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 Interpretation
The terms “larger and “small” of the instant claims are being interpreted in relation to one another, and therefore are not considered indefinite relative terms.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi (JP 2011-189697 A, see attached translation also including original document).
Regarding claims 1-6, Kikuchi teaches a coating structure (e.g., bumper)comprising a substrate that has a base surface at which base surface indentations and projections (e.g., embossed shape) are provided (e.g., molded article), and a coating material layer (e.g., paint) that is formed from a single coating material and that covers the base surface and its indentations and projections (page 1, 6; figs 2, 3, 5-6)
Kikuchi further teaches or would have rendered obvious to one of ordinary skill in the art at the time of invention first indentations and projections wherein a depth and/or spacing of the first indentations and projections being large; second indentations and projections wherein a depth and/or spacing of the second surface indentations and projections being small; and third indentations and projections wherein a depth and/or spacing of the third indentations and projections is smaller than the and/or spacing of the first indentations and projections and larger than the and/or spacing of the second indentations and projections (page 6; figs 2, 3, 5-6).
In addition, Kikuchi teaches the paint may either conform to the indentions and projections provided on the substrate or be thick enough to cover-up the indentations and projections provided on the substrate (i.e., surface indentations and projections not being provided on a surface of the coating material layer) (page 6; figs 5-6).
Therefore, in arriving at the substrate that has a base surface at which base surface indentations and projections are provided, a first area and a second area being provided on the base surface such that the first area is adjacent to the second area, and a depth and/or spacing of the base surface indentations and projections in the first area being large and a depth and/or spacing of the base surface indentations and projections in the second area being small such that the depth of the base surface indentations and projections in the first area is larger than the depth and/or spacing of the base surface indentations and projections in the second area; wherein a third area is provided on the base surface, a depth and/or spacing of the base surface indentations and projections in the third area is smaller than the depth and/or spacing of the base surface indentations and projections in the first area and larger than the depth and/or spacing of the base surface indentations and projections in the second area of the instant claims, one of ordinary skill in the art at the time of invention would have been merely combining prior art elements (e.g., the first, second, and third base surface and areas at with base surface indentations and projections and associated areas as suggested or otherwise rendered obvious by Kikuchi) according to known methods to yield predictable results (e.g., the base surfaces of the instant claims).
In addition in arriving the a single coating material and that covers the base surface, a depth of first indentations and projections corresponding to the base surface indentations and projections at a surface of the coating material layer, which surface corresponds to the first area, being large and a depth of second indentations and projections corresponding to the base surface indentations and projections at a surface of the coating material layer, which surface corresponds to the second area, being small such that the depth of the first indentations and projections is larger than the depth of the second indentations and projections, a depth of third indentations and projections corresponding to the base surface indentations and projections at a surface of the coating material layer, which surface corresponds to the third area, is intermediate between the depth of the first indentations and projections and the depth of the second indentations and projections, and/or the front indentations and projections corresponding to the base surface indentations and projections not being provided on a surface of the coating material layer, which surface corresponds to the second area of the instant claims, one of ordinary skill in the art at the time of invention would have been merely combining prior art elements (e.g., the paint may either conform to the indentions and projections provided on the substrate or be thick enough to cover-up the indentations and projections provided on the substrate as suggested or otherwise rendered obvious by Kikuchi) according to known methods to yield predictable results (e.g., the single coating layer of the instant claims).
In the alternative, It is noted that change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04[R-1].
A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the bumper or coating structure of Kikuchi with the dimensions (i.e., depth and/or spacing of the first, second, and third base surface with base surface indentations and projections and associated areas and the thickness of the coating) based on the prior art's intended application as in the present invention. This would also come with the additional motivation of optimizing based on aesthetic preference.
Regarding claims 7-10, Kikuchi teaches the use of a paint and/or clear coat (page 3); and one of ordinary skill in the art at the time of invention would have known that paints and clear coats typically come in matt, semi-gloss, or gloss finishes; so, it would have been obvious to one of ordinary skill in the art at the time of invention to pick that of a matt paint or coating, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Suwa et al (JP S61136465 A) is concerned with selectively applying paints to embossed bumpers (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783