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 .
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 & 5-11 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), Schwalm et al. (US PG Pub 2010/0010113; hereafter ‘113), and Xie et al. (US PG Pub 2015/0077910; hereafter ‘910).
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).
EMPL does not teach details of the laser engraving process or that engracving process includes using a probe to determine a height position of contour material within the pattern range and establishing a model of the painting surface with multi-point data captured by 3D scanning to determine the position of the pattern range to be removed by the laser engraving.
However, ‘910, which is directed towards patterning a surface by laser engraving (abstract) and teaches laser engraving of a pattern can be performed by obtaining 3D data of the surface to be patterned by 3D scanning the surface (i.e. using a probe to determine a height position of the contour material within the pattern range) and then the 3D data is input into a controller of the laser engraving machine, so that the laser engraving machine can be driven to etch the desired pattern (establishing a model of the painting surface with multi-point data captured by 3D scanning to determine the position of the pattern range to be removed by the laser engraving) (see ¶ 47).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘910 into the process because it is an art recognized method of controlling a laser engraving apparatus to obtain a desired laser engraved pattern and would have predictably provided the pattern desired by EMPL.
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: Pendar further teaches that it is known to use either UV-curable coating compositions (pg 30-34).
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.
Response to Arguments
Applicant's arguments filed 7/2/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that EMPL does not teach the newly added limitations; applicant is advised that ‘910 provides the newly added features as recited.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., EMPL does not provide a non-horizontal contour material layer) 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). Applicant is advised that a flat surface is still a contour surface.
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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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, Curtis Mayes can be reached at 571-272-1234. 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.
/James M Mellott/ Primary Examiner, Art Unit 1759
Prosecution Insights