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 “second intermediate clear polymeric coating” (claim 5), the “plurality of intermediate clear polymeric coating” (claim 5), and the “plurality of polymeric coatings” (claim 5) in combination with “an outer clear polymeric coating over said second polymeric coating after scanning the pattern over said second polymeric coating” as required by claim 2.
The “second pattern with said laser for ablating each of said plurality of polymeric coatings” (claim 6) in combination with “a first polymeric coating” and “a second polymeric coating” as required by claim 1.
The “exposing said PVD metal by ablating a pattern through said second polymeric coating or ablating a pattern through said PVD metal thereby exposing said first polymeric coating disposed beneath said PVD metal visible” (claim 11).
The “physical vapor deposition (PVD) metal is disposed between said first polymeric coating and said intermediate clear polymeric coating and said PVD metal is visible at through said pattern by said second polymeric coating” (claim 16) in combination with “said first polymeric coating visible through said intermediate clear polymeric coating” as required by claim 12.
The “physical vapor deposition (PVD) metal is disposed beneath an outer clear polymeric coating and defines a pattern rendering said first polymeric coating visible through said pattern” (claim 17) in combination with the features (e.g., a second polymeric coating and a first polymeric coating applied to an alloy substrate surface and being visible) of 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
Claims 1, 2 and 5 are objected to because of the following informalities:
Regarding claim 1, each occurrence of the newly added term “intermediate polymeric clear coating” should be replaced with -- intermediate clear polymeric coating -- for clarity.
Regarding claim 2, the phrase “a step of apply” should be replaced with -- a step of applying -- for grammatical clarity.
Regarding claim 5, the phrase “a plurality of intermediate clear polymeric coating” should be replaced with – a plurality of intermediate clear polymeric coatings” 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 5, 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 5, there is no support in the original disclosure for “said step of applying a second intermediate clear polymeric coating over said second polymeric coating is defined by applying a plurality of intermediate clear polymeric coating respectively over a plurality of polymeric coatings each defining a coloration” in combination with the previously claimed “outer clear polymeric coating” (claim 2), “first polymeric coating” (claim 1), “intermediate clear polymeric coating” (claim 1) and “second polymeric coating” (claim 1).
Regarding claim 8, there is no support in the original disclosure for “exposing a polymeric primer coating via the pattern” in combination with the features (e.g., “applying a first polymeric coating to a surface of said alloy substrate”) of claim 1.
Regarding claim 11, there is no support in the original disclosure for “exposing said PVD metal by ablating a pattern through said second polymeric coating or ablating a pattern through said PVD metal thereby exposing said first polymeric coating disposed beneath said PVD metal visible” in combination with the features (e.g., a first polymeric coating and a second polymeric coating with the first polymeric coating being visible) of claim 1.
Regarding claim 16, the specification fails to describe a single embodiment of the vehicle wheel in which “a physical vapor deposition (PVD) metal is disposed between said first polymeric coating and said intermediate clear polymeric coating” in combination with the features (e.g., a first polymeric coating and a second polymeric coating with the first polymeric coating being visible) of claim 12. Nor is such an embodiment shown as noted above.
Regarding claim 17, the specification fails to describe a single embodiment of the vehicle wheel in which “a physical vapor deposition (PVD) metal is disposed beneath an outer clear polymeric coating” in combination with the features (e.g., a first polymeric coating and a second polymeric coating with the first polymeric coating being visible) of claim 12.
5. 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 4-6, 8 and 11 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 4, the limitation “a portion of said intermediate clear polymeric coating” renders the claim indefinite because it is unclear whether “a portion of said intermediate clear polymeric coating” refers to “a portion of said intermediate clear polymeric coating” previously set forth in claim 1 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 5, there is insufficient antecedent basis for “said step of applying a second intermediate clear polymeric coating”.
Regarding claim 5, the limitation “a second intermediate clear polymeric coating” renders the claim indefinite because it is unclear whether “a second intermediate clear polymeric coating” refers to “an outer clear polymeric coating” previously set forth in claim 2 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 5, the limitation “a plurality of intermediate clear polymeric coating” renders the claim indefinite because it is unclear whether “a plurality of intermediate clear polymeric coating” includes the previously set forth “intermediate clear polymeric coating” (claim 1) and “outer clear polymeric coating” (claim 2), or if it is distinct therefrom as implied by the claim construction.
Regarding claim 5, the limitation “a plurality of polymeric coatings” renders the claim indefinite because it is unclear whether “a plurality of polymeric coatings” includes the previously set forth “first polymeric coating” (claim 1) and “second polymeric coating” (claim 2), or if it is distinct therefrom as implied by the claim construction.
Regarding claim 6, there is insufficient antecedent basis for “the second pattern”.
Regarding claim 6, the limitation “a pattern” renders the claim indefinite because it is unclear whether “a pattern” refers to “a pattern” previously set forth in claim 1 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 8, there is insufficient antecedent basis for “said steps of ablating…said first polymeric coating”.
Regarding claim 11, the limitation “a pattern” renders the claim indefinite because it is unclear whether “a pattern” refers to “a pattern” previously set forth in claim 1 or if it is distinct therefrom as implied by the claim construction.
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, 18 and 19 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, 232 defining a surface 24, 124, 224; a first polymeric coating 34, 134, 234 defining a first coloration applied to said surface (paragraph [0016]; Figs. 3-5); an intermediate clear polymeric coating 36, 136, 236 applied over said first polymeric coating (paragraph [0017]; Figs. 3-5); a second polymeric coating 40, 140, 240 defining a second coloration applied over said intermediate clear polymeric coating (paragraph [0019]; Figs. 3-5); and a pattern (shown in each of Figs. 3-5) defined through said second polymeric coating and through a portion of said intermediate clear 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 (evident from Figs. 3-5).
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, 236 is clearly shown to be less than the thickness of 40, 140, 240 in the embodiments of Figs. 3-5).
Regarding clam 14, Stebbins further discloses said second polymeric coating is substantially covered by an outer clear polymeric coating 42, 142, 242 (paragraph [0022]; Figs. 3-5).
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).
Regarding claim 18, Stebbins further discloses said pattern is defined by both said second polymeric coating and said first polymeric coating thereby rendering said surface of said wheel visible at said pattern (evident from the embodiment shown in Fig. 4)
Regarding claim 19, Stebbins further discloses said surface of said wheel rendered visible at said pattern is formed via casting (paragraph [0014]). Note the specific method (i.e., milled) for forming the surface of the wheel is not afforded full patentable weight in a product claim (See MPEP 2113).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Stebbins in view of Umit (WO 2014/017995 A3).
Regarding claim 1, Stebbins discloses a method of manufacturing a vehicle wheel 10, comprising the steps of: providing a vehicle wheel 10 including an alloy substrate 32, 132, 232; applying a first polymeric coating 34, 134, 234 to a surface 24, 124, 224 of said alloy substrate with said first polymeric coating defining a first coloration (paragraph [0016]; Figs. 3-5); applying an intermediate clear polymeric coating 36, 136, 236 over said first polymeric coating (paragraph [0017]; Figs. 3-5); and applying a second polymeric coating 40, 140, 240 over said intermediate clear polymeric coating with said second polymeric coating defining a second coloration being distinguishable from said first coloration (paragraph [0019]; Figs. 3-5).
Although Stebbins further discloses forming a pattern over said second polymeric coating by removing portions of said second polymeric coating in a shape of the pattern and removing a portion of said intermediate clear polymeric coating leaving a portion of said intermediate clear polymeric coating still covering said first polymeric coating thereby rendering said first polymeric coating visible through said intermediate clear polymeric coating for defining a pattern of exposed first polymeric coating (evident from Figs. 3-5), Stebbins fails to disclose the use of a laser for scanning the pattern and removal of the second polymeric coating and intermediate clear polymeric coating via ablating. Instead, Stebbins employs milling for removing portions of the second polymeric coating and the intermediate clear polymeric coating (paragraph [0024]).
Umit, however, teaches the use of a laser 4 for scanning a pattern over the outer colored layer 3 thereby ablating and removing portions of the outer colored layer 3 to expose an inner colored layer 2 on a vehicle wheel 1 (Abstract; Fig. 4).
From this teaching, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of manufacturing the vehicle wheel of Stebbins to have utilized a laser for ablating and removing portions of the second polymeric coating and intermediate clear polymeric coating instead of milling as a well-known alternative method that would have a reasonable expectation of success in removing desired portions of the second polymeric coating and the intermediate clear polymeric coating to create desired aesthetics.
Regarding claim 2, Stebbins further discloses a step of apply an outer clear polymeric coating 42, 142, 242 over said second polymeric coating after forming the pattern over said second polymeric coating by removing portions thereof via milling.
Regarding claim 3, Stebbins further discloses a step of cleaning the vehicle wheel after portions of the second polymeric coating is removed via milling (paragraph [0022]).
Regarding claim 4, Stebbins further discloses said step of forming the pattern by removing portions of the second polymeric coating is further defined by removing a portion of said intermediate clear polymeric coating thereby reducing a film thickness of said intermediate clear polymeric coating (evident from Figs. 3-5).
Regarding claim 10, Stebbins further implicitly discloses the step of reducing the film thickness of said intermediate clear polymeric coating is further defined by controlling an amount of film thickness being removed by milling (evident from Figs. 3-5). Further, it is evident from Fig. 4 of Umit that the step of reducing the film thickness at 3 is implicitly defined by controlling an amount of film thickness being ablated by one of laser speed and laser power.
Response to Arguments
Applicant's arguments filed 8 January 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument regarding claim 12 that Stebbins fails to disclose a pattern defined through the second polymeric coating and through a portion of the intermediate clear polymeric coating thereby exposing the intermediate clear coating, the Examiner respectfully disagrees. As noted above, Figs. 3-5 of Stebbins clearly shows a pattern defined through the second polymeric coating 40, 140, 240 and through a portion of the intermediate clear polymeric coating 36, 136, 236 thereby exposing the intermediate clear coating.
In response to Applicant’s assertion that “A lathe only function as a two-dimensional machining operation to machine a planar surface of paint from a wheel face”, the Examiner respectfully disagrees as evidenced by Figs. 3-5 of Stebbins which clearly shows the removal of portions of the various coatings results in the remaining coatings having non-planar surfaces. Further, one of ordinary skill in the art would readily understand that the portions removed by a lathe would have three dimensions (i.e., length, width and depth). Nonetheless, the Examiner invites Applicant to provide evidence that lathes can only function as a two-dimensional machining operation to machine a planar surface of paint from a wheel face for the Examiner’s consideration.
Applicant's arguments that “the pattern…shown in Figure 11 and recited in claim 12 of the present application is patentably distinct from the disclosure in Stebbins” fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
In response to applicant's arguments against the Umit 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
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 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