DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 1-6 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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential method steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: while the current claims are considered to be method claims, the current claims do not contain active steps that necessarily require any particular steps to be performed, for example, "applying a colored coating composition that contains a color pigment onto an object being coated to form a colored coating film layer" versus "Step (1): a step in which a colored coating composition that contains a color pigment is applied onto an object being coated to form a colored coating film layer".
Claims 5 recites the limitation "the L*45 value" in second line. There is insufficient antecedent basis for this limitation in the claim.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hajime et al. (JPH0565429A).
Regarding claim 1, Hajime teaches a method for forming a multilayer coating film (Abstract, [0008]), comprising: a step in which a colored coating composition that contains a color pigment is applied onto an object being coated to form a colored coating film layer as a base coat ([0008], [0019], [0020]); a step in which a luster pigment-free top coat (clear coating) composition that contains a hydroxyl group-containing acrylic resin (A), a polyisocyanate compound (B), and resin beads (C) is applied onto the colored coating film layer to form a top coat layer ([0008], [0028]); and a step in which the colored coating film layer formed in Step (1) and the top coat layer formed in Step (2) are cured by being heated, either separately or simultaneously ([0028]), wherein the average particle size D50 of the resin beads (C) is 11 to 70 µm ([0010], [0055], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05), the dry film thickness of the top coat layer is equal to or less than the average particle diameter D50 of the resin beads (C) ([0021], [0041]). Hajime does not explicitly teach the whole range of the average particle size D50 of the resin beads (C) is 20 to 70 µm, but teaches the average particle size D50 of the resin beads (C) is 11 to 70 µm as discussed above [0010], [0055]. It would have been a prima facie obvious to have selected the overlapping portion of the range in between 20µm and 70 µm, because the claimed range 20 µm and 70 µm overlap or lie inside ranges disclosed by the prior art 11 to 70 µm, a prima facie case of obviousness exists and expect the same success when applying the same particle sizes. However, it is the position of the examiner that disclosure the properties or function of the brightness difference between the L*15 value and the L*25 value (L*15-L*25) is 1.0 to 20.0 is expected ([0031], [0034]), given the same claimed materials and process, such as applying the same clear coat with hydroxyl group-containing acrylic resin (A), a polyisocyanate compound (B), and resin beads (C) onto a pigment color coat on an object and cured (Abstract, [0008], [0010], [0019], [0020], [0028], [0021], [0031], [0034], [0041] [0055], [0062], Fig. 1).
Regarding claim 2, Hajime teaches wherein the total content of the resin beads (C) in the top coat composition is 10 to 150 parts by mass per 100 parts by mass of the total non-volatile components of the hydroxyl- containing acrylic resin (A) and the polyisocyanate compound (B) for example ([0018], [0061], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Regarding claim 3, Hajime teaches wherein the top coat composition contains a color pigment ([0017]).
Regarding claim 4, Hajime teaches wherein the top coat layer is cured by being heated to 140°C for example ([0041]).
Regarding claim 5, Hajime teaches a method as disclosed above. However, it is the position of the examiner that disclosure the properties or function of the brightness the L*45 value and the infrared reflectance (IRSR) of the resulting multilayer coating film, is expected ([0031], [0034]), given the same claimed materials and process, such as applying the same clear coat with hydroxyl group-containing acrylic resin (A), a polyisocyanate compound (B), and resin beads (C) onto a pigment color coat on an object and cured.
Regarding claim 6, Hajime teaches multilayer coating film (Abstract, [0008]). "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Hajime teaches a method for forming a multilayer coating film (Abstract, [0008]), comprising: a step in which a colored coating composition that contains a color pigment is applied onto an object being coated to form a colored coating film layer as a base coat ([0008], [0019], [0020]); a step in which a luster pigment-free top coat (clear coating) composition that contains a hydroxyl group-containing acrylic resin (A), a polyisocyanate compound (B), and resin beads (C) is applied onto the colored coating film layer to form a top coat layer ([0008], [0028]); and a step in which the colored coating film layer formed in Step (1) and the top coat layer formed in Step (2) are cured by being heated, either separately or simultaneously ([0028]), wherein the average particle size D50 of the resin beads (C) is 11 to 70 µm ([0010], [0055], in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05), the dry film thickness of the top coat layer is equal to or less than the average particle diameter D50 of the resin beads (C) ([0021], [0041]). Hajime does not explicitly teach the whole range of the average particle size D50 of the resin beads (C) is 20 to 70 µm, but teaches the average particle size D50 of the resin beads (C) is 11 to 70 µm as discussed above [0010], [0055]. It would have been a prima facie obvious to have selected the overlapping portion of the range in between 20µm and 70 µm, because the claimed range 20 µm and 70 µm overlap or lie inside ranges disclosed by the prior art 11 to 70 µm, a prima facie case of obviousness exists and expect the same success when applying the same particle sizes. However, it is the position of the examiner that disclosure the properties or function of the brightness difference between the L*15 value and the L*25 value (L*15-L*25) is 1.0 to 20.0 is expected ([0031], [0034]), given the same claimed materials and process, such as applying the same clear coat with hydroxyl group-containing acrylic resin (A), a polyisocyanate compound (B), and resin beads (C) onto a pigment color coat on an object and cured (Abstract, [0008], [0010], [0019], [0020], [0028], [0021], [0031], [0034], [0041] [0055], [0062], Fig. 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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