DETAILED ACTION
An amendment, amending claims 1 and 8, was entered on 3/3/26.
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 .
Response to Arguments
Applicant argues that Daly does not describe an applicator configured to apply a coating on a target region and a faceplate configured to be applied the a surface, the faceplate having an opening configured to surround the target region and to receive therethrough the applicator. This is not persuasive. Daly teaches a faceplate (20) having an opening which surrounds the target part of the surface (see, e.g., Figs. 3 and 4 which show that the walls 20 of the tool form a square shaped opening which surrounds the portion of the surface to which paint is applied) and that the opening is configured to receive the applicator pad (11) therethrough (Fig. 3). The applicator is configured to apply paint through the opening to the surface (i.e. claimed coating can be applied from the applicator to the target region). Thus, Daly teaches each of the claimed elements.
Applicant also argues that the broadest reasonable interpretation does not mean the broadest possible interpretation and that the claims should be interpreted in light of the specification. Applicant further argues that Daly is not directed to touching up a surface, but instead to applying paint over an entire surface. This is not persuasive. Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. MPEP § 2111.01(II). In this case, the claims are directed to a system which is configured to touch up an area. Even if Daly teaches that the tool is designed to apply a coating to an entire surface, the tool of Daly is still capable of only applying that coating to a specific area (and, indeed, must apply coating to each specific area in a process of coating an entire surface). A tool which can applying a coating is also capable of touching up a coating. If applicant intended a narrower scope to the claims, there is not reason further limitation cannot be used to further narrow the scope of the claim.
Claim Rejections - 35 USC § 102
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 1-4, 6, 8-12 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daly et al. (US 2018/0369860).
Claim 1: Daly teaches a system for painting (i.e. claimed touching up) a coating on a surface (Abst.), the system comprising: the surface (5) comprising a target region to be touched up (Fig. 1; ¶ 0043, e.g.); an applicator (11) configured to applying paint to the target region (¶ 0045); a tool (12) configured to surround the target region on the surface wherein the tool comprises a faceplate (20) that has an opening which surrounds the target part of the surface (see, e.g., Figs. 3 and 4 which show that the walls 20 of the tool form a square shaped opening which surrounds the portion of the surface to which paint is applied) and receives the applicator therethrough (Fig. 3).
Claim 2: Daly teaches a handle (14).
Claim 3: Daly teaches that the tool comprises a surface configured to direct excess coating into a reservoir (24) of the tool (¶ 0047).
Claim 4: Daly teaches that the applicator is a pad (i.e. claimed wipe) (¶ 0045).
Claim 6: Daly teaches that the faceplate (20) is configured to detach via connector (19a) (¶ 0040).
Claim 8: Daly teaches a system for painting (i.e. claimed touching up) a coating on a surface (Abst.), the system comprising: an applicator (11) configured to applying paint to the target region (¶ 0045); a tool (12) configured to surround the target region on the surface wherein the tool comprises a faceplate (20) that has an opening which surrounds the target part of the surface (see, e.g., Figs. 3 and 4 which show that the walls 20 of the tool form a square shaped opening which surrounds the portion of the surface to which paint is applied) and receive the applicator therethrough (Fig. 3).
While Daly does not expressly use the term seal, Daly teaches that the faceplate has a shape which conforms to the shape of the surface (Fig. 1) and that a negative pressure is generated between the tool and the surface to ensure that any potential drips (i.e. excess coating) will be captured by the tool (¶ 0047). Thus, one of ordinary skill in the art would have understood that a seal which prevented excess coating from migrating along the surface was implicitly taught.
Claim 9: Daly teaches a handle (14).
Claim 10: Daly teaches that the tool comprises a surface configured to direct excess coating into a reservoir (24) of the tool (¶ 0047).
Claim 11: Daly teaches that the system further comprises a container (18) to receive excess coating from the tool (¶ 0043).
Claim 12: Daly teaches that the applicator is a pad (i.e. claimed wipe) (¶ 0045).
Claim 14: Claim 14 is directed to an apparatus. Apparatus claims are defined by the structure of the apparatus and not their intended use. In this case, the paint applicator of Daly is capable of painting a metal rocket body and, therefore, teaches all the limitations of claim 14.
Claim 15: Daly teaches that the faceplate is removably attached to the tool (¶ 0040).
Claim 16: Daly teaches that the faceplate has a shape which matches the contours of the surface (Fig. 1).
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.
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.
Claims 5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Daly in light of Ling et al. (US 2012/0134737).
Claim 5 and 13: While Daly teaches that a seal is formed between the applicator and the surface in order to prevent excess paint from dripping (see, e.g., ¶ 0047), Daly does not teach that the system comprises a separate seal element. Ling teaches a paint applicator (Abst.) and explains that the applicator should include a sealing member coupled to the applicator which contacts the surface in order to contain and prevent paint from spilling to undesired areas (¶ 0113). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included a sealing element coupled to the faceplate of Daly in order to have ensured that paint would not have spilled into undesired areas.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Daly in light of Chase et al. (US 2017/0136491).
Claim 7: Daly fails to teach how the faceplate is formed. Chase teaches a paint applicator tool (Abst.) and explains that the tool can be formed using injection molding or three dimensional printing (i.e. additive manufacturing) (¶ 0030). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have formed the faceplate of Daly using additive manufacturing with the predictable expectation of success.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712