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 Interpretation
Claim 1: Claim 1 recites the limitation “clearcoat coating compositions (Ci)i=1,…,n, wherein each clearcoat composition…results in a clearcoat coating layer” however, the original disclosure does not define the metes and bounds of clearcoat. The broadest reasonable interpretation of the term is determined based on the art and as evidenced by US Patent 6,926,972 (hereafter ‘972), a clearcoat coating composition includes tinted clear coating compositions which may be tinted with any pigment, organic or inorganic (see col. 9, lines 1-10).
Thus, it is apparent that a clearcoat can comprise a pigment that provides a color to the clearcoat and a pigmented semitransparent coating reads on the limitation “clearcoat coating composition”.
Claim Rejections - 35 USC §§ 102 & 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 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.
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 1-3, 5-8, & 10-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Go Paint By Numbers (Go Paint By Numbers, Learn Paint By Numbers In 6 Easy Steps 🎨Painting By Numbers Beginner's Guide No Experience Needed; found at https://www.youtube.com/watch?v=EH1GoM-PxVQ, 10/2/2020; hereafter Paint by Numbers).
Claim 1: Paint by Numbers is directed towards a process of preparing an object comprising a plurality of target areas (a canvas with numbered areas), at least part of the plurality of target areas having a different set of properties (the numbered areas are different shaped and intended for different colors depending on the numbering), and being coated with at least two coatings layers having adjustable properties (sections to be coated with semitransparent paints are first coated with white out to cover up the number, i.e. coated with white out followed by paint, see 5:52-7:00), said process comprising:
identifying at least two target areas (the various areas are numbered and thus more than 2 target areas are identified) and the set of properties associated with each identified target areas (relationship between transparent paints and the numbering system is determined, 3:26-5:47 & 6:57; note #7 & #13 represent semitransparent paint – i.e. clearcoat coating composition), wherein at least two target areas have a different set of properties (#7 & #13 require different paint and thus have different sets of properties),
providing at least two different clearcoat coating compositions wherein each clearcoat coating composition results in a clearcoat coating layer having properties matching a different set of properties identified in step (a) (white out and the 20 paints; #7 & #13 are semitransparent coatings which read on clearcoat coating compositions), and
applying each clearcoat coating composition provided in step (b) onto the target areas associated with the matching set of parameters (6:52-9:03).
If however, it is determined that the level of pigment does not read on a clearcoat coating composition, it is noted that concentration of pigment is a result effective variable based on the desired opacity of the dried paint and it is prima facie obvious to optimize result-effective variables to obtain desired 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).
Additionally, 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: Each provided clearcoat coating composition is a liquid solvent or water-based coating composition.
Claim 3: The coating compositions have different colors and thus different pigments and thus inherently have different chemical resistance based on the pigment and thus one can be termed to have a high chemical resistance and the second can be termed to have a low chemical resistance.
Claim 6: The desired results in Paint by Numbers are obtained by painting the picture desired and thus it is apparent that the steps are performed.
Claim 7: Solvent is mixed with the supplied paint to obtain the desired paint for application and the desired result is obtained when finished (see 4:20-5:00). Thus it is apparent the required properties are determined and mixing rations are selected to achieve the identified properties.
Claim 8: Different colors of tinted clearcoats are used with mixing the supplied compositions with solvent and thus it is apparent the claimed steps are met (4:20-5:00 & 6:52-9:03).
Claims 10 & 11: As discussed above, Paint by Numbers teaches adding water to the paint prior to use.
Paint by Numbers does not teach if it is done with the brush or prior to placing the brush in the paint.
The Examiner notes that adding solvent to a paint can be done either by wetting the brush and mixing the brush in to the paint or by pour water into the paint and mixing prior to inserting the brush in the paint.
It would have been obvious to one of ordinary skill in the art at the time of filing to choose either using the brush to add water or to add water prior to insertion of the brush because they are art recognized alternatives and it is prima facie obvious to choose between art recognized alternatives that would have predictably provided the same desired result.
Claim 12: Each provided clearcoat coating composition is applied onto all target areas having the same set of properties (see 6:52-9:03).
Claim 13: The process further includes a step of curing (see 6:52-9:03).
Claim 14: The target areas have different orientations relative to each other (the orientation of the target areas are relative to the frame of reference and given that the center can be chosen as the point from which orientation can be determined it is apparent that the target areas have different orientations relative to each other as located at different radial orientation from each other).
Claims 4 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Paint by Numbers in view of Correction Fluid (Correction Fluid, https://www.madehow.com/Volume-4/Correction-Fluid.html, 3/26/2006; found at https://web.archive.org/web/20060326034059/https://www.madehow.com/Volume-4/Correction-Fluid.html) and Winnie’s Picks (Winnie’s Picks, https://winniespicks.com/collections/paint-by-numbers-for-adults?srsltid=AfmBOoqslMAk-mS90FbW-bvOSINt9wN4hsLguCMkeZmLtXIGgqLjpyy_, https://www.google.com/search?q=%22acrylic%22+paint+by+numbers&safe=active&sca_esv=940aa337a8577638&biw=2502&bih=925&tbs=cdr%3A1%2Ccd_max%3A3%2F15%2F2022&ei=9DYvaeexIdi6qtsPpqW7-Ag&ved=0ahUKEwjn-7OCy5-RAxVYnWoFHabSDo84ChDh1QMIEQ&uact=5&oq=%22acrylic%22+paint+by+numbers&gs_lp=Egxnd3Mtd2l6LXNlcnAiGiJhY3J5bGljIiBwYWludCBieSBudW1iZXJzMgoQABiABBhDGIoFMgUQABiABDIFEAAYgAQyBhAAGAcYHjIGEAAYBxgeMgYQABgHGB4yBhAAGAcYHjIGEAAYBxgeMgUQABiABDIEEAAYHkiKKlCYDViZKHABeACQAQCYAUagAY0BqgEBMrgBA8gBAPgBAZgCA6ACmwHCAg0QABiABBiwAxhDGIoFwgIIEAAYgAQYsAPCAgkQABiwAxgHGB6YAwCIBgGQBgqSBwEzoAfxDLIHATK4B5YBwgcFMC4xLjLIBwo&sclient=gws-wiz-serp, 2/20/2018; hereafter Winnie’s Picks).
Claim 4: Paint By Number does not provide the compositions of the white out or paint (which as noted above are semitransparent and read on tinted clearcoat coating compositions).
Winnie’s Picks is directed towards paint by numbers and teaches that acrylic paint is suitable for doing paint by numbers that provides great results (page 2, Winnie’s Picks).
The Examiner notes that acrylic paint can comprise acrylic binder, a pigment, and a solvent.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Winnie’s Pick into Paint by Number and use acrylic paint comprised of a binder because it is a well-recognized type of paint suitable for paint by number which would have predictably provided great results.
Correction Fluid is directed towards white out correction fluid (title) and teaches that the composition typical comprises a pigment, binder, and a solvent (page 2, Correction Fluid).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a composition as described by Correction Fluid as the particular white out used during process because it is an art recognized composition of white out and would have predictably provided the desired results.
Thus, the combination teaches coating compositions with binders and it is apparent that the binders are either the same or different and therefore read on the limitation.
If however, it is determined that the level of pigment does not read on a clearcoat coating composition, it is noted that concentration of pigment is a result effective variable based on the desired opacity of the dried paint and it is prima facie obvious to optimize result-effective variables to obtain desired 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).
Additionally, 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 9: Paint By Number does not provide the compositions of the white out or paint (which as noted above are semitransparent and read on tinted clearcoat coating compositions).
Winnie’s Picks is directed towards paint by numbers and teaches that acrylic paint is suitable for doing paint by numbers that provides great results (page 2, Winnie’s Picks).
The Examiner notes that acrylic paint can comprise acrylic binder, a pigment, and a solvent.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Winnie’s Pick into Paint by Number and use acrylic paint comprised of a binder because it is a well-recognized type of paint suitable for paint by number which would have predictably provided great results.
Correction Fluid is directed towards white out correction fluid (title) and teaches that the composition typical comprises a pigment, binder, and a solvent (page 2, Correction Fluid).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a composition as described by Correction Fluid as the particular white out used during process because it is an art recognized composition of white out and would have predictably provided the desired results.
Thus, the combination teaches coating compositions comprising a base component and a hardener (the pigment and the binder).
If however, it is determined that the level of pigment does not read on a clearcoat coating composition, it is noted that concentration of pigment is a result effective variable based on the desired opacity of the dried paint and it is prima facie obvious to optimize result-effective variables to obtain desired 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).
Additionally, 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 2/20/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that the amendment to recite “clearcoat” overcomes the 35 U.S.C. §102(a)(1) rejection as being anticipated by Paint by Numbers because Paint by Numbers teaches applying semi-transparent paint and not clearcoat layers; the Office does not find this argument convincing because as noted above in the Claim Interpretation section, clearcoat does not have a special meaning in the art but does at least include coatings with pigments which have transparency and thus the semi-transparent paints and process of Paint by Numbers anticipate the claimed process or in the alternative render it obvious if the concentration of said pigment is not inherently anticipatory of the clearcoat limitation because it is prima facie obvious to optimize concentrations and result-effective variables.
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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