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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 in the reply filed on 8/28/2025 is acknowledged.
Claims 9, 10, 12, 13, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/28/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1-3, 5-7 , 12, and 17-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over (https://www.youtube.com/watch?v=SH3qORastWE&t=195s (herein referred to as “Scenic Rust”) in view of Wong et al (US 2017/0260638).
Scenic Rust teaches a plastic model assembled wherein the base material is plastic. Scenic Rust teaches providing a Scenic Rust powder (known in the art to comprise iron particles- see e.g. https://www.kathymillatt.co.uk/2013/03/31/rusty-tank/) and a Scenic Rust binder (I minute mark in the video). The powder and binder are mixed together to form a coating herein understood to read on the claimed “an iron-coated layer” and then provided on the base material (1:15). The coating is applied to parts of the model “where you want the rust to develop” (1:15). A Scenic Rust developer is then applied to the areas where the coating has been applied (1:35). The coating may be applied before painting in order to provide the aesthetic effect of rust under a surface (1:55). Since the developer results in the formation of rust, it is understood to be generated by oxidation of the iron coating film. Once the rust has developed, the paint scheme may be applied to the whole model, including the areas coated with the rust coating (2:15). The paint applied to the rust coating may subsequently be brushed away (2:40) to reveal the rust “bubbling through.” Said description is understood to anticipate the claimed “one or two or more areas” selected from areas “provided with a paint film on a portion where rust is generated on the iron-coated layer,” and areas ”not being provided with a paint film on a portion where rust is generated on the iron-coated layer.”
Scenic Rust is relied upon as above. Specifically, said reference teaches the application of an iron coating onto a model comprising a plastic base material, but does not teach that the iron coating layer should comprise an iron plating film. However, Wong teaches a method of applying a metal coating to model comprising a plastic base material (001) wherein the metal is formed by electroplating (0011). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize an electroplated iron coating in place of the powder/binder composition disclosed in Scenic Rust. The motivation for doing so would have been that Wong teaches it is known to apply metal layers onto plastic base materials of models via electrodeposition.
Scenic Rust recommends leaving some of the rust coated areas to be covered by paint at the edges of the rust areas. Scenic Rust may be applied to any surface, and may be applied to primed/painted surfaces (4:00). Such surfaces include plastics (see comment from December 7, 2010).
With regards to claim 2, Scenic Rust teaches the iron-coated layer is provided directly on the base material (4:00), the iron-coated layer is provided between the base material and the paint film (2:15), or a paint film may be provided between the base material and the iron-coated layer (4:00).
With regards to claim 3, the Scenic Rust powder is known in the art to be a “pure iron-coated layer or an iron alloy-coated layer” (see e.g. https://www.kathymillatt.co.uk/2013/03/31/rusty-tank/)
With regards to claim 5, Wong teaches applying the metal by electroplating, herein understood to read on the claimed “wet deposition method” (see paragraph 0052 of published application). Alternatively, the courts have held the method of depositing a coating does not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a materially different product. In the present application, no such showing has been made.
With regards to claim 6, Scenic Rust teaches applying the powder containing paste and subsequently applying developer to the areas of said past where rust is desirably generated. Said teaching is understood to read on the claimed limitation that “a portion where rust is generated on the iron-coated layer and a portion where rust is not generated on the iron-coated layer coexist.”
With regards to claim 7, Scenic Rust teaches the iron-coated layer may be applied to a primed substrate (herein understood to read on the claimed “another layer” which is a “base treatment layer”) and subsequently painted.
With regards 14, Scenic Rust teaches the iron-coated layer achieves a “realistic” surface appearance including iron rust is visible on its surface (see all).
With regards to claim 17, Scenic Rust teaches the iron-coated layer may be applied to a primed substrate (herein understood to read on the claimed “another layer”).
With regards to claim 18, Scenic Rust teaches the iron-coated layer may be applied to a primed substrate (herein understood to read on the claimed “another layer”) and subsequently painted.
With regards to claim 19, Scenic Rust teaches a paint film may be provided between the base material and the iron-coated layer (4:00).
With regards to claim 20, Scenic Rust teaches the iron-coated layer may be provided directly on the base material.
With regards to claim 21, Wong teaches the metal coating may be applied to a “predetermined” thickness (0012). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the thickness of the metal film in order to control cost, ease of manufacture, and aesthetic effects.
Claim(s) 4 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over (https://www.youtube.com/watch?v=SH3qORastWE&t=195s (herein referred to as “Scenic Rust”) in view of Wong et al (US 2017/0260638), as applied to claims 1-3, 5-7 , 12, and 17-21 above, and further in view of Palumbo (US 7,354,354).
Scenic Rust in view of Wong is relied upon as above, but does not teach the iron coating should further comprise a dispersing agent. However, Palumbo teaches particles of BN or diamond may be incorporated into metal coatings in order to improve the abrasion or wear resistance thereof (col 13, lines 23+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate diamond or BN into the metal coating of Scenic in view of Wong in order to improve the abrasion or wear resistance of said layer.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but are moot in view of the new grounds of rejection.
Objections to the Drawings
With regards to the drawing objections because Figs. 4-12 are black and white photographs,
Applicant replacement sheets are sufficient to overcome the previously applied rejection.
With regards to the objection for failing to comply with 37 CFR 1.84(p)(5) because
they do not include the following reference sign mentioned in the description: 20, the amendment to the specification to delete reference numeral 20 overcomes said objection.
Objections to the Specification
The substitute specification overcomes the previously noted objections.
Claim Rejections under 35 U.S.C. § 102
With regards to the rejection of claims 1-7 and 14 under 35 U.S.C. § 102 as being anticipated by "Scenic Rust - For Real & Dramatic Rust Effects" ("Scenic Rust"), applicant argues are moot in view of the new grounds of rejection.
Claim Rejections under 35 U.S.C. § 112(b)
With regards to the rejection of claims 2, 3, 6, 7, and 14 under 35 U.S.C. § 112(b) as being indefinite, the amendments to the claims overcome said rejections.
Conclusion
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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