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/Restrictions
Claims 8-11 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/6/26.
Applicant's election with traverse of Group I in the reply filed on 4/6/26 is acknowledged. The traversal is on the ground(s) that the office has not explained each step that would establish a materially different process. This is not found persuasive because the restriction requirement explains that the part of claim 8 could be formed by a chemical etching step using a mask. This is a materially different process than a laser etching process because a chemical etching process contacts a substrate with a chemical to etch the substrate while a laser etching process uses light irradiation. No further steps would be necessary to distinguish these processes as materially different.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Claim 1 recites that the paint layer is single-coated. This term is being interpreted in line with the disclosure at [0008] of applicant’s specification which explains that single-coating is a process which “requires only a single pass through a paint shop or coating line (understood here in the broadest sense).”
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.
Claims 5 and 6 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation a plastic, and the claim also recites exemplary plastics which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation opaque, and the claim also recites specific colors which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-2 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Field et al. (US 2020/0124246). Herrman (WO2018/167096), which was incorporated by reference into Field at ¶ 0054, is also relied upon.
Claim 1: Field teaches a method of manufacturing a vehicle part (Abst.; ¶¶ 0002-0004), comprising: applying a protection system (i.e. claimed paint layer) (‘5’; ¶¶ 0052-0055) to one side of a transparent plastic substrate (¶¶ 0052-0055); and partially irradiating the protection system with a laser to form a pattern in part of the thickness of the protection system (¶¶ 0058). The protection system of Field is understood to be “single-coated” as it is a multi-layer system which would require only a single pass through the multiple stations of a coating line.
Claims 2 and 5: Field further teaches that the plastic substrate and protection system are further discussed in Herrman (¶ 0054 in Field). Herrman explains that the protection system is formed by depositing the coating and evaporating the solvent (i.e. claimed lacquer) (p. 41) and that the plastic part is formed by molding (p. 19).
Claim 6: Field teaches that the protection system is opaque (¶ 0032).
Claim 7: Field teaches a light source is disposed on the opposite side of the substrate from the protection system (Fig. 5; ¶ 0057).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Field in light of Edwards et al. (US 2022/0160076).
Claim 3: Field fails to discuss the parameters of the laser. Edwards teaches a process of etching a surface using a laser and explains that the parameters (i.e. wavelength, power, speed and frequency) can be adjusted to achieve a desired etching depth (¶ 0059). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed parameters depending on the desired etching depth with the predictable expectation of success.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Field.
Claim 4: Field teaches that the thickness of the protection system is between 2 and 10 µm and that the depth of the etching is 20-220nm (¶¶ 0034, 0038). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a thickness of the pattern of 1.78-8µm with the predictable expectation of success.
Prior Art
DE102016214644 (machine translation) is also cited for teaching a method of manufacturing a clear part with a layer that is laser etched for form a pattern (¶¶ 0015-0016).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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