DETAILED ACTION
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.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Acker et al., US 2010/0047584 A1, in view of Ruther et al., US 2005/0129871 A1.
Regarding claims 16 and 20, Acker teaches a painted metallic vehicle body comprising, in order, a phosphate pretreatment layer on the metal body (corresponding to the claimed “adhesive layer”), an electro-deposited anti-corrosion layer (corresponding to the claimed “corrosion protection layer”), a primer to prevent breakdown of the electro-deposited layer under UV light (corresponding to the claimed “ultraviolet protection primer”), a colored layer (corresponding to the claimed “first color” layer), and a protective clearcoat.
The teachings of Acker differ from the present invention in that Acker does not teach a second paint of a second color that is configured to be cured by UV light and is applied directly on the protective clearcoat via a non-atomizing applicator. Ruther, however, teaches a process for applying a second paint to a vehicle that already features a complete multicoat paint scheme, for the purpose of changing a color on the vehicle ([0017]) and teaches that the multicoat paint scheme to be painted over may feature an outermost clearcoat ([0020]). Ruther teaches that the applied second paint layer may be UV curable ([0036]).
Note that although Ruther does not teach application of the second paint with a non-atomizing application technique, the limitations in claim 16 related to the manner in which the paint is applied are product-by-process limitations that cannot distinguish the claimed invention, as there is no apparent reason why the application method would result in a material difference in the resulting painted product (MPEP 2113). Additionally, matters that relate only to ornamentation and have no mechanical function cannot distinguish a claimed invention from the prior art; see MPEP 2144.04 I. As the limitations in claim 16 related to the specific number of colors and their placement on the vehicle appear to be an aesthetic matter, such limitations cannot distinguish the claimed invention from that of Ruther.
Regarding claim 17, although Ruther does not specifically teach that such a painted vehicle may be painted on the vehicle roof, it would have been obvious to one of ordinary skill in the art that virtually any part of a vehicle could be painted with the paint of Ruther, including the roof. Additionally, as discussed above, matters that relate only to ornamentation and have no mechanical function cannot distinguish a claimed invention from the prior art (MPEP 2144.04 I). As the limitations in claim 17 related to the specific number of colors and their placement on the vehicle appear to be an aesthetic matter, such limitations cannot distinguish the claimed invention from that of Ruther.
Regarding claim 18, Ruther does not teach that such a painted vehicle may include three colors or that a third color may be applied to a first and second color. As discussed above, however, matters that relate only to ornamentation and have no mechanical function cannot distinguish a claimed invention from the prior art (MPEP 2144.04 I). As the limitations in claim 18 related to the specific number of colors and their placement on the vehicle appear to be an aesthetic matter, such limitations cannot distinguish the claimed invention from that of Ruther.
Regarding claim 19, Ruther does not teach that the entirety of a vehicle exterior may be covered with a first color while a second color covers less than the entirety of the vehicle. As discussed above, however, matters that relate only to ornamentation and have no mechanical function cannot distinguish a claimed invention from the prior art (MPEP 2144.04 I). As the limitations in claim 19 related to the specific number of colors and their placement on the vehicle appear to be an aesthetic matter, such limitations cannot distinguish the claimed invention from that of Ruther.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Acker et al., US 2010/0047584 A1 and Ruther et al., US 2005/0129871 A1, as applied above, and further in view of Ho et al., US 2007/0106003 A1.
Regarding claims 16-20, Acker and Ruther teach vehicle paint schemes as discussed above. As discussed above, the teachings of Ruther differ from the present invention in that Ruther does not teach non-atomizing application of the second paint. Ho, however, teaches various non-atomizing application techniques for applying paint to vehicle bodies, including dip coating and spread coating ([0022]). It would have been obvious to one of ordinary skill in the art to use a non-atomizing technique such as dip coating or spread coating to apply the paint of Ruther, as Ho explicitly teaches such techniques to be appropriate for applying paint to a vehicle body.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Acker et al., US 2010/0047584 A1, in view of Max Price, “The Lost Art of Hand-Painted Race Car Lettering,” 2016, as retrieved from https://www.roadandtrack.com/car-culture/a29652/the-lost-art-of-hand-painted-racing-livery and further in view of Ho et al., US 2007/0106003 A1.
Regarding claims 16 and 20, Acker teaches a painted metallic vehicle body comprising, in order, a phosphate pretreatment layer on the metal body (corresponding to the claimed “adhesive layer”), an electro-deposited anti-corrosion layer (corresponding to the claimed “corrosion protection layer”), a primer to prevent breakdown of the electro-deposited layer under UV light (corresponding to the claimed “ultraviolet protection primer”), a colored layer (corresponding to the claimed “first color” layer), and a protective clearcoat.
The teachings of Acker differ from the present invention in that Acker does not teach a second paint of a second color that is configured to be cured by UV light and is applied directly on the protective clearcoat via a non-atomizing applicator. Prince, however, teaches the use of a brush to apply a second color paint onto the surface of an already-painted car, so as to decorate the car or apply a logo or slogan. It would have been obvious to one of ordinary skill in the art to use a brush to apply a second color paint to the painted vehicle of Acker, because doing so would allow one to decorate the vehicle or apply a logo or slogan.
The teachings of Acker also differ from the present invention in that although Acker teaches paint, Acker does not specifically teach that the paint is UV-curable. Ho, however, teaches a UV-curable paint for use on a vehicle (Abstract, [0004]). It would have been obvious to one of ordinary skill in the art to use a UV-curable paint, as Ho explicitly teaches UV-curable paints to be appropriate for use when painting vehicles.
Regarding claims 17-19, as discussed above, the claims are drawn to aesthetic features that cannot distinguish the claimed invention from that of the prior art because matters that relate only to ornamentation and have no mechanical function cannot distinguish a claimed invention from the prior art (MPEP 2144.04 I).
Response to Arguments
Applicant’s arguments have been considered but are moot because they do not apply to the new grounds of rejection.
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 Ian A Rummel whose telephone number is (571)270-5692. The examiner can normally be reached Monday - Thursday and alternating Fridays, 8:30-5:00.
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, Mark Ruthkosky can be reached at (571) 272-1291. 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.
/IAN A RUMMEL/ Primary Examiner, Art Unit 1785
Prosecution Insights