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 .
Status of the Claims
Claims 1-9, 15-21, & 24-29 are pending. Claims 10-14, 22, & 23 have been canceled and claims 24-29 are newly added.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9 & 15-21 in the reply filed on 9/15/25 is acknowledged.
Claims 10-14, 22, & 23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/15/25.
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.
Claim 18 is 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.
Claim 18: Claim 18 recites the limitation “ring-like” in line 2 which renders the claim indefinite because it is unclear what the metes and bounds of ring-like are and if it imports a specific structure.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 8, 9, 19, 21, & 24-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cuyler et al. (US PG Pub 2003/0224198; hereafter ‘198).
Claim 1: ‘198 is directed towards a method for application of a spray-on bed-liner to a portion of a vehicle (title, abstract, & ¶ 5), the method comprising:
providing a system of reusable masking aids (¶s 40-43);
securing the reusable masking aids to a vehicle (¶s 40-43);
applying a spray-on bed-liner to a portion of the vehicle (¶s 40-43); and
removing the reusable masking aids from the vehicle (¶s 40-43).
Claim 3: The result is viewed and thus it is apparent that some degree of quality control inspection is performed after removing the masking aid.
Claim 8: ‘198 does not teach that the system of masking aids is specific for a vehicle make and model.
However, given that it is used it is apparent that it is specific for a make and model.
Claim 9: The vehicle is a pick-up truck (¶ 13).
Claim 19: The reusable masking aid is secured to the vehicle by applying a fender side protector to a top rail of a pickup box and covering an exterior side surface of the pickup box with the fender side protector (the masking aid covers the top of rail of the pickup box wherein half of the aid covers the interior side of the top rail and the other half covers the exterior side of the top rail which can be term the fender side).
Claim 21: As discussed above, the masking aids of ‘198 are disclosed as reusable (title) and thus it is apparent that ‘198 implicitly discloses reusing the masking aids on a second and additional subsequent vehicles while repeating the process.
Claim 24: The masking aid is clip coupled (¶ 15).
Claims 25-26: ‘198 is directed towards a method for application of a spray-on bed-liner to a portion of a vehicle (title, abstract, & ¶ 5), the method comprising:
covering a first top rail of a first pickup box with a reusable fender side protector (the masking aid covers the top of rail of the pickup box wherein half of the aid covers the interior side of the top rail and the other half covers the exterior side of the top rail which can be termed the fender side, ¶s 40-43);
applying a spray-on bed-liner to a portion of the vehicle (¶s 40-43);
preventing application of the spray-on bed-liner to the top rail with the reusable fender side protector (¶s 40-43);
removing the reusable masking aids from the vehicle and exposing the top rail of the first pickup box (¶s 40-43); and
covering a second top rail of a second pickup box with the reusable fender side protector (the masking aids of ‘198 are disclosed as reusable (title) and thus it is apparent that ‘198 implicitly discloses reusing the masking aids on a second and additional subsequent vehicles while repeating the process).
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laser Knowledge (Laser Knowledge, DP LASER, What is the Benefits of Laser Cleaning in Automotive Industry, https://dplaser.com/the-benefits-of-laser-cleaning-in-automotive-industry/, 6/9/2023; hereafter Laser Knowledge).
Claim 15: Laser Knowledge discloses a method of preparing a vehicle for application of a coating (title & pg 5) comprising:
laser etching the portion to which a coating is to be applied (pg 5).
Applicant is advised that “for application of a bed-liner” is intended use and term “bed-liner” is not defined as anything other than a coating. Therefore, the disclosure of a further coating reads on the limitation.
Application is advised that the claim does not actively require applying a bed-liner coating.
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 2 & 4 are rejected under 35 U.S.C. 103 as being unpatentable over ‘198 in view of Laser Knowledge.
Claims 2 & 4: ‘198 does not teach laser etching the surface prior to applying the bed-liner coating.
Laser Knowledge, which is directed towards laser cleaning/etching in the automotive coating industry (title, pgs 4-5 & 11-12) teaches that laser etching is a highly precise, environmentally friendly, improves efficiency, eliminates risk of damage, and reduces cost (pgs 2-3) which can used to prepare a surface for coating (pgs 4-5).
It would have been obvious to one of ordinary skill in the art at the time of filing to use the laser etching process of Laser Knowledge to laser etch the surface prior to securing the masking aids and applying the bed-liner during the process of ‘198 because it is an art recognized manufacturing process in the industry used prior to coatings of automotive bodies (including the entire vehicle) and would have predictably prepared a surface for applying the bedliner with the additional benefit of being highly precise, environmentally friendly, improves efficiency, eliminates risk of damage, and reduces cost.
Claims 5-7, 18, 20, & 27 are rejected under 35 U.S.C. 103 as being unpatentable over ‘198.
Claim 5: ‘198 does not explicitly teach a system of reusable masking aids comprising a fender side protector, a sidewall masking aid, a tailgate bridge, and a pillar.
However, ‘198 does teach the masking aids can take any number of shapes or designs as necessary for masking the desired complex areas (see ¶ 36) which is adapted to fit over a region to be masked (¶ 61).
It would have been obvious to one of ordinary skill in the art at the time of filing to change the shape and size of the masking aids of ‘198 such that they mask the fender, sidewall, tailgate bridge and pillar of the truck bed because it is prima facie obvious to change the shape and size given that ‘198 teaches the masking aids can take the shape and design necessary to cover the desired areas.
Claim 6: The masking aids comprises a Teflon coating (¶ 35).
Claim 7: ‘198 does not teach the process is partially or fully automated.
However, it is prima facie obvious to automate a non-automated process. See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (The court held that broadly providing an automatic or mechanical means (Note: with no specific) to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art).
Claim 18: ‘198 teaches that the masking aids can be ring shaped (see Fig. 14C).
Claims 20 & 27: As discussed above, ‘198 teaches any shape and size of mask and positioning them to cover the desired areas.
Allowable Subject Matter
Claims 16-17 & 28-29 are 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.
There is no teaching or suggestion in the prior art of masking the cab as claimed when performing the process of ‘198.
Conclusion
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.
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/James M Mellott/ Primary Examiner, Art Unit 1759