DETAILED ACTION
In the amendment filed on July 8, 2026, claims 1 – 15 are pending. Claims 1, 2, 15 have been amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Analysis
Repeating from the previous Office Action, during patent examination the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Critical to the present application is the broadest reasonable interpretation of term “liquid ceramic”. The term is not a standard term of art, and under its plain meaning is very broad. While it might be reasonable to limit the term to a “ceramic” that is liquid, ceramics by and large are solid in and of themselves, unless within liquid medium as a dispersion, suspension or solution. After review of the prior art, the Examiner notes that there are products in public sale that either self-describe as liquid ceramic or trademark the term liquid ceramic. The term refers to specific coating products that are mixtures of a resin and ceramic particles. In view of these findings, the Examiner interprets the term “liquid ceramic” to refer to any suspension, resin, dispersion or solution that contains any compound or particle that may be described as ceramic. See e.g. LiquaTile 1143 Resin (SDS) and Brochure (2019), retrieved from wolveriecoatings.com; and “Liquid Ceramic – Faq” (archived 2023) at www.liquidceramic.com, herein of record.
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 103
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 – 15 remain rejected under 35 U.S.C. 103 as being unpatentable over Schneider et al. US 2004/0101628 A1 (hereafter “Schneider”) in view of “Do You Have to Scuff the Base Coat Before Painting the Clear Coat” (2015). Autointhebox.com, accessed November 27, 2023 (hereafter “Auto”), Nesbitt US 7838082 B2 (hereinafter “Nesbitt”) and Flosbach et al. US 6958171 B2 (hereafter “Flosbach”).
Regarding claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15:
Schneider discloses a method comprising (Fig. 1):
providing an automobile’s exterior surface for refinish [substrate] ([0043]);
sanding [cleaning] the exterior surface ([0044] – [0045]);
applying a layer of color basecoat [wet pigment] and then subsequently drying and curing [allowing drying, baking] ([0056] – [0057], [0062]); and applying clearcoat onto the cured basecoat followed by curing by heating or in ambient [second bake or final air dry] ([0068] – [0073]).
Schneider does not expressly teach:
abrading after the first bake to create an abraded substrate;
applying a first liquid ceramic to the abraded substrate after abrading the substrate;
applying a textured substance to the abraded substrate after applying the first liquid ceramic to the abraded substrate;
waiting for the first liquid ceramic to air cure in atmosphere to create a coated substrate;
subjecting the coated substrate to a second bake to further cure the first liquid ceramic; and
applying a second liquid ceramic that is different from the first liquid ceramic.
With regards to the abrading after first bake to create an abraded substrate;
Auto is directed to the general knowledge of one of ordinary skill in the art of painting. Auto discloses that prior to applying the clear coat, any applied base coat should be sanded [scoured with pad] to make the overall surfaces smoother (page 2 “Clear Coat”). Clear coat must go on smooth surfaces, not rough surfaces. In considering smooth surfaces, the one of ordinary skill in the art would have inferred from the disclosure of Auto that the same would be the case for interfaces of base coatings.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Schneider by including a step of abrading the basecoat because Auto teaches that such steps help smooth the paint prior to application of the top clear coat.
With regards to applying a first liquid ceramic to the abraded substrate after abrading the substrate; applying a textured substance to the abraded substrate after applying the first liquid ceramic to the abraded substrate; waiting for the first liquid ceramic to air cure in atmosphere to create a coated substrate; subjecting the coated substrate to a second bake to further cure the first liquid ceramic; and applying a second liquid ceramic that is different from the first liquid ceramic.
Nesbitt is directed to coatings on parts and products used in industry (col 1 lines 25 – 35). Nesbitt discloses a method comprising:
applying a first wet bonding material layer (col 5 line 60 – 31);
applying a single layer of uniform dry particles such as engineering plastic or metal particles [glitter] or dry ceramic particles [grit] (col 6 lines 10 – 31);
curing the wet bonding material combined with the dry particles by heating the layers to a suitable temperature for a given desired drying time [rendering obvious claim 6 and subsequent claims involving time and temperature of drying, absent a showing of criticality ](col 8 lines 59 – 68, col 19 line 55 – 65); and placing a clear coat or new wet bonding material layer on top of the cured layers, wherein the material layers are different followed by drying ambiently or by heat [meeting claims 11, 12]. (col 20 lines 1 – 15, col 24 lines 59 – 20, lines 20 – 25, 49 – 65).
Nesbitt discloses that such embedding provides coatings with reinforcements for enhanced durability or new properties (col 5 lines 5 –31, col 13 lines 1 –30).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have combined/modified the method of Schneider in view of Auto by incorporating the recited steps of Nesbitt because Nesbitt teaches that the practice of their method enhances coatings.
With regards to the wet bonding materials being liquid ceramics:
Flosbach, directed to processes for repairing coated substrate surfaces, discloses that coating compositions used for coating vehicles from basecoats to clearcoats often contain transparent pigments, extenders and other coating additives to modify painting characteristics (col 5 lines 10 – 45). These extenders and additives include e.g. silicon dioxide, aluminum silicate and dispersed silica [ceramics].
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the various material layers of Schneider in view of Auto and Nesbitt to include such additives and extenders because such additives affect the ease of handling (e.g. rheology) and characteristics of the coatings to be applied as suggested by Flosbach.
As the coatings of Schneider in view of Auto, Nesbitt and Flosbach have ceramic components, the coatings would be liquid ceramics.
Regarding claim 2:
Schneider does not expressly teach that the substrate is sandblasted.
Nesbitt discloses that surfaces may be sandblasted to effectively clean a given surface.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Schneider by substituting the sanding means for sandblasting because as taught by Nesbitt, the use of sandblasting is known to be suitable for the purpose of cleaning surfaces. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
Response to Arguments
Applicant's arguments filed July 8, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) Auto teaches smoothing a substrate, not abrading a substrate. As such, Applicant respectfully submits that the combination of the four references Schneider in view of Auto, Nesbitt, and Flosbach.
In response to the applicant's arguments, please consider the following comments.
a.) During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification.
The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
The Examiner notes that a copy of the definition asserted by the Applicant is not provided into the record, and thus the professed definition is Applicant argument. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). While Applicant’s response includes is a footnote with a URL hyperlink to the definition within the Merriam-Webster website, the definition provided by merely linking to the URL is the definition as understood at present, not necessarily the definition of the term as understood by one of ordinary skill in the art at the time the application has been filed. The Examiner therefore provides an archived copy of the definition to enter into record. The verb abrade, as of July 2023, includes the following senses1 [emphasis added]:
transitive verb
1a : to rub or wear away especially by friction : erode
b : to irritate or roughen by rubbing
2: to wear down in spirit : irritate, weary
intransitive verb
: to undergo abrasion
Under the plain meaning of the term consistent with the specification, an abraded surface is then a surface that had been rubbed or worn away especially by friction, had undergone abrasion, or had been roughened by rubbing. The Examiner notes that the verb does not necessitate that the end state necessarily must be rough but can also be in a state after having been rubbed, worn away, undergone abrasion.
Auto discloses that any applied base coat should be sanded to make the overall surfaces smoother (page 2 “Clear Coat”). The Examiner notes that the definition of “to sand”2 as found in the Merriam-Webster website before the filing date of the instant application is [emphasis added]:
transitive verb
1: to sprinkle or dust with or as if with sand
2: to cover or fill with sand
3: to smooth or dress by grinding or rubbing with an abrasive (such as sandpaper)
As the plain meaning of the act of sanding includes the act of rubbing with an abrasive (which wears down objects), the act of sanding is itself a species of the act of abrading. The Examiner therefore respectfully submits that an abraded surface is not necessarily a rough surface, but one where material has been rubbed away such as with an abrasive.
Furthermore, the instant specification does not provide detail or other indication of an end state of the abraded surface that would render the act of sanding as inconsistent with the specification.
For these reasons, the Examiner respectfully disagrees with the Applicant that Auto’s teaching goes against the conventional wisdom with respect to the claimed invention.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 “abrade.”merriam-webester.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/abrade. Accessed 4 Jul. 2023 [archived at web.archive.org]
2 “sand.” merriam-webester.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/abrade. Accessed 24 Jun. 2021 [archived at web.archive.org]
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