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 .
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakayabu (US 2018/0104718 A1) in view of Nagaoka (JP 2018-126711 A) in view of Kainou (US 2020/0270461 A1).
Claim 1:
Nakayabu teaches a method for forming a multilayer coating film (abstract) on automobile bodies [0002]. The various layers are applied to the surface of the substrate and cured in a wet-on-wet manner (i.e., simultaneously) [0118-0119]. The layers include colored paint layers (X and Y; analogous to the claimed “effect coating film”) and clear paint layer (Z, analogous to the claimed “clear coating film”). The colored paint layers contain coloring pigments, effect pigments, and the like [0056, 0067]. The clear paint layer contains a hydroxyl group containing resin Z1, with acrylics being particularly preferred [0078], and a polyisocyanate compound Z2 [0076]. The hydroxyl value of the acrylic resin is 80-150 mg KOH/g [0078] because lower hydroxyl values result in an impact resistance that may be inadequate [0086]. This lower hydroxyl value corresponds to Comparative Example 3, which passes the impact resistance and water-resistant adhesiveness tests (Table 3), but fails the arbitrary hardness test where an F or greater was deemed to be a pass [0171].
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Something does not become patentable simply because it has been described as somewhat inferior. MPEP 2123.
It is clear that a hydroxyl value of less than 80 mg/KOH would have been obvious in situations requiring a lower impact resistance of the coating film (i.e., in situations where a hardness result of B is deemed a pass).
Additionally, Nagaoka teaches a particular clear coat composition where the acrylic has a hydroxyl value of 50 mg/KOH [0063] and if the number of active hydrogen groups exceeds an upper limit, adhesion may decrease [0043]. This sets forth very clear tradeoffs where a higher hydroxyl value is associated with increased hardness at the cost of adhesion and a lower hydroxyl value is associated with increased adhesion at the cost of hardness.
Nakayabu and Nagaoka do not specifically recite indium as the effect pigment. However, Kainou teaches indium particles are known glitter pigments for forming multilayer coating films on automobiles [0002-0005].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Nakayabu, set the hydroxyl value of the acrylic resin in the clear coat to less than 80 mg/KOH, and select indium particles as the effect pigment particles. This would have resulted in successful formation of a multilayered coating film on the surface of the substrate.
Claims 2-3, 5:
The colored paint layer further comprises a hydroxy group containing resin [0032] and a melamine resin [0055].
Claims 4, 6-8:
The clear coat has a ratio of isocyanate groups relative to hydroxyl groups (NCO/OH) within the range of 0.9-1.2 [0088].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
