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
Figure 10 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Claim Objections
Claims 1-22 are objected to because of the following informalities:
in claim 1, line 5 delete “wherein paint film” and insert therein - - wherein the paint film - - for form;
in claim 3, line 1 delete “wherein corner patch” and insert therein - - wherein the corner patch - - for form;
in claim 15, line 7 delete “within corner relief pattern” and insert therein - - within the corner relief pattern - - for form;
in claim 15, line 7 delete “wherein at the paint film sheet” and insert therein - - wherein the paint film sheet - - for form; and
in claim 18, line 1 delete “wherein corner patch” and insert therein - - wherein the corner patch - - for form.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 5, 10, 11, 13, and 20-22 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.
Claims 5 and 20 recite the limitation “wherein the first thickness ranges between 100-500 microns, and the second thickness ranges between 50 and 200 microns”. It is unclear how the first thickness may range between 200-500 microns and the second thickness may range between 50 and 100 microns as claims 3 and 18 recite the limitation “wherein the first thickness is less than the second thickness”.
Claims 10 and 21 recite the limitation “an engineering vehicle exterior paint color match standard” without defining the standard so that it is unclear what are the meets and bounds of the limitation as to what difference in color of the corner patch and color of the paint film sheet meet a match within the engineering vehicle exterior paint color match standard.
Claim 13 recites the limitation “the paint film sheet is adhered on the corner of the substrate”. The limitation “on” is unclear and confusing as the paint film sheet is adhered adjacent to the corner of the substrate (e.g. see claims 1, 15, etc. wherein the corner is within a corner relief pattern of the paint film sheet), and the corner patch is adhered on the corner of the substrate (e.g. see claims 1, 12, etc.).
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 1, 7, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over the admitted prior art (see paragraphs 0003-0006 under “BACKGROUND” and Figure 10 and paragraph 0028 of the instant application) in view of Mori et al. (WO 2004/028709) and optionally further Savich (U.S. Patent 4,281,854).
Regarding claim 1, the admitted prior art discloses a general method of applying a paint film on a substate, the method comprising (it being noted comprising is inclusive or open-ended and does not exclude additional, unrecited elements or method steps see MPEP 2111.03): adhering a paint film sheet (600) on the substrate such that a corner (corner tip 604) of the substrate is within a cut corner relief pattern (formed by a simple relief cut 601 of the type typically used to accommodate the corner tip) of the paint film sheet, the cut corner relief pattern corresponding to a recess (i.e. a space set back, a receding space, etc.) along an edge of the cut paint film sheet from an edge including the corner of the substrate (see paragraphs 0003-0006 under “BACKGROUND” and Figure 10 and paragraph 0028 of the instant application).
Regarding claim 15, the admitted prior art discloses a general cosmetic paint film adhered onto an exterior panel of a motor vehicle (and regarding claim 16 the exterior panel is a car hood part or similar automotive body panel of a automobile/car and regarding claim 17 wherein the motor vehicle is an automobile/car, airplane, or boat), the cosmetic paint film comprising: a paint film sheet (600) adhered onto a portion of the exterior panel adjacent to a corner (corner tip 604), the paint film sheet having a cut corner relief pattern (formed by a simple relief cut 601 of the type typically used to accommodate the corner tip) corresponding to a recess along an edge of the cut paint film sheet from an edge including the corner of the substrate, the paint film sheet arranged such that at least a portion of the corner is within the cut corner relief pattern.
As to the limitations in claim 1 of “adhering a corner patch on at least a portion of a corner of the substrate” and “wherein paint film sheet partially overlaps with and bonds with the corner patch, thereby providing a continuous paint film over at least the corner of the substrate” and in claim 15 of “a corner patch adhered onto a corner of an exterior panel of the motor vehicle” and “wherein at the paint film sheet overlaps and is bonded with the corner patch to provide a continuous paint film over at least the corner of the exterior panel” and claims 7 and 13, the admitted prior art does not expressly teach a corner patch. Protective paint film for exterior decoration of a vehicle is known in the art to decorate and protect portions of the surfaces of the vehicle such as at portions having roll-up shapes such as corners and optionally further to provide a two-tone color paint effect as taught by Mori (Page 2, lines 8-20 and Page 3, lines 13-22 and Page 10, lines 11-12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the admitted prior art further comprise adhered to an edge portion including the exposed corner of the exterior panel of the motor vehicle a protective paint film for protection and exterior decoration (i.e. adhering a corner patch of the protective paint film on at least the edge of the substrate and including a portion of the corner tip of the substrate wherein the paint film sheet partially overlaps with and bonds with the corner patch, thereby providing continuous protection of the edge including corner and including a continuous paint film over at least the corner of the substrate wherein, regarding claim 7, the paint film sheet is bonded to the corner patch by bringing the paint film sheet in intimate contact with the corner patch pressed thereto wherein, regarding claim 13 (claim 13 rejected herein in as much as the limitation is currently understood see the 35 U.S.C. 112(b) rejection above), the paint film sheet is adhered on/adjacent the corner of the substrate prior to adhering the corner patch thereover and a corner patch of the protective paint film sheet adhered onto an edge including the corner of the exterior panel of the motor vehicle wherein the paint film sheet overlaps and is bonded with the corner patch to provide continuous protection of the edge including corner and including a continuous paint film over at least the corner of the exterior panel) including to protect and decorate the exposed corner and optionally provide a two-tone color paint effect as taught by Mori.
As to the limitations in claim 1 of “the corner relief pattern corresponding to a recess along an edge of the paint film sheet” and in claim 15 of “a corner relief pattern corresponding to a recess along an edge of the paint film sheet”, as noted above the admitted prior art teaches the cut corner relief pattern corresponding to a recess (i.e. a space set back, a receding space, etc.) along an edge of the cut paint film sheet from an edge including the corner of the substrate. In the event it is somehow considered the admitted prior art does not necessarily teach the limitation as a function of the simple relief cut (601) of the type typically used to accommodate the corner tip is a straight cut the following optional rejection is made. It is well understood by one of ordinary skill in the art of relief cutting a sheet material (38) along an edge to accommodate a corner tip of a substrate (36) the cut is curved (34/48) or straight (34A/48A) or any suitable shape to effect relief as evidenced by Savich (Figures 11A, 12 and 20A and Column 21-38 and Column 5, lines 1-6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the cut corner relief pattern taught by the admitted prior art is a curved cut (i.e. and the cut corner relief pattern corresponding to a recess of a curve along an edge of the paint film sheet) as a simple substitution of one known shape for another to yield predictable results as is well understood by one of ordinary skill in the art as evidenced by Savich.
Regarding claim 14, Mori teaches the corner patch/protective paint film protects portions of the surfaces of the vehicle. Mori further teaches cutting the protective paint film into pieces (i.e. patches) of specific dimensions prepared for bonding (Page 9, lines 30-31). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the protective paint film patch taught by the admitted prior art as modified by Mori and optionally further Savich is cut to measured dimensions sufficient to at least continuously cover from the paint film sheet and over the exposed corner (i.e. forming the corner patch in the paint film based on measured dimensions of the corner of the substrate) as is necessary to protect and decorate the exposed corner and to include any further dimension as desired to decorate and protect any other portions such as to create a larger two-tone color paint effect over the exterior panel, etc. as directed by Mori.
Claims 2-5, 10, 11, and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over the admitted prior art and Mori and optionally further Savich as applied to claims 1, 7, and 13-17 above, and further in view of McGuire, Jr. et al. (U.S. Patent Application Publication 2019/0161646).
The admitted prior art is described above in full detail. The admitted prior teaches exemplary paint film sheet is that taught by McGuire, Jr. (Paragraph 0004).
Regarding claim 2, Mori (Page 2, lines 18-20 and Page 5, lines 4-15 and Page 6, lines 28-29) teaches the corner patch is a paint film wherein the corner patch is made of an adhesive including polyacrylate, rubber, silicone, etc., a clear layer formed of urethane, etc. wherein McGuire, Jr. (Paragraphs 0075 and 0084) similarly teaches the paint film sheet is made of an adhesive including polyacrylate, rubber, silicone, etc., a topcoat layer formed of polyurethane, etc. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the paint film sheet taught by the admitted prior art as modified by Mori and optionally further Savich is the paint film sheet taught by McGuire, Jr. as is the exemplary paint film sheet taught by the admitted prior art and to include wherein the corner patch is made of a same material (e.g. in adhesive, clear/topcoat layer, etc.) as the paint film sheet as the expressly described predictable materials disclosed by each of Mori and McGuire, Jr. include same materials.
Regarding claims 3-5 and 18-20, Mori teaches the thickness of the corner patch is about 236 to about 1,150 micron (Page 4, lines 15-20 and Page 5, lines 16-17 and Page 6, lines 5 and 25-27 and Page 7, lines 6-8) to satisfy requirements for chipping resistance, appearance and decoration performance, handling property, etc. McGuire, Jr. (Paragraphs 0050, 0072, 0077, and 0087) teaches the thickness of the paint film sheet is about 16 to about 2,678 micron depending on desired application (e.g. ballistic), recoverability, cost, etc. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the paint film sheet taught by the admitted prior art as modified by Mori and optionally further Savich is the paint film sheet taught by McGuire, Jr. as is the exemplary paint film sheet taught by the admitted prior art and to include the corner patch has a first thickness and the paint film sheet has a second thickness selected to satisfy requirements for chipping resistance, appearance and decoration performance, handling property, etc. and depending on desired application (e.g. ballistic), recoverability, cost, etc. as directed by Mori and McGuire, Jr. such as to include wherein the first thickness is less than the second thickness and wherein a ratio of the first thickness relative the second thickness ranges between 1:4 and 3:4 and wherein the first thickness ranges between 100-500 microns, and the second thickness ranges between 50 and 200 microns, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05).
Regarding claims 10, 11, 21, and 22, Mori teaches the corner patch has a color wholly or partially having a decoration function (Page 5, lines 6-7). McGuire, Jr. teaches the paint film sheet has a color to provide desired aesthetics (Paragraph 0064). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the paint film sheet taught by the admitted prior art as modified by Mori and optionally further Savich is the paint film sheet taught by McGuire, Jr. as is the exemplary paint film sheet taught by the admitted prior art. It is noted claims 10 and 21 do not expressly require any particular engineering vehicle exterior paint color match standard so that a color of the corner patch taught by the admitted prior art as modified by Mori and McGuire, Jr. and optionally further Savich matches a color of the paint film sheet within an engineering vehicle exterior paint color match standard wherein the engineering vehicle exterior paint color match standard is based on a visual assessment at 3 feet or greater wherein the standard is one that is met by any difference as may be present in the color of the corner patch taught by Mori and the color of the paint film sheet taught by McGuire, Jr. Alternatively, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the color of each of the corner patch and the paint film sheet taught by the admitted prior art as modified by Mori and McGuire, Jr. and optionally further Savich are selected to provide desired aesthetics and decoration function as directed by Mori and McGuire, Jr. to include a color of the corner patch matches a color of the paint film sheet within an engineering vehicle exterior paint color match standard wherein the engineering vehicle exterior paint color match standard is based on a visual assessment at 3 feet or greater wherein matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art (see MPEP 2144.04).
Claims 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over the admitted prior art and Mori and optionally further Savich as applied to claims 1, 7, and 13-17 above, and further in view of Johnson et al. (U.S. Patent 5,518,786).
The admitted prior art as modified by Mori and optionally further Savich above teach all of the limitations in claims 6, 8, and 9 but for adhering the paint film sheet and corner patch using a tool and heat wherein it is well understood by one of ordinary skill in the art adhering a paint film sheet on a substrate includes applying pressure along a surface of the paint film sheet with a squeegee, i.e. a tool having a flat edge, to smooth out trapped bubbles between the paint film sheet and the substrate and including exposing the paint film sheet to heat as film application is most easily made when air, film, and substrate temperature are between 21oC and 32oC as evidenced by Johnson (Column 14, lines 1-41). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the method taught by the admitted prior art as modified by Mori and optionally further Savich comprise adhering the paint film sheet on the substrate includes applying pressure along a surface of the paint film sheet with a squeegee, i.e. a tool having a flat edge, to smooth out trapped bubbles between the paint film sheet and the substrate and including exposing the paint film sheet to heat as film application is most easily made when air, film, and substrate temperature are between 21oC and 32oC as evidenced by Johnson and then repeating the same for the corner patch (a patch of paint film) for the same benefit and including wherein exposing the paint film sheet to heat for easy application of the corner patch and applying pressure with the tool to the corner patch causes the paint film sheet to bond with the corner patch.
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record fails to teach or suggest a method of applying a paint film on a substrate as claimed and including wherein the corner patch is adhered on the corner of the substrate prior to adhering the paint film sheet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM 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, Michael Orlando can be reached at 571-270-5038. 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.
/JOHN L GOFF II/Primary Examiner, Art Unit 1746
Prosecution Insights