Prosecution Insights
Last updated: August 07, 2026
Application No. 17/782,974

APPARATUS AND METHOD FOR COATING A SURFACE OF A WORKPIECE

Final Rejection §102§103
Filed
Jun 06, 2022
Priority
Dec 06, 2019 — DE 10 2019 133 335.0 +1 more
Examiner
KURPLE, KARL
Art Unit
1717
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Homag GmbH
OA Round
4 (Final)
52%
Grant Probability
Moderate
5-6
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 52% of resolved cases
52%
Career Allowance Rate
314 granted / 606 resolved
-13.2% vs TC avg
Strong +64% interview lift
Without
With
+63.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
44 currently pending
Career history
668
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
57.6%
+17.6% vs TC avg
§102
8.4%
-31.6% vs TC avg
§112
23.8%
-16.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 606 resolved cases

Office Action

§102 §103
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 . DETAILED ACTION Applicant's submission filed on January 17, 2026 was received and has been entered. Claim 1 was amended. Claims 6, 12-16, and 20 were cancelled. Claims 1-5, 7-11, 17-19, and 21-26 are in the application and pending examination. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Drawings The previous objection to the drawings under 37 CFR 1.83(a) for not showing every feature of the invention specified in the claims: the lacquer, hot-melt adhesive, two-component material, or thermoplastic material in claim 2, scraper device in claim 4, control device in claim 5, separate material store in claim 9, machining device in claim 11, and slot nozzle or spray nozzle in claim 18 is withdrawn. Specification The previous objection to the specification as failing to provide proper antecedent basis for the claimed subject matter is withdrawn based on the amendments to the claims. Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “pre-treatment device” in claim 1; “device for inducing…movement ” in claim 1; “UV activation device” in claim 3; “control device” in claim 1; and “ device for machining” in claim 11. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 102 The previous rejection of claims 1, 8-10, 17, and 21 under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) is withdrawn based on the amendment to claim 1. Claim Rejections - 35 USC § 103 Claims 1, 8-10, 17, 21, and 24-25 are rejected under 35 U.S.C. 103(a) as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) in view of US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) . Regarding claim 1, Bauer teaches an apparatus for coating a surface of a workpiece comprising: a device ( transport device such as 10, 12, 14 in printing device) for inducing a relative movement between the pre-treatment device and the workpiece, and at least one printing device comprising at least one digital print head (26, 28) that is configured to print on the surface, wherein the pre-treatment device (laser) is configured to apply a pre-treatment material (i.e. light radiation) to the surface of the workpiece to be printed. (See Bauer, Abstract, paragraphs 7, 67, 71 and Figs.1-12.) Bauer teaches spray beams can be arranged in a serial manner relative to one another in the transport direction where the individual spray beams respectively spray only one color so that any pattern color can be produced with three serially arranged spray beams. (See Bauer, paragraph 43.) Further regarding claim 1, Bauer does not explicitly teach at least one pre-treatment device configured to apply a pre-treatment material to the surface of the workpiece for pre-treating a surface to be coated. Baxter is directed printing on a wood substrate. Baxter teaches at least one pre-treatment device configured to apply a pre-treatment material to the surface of the workpiece for pre-treating a surface to be coated. (See Baxter, Abstract, paragraphs 18, 22, and 89-90. ) (Examiner is considering a primary groundcoat to be equivalent to pretreatment and the primary groundcoat to be capable of being sprayed from a printhead on a spray beam upstream of spray beams capable of coating with other coatings. ) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include at least one pre-treatment device configured to apply a pre-treatment material to the surface of the workpiece for pre-treating a surface to be coated, because Baxter teaches this would allow the substrate to be more receptive to a photographic quality ink-jet image. (See Baxter, Abstract, paragraphs 18, 22, and 89-90. ) Additionally, regarding claim 1, Bauer teaches a detection device (30, 32, 34) configured to provide a detection result based on the surface of the workpiece, wherein a control device (control device, computer, 36) configured to control the pretreatment device and/or the printing apparatus, the control device being operative to control the pre-treatment device (116) and/or the printing device (26, 28) based on the detection result. (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 63, 67, 69-71 and Figs.1-12.) Bauer teaches spray beams can be arranged in a serial manner relative to one another in the transport direction where the individual spray beams respectively spray only one color so that any pattern color can be produced with three serially arranged spray beams. (See Bauer, paragraph 43.) Additionally, regarding claim 1, Bauer teaches the detection device comprising: a first detection module (34 in Fig. 2b), arranged upstream of the pre-treatment device, configured to detect the surface (contour, thickness, forward edges) of the workpiece (front panel 2) before the pretreatment (pre-handled such as prime coat, mounting of trimming, and mounting of edge protection). (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 67, 71 and Figs.1-12) Additionally, regarding claim 1, Bauer teaches the detection device comprising: a second detection module (30, 32, 34 in Fig. 2a), arranged downstream of the pretreatment device, configured to detect the surface (position, geometry, and so forth in paragraph 71) of the workpiece (front panel) after the pretreatment for generating the detection result. (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 67, 71 and Figs.1-12) (Examiner is considering the multi-direction arrow on 20 in Fig. 2a to indicate that the sensor are capable of being located upstream or downstream of the printhead .) Intended use language is located in the preamble of claim 1 (i. e. apparatus for coating a surface of a workpiece ). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). The structure in Bauer is capable of performing the intended use and therefore meets the claim limitation. Claim 1 recites an intended use clause ( configured to apply, surface of the workpiece to be printed, device for pre-treating… ; device for inducing… ). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The structure in Bauer is capable of performing the intended use and therefore meets the claim limitation. Regarding claim 5, Bauer teaches the control device (control device, computer 36) is configured to adjust a function of the pre-treatment device and the printing device. (See Bauer, Abstract, paragraphs 7, 38, 43, 54, 63, 67, 71 and Figs.1-12.) Regarding claim 8, Bauer teaches the printing device comprises a plurality of print heads (26, 28, 70). (See Bauer, Abstract, paragraphs 7, 43, 54, 67, 71 and Figs.1-12.) Regarding claim 9, Bauer teaches the print heads of the printing device each have a separate material store (multiple color spray nozzles and A-C). (See Bauer, Abstract, paragraphs 7, 43, 54, 67, 71 and Figs.1-12.) Regarding claim 10, Bauer teaches the print heads of the printing device have a variable print height. (See Bauer, Abstract, paragraph 46 and Fig.4.) Regarding claim 17, Bauer teaches the printing device is an inkjet printing device. (See Bauer, Abstract, paragraphs 7, 33, 59, claim 5 and Figs.1-12.) Regarding claim 21, Bauer teaches the control device is configured to control the pre-treatment device and the printing device without feedback from the pretreatment device (based on feedback in a closed-loop manner via a detection result of the detector). (See Bauer, Abstract, paragraphs 7, 33, 59, claim 5 and Figs.1-12.) (Examiner is considering the double sided arrows in Fig. 12 indicate without feedback from the pretreatment device.) Regarding claim 24, Bauer teaches the first detection module (34 in Fig. 2b), arranged upstream of the pre-treatment module in the throughput direction. (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 67, 71 and Figs.1-12.) Regarding claim 24, Bauer does not explicitly teach the apparatus is a pass- through machine. Bauer teaches spray beams can be arranged in a serial manner relative to one another in the transport direction where the individual spray beams respectively spray only one color so that any pattern color can be produced with three serially arranged spray beams. (See Bauer, paragraph 43.) Examiner is considering a device including spray beam to be equivalent to a pass-through machine. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the apparatus is a pass- through machine, as an art recognized equivalent for depositing coating on a spray panel. (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 67, 71 and Figs.1-12) Regarding claim 25, Bauer does not explicitly teach the apparatus is a pass- through machine. Bauer teaches spray beams can be arranged in a serial manner relative to one another in the transport direction where the individual spray beams respectively spray only one color so that any pattern color can be produced with three serially arranged spray beams. (See Bauer, paragraph 43.) Examiner is considering a device including spray beam to be equivalent to a pass-through machine. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the apparatus is a pass- through machine, as an art recognized equivalent for depositing coating on a spray panel. (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 67, 71 and Figs.1-12) Additionally, regarding claim 25, Bauer teaches the detection device comprising: a second detection module (30, 32, 34 in Fig. 2a), arranged downstream of the pretreatment device. (See Bauer, Abstract, paragraphs 7, 34-35, 38, 41-43, 54, 67, 71 and Figs.1-12) (Examiner is considering the multi-direction arrow on 20 in Fig. 2a to indicate that the sensor are capable of being located upstream or downstream of the printhead .) The previous rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) as applied to claim 1 and further in view of US Pat. Pub. No. 20140375737 A1 to Van Beek et al (hereinafter Van Beek) is withdrawn based on the amendment to claim 1. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20140375737 A1 to Van Beek et al (hereinafter Van Beek). Regarding claim 2, Bauer does not explicitly teach the pre- treatment device is configured to apply a lacquer, a hot-melt adhesive, a two-component material or a thermoplastic material. Van Beek is directed to a substrate treatment apparatus include coating the substrate with a pre-treatment liquid. Van Beek teaches the pre- treatment device is configured to apply a two-component material. (See Van Beek, Figs. 1-4, paragraphs 92-94, and Abstract.) (Examiner is considering a pretreatment liquid including a solvent and at least one of the following: polyvalent metal salt, an acid, and a cationic resin to be equivalent to a two component material. ) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the pre- treatment device is configured to apply a two-component material, because Van Beek teaches this would allow the substrate to be more receptive to improve the wettability of the receiving medium and/or enhance spreading or absorption of the coating on the substrate. (See Van Beek, Figs. 1-4, paragraphs 50, 92-94, 99, and Abstract.) Regarding claim 2, the Applicant claims a specific material or article worked upon including lacquer, hot-melt adhesive, etc. .The substrate is not being given patentable weight in the coating apparatus. The coating apparatus in Bauer in view of Van Beek would be capable of coating with these materials. Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). The previous rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) as applied to claim 1 and further in view of US Pat. Pub. No. 20140037917 A1 to Branch (hereinafter Branch) is withdrawn based on the amendment to claim 1. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20140037917 A1 to Branch (hereinafter Branch). Regarding claim 3, Bauer does not explicitly teach the pre- treatment device comprises a UV activation device. Branch is directed to a device for surface coating. Branch teaches the pre- treatment device comprises a UV activation device. (See Branch, Fig. 9, station 5, paragraph 27, and Abstract.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the pre- treatment device comprises a UV activation device, because Branch teaches this would allow the pretreatment coating to be properly activated. (See Branch, Fig. 9, station 5, paragraph 27, and Abstract.) The previous rejection of claims 4, 7, and 18-19 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) as applied to claim 1 and further in view of US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) is withdrawn based on the amendment to claim 1. Claims 4, 7, and 18-19 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki). Regarding claim 4, Bauer does not explicitly teach the pre- treatment device comprises a nozzle and a scraper device for smoothing the pre-treatment material discharged from the nozzle Suzuki teaches the pre- treatment device comprises a nozzle and a scraper device for smoothing the pre-treatment material discharged from the nozzle. (See Suzuki, Figs. 1-4, paragraph 48 and Abstract.) (Examiner is considering a nozzle and a scraper device to be equivalent to an art recognized method of coating disclosed in paragraph 48.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include the pre- treatment device comprises a nozzle and a scraper device for smoothing the pre-treatment material discharged from the nozzle, as an art recognized equivalent. (See Suzuki, Figs. 1-4, paragraphs 48, 50, 92-94, 99, and Abstract.) It has been held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F. 2d 297, 213 USPQ 532 (CCPA 1982). Regarding claim 7, Bauer does not explicitly teach the print head has a nozzle with a diameter in the range of 2 mm to 300 mm. Suzuki teaches the print head has a nozzle with a diameter in the range of 10 mm to 30 mm. (See Suzuki, Abstract, paragraph 70.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include the print head has a nozzle with a diameter in the range of 2 mm to 300 mm, as an art recognized equivalent. (See Suzuki, Figs. 1-4, paragraphs 48, 50, 92-94, 99, and Abstract.) It has been held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F. 2d 297, 213 USPQ 532 (CCPA 1982). Regarding claim 18, Bauer does not explicitly teach the nozzle is a slot nozzle or spray nozzle. Suzuki teaches the nozzle is a slot nozzle or spray nozzle. (See Suzuki, Figs. 1-4, paragraph 48 and Abstract.) (Examiner is considering a slot nozzle to be equivalent to an art recognized method of coating disclosed in paragraph 48 i.e. curtain coating slide coating, etc .) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include the nozzle is a slot nozzle or spray nozzle, as an art recognized equivalent. (See Suzuki, Figs. 1-4, paragraphs 48, 50, 92-94, 99, and Abstract.) Regarding claim 19, Bauer does not explicitly teach the nozzle of the print head has a diameter in the range of 2 mm to 200 mm, in the range of 2 mm to 100 mm, or in the range of 2 mm to 12 mm. Suzuki teaches the print head has a nozzle with a diameter in the range of 10 mm to 30 mm. (See Suzuki, Abstract, paragraph 70.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include the print head has a nozzle with a diameter in the range of 10 mm to 30 mm, as an art recognized equivalent. (See Suzuki, Figs. 1-4, paragraphs 48, 50, 92-94, 99,and Abstract.) It has been held that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F. 2d 297, 213 USPQ 532 (CCPA 1982). The previous rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) as applied to claim 1 and further in view of US Pat. Pub. No. 20150339564 A1 to Herslow et al (hereinafter Herslow) is withdrawn based on the amendment to claim 1. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20150339564 A1 to Herslow et al (hereinafter Herslow) is being maintained. Regarding claim 11, Bauer does not explicitly teach a machining device for machining the surface of a workpiece. Herslow is directed to a substrate treatment apparatus include coating the substrate with a pre-treatment liquid. Herslow teaches a machining device for machining the surface of a workpiece. (See Herslow, Figs. 1-4, paragraphs 87, 129, 136-139 and Abstract.) (Examiner is considering CNC, milling, and grinding to be equivalent to machining.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a machining device for machining the surface of a workpiece, because Herslow teaches machining would allow the workpiece to have the desired surface features and dimensions. (See Herslow, Figs. 1-4, paragraphs 87, 129, 136-139 and Abstract.) The previous rejection of claim 22 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) as applied to claim 1 and further in view of US Pat. Pub. No. 20160339587 A1 to Ethan Rublee (hereinafter Rublee) is withdrawn based on the amendment to claim 22. Claim 22 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20160339587 A1 to Ethan Rublee (hereinafter Rublee). Regarding claim 22, Bauer does not explicitly teach the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device. Rublee is directed to a robotic device. Rublee teaches the control device is configured to control the pre-treatment device (robotic device) and the printing device based on feedback from the pre-treatment device (robotic device). (See Rublee, Abstract, Fig. 6 and paragraphs 108-112.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to have the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device, because Rublee teaches this would allow an identified pattern to serve as a landmark for future operations. (See Rublee, Abstract, Fig. 6 and paragraphs 108-112.) The previous rejection of claim 22 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20150373305 A1 to Hauf et al (hereinafter Hauf) is withdrawn based on the amendment to claim 1. Claim 22 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) and US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20150373305 A1 to Hauf et al (hereinafter Hauf). Regarding claim 22, Bauer does not explicitly teach the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device. Hauf is directed to fast measurement of droplet parameters in an industrial printing system. Hauf teaches the control device is configured to control the pre-treatment device (a first nozzle ) and the printing device (a second nozzle) based on feedback from the pre-treatment device (first nozzle results on a deposition surface that receives droplets from first nozzle). (See Hauf, Abstract, Figs. 1-3 and paragraphs 27, 31, 39, and 42-43.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to have the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device, because Hauf teaches this would allow calibration to take place to know the approximate position of each nozzle. (See Hauf, Abstract, Figs. 1-3 and paragraphs 27, 31, 39, and 42-43.) The previous rejection of claim 22 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) as applied to claim 1 and further in view of US Pat. Pub. No. 20170203587 A1 to Van Beek et al (hereinafter Van Beek) is withdrawn based on the amendment to claim 22. Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of US Pat. Pub. No. 20170203587 A1 to Van Beek et al (hereinafter Van Beek). Regarding claim 23, Bauer does not explicitly teach the first detection module is configured to determine whether the surface of the workpiece is uneven and/or porous. Van Beek teaches the first detection module is configured to determine whether the surface of the workpiece is uneven (surface geometry or topology) and/or porous. (See Van Beek, Abstract, Figs. 1-6, paragraphs 34, 79.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the first detection module is configured to determine whether the surface of the workpiece is uneven and/or porous, because Van Beek teaches sensing the surface geometry or topology can be used to provide feedback to the control device to increase accuracy of the measurement of the substrate. (See Van Beek, Abstract, Figs. 1-6, paragraphs 34, 79.) Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) US Pat. Pub. No. 20070132806 A1 to Baxter et al (hereinafter Baxter) as applied to claim 1 and further in view of KR-101456293-B1 to Jeon Gwang Sim (hereinafter Sim). Regarding claim 26, Bauer does not explicitly teach the pre-treatment device is configured to apply a pre-treatment material to a narrow side of a plate-shaped workpiece, and the printing device is configured to print on the narrow side pretreated by the pre-treatment device. Sim teaches the pre-treatment device is configured to apply a pre-treatment material to a narrow side of a plate-shaped workpiece, and the printing device is configured to print on the narrow side pretreated by the pre-treatment device. (See Sim, MT, Abstract, page 1, paragraphs 5-7.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the pre-treatment device is configured to apply a pre-treatment material to a narrow side of a plate-shaped workpiece, and the printing device is configured to print on the narrow side pretreated by the pre-treatment device, because Sim teaches this would enable a coating film image to be formed on the wood. (See Sim, MT, Abstract, page 1, paragraphs 5-7.) The coating apparatus in Bauer, Baxter, and Sim would be capable of coating “a narrow side of a plate-shaped workpiece”. Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). The recitation “a narrow side of a plate-shaped workpiece” merely recites an intended use of the apparatus and thus does not further structurally limit the apparatus as claimed. See MPEP 2114. However, it is wholly expected that the apparatus of the Bauer, Baxter, and Sim, is fully capable of coating various substrates, since the references Bauer, Baxter, and Sim disclose every structural limitation of the claimed invention. The previous rejection of claims 1, 4-5, 7-10, and 17-19 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) in view of US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) is being maintained. Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) in view of US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White). Regarding claim 1, Suzuki teaches an apparatus for coating a surface of a workpiece comprising: at least one pre-treatment device ( 20) configured to apply a pre-treatment material to the surface of the workpiece for pre-treating a surface (roll sheet MD), a device (10 carry in ) for inducing a relative movement between the pre-treatment device (20) and the workpiece, at least one printing device (72) comprising at least one digital print head (40N) that is configured to print on the surface. (See Suzuki, Abstract, paragraphs 9, 37, 39, 71 and Figs.1-12.) Suzuki does not explicitly teach a detector configured to provide a detection result based on the surface of the workpiece, the detector comprising a first detection module, arranged upstream of the pre-treatment device, configured to detect the surface of the workpiece before the pretreatment. White is directed to a system for accurate positioning of ink drops on a substrate in an inkjet printing system. (See White, Abstract, Figs. 1-6, and paragraph 21.) White teaches a test print may be performed. (See White, paragraphs 44, 73.) Examiner is considering a test print to be equivalent to pretreatment. White teaches measuring a landing position of a calibration spot or analyzing the substrate following a calibration print step. (See White, paragraphs 9 -12, 43, and Figs. 1-6.) White teaches a detector (116) coupled to the apparatus and configured to provide a detection result (image and positional information) based on the surface of the workpiece, the detector comprising a first detection module (124), arranged upstream of the pre-treatment device (108-112), configured to detect the surface of the workpiece before the pretreatment. (See White, paragraphs 69-74.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a detector coupled to the apparatus and configured to provide a detection result based on the surface of the workpiece, the detector comprising a first detection module, arranged upstream of the pre-treatment device, configured to detect the surface of the workpiece before the pretreatment, because White teaches inspecting the substrate providing information to the control device allows the control device to compensate for positional inaccuracies. (See White, Abstract, Figs. 1-6, and paragraphs 21-22, 28, 47, 69-74.) Suzuki does not explicitly teach a second detection module, arranged downstream of the pre-treatment device, configured to detect the surface of the workpiece after the pretreatment. White teaches a second detection module (114), arranged downstream of the pre-treatment device (108-112), configured to detect the surface of the workpiece after the pretreatment. (See White, paragraphs 9 -12, 30, 43, and Figs. 1-6.) White teaches imaging system (114) may be used to capture images of a completed pass. (See White, paragraphs 9 -12, 30, 43, and Figs. 1-6.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a detector coupled to the apparatus and configured to provide a detection result based on the surface of the workpiece, arranged downstream of the pre-treatment device, configured, because White teaches this would enable images of the completed pass to be captured. (See White, Abstract, Figs. 1-6, and paragraphs 21, 22, 28, 47, 69-74.) Suzuki does not explicitly teach a control device configured to control the pretreatment apparatus and/or the printing apparatus based on the detection result. White teaches a control device (124, 126) in electronic communication with the detector (114, 116, 118, 122) and the pretreatment apparatus and/or the printing apparatus (108-112) , the control device being operative to control the pretreatment apparatus and/or the printing apparatus based on the detection result (See White, paragraphs 9, 21, 23-27, 43-44.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a control device configured to control the pretreatment apparatus and/or the printing apparatus based on the detection result, because White teaches inspecting the substrate following a calibration step would enable the proper ink drop placement to be determined. (See White, Abstract, Figs. 1-6, and paragraphs 21, 22, 28, 47, 69-74.) Intended use language is located in the preamble of claim 1 (i. e. apparatus for coating a surface of a workpiece ). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). The structure in Suzuki is capable of performing the intended use and therefore meets the claim limitation. Claim 1 recites an intended use clause ( configured to apply, surface of the workpiece to be printed, device for pre-treating… ; device for inducing… ). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The structure in Suzuki is capable of performing the intended use and therefore meets the claim limitation. Regarding claim 4, Suzuki teaches the pre- treatment device comprises a nozzle and a scraper device for smoothing the pre-treatment material discharged from the nozzle. (See Suzuki, Figs. 1-4, paragraph 48 and Abstract.) (Examiner is considering a nozzle and a scraper device to be equivalent to an art recognized method of coating disclosed in paragraph 48.) Regarding claim 5, Suzuki does not explicitly teach a detection device for detecting a property of the surface to be coated, wherein the control device is configured to adjust a function of the pre-treatment device and the printing device. White teaches the control device (124, 126) is configured to adjust a function of the pre-treatment device and the printing device. (See White, Abstract, paragraphs 9, 21, 23-27, 43-44.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include Suzuki does not explicitly teach a detection device for detecting a property of the surface to be coated, wherein the control device is configured to adjust a function of the pre-treatment device and the printing device, because White teaches this would enable the difference between the deposited location and the intended location to be adjusted by adjusting a parameter of the inkjet printing system. (See White, paragraphs 9, 11, 21, 23-27, 43-44.) Regarding claim 7, Suzuki teaches the print head has a nozzle with a diameter in the range of 10 mm to 30 mm. (See Suzuki, Abstract, paragraph 70.) Regarding claim 8, Suzuki teaches the printing device comprises a plurality of print heads (40K, 40Y, 40C, 40M, 40K). (Suzuki, Abstract, paragraphs 67, 130-133, 141 and Figs.1-11.) Regarding claim 9, Suzuki teaches the print heads of the printing device each have a separate material store (40K, 40Y, 40C, 40M, 40K). (Suzuki, Abstract, paragraphs 67, 130-133, 141 and Figs.1-11.) Regarding claim 17, Suzuki teaches the printing device is an inkjet printing device. (See Suzuki, Abstract, paragraphs 5-11,33 claim 5.) Regarding claim 18, Suzuki teaches the nozzle is a slot nozzle or spray nozzle. (See Suzuki, Figs. 1-4, paragraph 48 and Abstract.) (Examiner is considering a slot nozzle to be equivalent to an art recognized method of coating disclosed in paragraph 48 i.e. curtain coating slide coating, etc.) Regarding claim 19, Suzuki teaches the print head has a nozzle with a diameter in the range of 10 mm to 30 mm. (See Suzuki, Abstract, paragraph 70.) Regarding claim 24, Suzuki does not explicitly teach the apparatus is a pass- through machine, and the first detection module is arranged upstream of the pre-treatment module in the throughput direction. White teaches the apparatus is a pass- through machine, and the first detection module (124) is arranged upstream of the pre-treatment module (108-112) in the throughput direction (See White, paragraphs 9, 21, 23-27, 43-44.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the apparatus is a pass- through machine, and the first detection module is arranged upstream of the pre-treatment module in the throughput direction, because White teaches inspecting the substrate would enable imperfections in the substrate like warping and buckling to be detected. (See White, Abstract, Figs. 1-6, and paragraphs 21, 22, 28, 47, 69-74.) Regarding claim 25, Suzuki does not explicitly teach the apparatus is a pass- through machine, and the second detection module is arranged downstream of the pre-treatment module in the throughput direction. White teaches the apparatus is a pass- through machine, and the second detection module (116) is arranged downstream of the pre-treatment module in the throughput direction. (See White, paragraphs 9, 21, 23-27, 43-44, 50.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the apparatus is a pass- through machine, and the second detection module is arranged downstream of the pre-treatment module in the throughput direction, because White teaches this would enable the intended deposition location and the actual deposition location to be detected. (See White, Abstract, Figs. 1-6, and paragraphs 21, 22, 28, 47, 50, 69-74.) The previous rejection of claim 2 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20140375737 A1 to Van Beek et al (hereinafter Van Beek) is being maintained. Regarding claim 2, Suzuki does not explicitly teach the pre- treatment device is configured to apply a lacquer, a hot-melt adhesive, a two-component material or a thermoplastic material. Van Beek is directed to a substrate treatment apparatus include coating the substrate with a pre-treatment liquid. Van Beek teaches the pre- treatment device is configured to apply a two-component material. (See Van Beek, Figs. 1-4, paragraphs 92-94, and Abstract.) (Examiner is considering a pretreatment liquid including a solvent and at least one of the following: polyvalent metal salt, an acid, and a cationic resin to be equivalent to a two component material. ) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the pre- treatment device is configured to apply a two-component material, because Van Beek teaches this would allow the substrate to be more receptive to improve the wettability of the receiving medium and/or enhance spreading or absorption of the coating on the substrate. (See Van Beek, Figs. 1-4, paragraphs 50, 92-94, 99, and Abstract.) Regarding claim 2, the Applicant claims a specific material or article worked upon including lacquer, hot-melt adhesive, etc. The substrate is not being given patentable weight in the coating apparatus. The coating apparatus in Suzuki in view of Van Beek would be capable of coating with these materials. Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). The previous rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20140037917 A1 to Branch (hereinafter Branch) is being maintained. Regarding claim 3, Suzuki does not explicitly teach the pre- treatment device comprises a UV activation device. Branch is directed to a device for surface coating. Branch teaches the pre- treatment device comprises a UV activation device. (See Branch, Fig. 9, station 5, paragraph 27, and Abstract.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the pre- treatment device comprises a UV activation device, because Branch teaches this would allow the pretreatment coating to be properly activated. (See Branch, Fig. 9, station 5, paragraph 27, and Abstract.) The previous rejection of claims 5 and 10 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20040028830 A1 to Jorg R. Bauer (hereinafter Bauer) is being maintained. Regarding claim 5, Suzuki does not explicitly teach a detection device for detecting a property of the surface to be coated, wherein the control device is configured to adjust a function of the pre-treatment device and the printing device. Bauer teaches the control device (control device, computer 36) is configured to adjust a function of the pre-treatment device and the printing device. (See Bauer, Abstract, paragraphs 7, 38, 43, 54, 63, 67, 71 and Figs.1-12.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include Suzuki does not explicitly teach a detection device for detecting a property of the surface to be coated, wherein the control device is configured to adjust a function of the pre-treatment device and the printing device, because Bauer teaches this would enable the formation of the selected coating to be monitored. (See Bauer, Abstract, paragraphs 7, 34-35, 41-43, 54, 67, 71 and Figs.1-12) Regarding claim 10, Suzuki does not explicitly teach the print heads of the printing device have a variable print height. Bauer teaches the print heads (28, 28) of the printing device have a variable print height. (See Bauer, Abstract, paragraph 46 and Fig.4.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to include the print heads (28, 28) of the printing device have a variable print height, because Bauer teaches this would enable the distance between the substrate and the printhead to be adjusted. (See Bauer, Abstract, paragraphs 7, 34-35, 41-43, 46, 54, 67, 71 and Figs.1-12) The previous rejection of claim 11 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20150339564 A1 to Herslow et al (hereinafter Herslow) is being maintained. Regarding claim 11, Suzuki does not explicitly teach a machining device for machining the surface of a workpiece. Herslow is directed to a substrate treatment apparatus include coating the substrate with a pre-treatment liquid. Herslow teaches a machining device for machining the surface of a workpiece. (See Herslow, Figs. 1-4, paragraphs 87, 129, 136-139 and Abstract.) (Examiner is considering CNC, milling, and grinding to be equivalent to machining.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a machining device for machining the surface of a workpiece, because Herslow teaches machining would allow the workpiece to have the desired surface features and dimensions. (See Herslow, Figs. 1-4, paragraphs 87, 129, 136-139 and Abstract.) The previous rejection of claim 22 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20160339587 A1 to Ethan Rublee (hereinafter Rublee) is being maintained. Regarding claim 22, Bauer does not explicitly teach the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device. Rublee is directed to a robotic device. Rublee teaches the control device is configured to control the pre-treatment device (robotic device) and the printing device based on feedback from the pre-treatment device (robotic device). (See Rublee, Abstract, Fig. 6 and paragraphs 108-112.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to have the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device, because Rublee teaches this would allow an identified pattern to serve as a landmark for future operations. (See Rublee, Abstract, Fig. 6 and paragraphs 108-112.) The previous rejection of claim 22 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20150373305 A1 to Hauf et al (hereinafter Hauf) is being maintained. Regarding claim 22, Bauer does not explicitly teach the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device. Hauf is directed to fast measurement of droplet parameters in an industrial printing system. Hauf teaches the control device is configured to control the pre-treatment device (a first nozzle ) and the printing device (a second nozzle) based on feedback from the pre-treatment device (first nozzle results on a deposition surface that receives droplets from first nozzle). (See Hauf, Abstract, Figs. 1-3 and paragraphs 27, 31, 39, and 42-43.) It would have been obvious to a person of ordinary skill in the art at the time the invention was made to have the control device is configured to control the pre-treatment device and the printing device based on feedback from the pre-treatment device, because Hauf teaches this would allow calibration to take place to know the approximate position of each nozzle. (See Hauf, Abstract, Figs. 1-3 and paragraphs 27, 31, 39, and 42-43.) The previous rejection of claim 23 under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of US Pat. Pub. No. 20170203587 A1 to Van Beek et al (hereinafter Van Beek) is being maintained. Regarding claim 23, Suzuki does not explicitly teach the first detection module is configured to determine whether the surface of the workpiece is uneven and/or porous. Van Beek teaches the first detection module is configured to determine whether the surface of the workpiece is uneven (surface geometry or topology) and/or porous. (See Van Beek, Abstract, Figs. 1-6, paragraphs 34, 79.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the first detection module is configured to determine whether the surface of the workpiece is uneven and/or porous, because Van Beek teaches sensing the surface geometry or topology can be used to provide feedback to the control device to increase accuracy of the measurement of the substrate. (See Van Beek, Abstract, Figs. 1-6, paragraphs 34, 79.) Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Pub. No. 20140132658 A1 to Suzuki et al (hereinafter Suzuki) and US Pat. Pub. No. 20090122099 A1 to White, Beer, et al (hereinafter White) as applied to claim 1 and further in view of KR-101456293-B1 to Jeon Gwang Sim (hereinafter Sim). Regarding claim 26, Suzuki does not explicitly teach the pre-treatment device is configured to apply a pre-treatment material to a narrow side of a plate-shaped workpiece, and the printing device is configured to print on the narrow side pretreated by the pre-treatment device. Sim teaches the pre-treatment device is configured to apply a pre-treatment material to a narrow side of a plate-shaped workpiece, and the printing device is configured to print on the narrow side pretreated by the pre-treatment device. (See Sim, MT, Abstract, page 1, paragraphs 5-7.) It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the pre-treatment device is configured to apply a pre-treatment material to a narrow side of a plate-shaped workpiece, and the printing device is configured to print on the narrow side pretreated by the pre-treatment device, because Sim teaches this would enable a coating film image to be formed on the wood. (See Sim, MT, Abstract, page 1, paragraphs 5-7.) Regarding claim 26, the Applicant claims a specific material or article worked upon including “a narrow side of a plate-shaped workpiece” . The substrate is not being given patentable weight in the coating apparatus. The coating apparatus in Suzuki, White, and Sim would be capable of coating “a narrow side of a plate-shaped workpiece”. Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). The recitation “a narrow side of a plate-shaped workpiece” merely recites an intended use of the apparatus and thus does not further structurally limit the apparatus as claimed. See MPEP 2114. However, it is wholly expected that the apparatus of the Suzuki, White, and Sim , is fully capable of various substrates of various shapes and sizes, since the Suzuki, White, and Sim or combination of Suzuki, White, and Sim disclose every structural limitation of the claimed invention. Response to Arguments Applicant's arguments filed January 17, 2026 have been fully considered but they are not persuasive. First set of rejections based on Bauer Applicant’s arguments with respect to claims 1-11, 17-19, and 21-26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Second set of rejections based on Suzuki in view of White Applicant's arguments filed January 17, 2026 have been fully considered but they are not persuasive. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pat. Pub. No. 20140037917 A1 to Branch et al teaches printing a primer on a substrate and printed layer over the primer. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KARL KURPLE/Primary Examiner Art Unit 1717
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Prosecution Timeline

Show 2 earlier events
Dec 30, 2024
Response Filed
Apr 17, 2025
Final Rejection mailed — §102, §103
Jul 17, 2025
Response after Non-Final Action
Jul 28, 2025
Request for Continued Examination
Jul 30, 2025
Response after Non-Final Action
Oct 30, 2025
Non-Final Rejection mailed — §102, §103
Jan 17, 2026
Response Filed
May 05, 2026
Final Rejection mailed — §102, §103 (current)

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3y 7m (~0m remaining)
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