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 .
Election/Restriction
Applicant's election of Group l: Claims 1-15 in the reply filed on 2/06/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 16- 21 drawn to the non-elected group are withdrawn.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Selby of record (US20090129050A1).
Regarding claim 1, Selby teaches a method of performing zone ablation on a painted polymer substrate of a vehicle panel (ABS) comprising the steps of: providing a polymer substrate (20) having an appearance side and a painted side (paint layer 22); providing a sacrificial material layer on the painted side of the polymer substrate (24 on layer 22); providing at least one base paint layer onto the sacrificial material layer (26); providing a laser for selectively emitting an ablation light (28) onto an ablation zone on the painted side of the polymer substrate, and operating the laser to emit the ablation light onto the ablation zone and remove the at least one paint layer (26) and a portion of the sacrificial material layer (24) to form one or a plurality of micro-apertures (18), wherein the sacrificial material layer protects the polymer substrate (fig.4, P0014-21).
Regarding claim 11, Selby teaches a graphic design is formed in the ablation zone once the step of operating the laser is completed (P0017, ABS).
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 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Selby of record (US20090129050A1) as applied to claim 1.
Regarding claim 4, Selby teaches wherein the at least one base paint layer has a color (claim 15, P0024) but is silent to the wattage value, pulse and wavelength of ablation light. However, these values would be optimized based on the color of the layer and it is well settled that determination of optimum values of cause effective variables such as these process parameters is within the skill of one practicing in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 13, Selby is silent to the sacrificial material layer being at least 9 microns in thickness however this is a cause effective variable that can be optimized for a desired effect. Where 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. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Claims 2, 12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Selby of record (US20090129050A1) as applied to claim 1, further in view of Guillem (US20210387570A1).
Regarding claim 2, Selby teaches a substrate (17, P0016) but is silent to the material of the substrate.
Guillem, in the same field of endeavor, decorative objects, teaches the polymer substrate is polycarbonate (P0016).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen polycarbonate as the material of the substrate for its transparency as taught by Guillem (P0016) and further as the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 12, Guillem teaches providing a layer of hard coat material to the appearance side of the polymer substrate (P0019).
Regarding claims 14-15, Selby is not specific to the base paint layer being between about 12 to about 15 microns in thickness or between about 22 to about 28 microns in thickness teaches the base paint layer is between about 12 to about 15 microns in thickness.
Guillem teaches “in one exemplary implementation, the substrate thickness is approximately 2-3 millimeters, the base coat thickness is approximately 20 microns, and the opaque and metallic-looking layer combined thickness is approximately 40-150 nanometers” (P0021). This is close to the ranges of claims 14 and 15. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985).
Claims 3, 5-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Selby of record (US20090129050A1) and as applied to claim 1, further in view of Vidal (US20210039137A1).
Regarding claim 3, Guillem teaches a white layer 44 on the substrate but is silent to the sacrificial material layer is a transparent paint layer that protects the polymer substrate from damage from the ablation light.
Vidal, in the same field of endeavor, decorative objects, teaches the sacrificial material layer is a transparent paint layer that protects the polymer substrate from damage from the ablation light (P0042, P0044).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a sacrificial material layer that is a transparent paint layer for the purpose of protecting the transparent part from ultraviolet radiation in the regions of the pattern that have been etched as taught by Vidal (P0042).
Regarding claim 5, Selby teaches applying an accent paint layer onto the painted side and ablation zone of the polymer substrate (P0024, colored layers).
Regarding claim 6, Selby teaches applying a primer layer to the painted side and the ablation zone of the polymer substrate prior to the step of operating the laser, wherein the primer layer enhances the adherence of the accent paint layer (fig.6, white layer 44).
Regarding claim 8, Selby teaches the accent paint layer is one of black or opaque (claim 6).
Regarding claim 9, Selby teaches the accent paint layer is a colored paint (P0024).
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Selby of record (US20090129050A1) and Vidal (US20210039137A1) as applied to claim 5, further in view of Guillem (US20210387570A1).
Regarding claim 7, Modified Selby teaches a primer layer (Vidal fig.2, 8) but is silent to its thickness.
Guillem teaches the primer layer 120 (P0020) is approximately 20 microns which is close to the claimed value of less than or equal to 15 microns in thickness.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985)
Regarding claim 10, Modified Selby teaches accent paint layers but is silent to the specific thickness.
Guillem teaches the accent paint layer is between 40-150 nm (P0021). Although Guillem doesn’t teach the layer is about 25 to about 30 microns in thickness, it would be obvious to one skilled in the art that the layer could be any desired thickness to achieve a corresponding decorative effect. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA H FUNK whose telephone number is (571)272-3785. The examiner can normally be reached Monday-Friday 8:00-5:00pm ET.
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, Alison Hindenlang can be reached on (571) 270-7001. 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.
/ERICA HARTSELL FUNK/Examiner, Art Unit 1741