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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
The “ablating each of said plurality of polymeric coatings” as set forth in claim 6 in combination with “leaving an entire thickness of said first polymeric coating in place” as set forth in claim 1.
“said first polymeric coating expose a polymeric primer coating” as set forth in claim 8 in combination with “said first polymeric coating visible through said intermediate clear polymeric coating while leaving an entire thickness of said first polymeric coating in place” as set forth in claim 1.
“a physical vapor deposition (PVD) metal between said first polymeric coating and said intermediate clear polymeric coating” as set forth in claim 11 in combination with “said first polymeric coating visible through said intermediate clear polymeric coating while leaving an entire thickness of said first polymeric coating in place” as set forth in claim 1.
“a physical vapor deposition (PVD) metal is disposed between a primer and said intermediate clear polymeric coating” as set forth in claim 16 in combination with “said first polymeric coating visible through said intermediate clear polymeric coating” and “said first polymeric coating thickness being continuous at said face of said wheel” as set forth in claim 12.
“a primer coating visible through said pattern” as set forth in claim 17 in combination with “said first polymeric coating visible through said intermediate clear polymeric coating” and “said first polymeric coating thickness being continuous at said face of said wheel” as set forth in claim 12.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. No new matter should be entered.
Claim Objections
Claim 6 is objected to because of the following informality: The term “expose” should be replaced with the term -- exposes -- for grammatical clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6, 8, 11, 16 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 6, there is no support in the original disclosure for a single embodiment of the method that includes “ablating each of said plurality of polymeric coatings” in combination with “leaving an entire thickness of said first polymeric coating in place” as set forth in claim 1.
Regarding claim 8, there is no support in the original disclosure for a single embodiment of the method that includes “said first polymeric coating expose a polymeric primer coating” in combination with “leaving an entire thickness of said first polymeric coating in place” as set forth in claim 1.
Regarding claim 11, there is no support in the original disclosure for a single embodiment of the method that includes “applying a physical vapor deposition (PVD) metal between said first polymeric coating and said intermediate clear polymeric coating” in combination with “leaving an entire thickness of said first polymeric coating in place” and “visible” as set forth in claim 1.
Regarding claim 16, there is no support in the original disclosure for a single embodiment of the wheel that includes “a physical vapor deposition (PVD) metal is disposed between a primer and said intermediate clear polymeric coating” in combination with said first polymeric coating being “visible” and “said first polymeric coating thickness being continuous at said face of said wheel” as set forth in claim 12.
Regarding claim 17, there is no support in the original disclosure for a single embodiment of the wheel that includes “a primer coating visible through said pattern” in combination with said first polymeric coating being “visible” and “said first polymeric coating thickness being continuous at said face of said wheel” as set forth in claim 12.
6. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 8 and 12-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6, this claim is indefinite inasmuch as it depends from canceled claim 5. For purposes of this examination, claim 6 is being treated as if it depends from independent claim 1.
Regarding claim 6, the limitation “ablating each of said plurality of polymeric coatings” renders the claim indefinite because it is unclear how an entire thickness of the first polymeric coating can be left in place as required by claim 1 if it has been ablated.
Regarding claim 8, the limitation “a step of ablating said second polymeric coating” renders the claim indefinite because it is unclear whether “a step of ablating said second polymeric coating” refers to “using a laser for scanning a pattern over said polymeric coating thereby ablating said second polymeric coating…” as previously set forth in claim 1 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 12, there is insufficient antecedent basis for “said face of said wheel”.
Regarding claim 17, there is insufficient antecedent basis for “said second clear polymeric coating”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stebbins et al. (US 2019/0308445 A1; hereinafter “Stebbins”).
Regarding claim 12, Stebbins discloses a vehicle wheel 10, comprising: an alloy substrate 32, 132 defining a face at 24, 124; a first polymeric coating 34, 134 defining a first coloration being applied to said face (paragraph [0016]; Figs. 3 and 4) an including a first polymeric coating thickness (a “thickness” of 34, 134 shown in Figs. 3 and 4); an intermediate clear polymeric coating 36, 136 applied over said first polymeric coating (paragraph [0017]; Figs. 3 and 4); a second polymeric coating 40, 140 defining a second coloration applied over said intermediate clear polymeric coating (paragraph [0019]; Figs. 3 and 4); and a pattern (shown in each of Figs. 3 and 4) defined through said second polymeric coating thereby exposing said intermediate clear polymeric coating and rendering said first polymeric coating visible through said intermediate clear polymeric coating for presenting a two-tone appearance between said first coloration and said second coloration being in a shape defined by said pattern with said first polymeric coating thickness being continuous at said face of said wheel (evident from Figs. 3 and 4; note the thickness is considered to be “continuous” inasmuch as it is uninterrupted as shown in Figs. 3 and 4).
Regarding claim 13, Stebbins further discloses said intermediate clear polymeric coating defines a first film thickness (Figs. 3-5) being less than a second film thickness (Figs. 3-5) at said pattern defined by said second polymeric coating (the thickness of 36, 136 is clearly shown to be less than the thickness of 40, 140 in the embodiments of Figs. 3 and 4).
Regarding clam 14, Stebbins further discloses said second polymeric coating is substantially covered by an outer clear polymeric coating 42, 142 (paragraph [0022]; Figs. 3 and 4).
Regarding claim 15, Stebbins further discloses said pattern is defined by removal of said second polymeric coating via milling (paragraph [0023]). Note the specific method (i.e., laser ablation) of removing the second polymeric coating is not afforded full patentable weight in a product claim (See MPEP 2113).
Allowable Subject Matter
Claims 1-4 and 10 are allowed.
Response to Arguments
Applicant's arguments filed 3 September 2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding claim 12 that Stebbings fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “coating layers that remain at a constant thickness”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Instead, claim 12 merely requires the first polymeric coating thickness to be “continuous”. Both Figs. 3 and 4 of Stebbins show embodiments of the wheel in which the thickness of the first polymeric coating 34, 134 is non-constant and continuous (i.e., uninterrupted) at the face. In other words, claim 12 does not require the first polymeric coating thickness to be “constant” as argued by Applicant.
In response to Applicant’s argument that “Stebbins…further fails to disclose a process capable of defining a two-tone pattern”, the Examiner respectfully disagrees as such is clearly shown in at least Figs. 3 and 4 of Stebbins. Moreover, it appears that Applicant disagrees with Applicant’s own argument as Applicant expressly states, on page 8 of Applicant’s response, “Stebbins discloses the use of a lathe to define a two-tone appearance for a vehicle wheel”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615
