DETAILED ACTION
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/6/26 has been entered.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-3 & 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Engraving Multiple Paint Layers (Sawmillcreek.org, Engraving Multiple Paint Layers, found at https://sawmillcreek.org/threads/engraving-multiple-paint-layers.217660/; 5/13/2014; hereafter EMPL) in view of Pendar (Pendar et al., Review of coating and curing processes: Evaluation in automotive industry, Physics of Fluids, 10/17/2022; hereafter Pendar) and Schwalm et al. (US PG Pub 2010/0010113; hereafter ‘113).
Claims 1 & 5: EMPL discloses a painting method, adapted to a substrate, wherein the substrate comprises a painting surface (see Posts #1 & #5, pages 1-2), the painting method comprises:
forming a primer layer on the painting surface (see Post #5, pg 2);
forming a contour material layer on the primer layer (see Post #5, pg 2); and
defining a pattern range on the contour material layer, and removing the contour material layer within the pattern range in a high temperature processing manner to form a contour layer with a 3D texture (see post #5, pg 2).
The substrate is a cake pan (i.e. a housing; see Posts #5 & #8)
EMPL discloses using a spray paint for the contour layer and an automotive primer for the primer layer but does not provide any specific details of specific paints to use.
Pendar is directed towards automotive painting (title) including primer and color coats applied by spray (abstract) and teaches that it is known to use either UV-curable or IR-curable coating compositions (pg 34).
It would have been obvious to one of ordinary skill in the art at the time of filing to use automotive spray paint for the color coatings of EMPL during the process because automotive spray color paint is an art recognized species of spray paint which would have predictably produced the desired color layer for etching and would have predictably been compatible to the automotive primer taught by EMPL.
The combination of EMPL & Pendar does provide a specific composition for the primer or color coat.
However, ‘113, which is directed towards curable compounds (title) suitable for use as automotive primers and color coats (claim 15), discloses that the base composition can be a water-based polyurethane (¶s 11 & 12) comprising at least one oligomer polyols (¶s 15 & 76-80), polyurea (¶s 33-39), modified acrylic (¶ 68), polytetrahydrofuran ether alcohol (¶s 76-80 & 311), cross-linked monomer material (¶ 285), and cross-linked modified material (the composition is crosslinked) wherein the oligomer polyols can be secondary hydroxyls such as poly-1,2-propanediol (¶ 78).
It would have been obvious to one of ordinary skill in the art at the time of filing to use the same base composition for the primer and color coat during the process of EMPL because the composition of ‘113 is recognized in the art as suitable for a base film composition for preparing primers and color coats and thus would have predictably produced the desired results.
The combination does not teach that the maximum component of a constituent material of the contour material layer is water-based polyurethane and a maximum component of a constituent material of the primer material layer is oligomer polyol.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentrations of the individual components to obtain the desired coating because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 2: The primer material is made of a first material, the contour material layer is made of a second material, and heat resistance of the first material is superior to that of the second material (see Post #5, pg 2).
Claim 3: No chemical reaction happens at an interface between the first and second material at a room temperature.
The disclosure teaches the claimed invention but fails to explicitly teach no chemical reaction happens at an interface between the first and second material at a room temperature. Since the same process with the same results is observed; it is reasonable to presume no chemical reaction happens at an interface between the first and second material at a room temperature. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 5: ‘113 teaches that the composition can comprise at least one oligomer polyols (¶s 15 & 76-80), polyurea (¶s 33-39), modified acrylic (¶ 68), polytetrahydrofuran ether alcohol (¶s 76-80 & 311), cross-linked monomer material (¶ 285), and cross-linked modified material (the composition is crosslinked) wherein the oligomer polyols can be secondary hydroxyls such as poly-1,2-propanediol (¶ 78).
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentrations of the individual components to obtain the desired coating because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 6: ‘113 teaches that the composition can comprise oligomer polyols (¶ 68), water-based polyurethane (¶s 12), typical additives such as silicates (silicates are defoamers and are inorganic so they meet the term mineral defoamer; ¶s 217, 276, &281), chain extenders (¶ 247), and cross-linked modified material (the composition is crosslinked).
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentrations of the individual components to obtain the desired coating because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 7: The step of removing the contour material layer within the pattern range in a high temperature processing manner is removing the contour material layer within the pattern range by using laser light (Post #5, pg 2).
Claims 8 & 9: EMPL does not teach a specific thickness for the layers.
However, thickness of a paint layer is a result effective variable based on the desired aesthetic, durability, resistance to the laser, and other desired properties.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the thickness of the primer and contour layers to obtain the desired aesthetics, durability, and resistance to the laser process because it is prima facie obvious to optimize result effective variables.
Claim 10: EMPL discloses using a spray paint for the contour layer and an automotive primer for the primer layer but does not provide any specific details of specific paints to use.
Pendar is directed towards automotive painting (title) including primer and color coats applied by spray (abstract) and teaches that it is known to use either UV-curable or IR-curable coating compositions (pg 34).
It would have been obvious to one of ordinary skill in the art at the time of filing to use automotive spray paint for the color coatings of EMPL during the process because automotive spray color paint is an art recognized species of spray paint which would have predictably produced the desired color layer for etching and would have predictably been compatible to the automotive primer taught by EMPL.
It would have been obvious to one of ordinary skill in the art at the time of filing to use a UV curable primer and UV color spray paint with UV curing because UV curing primer and paint are art recognized species of automotive paint which would have predictably provided the desired results and UV curing it is an art recognized means of curing automotive paint and would have predictably provided the desired layers.
Claim 11: The combination does not teach a specific orientation of the coated layers relative to the curing means.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to expose the coatings to the UV curing light form a front side of the painting surface because there are a limited number of choices from which direction to treat the surface and it is prima facie obvious to choose from a limited number of choices and it is recognized in the art that UV light has to contact the surface to cause curing.
Claim 12: EMPL discloses using a spray paint for the contour layer and an automotive primer for the primer layer but does not provide any specific details of specific paints to use.
Pendar is directed towards automotive painting (title) including primer and color coats applied by spray (abstract) and teaches that it is known to use either UV-curable or IR-curable coating compositions (pg 34).
It would have been obvious to one of ordinary skill in the art at the time of filing to use automotive spray paint for the color coatings of EMPL during the process because automotive spray color paint is an art recognized species of spray paint which would have predictably produced the desired color layer for etching and would have predictably been compatible to the automotive primer taught by EMPL.
It would have been obvious to one of ordinary skill in the art at the time of filing to use an IR curable primer and IR color spray paint with IR curing (baking) because IR curing primer and paint are art recognized species of automotive paint which would have predictably provided the desired results and IR curing it is an art recognized means of curing automotive paint and would have predictably provided the desired layers.
Claim 13: The combination does not teach a specific orientation of the coated layers relative to the curing means.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to expose the coatings to the IR curing means from a rear side of the painting surface because there are a limited number of choices from which direction to treat the surface and it is prima facie obvious to choose from a limited number of choices.
Response to Amendment
The Declarations by Po-Wen Huang, Guo-Lin Yang, Yu-Chun Yang, Er-Bao Niu, and Tao Chen under 37 CFR 1.132 filed 2/6/26 are insufficient to overcome the rejection of claim 1 based upon EMPL in view of Pendar & ‘113 as set forth in the last Office action because: The declarations solely state that when performed within the scope of the claims, the process produces a passing result and do not provide any data/analysis comparing inside and outside the claimed “maximum component of a constituent material of the contour material layer is water-based polyurethane and a maximum component of a constituent material of the primer material layer is oligomer polyol” and therefore a determination of unexpected results cannot be made.
Response to Arguments
Applicant's arguments filed 2/6/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that “it would not be easy for people of ordinary skilled in the art to be motivated to differentiate the compositions of the contour material layer and the primer material layer, and further access the claimed feature…”; the Office does not find this argument convincing because the combination teaches the same constituent materials as discussed above and it is well-recognized that concentrations are prima facie obvious to optimize unless there is evidence of unexpected results. Given that applicant has not provided any evidence of unexpected results based on the claimed concentrations it is obvious to one of ordinary skill in the art to optimize said concentrations and regarding the argument that it would not be “easy”; the test for obviousness is not if it is “easy” but instead if it would have been obvious based on the prior art and those of skill in the art which has been presented above.
In regards to applicant’s argument that the Declarations under 37 CFR 1.132 with the attached evidence demonstrate unexpected results for the claimed “maximum component of a constituent material of the contour material layer is water-based polyurethane and a maximum component of a constituent material of the primer material layer is oligomer polyol”; the Office does not find this argument convincing as discussed above because there are no comparative results to demonstrate that the concentrations provide unexpected results.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759