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 .
Status of Application
Claims 1-19 are pending and presented for examination.
Information Disclosure Statement
The information disclosure statement filed 11/8/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the foreign references referred to therein have not been considered.
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.
1. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15-20 of U.S. Patent No. 12173172. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 and 15-20 of U.S. Pat. No. 12173172 anticipate claims 1-19.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
2. Claim(s) 1-5, 7-9, 11, 14, 15, 18 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokoyama et al. (U.S. PGPUB No. 2012/0053274).
I. Regarding claims 1-5, 7-9 and 11, Yokoyama teaches a thermally curable composition (abstract and 0098) comprising: an organic solvent (0078); urea sag control agent (0082); a polymeric acrylic polyol binder (0038-0039) in an amount of about 32 wt% (Table 3) having reactive OH groups (0039); a polyisocyanate crosslinking agent which has NCO groups reactive with the OH groups of the acrylic polyol (Table 3 and claim 4); and no melamine-based components (see throughout and in particular examples in Table 3, also note that at paragraph 0039 of Applicant’s specification it is made clear that comprising less than 5 wt% is to be interpreted as inclusive of no melamine-based components being present). Yokoyama teaches the urea sag control agent being a reaction product of reactants consisting of benzyl amine and 1,6-hexamethylene diisocyanate (claims 5 and 8, and note these are identical to the preferred reaction components recited by Applicants which provide particulate solid urea sag control agents, see Applicant’s specification at 0043). Yokoyama also teaches that their composition may include a disperse silica rheology control agent (0093). Finally, Yokoyama teaches that the composition can be prepared as a two-component composition with one component comprising the acrylic polyol and the other component comprising the crosslinking agent and the sag control agent in either component (0096). Yokoyama teaches all the critical limitations of claims 1-5, 7-9 and 11; therefore, Yokoyama anticipates the claims.
II. Regarding claims 14 and 15, Yokoyama teaches a method of forming a coating comprising: applying the above composition to a substrate (0099), potentially by spraying (0099), followed by thermal curing (0098). Yokoyama teaches all the critical limitations of claims 14 and 15; therefore, Yokoyama anticipates the claims.
III. Regarding claims 18 and 19, Yokoyama teaches a vehicle with a cured coating layer of the composition of claim 1 (0098), wherein the composition can be a clear coat (0002). Therefore, Yokoyama anticipates claims 18 and 19.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
3. Claim(s) 6, 10, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. (U.S. PGPUB No. 2012/0053274).
I. Regarding claims 6 and 12, Yokoyama teaches all the limitations of claims 1 (see above). Yokoyama fails to explicitly teach the solvent present in an amount of 30-60 wt% or the sag control agent in an amount of 0.2-2 wt%. However, Yokoyama does teach the compositions including solvent in an amount of 20-40 wt% (0077) and the sag control present in an amount of 0.1-10 wt% based on total weight of the composition (0087), where the composition can have a solids content of 60-80% or 100% (0077). Therefore, Yokoyama teaches the solvent and sag control agent present in amounts overlapping with the claimed ranges. Furthermore, overlapping ranges are prima facie evidence of obviousness.
II. Regarding claim 10, Yokoyama teaches all the limitations of claim 7 (see above) but fails to explicitly teach the ratio of functional groups in the crosslinking agent to the functional groups in the binder. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a ratio of 1:1. One would have been motivated to select this ratio such that a full conversion of the binder and crosslinking agent can be accomplished when the composition is cured leaving behind minimal impurities (note that if a different ratio was used there would be an excess of one of the reactants after the conclusion of curing).
III. Regarding claim 13, Yokoyama teaches all the limitations of claim 1 (see above) including the inclusion of a silica-based rheology control agent (see above). However, Yokoyama fails to teach the rheology control agent present in the range as claimed. However, the amount of the rheology control agent will control the flowability of the composition as well as its ability to be coated using various processes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
4. Claim(s) 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kania et al. (U.S. PGPUB No. 2011/0281115) in view of Yokoyama et al. (U.S. PGPUB No. 2012/0053274).
Regarding claims 14-17, Kania teaches a process for forming a cured coating (0091) for automotive applications (0059) comprising: spraying a composition onto a substrate and allowing the composition to flash dry at ambient temperature for 10 minutes followed by thermal curing at 285 °F (approximately 140 °C, see 0091) for 30 minutes (0091) to provide a cured clear coating having a thickness of 1.6-1.8 mils (40.64 microns to 45.72 microns, see 0091). Kania teaches the composition comprising a urea sag control agent (0083), an acrylic polyol binder (0083 and 0087), a crosslinking agent (0083) and a silica dispersion (0083). In the examples, Kania’s crosslinker is a melamine. Kania fails to teach the composition comprising less than 5 wt% melamine or the urea sag control agent being a reaction product of reactants consisting of amine and isocyanate.
However, Kania teaches that the crosslinker can be a polyisocyanate (0041). Furthermore, Yokoyama teaches similar coating compositions comprising a urea sag control agent which is a reaction product of reactants consisting of an amine and isocyanate, acrylic polyols, and crosslinkers which are polyisocyanates and do not include melamine for automotive applications (see above). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute Yokoyama’s urea sag control agent and polyisocyanate crosslinker for Kania’s sag control agent and melamine crosslinker. One would have been motivated to make this modification as one could have made these substitutiosn with a reasonable expectation of success (particularly given Kania teaches that polyisocyanate is a suitable crosslinker and the use of a generic urea sag control agent), and the predictable result of providing a cured coating for automotive applications.
Conclusion
Claims 1-19 are pending.
Claims 1-19 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
December 15, 2025Primary Examiner, Art Unit 1717