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 .
Specification
The amendment filed 9 March 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
“cc/min”
“Normal wet liters per minute”
“μS/cm”
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 4-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to include units “cc/min” and “μS/cm” not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Additionally, Applicant defines “Nw.l/min” as “normal wet liters per minute,” where no definition was provided in the specification as originally filed and the unit is not a defined unit in the prior art.
Claims 4-5 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.
Claim 4 recites the limitation “normal wet liters.” The limitation is indefinite, because it is not a standard unit in the prior art and neither the specification nor the claims provide a definition. Moreover, the original specification fails to define “Nw.l.” However, for the purpose of examination, Examiner considers it to mean “liter.”
Claim 5 is rejected as depending from rejected Claim 4.
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.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mashita et al. (EP 0709415) in view of Petropolous et al. (EP 0435577) and Sugimoto (JP 2002249718 A).
Regarding Claim 4, Mashita et al. (EP’415) teach a method for painting a vehicle’s bodywork using an enamel comprising melamine components and a blocked acid catalyst (Abstract; p. 2, lines 12-16; p. 5, lines 38-57; p. 21, lines 5-10), wherein the painting method comprises conventional painting process, including electrostatic spraying (p. 20, lines 50-59). EP’415 fails to teach a specific electrostatic spraying technique. Rotary atomization (i.e. “electrostatic process employing a bell”) was conventional and old prior art at the time of invention, and the recited parameters are typical parameters for a rotary (bell) atomizer; the size of paint drops and the amount of electric charge carried by said paint drops are controlled when spraying with a conventional rotary atomizer. For example, Petropolous (EP’577) is pertinent to Applicant’s problem of choosing appropriate parameters for electrostatic spraying of a coating, comprising a solution of polymer and solvent (col. 8, lines 5-10 and 26-31) and suggests a coating flow rate of about 40-500 cc/min (270 cc/min falls in the middle) and voltage of 30-150 kV (col. 8, lines 26-41). It would have been obvious to modify the process of EP’415 by choosing the recited values of typical process parameters of a conventional electrostatic spraying process through routine optimization of such process parameters with a reasonable expectation of adequately charging atomized particles for adequate coverage of the substrate with the coating, because EP’577 suggests that the recited values of flow rate and voltage are within typical ranges.
Additionally, the combination of EP’415 in view of EP’577 fails to teach a conductivity (or “resistance,” since units are in terms of resistance, not conductivity). Sugimoto (JP’718) is analogous art in the field of painting a vehicle’s bodywork using a paint composition comprising melamine components [0034,0040]; wherein a painting method comprises an electrostatic process employing a bell (i.e. rotary atomizer) [0042],wherein the transmission of paint occurs through electrostatic attraction of electrically charged paint particles to the vehicle’s bodywork (standard operation of a rotary atomizer); wherein the size of paint drops and the amount of electric charge carried by said paint drops is controlled when performing said painting method (by standard operation of a rotary atomizer). JP’718 suggests that a coating have an electrical resistance of 0.1-0.5 Megaohms (i.e. -100-500 kohms), and provides evidence that resistance is a result-effective variable, known in the prior art to affect electrostatic coating efficiency with a tradeoff between adequate electrostatic coating on the one hand and sparking and production line outages on the other [0027]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of EP’415 in view of EP’577 with paint conductivity within the recited range through routine optimization.
NOTE: Because the guide air units are not standard and are not defined in the specification or in the claims, the recited values cannot reasonably be searched. However, JP’718 suggests combining air flow with conventional rotary atomization [0043], while EP’577 suggests high velocity air to atomize the coating formulation. EP’577 also suggests that high velocity air can evaporate solvent from spray droplets. Thus, it would have been obvious to optimize the flow of guide air to achieve an adequate velocity of atomized particles to coat a substrate while minimizing evaporation of solvent.
Regarding Claim 5, EP’415 teaches a paint composition comprising variously a pigment dispersant (e.g. xylene for carbon black, p. 23, lines 5-9), hydroxylated resin (e.g. hydroxylated polymers of ethylenically unsaturated monomers, p. 3, lines 15-18, 24-26, and 53; p. 4, lines 5-25), a rheological additive (e.g. amide wax, polyethylene wax, p. 5, lines 39-41), titanium dioxide (p. 5, lines 29-32, 33-35), pigment/ complementary pigment (e.g. carbon black, aluminum flake, Table 2; p. 5, lines 29,33-34; p. 23, lines 5-9), melamine resin (p. 4, lines 56-57), surfactant (surface active agent, e.g. amide wax, leveling agent, RAPIZOLE B-90; p. 5, lines 38-42; p. 23, lines 23-24; Table 2), a blocked acid catalyst (Abstract; p. 11, lines 10-18), and a solvent (e.g. ethyl acetate, n-butyl acetate, n-butanol, p. 5, lines 45-51; p. 23, lines 15-17; Tables 1-2). See, also, Claim 1; Tables 1-2; p. 5, lines 38-43 and 45-51; p. 23, lines 5-9 and 23-25; p. 24, lines 5-12. As to “flexibilizing polyol,” molecular weight is related to the flexibility provided by a polyol, as evidenced by the discussion on p. 4, lines 27-30; glass transition temperature is related to molecular weight. EP’415 fails to teach the precise range of concentration of each component. However, EP’415 also teaches conventional coatings, comprising polyol-melamine and/ or polyol-melamine-polyisocyanate base in both base and clear coat (Abstract) (p. 2, lines 11-17). Thus, the types and concentrations of resins and other components for a paint are not particularly limited and would have been obvious to combine the recited components in the recited ranges through routine optimization to achieve a desired coating of an automobile body with desired properties. Moreover, 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.
In addition, surfactants and pigment stabilizers/dispersants were conventional at the time of invention for improving pigment dispersion, prevention of pigment agglomeration, and to promote even spreading of paints over a surface by reducing surface tension, and thus obvious to add to paint compositions comprising pigments.
Response to Arguments
Applicant's arguments filed 9 March 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument concerning the limitations in Claim 4 (Remarks, p. 5), “Nw.l.” is not a standard unit and the term “normal wet liters” is not a prior art term, nor is it defined in Applicant’s specification as originally filed. In addition, the definition is new matter, which assigns to the unit a definition not given when the specification was originally filed.
In response to Applicant’s argument that one would not look to EP’577 as nonanalogous art (Remarks, pp. 7-8), the argument is not persuasive because EP’577 is reasonably pertinent to the problem in which Applicant is interested, which is electrospraying a charged spray. The citations to EP’577 are to a fairly generic electrostatic rotary atomizer, not to an electrostatic rotary atomizer that only operates to spray coatings in xerographic applications.
In response to Applicant’s argument concerning JP’718. That JP’718 also discloses other aspects of an invention does not rebut its teachings which are relevant to Applicant’s invention.
In response to Applicant’s argument concerning criticality (Remarks, pp. 9-10), Applicant has not provided sufficient evidence to establish criticality. For example, no comparisons of Applicant’s claimed benefits with the prior art have been provided, and the claimed benefits are vague and not specifically quantified.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712