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 .
Election/Restrictions
Claims 7-9 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/13/16.
Applicant’s election without traverse of Group I in the reply filed on 2/13/16 is acknowledged.
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.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (JP201217090, machine translation).
Claim 1: Shimizu teaches a multilayer coating for an automotive body (Abst.) comprising a first colored coating including titanium dioxide as a white pigment (¶¶ 0009-0010); a second coating containing a scaly brilliant pigment (i.e. claimed glitter) formed on the first coating (¶ 0023) and a clear coating formed on the second coating (¶ 0045).
Shimizu fails to teach the claimed L*45 and L*5 values, but teaches that the amount and type of pigments can be selected based on the desired coloring (see, e.g., ¶¶ 0009). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed L*45 and L*5 values depending on the desired appearance.
With respect to the occupancy of the glitter and the graininess, Shimizu teaches that the amount of glitter can be adjusted based on the desired properties (¶ 0024). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed occupancy and graininess depending on the desired amount of glitter in the coating.
Claim 2: Shimizu fails to teach the claimed CL*45 value, but teaches that the amount and type of pigments can be selected based on the desired coloring (see, e.g., ¶¶ 0009). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed CL*45 value depending on the desired appearance.
Claim 4: Shimizu teaches that the glitter is a scaly glitter pigment having a thickness of 0.05-0.5µm (¶ 0017). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a glitter thickness of 0.05-0.3 µm with the predictable expectation of success.
Claims 5 and 6: Shimizu teaches that the glitter pigment includes aluminum particles (¶ 0024) and that the second coating further includes titanium dioxide (¶ 0025).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu in light of Itoh et al. (US 2019/0001370).
Claim 3: Shimizu fails to teach the thickness of the second coating after drying (see, e.g., ¶ 0031 which teaches a wet thickness of 5-30 µm, but fails to discuss the thickness after baking). Itoh, like Shimizu, teaches a multilayer automotive coating comprising a base color layer, a glitter layer and a clear coating (Abst.). Itoh further teaches that a suitable dry thickness for the glitter layer is 0.05-2.0 µm (down from a wet thickness of 3-25µm) (¶¶ 0088-0089). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a dry thickness of 0.05-1µm in Shimizu with the predictable expectation of success.
Conclusion
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712