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 .
Summary
The Applicants arguments and claim amendments received on 05/07/2026 are entered into the file. Currently, claims 1-9 and 15-18 are amened; claims 10-14 are cancelled; claims 20-25 are new; resulting in claims 1-9 and 15-25 pending for examination.
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.
Claims 1-9 and 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Decker et al. (WO 2018/081613 A1; cited on IDS and ISR).
Regarding claims 1, 2 and 9, Decker et al. teaches a near IR reflective coating that allows for increased near IR detection distance of an object coated with said coating by LiDAR systems, wherein the coating is comprised of a first coating layer that is transparent to NIR (at least one NIR transmitting layer) partially coating a second coating layer that is a NIR reflective layer (at least one converter layer) ([0015, 0020-0034, 0043, 0082]). The NIR reflective layer (at least one converter layer) has an L* value ranging from 40 to 95 in the CIELAB system and typically exhibits a grey color ([0043-0064]), which overlaps with the claimed L* range of 0-80 of claim 1 of the instant application. It has been held that wherein in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Furthermore, Decker et al. teaches that the NIR reflective layer (at least one converter layer) absorbs electromagnetic radiation in the visible region (400-700nm) and fluoresce in the near-IR region (700-2500nm), which overlaps with the claimed range of “about 290nm to about 700nm” at an endpoint (700nm). It has been held that wherein in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. Therefore, as Decker et al. teaches that NIR reflective layer (at least one converter layer) fluoresce at 700nm,which overlaps the claimed endpoint range of “about 700nm”, it would be detectable and visible by LiDAR.
Regarding claim 3, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the NIR reflective layer (at least one converter layer) comprises a film forming resin and a near-IR reflective pigment ([0044-0062]).
Regarding claims 4, 5 and 6, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the first coating layer that is transparent to NIR (at least one NIR transmitting layer) is comprised of a film forming resin and a visibly absorbing NIR transparent pigment such as the inorganic and organic pigments listed in paragraphs [0037-0039] of the reference ([0028-0039]).
Regarding claim 7, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the second coating of the NIR reflective layer (at least one converter layer) is a primer surfacer coating ([0024]).
Regarding claim 8, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the near IR reflective coating can further comprise a clear coating or top coat positioned over at least a portion of the first coating layer that is transparent to NIR (at least one NIR transmitting layer) ([0025]).
Regarding claim 15, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the near IR reflective coating is at least partially coated on a substrate including plastic ([0022]), which is disclosed by the instant application as a non-NIR reflective substrate (see pg-pub [0019] of instant application).
Regarding claims 16 and 17, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the substrate can be pretreated with an electrodeposited coating (e-coating) ([0023]).
Regarding claim 18, Decker et al. teaches all the limitations of claim 1 as recited above. Decker et al. further teaches throughout the disclosure suitable materials used to form the near IR reflective coating, with specific examples of forming various near IR reflective coating disclosed in [0088-0159]. Decker further teaches that the second coating layer that is a NIR reflective layer (at least one converter layer) at least partially underlies the first coating layer that is transparent to NIR (at least one NIR transmitting layer) ([0043, 0077-0079, 0082])
Regarding claim 19, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches near IR reflective coating is coated onto objects such as vehicles, roofs, road traffic safety products, signage, building, structure and any obstacle that may be located in a path of a moving vehicle ([0015]).
Regarding claim 20, Decker et al. teaches all the limitations of claim 1 as recited above.
In looking to the instant specification, the jetness of a color is a measure of the darkness of the color, wherein jetness may be achieved through the use of a converter layer having an L* value within the range o 0-80 (see pg-pub [0036]). Decker et al., as stated above, teaches a NIR reflective layer (at least one converter layer) with an L* value ranging from 40 to 95 in the CIELAB system and typically exhibits a grey color ([0043-0064]), which overlaps with the claimed L* range of 0-80 of claim 1 of the instant application. It has been held that wherein in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Therefore, the NIR reflective layer (at least one converter layer) with an L* value ranging from 40 to 95 in the CIELAB system taught by Decker et al. would inherently have the jetness property within the claimed range.
Regarding claim 21, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the a NIR reflective layer (at least one converter layer) can comprise a near-IR reflective pigment such as titanium dioxide or metal alloy ([0043]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the NIR reflective layer (at least one converter layer) to comprise a metal alloy , rather than titanium dioxide as Decker et al. teaches them as obvious variants to achieve the same feature.
Regarding claim 22, Decker et al. teaches all the limitations of claim 1 as recited above, and Decker et al. further teaches that the second coating layer that is a NIR reflective layer (at least one converter layer) can include any of the pigments disclosed by [0069-0070]. Decker et al. further teaches that the second coating layer that is a NIR reflective layer (at least one converter layer) can be substantially free or in some cases completely free of carbon black ([0076]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that in the embodiment wherein the second coating layer that is a NIR reflective layer (at least one converter layer) is “substantially free of carbon black” that some carbon black would be present, thus meeting the limitation “comprises a black pigment”.
Regarding claim 23, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the near IR reflective coating exhibits an L* value of no more than 35 ([0027]), which is encompassed and overlaps the claimed range of 0 to 50. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Regarding claim 24, Decker et al. teaches a near IR reflective coating that allows for increased near IR detection distance of an object coated with said coating by LiDAR systems, wherein the coating is comprised of a first coating layer that is transparent to NIR (at least one NIR transmitting layer) partially coating a second coating layer that is a NIR reflective layer (at least one converter layer) ([0015, 0020-0034, 0043, 0082]). The NIR reflective layer (at least one converter layer) has an L* value ranging from 40 to 95 in the CIELAB system and typically exhibits a grey color ([0043-0064]), which overlaps with the claimed L* range of 0-80 of claim 1 of the instant application. It has been held that wherein in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
In looking to the instant specification, the jetness of a color is a measure of the darkness of the color, wherein jetness may be achieved through the use of a converter layer having an L* value within the range of 0-80 (see pg-pub [0036]). Decker et al., as stated above, teaches a NIR reflective layer (at least one converter layer) with an L* value ranging from 40 to 95 in the CIELAB system and typically exhibits a grey color ([0043-0064]), which overlaps with the claimed L* range of 0-80 of claim 1 of the instant application. It has been held that wherein in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Therefore, the NIR reflective layer (at least one converter layer) with an L* value ranging from 40 to 95 in the CIELAB system taught by Decker et al. would inherently have the jetness property within the claimed range.
Regarding claim 25, Decker et al. teaches all the limitations of claim 1 as recited above, and further teaches that the near IR reflective coating exhibits an L* value of no more than 35 ([0027]), which is encompassed and overlaps the claimed range of 0 to 50. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Response to Arguments
Response-Drawings
The previous objection to the drawings for failing to comply with 37 CFR 1.84(p)(5) for including reference character 130 in Figure 1 which not mentioned in the description, is overcome by Applicants amendments to the drawings to remove the aforementioned reference character.
Response-Claim Rejections - 35 USC § 112
The previous rejection of claims 3, 4, 8, 9 and 18 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 are overcome by Applicants amendments to the claims in the response filed 05/07/2026.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments filed 05/07/2026 have been fully considered but they are not persuasive.
The Applicant argues on pages 5 and 6 that Decker et al. does not teach a coating system that would be detectable at wavelengths below 700nm because Decker absorbs light having such low wavelengths and is silent to a coating system that can detect such low wavelengths with LiDAR sensor.
This argument is not persuasive.
With respect to claim 1, Decker et al. teaches that the NIR reflective layer (at least one converter layer) absorbs electromagnetic radiation in the visible region (400-700nm) and fluoresce in the near-IR region (700-2500nm), which overlaps with the claimed range of “about 290nm to about 700nm” at an endpoint (700nm). It has been held that wherein in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. Therefore, as Decker et al. teaches that NIR reflective layer (at least one converter layer) fluoresce at 700nm,which overlaps the claimed endpoint range of “about 700nm”, it would be detectable and visible by LiDAR.
The claimed range is inclusive of 700nm and is not limited to those wavelengths below and not including 700nm as implied by the arguments.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
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