DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 26, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 amendment filed on February 26, 2026, claims 2 – 15 are pending. Claim 15 has been amended and claim 1 has been canceled. Claims 11 – 14 have been withdrawn from consideration.
Restriction/Election
Claims 11 – 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 10, 2023.
Applicant’s election without traverse of Group I, claims 1 – 10 in the reply filed on August 10, 2023 is acknowledged.
Claim Rejections - 35 USC § 103
Claim(s) 15, 2 – 3, 6, 9, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kietzmann et al. DE 19963591 A1 (hereinafter “Kietzmann”, machine translation referenced herein and supplemental google translation provided) in view of Ishihara et al. JP 2007216190A (of record with machine translation, hereafter “Ishihara”) and further in view of either McGuire US 20100059167 A1 (hereafter “McGuire”) or Johnson et al. US 5518786 A (hereinafter “Johnson”).
Regarding claims 15, 2, 3, 6, 9, 10:
Kietzmann is directed to a method of repairing damaged sections of paintwork on substrates such as vehicle bodies [preformed, meeting claim 2] (Abstract).
Kietzmann discloses that their method comprises:
cleaning and smoothing [removing] a damaged zone and adjacent zones [areas] by grinding (page 2 lines 23 – 25, page 5 lines 3 – 15; Fig. 1, 2);
optionally filling the damaged area with a filler, and then sanding the filled area [abrading filler] with a wet coarse grain sandpaper [abrasive pad] (page 2 lines 9 – 12, page 3 lines 12 – 201, page 5 lines 14 – 18; claim 6);
applying a primer to the leveled damaged area and drying the primer (page 5 lines 19 – page 6 line 6);
sanding [abrading] the surface of the primer with sandpaper;
applying a first paint /lacquer coating and drying the first coating (page 6 lines 15 – 29 ; claim 1);
removing any paint dust on the surface of the first paint/lacquer;
applying a second paint/lacquer or clear coating and drying such a coating (page 6 lines 15 – 29 ; claim 1); and
finely sanding [polishing] the dried second coating with smooth sandpaper (page 6 lines 1 – 13).
The original coating comprises a primer paint layer, a top coat layer, and a clear coat layer (page 4 lines 13 – 18), and are lacquers [polymeric] (page 4 lines 15 – 25, page 7 lines 14 – 20).
Kietzmann does not expressly teach:
that the exposed surface of the paint is abraded;
abrading a surface of the substrate below the damaged portion of the paint film
to form an abraded substate surface; and abrading an area of the paint film adjacent to the damaged portion to form an abraded adjacent area; and
that the paint filmed to be repaired comprises a color layer and an adhesive layer.
With regards to the exposed surface of the paint is abraded:
Kietzmann does disclose that removing paint dust on the surface of the primer layer comprises a fine sanding followed by careful removal of the primer paint dust with a dust absorbent cloth (page 6 lines 1 – 14). The fine sanding is described to aid in the adhesion of subsequent layers onto the primer to the first paint coating (page 6 lines 2 – 5). Kietzmann therefore suggests that fine sanding [abrading] aids in the adhesion between layers.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kietzmann by having the removal of first paint dust comprises a step of fine-sanding [abrading] the first paint coating because Kietzmann suggests that fine-sanding between paint layers aids in the adhesion of the layers to one another.
With regards to the abrading of a surface of the substrate below the damaged portion of the paint film to form an abraded substate surface; and the abrading of an area of the paint film adjacent to the damaged portion to form an abraded adjacent area.
Ishihara is directed to a repairing method for coating films, especially for automotive paint coatings (Abstract; [0002]). As shown in Figs. 2 – 6, Ishihara discloses that their repairing method comprises the sequential steps of: providing a steel plate substrate that is coated with a stack of: an electrodepositing coating film, an intermediate coating base coating, another base coat and a clear coating film as a top coating film, wherein the coating contains an abnormal part such as dust, blisters or sagging [damaged portion] ([0012] – [0013], [0022]); removing the defect using e.g. a sharp tool or a triacact disc/sanding disc across an abnormal and leaving behind an abnormal portion removal range [exposed damaged area] ([0023] – [0024]; Fig. 3); rough polishing [abrading] across the abnormal portion removal range, a repair coating range and a rough polishing range [abrading the surface of the substrate below the damaged portion; also includes the undamaged area of clear layer 5 adjacent to the damaged area] ([0025] – [0028]; Fig. 4); and applying a repair material, including clear coat, onto the abnormal portion removal range and the repair coating range [includes the abraded undamaged portion of the clear layer adjacent to the damaged area] ([0029]). Ishihara discloses that by setting the rough polish grinding larger than the damage area and the repair coating range, the adhesiveness of a touch-up film, membrane can be ensured and the appearance of the repair would improve ([0027] – [0028]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kietzmann to include: abrading a surface of the substrate below the damaged portion of the paint film to form an abraded substate surface, and abrading an area of the paint film adjacent to the damaged portion to form an abraded adjacent area; because Ishihara teaches that rough polishing of the damage area and an area surrounding the damage area after removal of a defect improves the subsequent adhesion of repair materials and improve the final appearance of the repair.
With regards to the paint film originally comprising an adhesive layer and a color layer:
McGuire is directed to paint replacement films (Abstract). McGuire discloses that the paint replacement film comprises at least one adhesive layer ([0023]) as well as a pigmented layer [paint] and a topcoat ([0043], [0056]). The paint film is to be essentially free of low surface energy materials ([0023]). Each layer is applied wet [liquid-applied] ([0062]). The adhesive layer acts to maintain the paint onto substrates even when subjected to harsh conditions such high wind resistance due to a vehicle/substrate operating at high speeds ([0005], [0019]). Furthermore, the pigmented layer provides for coloration ([0031]). Both layers are described as polymeric ([0040] acrylic ink for pigmented layer, [0027] methacrylate for adhesive layer).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Kietzmann in view of Ishihara by repairing substrates that had an adhesive because Mcguire teaches that such adhesives allowed for paint to better resist harsh conditions such as wind resistance; likewise it would have been obvious to have Kietzmann’s topcoat layer be a color layer because Mcguire teaches that color is a desired property of coatings.
Alternatively, Johnson is directed to dry paint transfer techniques, dry paint decorative sheets, and resultant paint finish in the context of automotive manufacturing and in automotive (Abstract; col 1 lines 10 – 35). As shown in inter alia Fig. 1, Johnson discloses a dry paint decorative sheet comprising carrier sheets, an adhesive layer 16, a color layer 14, and a clear coat layer 12 (col 5 lines 15 – 45). The layers are polymeric layers (col 6 lines 20 – 35 clear coat, col 10 lines 45 – 55 color layer, col 13 lines 20 – 50, col 19 lines 60 – 65 acrylic-based adhesive).
Johnson further discloses that the dry paint decorative sheet may be applied onto vehicle substrates by removing a liner sheet adjacent to the adhesive layer, moistening the adhesive layer and aligning the sheet with the contours of the given vehicle substrate (col 14 lines 9 – 55). Johnson discloses that such a dry paint coating process can be an environmentally safe alternative to traditional solvent-based wet paint coating processes (col 2 lines 10 – 36).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kietzmann in view of Ishihara by having the original coating that is damaged be a multi-layer polymeric paint as taught by Johnson, which originally comprises an adhesion layer and color layer because Johnson teaches that such coatings provide paint layers to vehicles with reduces/eliminated environmental and safety problems. In view of Kietzmann’s teachings, one of ordinary skill in the art would have understood that such coatings are not invulnerable, and can be susceptible to the need for repair just as any other paint coating would be.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kietzmann in view of Ishihara and either McGuire or Johnson as applied to claims 15, 2 – 3, 6, 9, 10 above, and further in view of McGuire (i.e. McGuire is required).
Regarding claim 4:
McGuires discloses that their paint film is to be essentially free of low surface energy materials ([0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Kietzmann in view of Ishihara and either McGuire or Johnson because Mcguire teaches that low surface energy materials are advantageous in that their exclusion helps to maintain interlayer lamination ([0010], [0023], [0048]).
Claim(s) 5, 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kietzmann in view of Ishihara and either McGuire or Johnson as applied to claims 15, 2 – 3, 6, 9, 10 above, and further in view of Ueno US 6312765 A (hereafter “Ueno”).
Regarding claims 5, 7, 8:
Kietzmann in view of Ishihara and either McGuire or Johnson does not expressly teach that the one or more damaged portions of the paint film are removed using a cutting mechanism and that at least one of the abrading comprises sanding using a dual action sander or an orbital sander.
Ueno is directed to a method of repairing a coated surface of a vehicle, and the repaired coating (Abstract). The coated surface of the vehicle can comprise a steel plate [substrate], an undercoat layer, an intermediate coat layer and a top coat layer (col 14 lines 34 – 55; Fig. 1). Ueno discloses that their repair method comprises: removing damaged old coating films [damaged paint film] and coating in the vicinity of damage [adjacent underlying substrate] from the surface of the substrate using tools such as double sander [dual action sander], orbital sander [also implicitly equipped with an abrasive sanding pad] and/or cutting the damaged coating with a knife [meeting claim 5] to create pretreated damaged portions (Fig. 1 (ii); col 3 lines 30 – 60, col 7 lines 24 – 40, col 14 line 25 – col 17 line 32, col 18 lines 9 – 20). The primer surfacer layer can also be ground using a sander.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kietzmann in view of Ishihara and either McGuire or Johnson by using a knife [cutting mechanism] for the removal of damaged portions and that at least one of the abrading comprises sanding using a dual action sander or an orbital sander because as taught by Ueno, the use of knives, dual action sanders and orbital sanders are known to be suitable for the purpose of removing material from a film or layer. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
Response to Arguments
Applicant’s arguments, filed June 12, 2025, with respect to the rejection(s) of the claim(s) under 35 USC §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kietzmann.
Response to Arguments
Applicant's arguments filed on February 26, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) There is no disclosure in Kietzmann of a method of repairing a multi-layer polymeric paint film comprising an adhesive layer, a color layer, and a clear layer, as is recited in amended claim 1. Nor do Ishihara, McGuire, and Ueno disclose a paint film comprising the recited layers. While McGuire discloses a replacement film, McGuire’s does not disclose a method of repairing having a step of applying paint.
In response to the applicant's arguments, please consider the following comments.
a.) During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Applicant’s principal argument appears to be that the prior art of record fails to disclose a paint film. In its plain meaning, a paint film is understood to be a formed film of solid paint. Thus the term is understood to broadly refer to the final original structure of the coating applied by paint (that is to be repaired). Wet-painting in this context is merely the referenced process to result in the final paint film.
The Examiner recognizes that the instant specification refers to a “paint in film form” (page [0002]) which is recognized as an alternative for spray-applied/painted paint films. No special definition is recited or found in the instant application that requires that the paint film have structures that may only be found in paint films produced from the alleged non-“paintwork” film. Such an interpretation is also consistent with the instant specification as the instant specification states that the disclosure is not limited in scope to the paint films described in paragraph [0001] – [0002], so long as an adhesive is present to fix the paint film to an underlying substrate. See e.g. paragraph [0003]. So long as the final structure of the multilayer paint film is met by the prior art, the prior art would then read upon such an original film.
With regards to the lack of disclosure of “abrading an area of the multi-layer polymeric paint film” in Kietzmann, the limitation is rendered obvious in view of McGuire or alternatively Johnson and Ishihara’s teaching regarding abrading to the surface of the substrate, as discussed above.
With regards to McGuire having no disclosure of repairing a paint film, less a step of applying paint, the Examiner notes that such a teaching is provided by Kietzmann, not McGuire. McGuire’s teaching are relied upon for characteristics of the original paint film prior to the execution of the claimed steps of the claimed method.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 The recitation in the original document is found in col 2 lines 13 – 16: “Sofern notwendig wird die schadstelle nach schleifen und einebnen gespachtelt und geschliffen und erst danach wird der grundierlack aufgesprüht.” When translated using google translate, the sentence translates to: “if necessary, the damaged area is filled and sanded after sanding and leveling and only then is the primer sprayed on”
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