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 .
Applicant’s election without traverse of Group I, claims 1-17, in the reply filed on 6/25/26 is acknowledged. Claims 18-20 are withdrawn from consideration as being directed toward a non-elected invention as detailed in paper filed 6/25/26. Claims 1-17 are the claims present in the application for prosecution thereof.
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.
Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). In line 7, the term “whose” appears to be inadvertently recited and make the step confusing and unclear. The Examiner suggest deletion of the term.
Regarding claim 13, the claim contains an improper Markush grouping of alternatives as the term "printing" includes both "pad printing" and "screen printing" and are not mutually exclusive. The Examiner suggests deleting the generic term "printing" to overcome the rejection. Additionally, the term "the various" lacks antecedent basis and the Examiner suggests reciting the first layer, the second layer and the third layer to overcome the antecedent basis.
Regarding claim 14, the term "the various" lacks antecedent basis and the Examiner suggests reciting the first liquid mixture, the second liquid mixture and the third liquid mixture as well as the first layer, the second layer and the third layer to overcome the antecedent basis. In addition, the limitation "optionally" is unclear and confusing as whether the term refers to (a) the matting agent, (b) the matting agent, glass beads, and/or the dispersing agent, or (c) the matting agent and/or the dispersing agent. Clarification is requested.
Regarding claims 2-12 and 15-17, the claims are rejected as being based upon a rejected base claim.
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/941,201 (reference application – allowed but No Patent Number as of the date of this correspondence). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the '201 application claim a coating absorbing visible light on an item such as a watch/timepiece comprising a first step of providing a substrate, a second step of coating a first layer/underlayer with a first liquid mixture comprising a binder, solvent and pigments having d90 percentile of nanometric dimension and forming by solvent evaporation, a third step of coating a stack of plurality of layers (claimed second, third and fourth layers of ‘201), each of these layers being formed from a liquid mixture of solvent, binder and pigment, formed by solvent evaporation. In claims 3 and 5, the successive layer of the stack has pigments whose d90 percentile increases between each successive deposition of the layers in the stack (claim 1 of ‘201). In claims 2,6 and 8-12 of the instant application, the amount of weight of pigments is taught (claims 3-5 of application ‘201). In claim 13 of the instant application, the plurality of layers are formed by depositing with the same methods (claim 8 of ‘201). In claim 14 of the instant application, the first liquid mixture includes additional materials such as matting agent, glass beads and a dispersing agent (claim 9 of ‘201). In claims 15 and 16 of the instant application, the binder being a polymer including acrylic, epoxy or polyurethane is taught (claims 10 and 11 of ‘201). In claim 17 of the instant application, the ink being coloured inks is taught (claim 12 of ‘201).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Closest Prior Art
WO-2023/076796 - teaches coating system for radar transmission using first and second layer having piments for radar transmission but no third layer as well as percentile of d90 in the first layer and increasing in additional layers. Teaches the liquid mixtures of solvent, resin (binder) and pigments, methods of coating as well as forming layer by solvent evaporation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN K TALBOT/Primary Examiner, Art Unit 1712
Prosecution Insights