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
Applicant's election with traverse of Group I, clams 1, 3, 5-9, 11-17, and 19-22, in the reply filed on 9/9/2026 is acknowledged. The traversal is on the ground(s) that the Written Opinion of the International Searching Authority did not check Box IV which indicates the absence of a “lack of unity of invention”. Applicant further states Groups I and Group II depend on each other and are inexorably linked that would not cause a search burden. This is not found persuasive because although the written opinion indicated an absence of a lack of unity of invention, The invention of claim 1 is suggested by WO2004/085558 because the concentration ranges taught by WO2004/085558 overlap those recited in claim 1 (as set forth in the Requirement for Restriction/Election dated 7/30/2026). As such there is a shared technical featured suggested by the prior art and therefore unity of invention is lacking. Furthermore, a search burden is not considered while restricting under 35 U.S.C. 121 and 372.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/6/2026.
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.
Claim(s) 1, 3, 5-9, 11-17 and 19-22 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Claims 3, 5-9, 11-17 and 20-22 recites the limitation "The" coating composition in line 1. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim is unclear. For purposes of examination, the claim will be interpreted as "The 2K clearcoat coating composition".
Claims 1, 8, 12, and 19 set forth a molecular weight range but do not specify the units. For purposes of examination the units will be interpreted as g/mol.
Claim(s) 3, 5-9, 11-17, and 19-22 are further rejected under 35 U.S.C. 112(b) because they ultimately depend on claim 1 and therefore inherit the deficiencies thereof.
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.
Claim(s) 1, 3, 5-9, 11-17, 15-16, and 19-22 is rejected under 35 U.S.C. 103 as being unpatentable over CN105612227 to Nakamizu et al. (hereinafter ‘227, as found on the IDS dated 11/21/2024) in view of WO2020194928 to Nakamizu et al. For the purposes of examination, citations for ‘227 are taken from a machine translation equivalent of the document obtained from the European Patent Office website in October 2026. For the purposes of examination, citations for WO2020194928 are taken from the US equivalent US20220177716 to Nakamizu (hereinafter ‘716).
Regarding Claim(s) 1, 3, 5, 11-13, 15-16, 19, 20, ‘227 teaches a transparent coating composition [0104] that is a two-component coating [0111] comprising 25-95 parts of hydroxyl containing acrylic resin (A1) with a hydroxyl value of 70-200 mg KOH/g and a glass transition temperature below -30°C [0031] with a molecular weight of 5,000 to 33,0000 [0072] (reading on all limitations of component (A) in claims 1, 3, 5, 19, and 20); 5-75 parts of hydroxyl containing acrylic resin (A2) with a hydroxyl value of 30-200 mg KOH/g, a glass transition temperature of -30-75°C [0032] (reading on all limitations of component (B) and (B-2) in claims 1, and 11-13); and a curing agent polyisocyanate compound (B) [0029] (reading on crosslinker (C) comprising at least one polyisocyanate). Additionally, the ratio of 25-95 parts (A1) and 5-75 parts (A2) read on the ratio between components (A) and (B) in the range of 6:1 to 1:2.
‘227 is silent regarding the crosslinker further comprising at least one amino resin.
However, ‘716 teaches a clear coat paint [0226] comprising a combination of crosslinking agents (A2) [0112] such as polyisocyanate compounds and amino resins [0087], wherein the amino resins are melamine resins [0106] (reading on claim 16) within the range of 0.5-40 parts by mass [0111] (reading on claim 15). ‘227 and ‘716 are analogous art as they are from the same field of endeavor, namely coating compositions comprising crosslinked hydroxyl based resins.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to add a amino resin crosslinking agent in the amount taught by ‘716 into ‘227’s clearcoat composition.
The motivation would have been that an amount of 0.5-40 parts by mass contribute water resistance and finished appearance to the resulting coating [‘716, 0111].
Regarding Claim(s) 6-9, and 22, the component (B-1) of claims 6-9 and 22 is considered an optional embodiment because claims 6-9 and 22 depends on claim 1 and claim 1 recites a Markush group for the component (B) including (B-1) or (B-2). ‘227 in view of ‘716 teaches the clearcoat composition of claim 1, wherein the component (B) is (B-2), [0032]. As such, the limitations of claims 6-9 and 22 are considered to be met because claims 6-9 and 22 are further narrowing an optional embodiment (Component (B)) and claim 1 is rejected by a different component (B), i.e., (B-2).
Regarding Claim(s) 14, ‘227 in view of ‘716 teaches the 2K clearcoat coating composition of claim 1, wherein it is appropriate to select an equivalent ratio of isocyanate groups and hydroxyl groups in the range of 0.8-1.5 [‘227, 0099] thereby reading on the ratio range of 1.6:1 to 0.7:1.
Regarding Claim(s) 17, ‘227 in view of ‘716 teaches the 2K clearcoat coating composition of claim 1, comprising a hydroxyl-containing polyester resin [‘227, 0038].
Regarding Claim(s) 21, ‘227 in view of ‘716 teaches the 2K clearcoat coating composition of claim 1, wherein the first resin comprises hydroxyalkyl groups having 4-9 carbons [‘227, 0066].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5-9, 11-17, and 19-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15-20 of co-pending Application No. 19/131,807 in view of Nakamizu (CN113474427, hereinafter ‘227). Co-pending application teaches a 2K clearcoat composition comprising two hydroxyl group comprising resins [claim 1] at 15-75% and 2-25% [clam 11] with a Tg in the range of 10-80°C [claim 2] and molecular weights in the range of 3,500 to 12,000 [claim 4].
Copending application 19/131,807 does not explicitly teach one of the resins having a Tg of from -80°C to 0°C.
However, Nakamizu (CN113474427, hereinafter ‘227) teaches a low Tg hydroxyl-containing acrylic resin with a Tg of below -30°C [‘227, 0059]. Copending application 19/131,807 and ‘227 are analogous art as they are from the same field of endeavor, namely coating compositions comprising crosslinked hydroxyl based resins.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to decrease the Tg of the first hydroxyl alkyl resin.
The motivation would have been that a low Tg hydroxyl-containing acrylic resin creates a coating with excellent scratch resistance, hardness, appearance, and adhesion [427’ , 0068].
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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