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 .
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.
Claim(s) 2-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schlegel et al. (USPGPub 2005/0132930).
Regarding claim 2, 4, 10, 14-15 and 17, Schlegel teaches providing a powder for faux finishing which may include primers, basecoats and accent colors [0006-0007]. Although the current claims require three containers, it is not required that the containers be different or that the contents of the containers be different. Specifically there is not structural distinction between the primer powder, basecoat powder and faux finish powder. As such, all may be the same and be in the same container. Although Schlegel does not specifically talk about containers, it is reasonably implicit that the material would be provided in some contained manner. Further however, the electrostatic guns and bed coaters [0040] of Schlegel would read upon containers. Further the type of powder is a mere recitation of intended use wherein a primer powder does not have to be used as a primer for example. The prior art powder is capable of being used as claimed and as such meets the claim limitations. Further Schlegel teaches wherein a stencil brush may be provided among other tools [0048]. Schlegel fails to teach providing instructions. However, the examiner is taking Official Notice to inform the applicant that providing instructions for the use of articles of manufacture is commonplace in almost all industries. This ranges from chemicals to cooking to automotive manuals to machinery to computers to medicine to school supplies and many other fields wherein instructions provide recommended usage guidelines for purchasers and end users. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide instructions for use for the articles of Schlegel in order to provide recommended guidelines for success use as is performed in a variety of examples. Further it is noted that what the instructions specifically state is largely inconsequential outside of a function relationship between the provided instructions and the articles provided. MPEP 2111.05 states “For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864”.
Regarding claim 3, Schlegel teaches providing different color combinations that would read upon contrasting colors [0010].
Regarding claims 5-6 and 8, Schlegel further teaches wherein the provided powder is epoxy [0025] which is a thermosetting material.
Regarding claims 7 and 9, Schlegel further teaches the provision of poly-ester epoxy [0025].
Regarding claim 11, the teachings of Schlegel are as shown above. Schlegel fails to teach wherein one of the provided colors is clear. However, a change in color would be considered a mere aesthetic design change wherein matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
Regarding claim 12, it is noted that Schlegel teaches providing amounts such that thicknesses can vary widely [0041] and can reasonably be applied in as few or as many coats as desired. It is noted that the current claim does not require actually depositing the powder and therefore the number of times that the powder is deposited is not largely relevant compared to the amount of powder provided. The amount provided is seemingly provided in thicknesses such that depositions could theoretically be divided many times.
Regarding claim 13, the brush of Schlegel is reasonably capable of several of the claimed operations.
Regarding claim 16, Schlegel teaches several of the techniques claimed (claim 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 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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/ANDREW J BOWMAN/Examiner, Art Unit 1717
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