity of 15 to 32 Pa/s) [0072] and providing a second clear coating composition [0094] to a horizontal part of the substrate (low shear viscosity of 3 to 20 Pa/s) [0071]. The difference in low shear viscosity corresponds to the difference between good sag resistance and good leveling properties.
Per claims 2-3, 5, Reil teaches that the coating compositions can be formed by various mixtures and combinations at various weight distributions, which would inherently and necessarily form the desired or required shear viscosity as intended in the prior art (see Examples 1-12). Furthermore, Reil teaches various components to the mixture that are used to control the low shear viscosity (e.g., rheology modifiers, [0041]; swelling solvents [0038]).
Per claims 8-9, Reil teaches a rheology modifier which is interpreted as the claimed SCA, which contains a polymer (alkali) [0150]. Alternatively, Reil teaches a dispersion polymer present in the film forming resin which would read on the SCA as claimed [0033]-[0034].
Per claim 13, Reil teaches curing and drying the coating [0100]-[0101].
Claim Rejections - 35 USC § 103
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) 4, 11, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reil et al WO 2020/232011.
Per claim 4, Reil is silent regarding the claimed process of selecting higher fraction components with desired properties to yield the desired final property. However, as discussed above in claims 2-3, Reil teaches that the coating compositions can be formed by various mixtures and combinations at various weight distributions, which would inherently and necessarily form the desired shear viscosity as intended in the prior art (see Examples 1-12). Furthermore, Reil teaches various components to the mixture that are used to control the low shear viscosity (e.g., rheology modifiers, [0041]; swelling solvents [0038]). As such, it would have been obvious to one of ordinary skill in the art to have utilized components with high sag resistance (e.g., higher viscosity at low shear rates) in order to yield the desired higher sag resistance in the final mixture with a reasonable expectation for success and predictable results.
Per claims 11 and 18-20, Reil teaches that the resin is present in at least 10 wt% of the composition [0036], which overlaps with the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art to have selected a value within the disclosed workable range of the prior art to arrive at the desired result with a reasonable expectation for success.
Allowable Subject Matter
Claims 10 and 16-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Reil does not teach the claimed SCA being obtained according to one of the claimed processes and there would have been no apparent reason or motivation to have modified the prior art to arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 3/27/26 have been fully considered but they are not persuasive. Applicant has argued that Reil does not teach the claimed invention of selective application of two distinct coating compositions (see page 8 of the response). First, it is noted that the claims do not require or include the word “distinct” and as such, this argument is confusing. Second, Reil clearly teaches that the coating compositions may be applied on horizontal [0071] or vertical [0072], in which the compositions are modified as described above depending on the surface orientation (e.g., creating different composition formulations). Reil teaches coating of an object such as an automobile, which includes several vertical or horizontally oriented surfaces and as such, teaches one process that includes deposition onto both of these types of surfaces.
Applicant’s arguments regarding pigmented color compositions are confusing. Reil teaches at [0094] that the coating composition may be clear coated and as such, the rejection above now points to [0094] as teaching this.
Applicant’s arguments regarding “improved optical quality” lack proper support and evidence. Applicant should provide evidence commensurate in scope with the claim in order to support the special or unexpected results. Nonetheless, since the prior art teaches all of the claimed limitations, one of ordinary skill in the art would have expected that the improved properties would naturally flow from following the steps of the prior art. Applicant’s arguments are not persuasive.
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 NATHAN T. LEONG whose telephone number is (571)270-5352. The examiner can normally be reached M-F 10:00-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN T LEONG/Primary Examiner, Art Unit 1715
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