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 .
The preliminary amendment filed 11/7/2024 has been entered. New claims 16-20 have been added. Claims 1-20 are pending in the application.
Claim Rejections - 35 USC § 112
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 1-20 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 1 repeats various constituent labels, i.e., a1), a2), b1), b2), d1), d2), e1), and e2), without using “said” or “the” before the second recitation such that it is unclear whether the second recitation of each constituent is meant to further define the first recitation of a given constituent or meant to be directed to an additional constituent aside from the first recitation of a given “at least” constituent. For example, claim 1 recites, “wherein component A) comprises at least constituent a2) and optionally at least constituent a1), which are different from one another” (emphasis added) on lines 9-10; and then recites, “optionally at least one organic solvent a1), and at least one polymer a2), which contains functional groups, that are reactive towards NCO-groups, wherein polymer a2) is a (meth)acrylic polymer, which has been modified with at least one chlorinated polyolefin” (emphasis added) on lines 11-14, such that it is unclear whether the “at least constituent a2)” on line 9 is limited to the “polymer a2)” which “is a (meth)acrylic polymer” as recited on lines 12-14; especially given that claim 1 further recites, “wherein component B) comprises at least two constituent b2) and optionally at least constituent b1), which are different from one another” (emphasis added) on lines 15-16 but then recites, “optionally at least one organic solvent b1), and at least one organic constituent b2) bearing on average two or more NCO-groups” (emphasis added) on lines 17-19. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
The dependent claims do not remedy the above and hence are indefinite for the same reasons.
Claim 4 is further 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. The terms “LW (long wave)” and “SW (short wave)” in claim 4 are relative terms which render the claim indefinite. The terms “long wave” and “short wave” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Further, given that a “long wave” value and a “short wave” value may refer to completely different concepts of a multilayer coating depending upon the end use and/or specific field of use, the recitation of “LW (long wave)” and “SW (short wave)” values without clearly defining or specifying to what these values refer additionally render the claim indefinite given that one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 7 and 19 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 7 recites, “The multilayer coating system according to claim 1, wherein component A) of the primer coating system further comprises at least one constituent a5) different from any of constituents a1) to a4)” on lines 1-3, however, given that claim 1, from which claim 7 depends, only recites constituents a1) and a2), not a3) nor a4), the limitation of claim 7 lacks clear antecedent basis and one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claim 19 does not remedy the above and hence is indefinite for the same reasons. Further, claim 19 recites the limitation "the molar ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 is 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 8 recites, “The multilayer coating system according to claim 1, wherein component A) of the primer coating system further comprises at least one levelling agent and/or dispersing agent as an additive constituent a9) which is different from each of constituents a1) to a4)” on lines 1-4, however, given that claim 1, from which claim 8 depends, only recites constituents a1) and a2), not a3) nor a4), the limitation of claim 8 lacks clear antecedent basis and one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 10 is 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 10 recites, “The multilayer coating system according to claim 1, wherein component D) of the clearcoat system further comprises at least one constituents d4) and d5), which are different from one another and different from each of constituents d1) to d3)” on lines 1-5, however, given that claim 1, from which claim 10 depends, only recites constituents d1) and d2), not d3), the limitation of claim 10 lacks clear antecedent basis and one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 11 is 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 11 recites, “it being possible for the carbon chain to be interrupted” on lines 8-9, 11-12, and 17-18; however, the limitation “the carbon chain” lacks clear antecedent basis. Claim 11 also recites, “preferably wherein each R’ = ethyl and/or methyl” on line 13, however, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Claims 13-14 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 13 recites, “A method of preparing a multilayer coating system on at least one surface of an optionally pre-coated substrate comprising at least steps 1) to 3) and optionally 4), 1) applying a first coating composition at least partially to at least one surface of an optionally pre-coated substrate and forming a first coating film on said surface, wherein the first coating composition is a primer coating composition according to claim 1, 2) applying at least one basecoat composition as at least one second coating composition to the first coating film present on the substrate obtained after step 1), and forming a second coating film, and 3) applying a clearcoat composition as a third coating composition to the second coating film present on the substrate obtained after step 2), wherein the third coating composition is the clearcoat composition, and 4) optionally jointly curing the first, second and third coating films to obtain a multilayer coating system comprising cured first, second and third coating layers” (emphasis added). However, given that claim 1 is directed to a “multilayer coating system” and not just “a primer coating composition”, wherein claim 1 already recites that the “multilayer coating system” is “on an optionally pre-coated substrate” and comprises first, second and third coating layers formed from “a primer coating composition”, “a basecoat composition”, and “a 2K-clearcoat composition”, respectively, it is unclear whether the repeated limitations in claim 13, e.g., “an optionally pre-coated substrate”, “at least one basecoat composition”, “a clearcoat composition”, etc., are also meant to correspond to the same or “said” components as already recited in claim 1 from which claim 13 depends, or is claim 13 meant to only incorporate the primer coating composition of claim 1, especially given the lack of the use of “said” or “the” or similar term in claim 13 to clearly indicate that “the” multilayer coating system prepared in the method of claim 13 is meant to be the same as already recited in claim 1 from which claim 13 depends. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claim 14 does not remedy the above and is indefinite for the same reasons.
Claim 15 is 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 15 recites, “A kit-of-parts comprising separated from one another at least a primer coating system comprising the at least two components A) and B) and optionally the at least one further component C) according to claim 1 and a 2K-clearcoat system suitable for preparing a clearcoat composition, comprising the at least two components D) and E) and optionally the at least one further component F)” (emphasis added), however, given that claim 1 is directed to a “multilayer coating system… comprising at least three coating layers L1, L2 and L3…obtained from a primer coating composition, which in turn is obtained from a primer coating system comprising at least two components A) and B) and optionally at least one further component C)…obtained from a basecoat composition…and obtained from a 2K-clearcoat composition, which in turn is obtained from a clearcoat system comprising at least two components D) and E) and optionally at least one further component F),” respectively; and not just “a primer coating system” comprising A), B), and optionally C), and “a 2K-clearcoat composition” comprising at least components D) and E) and optionally F), it is unclear as to what is meant to be encompassed by the “kit-of-parts” as recited in instant claim 15, e.g., does the “kit-of-parts” include an optionally pre-coated substrate as recited in claim 1? What about the basecoat composition as recited in instant claim 1? Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 18 is 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 18 recites, “The multilayer coating system according to claim 1, wherein component A) of the primer coating system further comprises at both of constituents a3) and a4)” (emphasis added), however, it is unclear as to what is meant to be encompassed by the limitation.
Claim 20 is 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 20 recites, “The multilayer coating system according to claim 1, wherein component A) of the primer coating system further comprises at least one levelling agent and/or dispersing agent as an additive constituent a9) which is different from each of constituents a1) to a4), which is a (meth)acrylate polymer” (emphasis added), however, given that claim 1, from which claim 20 depends, only recites constituents a1) and a2), not a3) nor a4), the limitation of claim 20 lacks clear antecedent basis and one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement. Further, it is unclear whether “which is a (meth)acrylate polymer” refers to “each of constituents a1) to a4)” recited on line 3, or to “an additive constituent a9)” in general, or to “at least one levelling agent and/or dispersing agent” as recited on line 2.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed recitation of a use or “method of using”, without setting forth any steps involved in the process, results in an improper definition of a process, i.e. results in a claim which is not a proper process under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App.1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). More specifically, claim 12 recites, “A method of using the multilayer coating system according to claim 1, the method comprising using the multilayer coating system for application on substrates selected from the group consisting of metal and plastic substrates” (emphasis added), however, “using the multilayer coating system for application on substrate” is not an active, positive step delimiting how the “using” or “method of using” is actually being practiced, see MPEP § 2173.05(q), and hence, claim 12 is also 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 given that it is unclear as to how the multilayer coating system is actually being used “for application on substrates”.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ryoki (US2021/0009848A1). Ryoki teaches a multilayer coating film and method of forming the multilayer coating film by applying a primer coating composition (X) to form a primer coating film on an object or member (e.g., “substrate”), applying a base coating composition (Y) to form a base coating film on the primer coating film, applying a solvent-based two-pack clear coating composition (Z) to form a clear coating film on the base coating, and causing the coating films to cure simultaneously; wherein “at least: (A) the quantity of isocyanate at the interface between a coated article and the primer coating film is 1.5 parts by mass or less, relative to 100 parts by mass of resin solids in a primer coating material; or (B) the quantity of isocyanate at the interface between the primer coating film and the base coating film is 3.5 parts by mass or less, relative to 100 parts by mass of resin solids in a base coating material” (Abstract; Paragraph 0184). Ryoki teaches that the primer coating composition (X) is not particularly limited as long as the primer coating composition (X) can satisfy at least one of (A) and (B) above, but preferably contains an organic solvent and/or water as a main solvent (reading upon the claimed “optionally at least one organic solvent a1)” as in instant claim 1), a resin component such as a base resin (e.g., component A) as in instant claim 1) and a curing agent (e.g., a component B) as in instant claim 1) and a pigment; although from the viewpoint of adhesion of the obtained coating film, the primer coating composition (X) is preferably a solvent-based coating composition (Paragraphs 0064-0065). Ryoki teaches that base resins common per se can be used for the primer coating composition (X), with examples thereof including an acrylic resin, a polyester resin, an alkyd resin, a polyurethane resin, a polyolefin resin, and the like, preferably having crosslinkable functional groups, such as a hydroxyl group or a carboxyl group; wherein from the viewpoint of adhesion of the obtained coating film, the base resin preferably contains a polyolefin resin, and more preferably a chlorinated polyolefin resin and an acrylic modified chlorinated polyolefin resin (a1) and/or an acrylic modified non-chlorinated polyolefin resin (a2), with the acrylic modified chlorinated polyolefin resin (a1) preferably being a resin with a hydroxyl-containing acrylic moiety and a chlorinated polyolefin moiety, with a content mass ratio between the acrylic moiety and the chlorinated polyolefin moiety being preferably 7:3 to 2:8 (hence reading upon the claimed “at least one polymer a2) which contains functional groups, that are reactive towards NCO-groups, wherein polymer a2) is a (meth)acrylic polymer, which has been modified with at least one chlorinated polyolefin” as in instant claim 1) as utilized in the examples (Paragraphs 0066-0085 and 0220). Ryoki teaches that the curing agent of the primer coating composition (X) may be a polyisocyanate having at least two isocyanate groups in one molecule (reading upon the claimed “at least one organic constituent b2) bearing on average two or more NCO-groups” as in instant claim 1), with examples thereof recited in Paragraphs 0121-0127, provided in a content of preferably 1 mass % to 25 mass % based on the total amount of resin solid contents in the primer coating composition (X) from the viewpoint of adhesion of the obtained coating film (Paragraphs 0105 and 0120-0128; thereby reading upon the claimed “first coating layer L1 applied over at least a portion of an optionally pre-coated substrate, said layer L1 being obtained from a primer coating composition” as in instant claim 1).
Ryoki teaches that the base coating composition (Y) can be used without any particular limitations as long as it is a base coating composition (Y) that can satisfy at least one of the above (A) and (B), wherein in general, a base coating composition in which an organic solvent and/or water is used as a main solvent and a resin component, such as a base resin and a curing agent, and a pigment is preferred (Paragraphs 0157-0158, reading upon the claimed “second coating layer L2 applied over the first coating layer L1, said layer L2 being obtained from a basecoat composition” as in instant claim 1). Ryoki teaches that the solvent based two-pack clear coating composition (Z) (reading upon the claimed “2K-clearcoat composition”) contains a hydroxyl group-containing resin and a polyisocyanate compound (reading upon the claimed “components D) and E)”, respectively), wherein the hydroxyl group-containing resin is particularly preferably a hydroxyl group-containing acrylic resin (reading upon the claimed “at least one OH-functional (meth)acrylic polymer d2)” as in instant claim 1), and the polyisocyanate compound serving as a curing agent is a compound having at least two isocyanate groups in one molecule (e.g., as in the claimed “organic constituent e2) bearing on average two or more NCO-groups”), with examples thereof recited in Paragraphs 0192-0200 (Paragraphs 0185-0187 and 0192-0200). Ryoki teaches that the polyisocyanate compound may be a derivative of the recited polyisocyanate compounds and/or may be a prepolymer which is obtained by allowing the recited polyisocyanate compounds and derivatives thereof to react with a compound that can react with the polyisocyanate compounds and derivatives thereof under the conditions of excess isocyanate groups, wherein examples of the compound that can react with the polyisocyanate compounds and the derivatives thereof include a compound having active hydrogen groups such a hydroxyl group and an amino group, including “polyhydric alcohols, low molecular weight polyester resins, amines, water, and the like” (Paragraphs 0192 and 0197-0200); and although Ryoki teaches that the “solvent-based two-pack clear coating composition (Z) may appropriately contain a solvent such as an organic solvent, and an additive such as a curing catalyst, an antifoam, and an ultraviolet ray absorber, if necessary” (Paragraph 0203), with organosilanes specifically listed as coating additives for the primer coating composition (X), including organosilanes having amino groups, Ryoki does not teach that at least a part of the NCO-groups of the polyisocyanate compound of the clear coating composition has been reacted with at least one organosilane prior to incorporation thereof into component E) of the clear coating composition as in the instantly claimed invention – which is the only difference between the teachings of Ryoki and the claimed invention as recited in instant claim 1.
However, given that Ryoki clearly teaches that the polyisocyanate compound for use in the two-pack clear coating composition (Z) may be one that is reacted with a compound having active hydrogen groups such as amino and/or hydroxyl groups under the conditions of excess isocyanate groups, and further teaches that suitable silane coupling agents as coating “additives” in the invention include silane compounds having active hydrogen groups, particularly aminosilanes, wherein the clear coating composition may also include “additives”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the silane additive compounds having active hydrogen groups as taught by Ryoki, particularly the aminosilanes, as the compound having active hydrogen groups that is reacted with the polyisocyanates and the derivatives thereof under the conditions of excess isocyanate groups thereby reading upon and/or suggesting the claimed “at least one organic constituent e2) bearing on average two or more NCO-Groups, wherein at least a part of these NCO-groups has been reacted with at least one organosilane prior to incorporation of constituent e2) into component E)” as recited in instant claim 1. Hence, absent any clear showing of criticality and/or unexpected results over the teachings of Ryoki, the Examiner takes the position that the claimed invention as recited in instant claim 1 would have been obvious over the teachings of Ryoki given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 2, Ryoki teaches that the primer coating film, base coating film, and clear coating film are adjacent one another with the clear coating film being the uppermost layer of the multilayer coating film/system as shown in the working examples (Paragraph 0003, Examples). Hence, instant claim 2 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 2 depends.
With respect to instant claim 3, Ryoki teaches that the member to be coated with the multilayer coating film/system may be a plastic member (Paragraphs 0013 and 0027), and hence, instant claim 3 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 3 depends.
With respect to instant claim 4, given the lack of clarity thereof, as discussed in detail above, and that Ryoki teaches and/or suggests a multilayer coating film/system comprising the same components and formed by essentially the same process as in the instant invention, the Examiner takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the multilayer coating film/system taught by Ryoki to display similar properties as in the claimed invention when measured under some arbitrary conditions. Hence, absent any clear showing of criticality and/or unexpected results, the clamed invention as recited in instant claim 4 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 4 depends.
With respect to instant claim 5, Ryoki teaches that the content of component (a), e.g., the acrylic modified chlorinated polyolefin resin (a1) and/or the acrylic modified non-chlorinated polyolefin resin (a2), is preferably 10 mass % to 50 mass % based on the total amount of resin solid contents (e.g., component A) in the primer coating composition (X) (Paragraph 0090), falling within the claimed wt% range as recited in instant claim 5. Hence, the clamed invention as recited in instant claim 5 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 5 depends.
With respect to instant claim 6, Ryoki teaches that the primer coating composition (X) further contains a curing catalyst from the viewpoint of adhesion of the obtained coating film, with examples of the curing catalyst including “a quaternary salt catalyst such as tetraethylammonium bromide, tetrabutylammonium bromide, tetraethylammonium chloride, tetrabutylphosphonium bromide, and triphenylbenzylphosphonium chloride [i.e., a catalyst that is suitable for crosslinking of NCO-groups as well as a catalyst that is a phosphorus-containing organic constituent]; and amines such as triethylamine and tributylamine” (Paragraph 0152-0153), each of which is a catalyst “suitable for crosslinking of NCO-groups” as in instant claim 6, and hence the claimed invention as recited in instant claim 6 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 6 depends.
With respect to instant claim 7, Ryoki teaches that the primer coating composition (X) may further contain a pigment, wherein a common pigment can be used as the pigment without limitation, with examples thereof including silica particles; and given that Ryoki also teaches that if necessary, the primer coating composition may further contain a silane coupling agent such as the exemplified organosilane compounds recited in Paragraph 0151, and that it is well established in the art that pigment particles may be surface treated with said silane coupling agents to improve dispersibility of the pigment particles in the coating composition as is conventional in the art, wherein such silane surface treatment of the silica pigment particles would read upon the claimed condensation product of claim 7 and/or that any order of mixing the components of the primer coating composition (X) taught by Ryoki would have been obvious to one skilled in the art wherein premixing of the silica pigment particles with the (organo)silane coupling agents taught by Ryoki would reading upon the claimed condensation product of claim 7, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 7 would have been obvious over the teachings of Ryoki given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and prima facie obvious to add coating components in any order.
With respect to instant claim 8, Ryoki teaches that the “primer coating composition (X) may further contain additives for coating compositions, such as a silane coupling agent, a thickener, an antifoam, a surface conditioner, and a film-forming aid, if necessary” (Paragraph 0150), and given that an antifoam and/or a surface conditioner and/or a film-forming aid may read upon and/or suggest “at least one levelling agent and/or dispersing agent as an additive constituent a9)” as broadly recited in instant claim 8, the claimed invention as recited in instant claim 8 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 8 depends.
With respect to instant claim 9, Ryoki teaches that with respect to the hydroxyl group-containing resin of the two-part clear coating composition (Z), any resin common in the related art may be used without limitation as long as it contains a hydroxyl group, with the hydroxyl group-containing acrylic resin being particularly preferred (Paragraph 0187), and further teaches that the glass transition temperature (Tg) of the hydroxyl group-containing acrylic resin is preferably within a range of -40°C to 20°C (Paragraph 0191); and given that Ryoki does not limit the hydroxyl group-containing acrylic resin of the clear coating composition (Z) to a single resin used alone, and provides a clear teaching and/or suggestion that a combination or mixture of two or more like components may be utilized in the different coating compositions, e.g., two or more kinds of base resins in the primer coating composition (X) (Paragraphs 0066-0067), two or more kinds of curing agents in the primer coating composition (X) (Paragraph 0105) and/or the base coating composition (Y) (Paragraph 0168), two or more kinds of polyisocyanates in the primer coating composition (X) (Paragraphs 0121 and 0123-0125) and/or the clear coating composition (Z) (Paragraphs 0194-0196 and 0198), two or more kinds of pigments in the primer coating composition (X) (Paragraphs 0137, 0141, 0143, and 0146) and/or the base coating composition (Y) (Paragraph 0176) and/or the clear coating composition (Z) (Paragraph 0204), and two or more kinds of silane coupling agents in the primer coating composition (X) (Paragraph 0151; see also Paragraphs 0068, 0080, 0081, 0082, and 0110), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a combination or mixture of two or more kinds of hydroxyl group-containing acrylic resins having any Tg within the range taught by Ryoki for the base resin of the clear coating composition (Z), especially given that Ryoki teaches working examples utilizing a mixture of two kinds of hydroxyl group-containing acrylic resins with a third kind of hydroxyl group-containing polyester resin for the base coating composition (Y) (Examples, Table 2) although the paragraphs describing the base resin of the base coating composition (Y) do not specifically recite a combination or mixture of the different resins. Hence, absent any clear showing of criticality and/or unexpected results, the clamed invention as recited in instant claim 9 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 9 depends, particularly given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
With respect to instant claim 10, Ryoki teaches that the clear coating composition (Z) may further contain an additive such as a curing catalyst (Paragraph 0203), and although Ryoki does not specifically describe the curing catalyst with respect to the clear coating composition (Z), given that Ryoki does teach that examples of the curing catalyst as an additive for the primer coating composition (X), which may comprise similar base resin(s) and curing agent(s) as utilized for the clear coating composition (Z), include “a quaternary salt catalyst such as tetraethylammonium bromide, tetrabutylammonium bromide, tetraethylammonium chloride, tetrabutylphosphonium bromide, and triphenylbenzylphosphonium chloride; and amines such as triethylamine and tributylamine” (Paragraph 0153), reading upon the at least one catalyst d4) suitable for crosslinking of NCO-groups and at least one catalyst d5) which is a phosphorus-containing organic constituent (as discussed in detail above with respect to instant claim 6), such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the example catalysts or combinations thereof as taught by Ryoki for the curing catalyst(s) of the clear coating composition (Z). Hence, absent any clear showing of criticality and/or unexpected results, the clamed invention as recited in instant claim 10 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 10 depends, particularly given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
With respect to instant claim 11, in addition to the discussion above with respect to component E) of instant claim 1, particularly constituent e2), wherein the Examiner again notes that Ryoki teaches that the polyisocyanate compound of the clear coating composition (Z) may be a prepolymer which is obtained by allowing the recited polyisocyanate compounds and derivatives thereof to react with a compound that can react with the polyisocyanate compounds and derivatives thereof under the conditions of excess isocyanate groups, wherein examples of the compound that can react with the polyisocyanate compounds and the derivatives thereof include a compound having active hydrogen groups such a hydroxyl group and an amino group, and wherein as discussed in detail above and incorporated herein by reference, any of the aminosilanes taught by Ryoki would have been an obvious species of compound to react with the polyisocyanate compounds and derivatives thereof, reading upon and/or suggesting at least one structural unit as recited in instant claim 11 given the aminosilane additives taught by Ryoki in Paragraph 0151, it is further noted that Ryoki clearly teaches that two or more kinds of polyisocyanates may be utilized in the clear coating composition (Z) (Paragraphs 0194-0196 and 0198-200), e.g., one being a prepolymer of the polyisocyanate and one being the polyisocyanate that is not reacted with a compound having active hydrogen groups, thereby reading upon and/or rendering obvious the claimed “further comprises at least one organic constituent e3) bearing on average two or more NCO-groups, which is different from constituent e2) and does not contain any silane modified NCO-groups and which is identical to or different from constituent b2)” as in instant claim 11. Hence, the claimed invention as recited in instant claim 11 would have been obvious over the teachings of Ryoki for the same reasons as discussed in detail above with respect to instant claim 1 from which instant claim 11 depends.
With respect to instant claim 12, Ryoki teaches that the multilayer coating film/system is particularly used for applying to plastic members/substrates as noted above, and hence, the claimed invention as recited in instant claim 12 would have been obvious over the teachings of Ryoki for the reasons discussed in detail above with respect to instant claim 1 from which instant claim 12 depends.
With respect to instant claims 13-14, as discussed in detail above, Ryoki teaches that the multilayer coating film is produced by a method as instantly claimed wherein the “first” primer coating composition (X) is applied to the member or substrate to form a primer coating film thereon, followed by the “second” base coating composition (Y) being applied to the primer coating film and the “third” clear coating composition (Z) applied to the resulting base coating film, and then simultaneously curing the coating films to obtained the coated substrate (Entire document, particularly as noted above and Paragraphs 0014-0022, Claim 1). Hence, the claimed invention as recited in instant claims 13-14 would have been obvious over the teachings of Ryoki for the reasons discussed in detail above with respect to instant claim 1 from which instant claims 13-14 depend.
With respect to instant claim 15, given that Ryoki clearly teaches and/or suggests that each coating composition (X), (Y), and (Z) are separate composition from one another, and that the claimed “kit-of-parts” does not provide any additional material and/or structural limitations to the claimed invention to differentiate the claimed invention from the invention taught by Ryoki as discussed in detail above, particularly given that such primer, basecoat, two-part clearcoat systems as taught by Ryoki may be provided in the form of a “kit”, a typical form for such compositions in the art, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, claimed invention as recited in instant claim 15 would have been obvious over the teachings of Ryoki for the reasons discussed in detail above with respect to instant claim 1 from which instant claim 15 depends.
With respect to instant claim 16, as discussed above with respect to instant claim 3, Ryoki clearly teaches that the member or substrate to be coated with the multilayer coating film is particularly a plastic substrate. Hence, the claimed invention as recited in instant claim 16 would have been obvious over the teachings of Ryoki for the reasons discussed in detail above with respect to instant claim 1 from which instant claim 16 depends.
With respect to instant claim 17, as discussed in detail above with respect to instant claim 5, Ryoki teaches that the content of component (a), e.g., the acrylic modified chlorinated polyolefin resin (a1) and/or the acrylic modified non-chlorinated polyolefin resin (a2), is preferably 10 mass % to 50 mass % based on the total amount of resin solid contents (e.g., component A) in the primer coating composition (X) (Paragraph 0090), encompassing the claimed wt% range as recited in instant claim 17. Hence, the clamed invention as recited in instant claim 17 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 17 depends.
With respect to instant claim 18, if constituents a3) and a4) are meant to be any additional constituents other than a1) and a2) given that instant claim 18 depends upon instant claim 1, then it is noted that Ryoki clearly teaches that the primer coating composition (X) may include a variety of additional components reading upon the broadly claimed “constituents a3) and a4)” including pigments (Paragraph 0135) additives (Paragraph 0150) such as a thickener, an antifoam, a surface conditioner, and a film forming aid (Paragraph 0150), as well as further contains a curing catalyst from the viewpoint of adhesion (Paragraph 0152). Hence, the claimed invention as recited in instant claim 18 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 18 depends. Alternatively, if instant claim 18 is meant to depend upon instant claim 6 and/or the claimed components a3) and a4) of instant claim 18 are meant to similarly refer to catalysts a3) and a4) as described in instant claim 6, then as discussed in detail above with respect to instant claim 6, it is again noted that Ryoki teaches that the primer coating composition (X) further contains a curing catalyst from the viewpoint of adhesion of the obtained coating film, with examples of the curing catalyst including “a quaternary salt catalyst such as tetraethylammonium bromide, tetrabutylammonium bromide, tetraethylammonium chloride, tetrabutylphosphonium bromide, and triphenylbenzylphosphonium chloride [i.e., a catalyst that is suitable for crosslinking of NCO-groups as well as a catalyst that is a phosphorus-containing organic constituent]; and amines such as triethylamine and tributylamine” (Paragraph 0152-0153), each of which is a catalyst “suitable for crosslinking of NCO-groups” (as in instant claim 6), and given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to select from any of the catalysts taught by Ryoki with the or any combination thereof, the claimed invention as recited in instant claim 18 would have been obvious over the teachings of Ryoki for the same reasons as discussed above with respect to instant claim 1 from which instant claim 18 depends.
With respect to instant claim 19, in addition to the discussion above with respect to instant claim 7 from which instant claim 19 depends, given that Ryoki teaches that the pigment particles such as the silica particles, may be present in a content of preferably 1 mass % to 20 mass %, based on the total amount of resin solid contents (100 parts by mass) in the primer coating composition (X), and does not specifically limit the content of optional silane coupling agent, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, a content as taught by Ryoki for the silica particles in general, which may include silica particles that may be silane-surface-treated as discussed in detail above with respect to instant claim 7 and thus reading upon the claimed “condensation product a5)” as recited in instant claim 19, would have been obvious to one having ordinary skill in the art, and hence would read upon and/or suggest a content as recited in instant claim 19, thereby rendering instant claim 19 obvious over the teachings of Ryoki for the same reason as discussed in detail above with respect to instant claim 7 from which instant claim 19 depends.
With respect to instant claim 20, it is again noted that Ryoki teaches that the “primer coating composition (X) may further contain additives for coating compositions, such as a silane coupling agent, a thickener, an antifoam, a surface conditioner, and a film-forming aid, if necessary” (Paragraph 0150), and given that an antifoam and/or a surface conditioner and/or a film-forming aid may read upon and/or suggest “at least one levelling agent and/or dispersing agent as an additive constituent a9)” as instantly claimed as discussed in detail with respect to instant claim 8 (and incorporated herein by reference), the difference between the teachings of Ryoki and the claimed invention as recited in instant claim 20 is that Ryoki does not specifically teach that any of such additives is specifically a (meth)acrylate polymer as recited in instant claim 20. However, given that polyacrylates or acrylate copolymers are an obvious species of commercially available antifoam (or defoaming) agents in the art and/or that conventional coating additives in the art include acrylate polymer-based leveling agents and/or dispersing agents (as evidenced by any one or more of the attached BYK Additives & Instruments brochures entitled “Paint Additives” – see pages 3-5 and 8; “Surface Additives” – see pages 2-3, 11-12, and 24; and “Defoamer and Air Release Agents” – see pages 16 and 20), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 20 would have been obvious over the teachings of Ryoki given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ryoki, as applied above to claims 1-20, and in further view of Campbell (US2021/0062037A1) or Groenewolt (US2011/0027489A1) or Poppe (US2012/0189858A1) or Klein (US2011/0245406A1) or Speier (US2003/0027921A1). The teachings of Ryoki are discussed in detail above and incorporated herein by reference, wherein it is again noted that Ryoki generally teaches a multilayer coating system as in the claimed invention including a first coating layer applied over at least a portion of an optionally pre-coated substrate obtained from a primer coating composition (X) as instantly claimed, a second coating layer applied over the first coating layer and obtained from a basecoat composition (Y) as instantly claimed, and a third coating layer applied over the second coating layer and obtained from a two-pack (2K)-clearcoat composition (Z) comprising at least one OH-functional (meth)acrylic polymer and a polyisocyanate compound bearing on average two or more NCO-group; and although Ryoki clearly teaches that the polyisocyanate compound for use in the two-pack clear coating composition (Z) may be one that is reacted with a compound having active hydrogen groups such as amino and/or hydroxyl groups under the conditions of excess isocyanate groups, and further teaches that suitable silane coupling agents as coating “additives” in the invention include silane compounds having active hydrogen groups, particularly aminosilanes, wherein the clear coating composition may also include “additives”, it is again noted that Ryoki does not specifically teach that at least a part of the NCO-groups of the polyisocyanate compound of the clear coating composition has been reacted with at least one organosilane prior to incorporation thereof into component E) of the clear coating composition as in the instantly claimed invention – which is the only difference between the teachings of Ryoki and the claimed invention as recited in instant claim 1. In addition to the discussion above with respect to the obviousness of said limitation over the teachings of Ryoki taken alone, the Examiner further notes that each of Campbell, Poppe, Klein, and Speier is similarly directed to a coating system for application to a substrate, particularly a multilayer coating system as in Ryoki, wherein each of Campbell, Groenewolt, Poppe, Klein, and Speier teaches a topcoat or clearcoat composition that may be provided over a basecoat layer and specifically comprises a polyisocyanate compound wherein at least a part of the NCO-groups thereof has been reacted with at least one organosilane compound prior to incorporation into the topcoat/clearcoat composition in order to further improve the properties of the resulting cured topcoat/clearcoat layer, particularly improved scratch resistance, improved acid resistance, improved appearance and/or other desirable coating properties (Campbell: Entire document, particularly, Abstract, Paragraphs 0001, 0013-0019, 0071, 0092-0104, Examples, Claims; Groenewolt: Entire document, particularly Abstract, Paragraphs 0005-0006, 0008-0009, 0085-0095, 0128, 0136-0139, Examples, Claims; Poppe: Entire document, particularly Abstract, Paragraphs 0001-0002, 0010-0018, 0051-0064, Examples, Claims; Klein: Entire document, particularly Abstract, Paragraphs 0001-0005, 0016-0018, 0024, 0046-0062, Examples, Claims; Speier: Entire document, particularly Abstract, Paragraphs 0002-0005, 0015-0016, 0020-0022, 0039-0041, Examples, Claims), with Campbell also teaching that from the standpoint of improved appearance of the multilayer coating, the baking/curing conditions can be modified such that the coating layers can be cured to provide low LW and SW values when measured with a wave-scan apparatus as discussed in the examples, with working examples specifically falling within the claimed ranges as recited in instant claim 4. Hence, given that Ryoki is also concerned with the scratch resistance and acid resistance of the multilayer coating (Paragraphs 0188-0189 and 0206), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a silanized polyisocyanate compound as the polyisocyanate compound in the clear coating composition (Z) of the invention taught by Ryoki, thereby further rendering the claimed invention as recited in instant claims 1-20 obvious over the teachings of Ryoki in view of Campbell, Groenewolt, Poppe, Klein, or Speier given that it is prima facie obviousness to use a known technique to improve similar devices in the same way and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results, with instant claim 4 further obvious over Ryoki given that values as instantly claimed are typical in the art (as evidenced by Campbell) and would have been obvious to one having ordinary skill in the art based upon the desired aesthetic appearance for a particular end use of the multilayer coating taught by Ryoki in further view of Campbell, Groenewolt, Poppe, Klein, or Speier.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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