DETAILED ACTION
A response, amending claim 1 and presenting a declaration, was entered on 7/27/26.
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 .
Response to Arguments
Applicant argues that the declaration presented supports the unexpected results associated with claim 1. This is not persuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d). While the examiner agrees that the declaration demonstrates unexpected results associated with Examples 1 and 2, these examples are each limited to the same single data point (namely, an L*45 of 80, an L*5/L*15 of 1.5, an occupancy of 18% and a graininess of 2.0). There is no evidence that these unexpected results apply across the entire claimed range of each of these values. However, the evidence is persuasive with respect to the values shown in Examples 1 and 2. An amendment to the claims which limited these values to the values used in Examples 1 and 2 would place the claims in condition for allowance.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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