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 .
Response to Arguments
Applicant's arguments filed on 6/30/2026 have been fully considered but they are not persuasive.
Applicant argues that Shiraki fails to disclose delivering energy to the coating at an energy level at or above an incineration threshold for the coating such that at least a portion of the coating is incinerated to produce incineration products, including both solid residue on the substate along with airborne fumes. It is noted, the claim is an apparatus claim that is configured to deliver the specific amount of energy. This is considered functional language and/or intended use of the apparatus. The following is the guidance from the MPEP on functional language and intended use:
MPEP 2114 I: Features of an apparatus may be recited either structurally or functionally. If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus.
MPEP 2114 II: "[A]pparatus claims cover what a device is, not what a device does.". A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus " if the prior art apparatus teaches all the structural limitations of the claim.
MPEP 2173.05 (g): A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step.
The Examiner notes that the prior art shows all limitations of the claim. The specific intended use of delivering [a specific amount of] energy would be an inherent characteristic of an induction system. Applicant has not evidenced that the Shiraki’s induction system is incapable of delivering the amount of energy. Therefore, the claim does not differentiate from Shirai’s induction system.
Applicant further argues that Shiraki teaches away from the generation of smoke. This argument is meritless since the rejection for the specific limitation is based on anticipation by Shiraki and not a combination of references.
Applicant further argues there is no motivation to combine Shiraki’s peeling induction system that melts adhesive bonds and Wu’s mechanical glue scraping. This is not found persuasive. Wu teaches scraping assisted with heat for softening and removing adhesives. Shiraki teaches an induction heating system for softening and removing adhesive. The only difference between the claimed invention and the prior art is that the prior art does not incorporate the scrape and induction heating into a single combined apparatus. A person of ordinary skill in the art would have had the technological capabilities to incorporate both the scraping of Wu and the induction heating of Shiraki into a combined apparatus before the effective filing date of the claimed invention. The resulting combined apparatus would yield predictable results of softening and removing adhesives. Even in the context of a combined apparatus, the features of the scraper of Wu and the induction system of Shiraki would be expected to work as intended, with each element in the combined apparatus performing the same function as it did separately. No new functionality would arise from the combination.
For the reasons discussed above the rejections are still deemed proper.
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.
Claim(s) 26, 31, 35 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraki JP 2015123420 A in view of Wu CN 113714161 A.
Regarding claim 1, Shiraki discloses an induction system for removing a coating from a substrate [fig. 1, Abstract, “[t]o provide a device and method of peeling which suppress effect of smoke generated during induction heating of a metal member and can securely carry out peeling work in peeling a coating layer of a surface of the metal member”], comprising:
a power supply; at least one induction head electrically connected to the power supply [“main body 3 includes a power supply unit that supplies current to the induction coil”],
wherein:
the power supply and the at least one induction head are configured to deliver energy to the coating at an energy density level at or above an incineration threshold [i.e., smoke, “heating causes the bonded portion of the coating layer C to burn and generate smoke”] for the coating, such that at least a portion of the coating is incinerated to produce incineration products, including both solid residue on the substrate along with airborne fumes [the intended use of the system will inherently be capable of producing incineration products, including both solid residue on the substrate along with airborne fumes],
wherein the at least one induction head includes a contacting side 12 configured to contact the coating [C]; and
a vacuum system 11 configured to extract at least a portion of the coating, including incineration products generated by delivery of the energy to the coating [“sucking part 11 which is attached to the induction heating part 10, and sucks smoke generated in induction-heating”].
Shiraki does not teach the contacting side having a textured surface configured to aid in dislodging at least a portion of the solid residue from the substrate.
Wu teaches a cleaning and removing device [fig. 1] comprising a blade 4431 having a friction plate 4434 and heating device 4433 [fig. 4]. The friction plate 4434 is a contacting side of the blade 4431 having a textured surface 4434 configured to aid in dislodging at least a portion of the solid residue from the substrate [“heat conducting resistor 4433 and the friction plate 4434, through the wiping blade 4431 when the rotating … matched with the heat-conducting resistor 4433 to heat the air, the adhesive on the small advertisement is softened, so that the cleaning effect and utilization efficiency of the device is further improved”].
Wu is analogous art because the reference is reasonably pertinent to the problem faced by the inventor of cleaning and removing solids from a substrate using a heated device and a textured surface. MPEP 2141.01(a).
The only difference between the claimed invention and the prior art is that the prior art does not incorporate the scrape and heating into a single combined apparatus. A person of ordinary skill in the art would have had the technological capabilities to incorporate both the scraping of Wu and the heating of Shiraki into a combined apparatus before the effective filing date of the claimed invention. The resulting combined apparatus would yield predictable results of softening and removing adhesives. Even in the context of a combined apparatus, the features of the scraper of Wu and the induction system of Shiraki would be expected to work as intended, with each element in the combined apparatus performing the same function as it did separately. No new functionality would arise from the combination.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the textured surface of Wu with the induction system of Shiraki to yield the predictable result of softening and removing the coating efficiently.
Regarding claim 31, Shiraki and Wu teach the invention as discussed above. Wu further teaches wherein the textured surface is configured to increase friction between the contacting side of the induction head and the solid residue, as compared to a non-textured surface [friction plate 4434].
Regarding claims 35, Shiraki and Wu teach the invention as discussed above. Shirazi further teaches wherein the coating includes at least one of epoxy, urethane, lead-based coating, fire retardant coating, organic coating, glued rubber, vulcanized rubber or chlorinated rubber [“a material such as a rubber material, an FRP material, polyethylene, a fluororesin material, or a resin coating is formed in a layer shape and adhered to the surface of the metal member”].
Claim(s) 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraki JP 2015123420 A in view of Wu CN 113714161 A and in further view of Weinberger US 2012/0028554 A.
Re claims 27-30, Shirazi and Wu teach the invention as discussed above but fail to teach wherein the textured surface includes a periodic lattice pattern; wherein the textured surface includes a random pattern; and wherein the textured surface includes micrometer-scale or millimeter-scale features.
Weinberger teaches a scrapper assembly with multiple abrasive mechanism including periodic lattice patterns [fig. 5D], random patterns [¶238, “abrasive elements may be uniformly arranged or randomly dispersed”], and millimeter-scale features [“the space between the abrasive elements may be about 0.22 inches to about 0.46 inches”].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the textured features of Weinberger with the system of Shiraki in order to yield the predictable result of optimizing contact between the elements and the surface to be cleaned.
Claim(s) 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraki JP 2015123420 A in view of Wu CN 113714161 A and in further view of Morino JP 2022186272 A and Ishii JP 5950272 B2.
Regarding claims 32, Shiraki and Wu teach the invention as discussed above but fail to teach a scraper blade, wherein the scraper blade is configured to dislodge at least some of the solid residue generated by delivery of the energy to the coating; and wherein the scraper blade is integral to the vacuum system.
Morino teaches a scraper, wherein the scraper is configured to dislodge at least some of the incineration products generated by delivery of the energy to the coating [peeling process St2, “the coating layer 20 with the adhesive layer 21 destroyed can be peeled off from the surface S1 by using a scraper”]. Ishii teaches a coating film peeling apparatus 1 (fig. 1) including a scraper blade 3 (fig. 5) associated with a vacuum system [23, 24, 25].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the scraper of Morino and Ishii with the system of Shiraki in order to yield the predictable result of scraping and vacuum at the same time.
Claim(s) 34, 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraki JP 2015123420 A in view of Wu CN 113714161 A and in further view of Morino JP 2022186272 A.
Regarding claims 34. 36, Shiraki and Wu teach the invention as discussed above but fail to teach wherein the substrate includes a ferrous-based metal; wherein the coating includes at least one of lead, chromium or cadmium-based pigments.
Morino further discloses wherein the substrate includes a ferrous-based metal [“a method for removing a film such as a film formed on an iron structure”]; and wherein the coating includes at least one of lead, chromium or cadmium-based pigments [“[e]xamples of the paint that becomes the first undercoat layer….read lead, lead suboxide...”].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Morino with the system of Shiraki in order to yield the predictable result of removing multiple types of coatings in multiple types of substrates.
Regarding claim 37, Shiraki and Wu teach the invention as discussed above but fail to teach a laser system configured to ablate or burn off by thermal decomposition a substrate residual layer left behind on the substrate after removing the incineration products; and wherein the vacuum system is configured to perform a second vacuum extraction to extract products generated by the ablation or thermal decomposition of the residual layer of coating.
Morino further teaches a laser system 200 (fig. 3) configured to ablate or burn off by thermal decomposition the substrate residual layer [surface treatment St4]; and,
a vacuum system 250 configured to extract products generated by the ablation or thermal decomposition of the residual layer of coating [“[t]he suction device 250 is a device for sucking smoke generated in… the surface treatment step St4”].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the laser and vacuum of Morino with the system of Shiraki in order to yield the predictable result of removes residues present on the surface of the substrate exposed by peeling the coating layer [“[t]he laser device 200 removes residues present on the surface S1 of the base material 10 (hereinafter referred to as the exposed surface) exposed by peeling the coating layer 20 with the adhesive layer 21 destroyed.”].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carlos A. Rivera whose telephone number is (571)270-5697. The examiner can normally be reached 9AM -4PM. 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, Brian Keller can be reached on (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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C. A. R.
Primary Patent Examiner
Art Unit 3723
/C. A. RIVERA/Primary Patent Examiner, Art Unit 3723
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