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 .
Disposition of Claims
Claims 1-9, 11-19 and 21-22 are pending in the application. Claims 11-19 and 21 are withdrawn from consideration due to Applicant’s elections. Claims 10 and 20 have been cancelled.
Amendments to claims 1 and 11, and new claims 21-22, filed on 12/8/2025, have been entered in the above-identified application.
Election/Restrictions
Claim 21 is withdrawn from consideration, as it depends on withdrawn claim 11.
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 1-9 and 22 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.
Claim 1 recites the limitations “providing a fur, skin, or feather commodity” and “applying a semiconductor material to only a portion of an entire fur, skin, or feather commodity.” It is unclear if the fur, skin, or feather commodity in the second limitation can be different from the fur, skin, or feather commodity in the first limitation. If the fur, skin, or feather commodities can be different, then subsequent references to “the fur, skin, or feather commodity” in claim 1 would render the claim indefinite. Claims 2-9 and 22 are rejected because they depend on claim 1.
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (JP 2003125781 A, attached 8/16/24) in view of Zhou (CN107022295A, attached 4/24/25).
Regarding claims 1-7, Yoshioka teaches a natural leather product (providing a fur, skin, or feather commodity) (see Abstract).
In Yoshioka’s method, a surface film refers to a so-called top coat of a leather product, and is a layer most applied to a leather product in order to adjust touch, gloss, and the like (applying a material to a fur, skin, or feather commodity, such that the material is molecularly adhered to the fur, skin, or feather commodity, and making an article from the fur, skin, or feather commodity) ([0018]).
Yoshioka further teaches wherein a method for identifying a natural leather product comprises a process for removing the surface film of a test piece of a natural leather product by physical treatment (removing the material from the portion of the fur, skin, or feather commodity), a process for finely cutting the test piece, a process for treating the finely cut test piece with collagenase, a process for extracting a DNA from the test piece, a process for using the extracted DNA as a template and amplifying a species-specific DNA fragment by polymerase chain reaction using a predicted animal species-derived species-specific primer and a process for analyzing the amplified DNA (extracting DNA from a portion of the fur, skin, or feather commodity; and testing the extracted DNA) (see Abstract, [0014] and [0018]).
Yoshioka does not explicitly disclose applying the material to only a portion of an entire fur, skin, or feather commodity, or wherein only a portion of the article is covered by the material.
However, the examiner notes that Yoshioka teaches wherein leather is (generally) used for all or a part of products such as bags, gloves, upper garments, trousers, skirts, dresses, coats, pullovers, cardigan and other sweaters ([0002]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have used the leather product (the fur, skin, or feather commodity) for only a part of articles such as bags, gloves, upper garments, trousers, skirts, dresses, coats, pullovers, cardigan and other sweaters and, in doing so, to have applied the surface film (the material) to only a portion of the leather product that is exposed in the article (e.g., when only one surface or a portion of the surface(s) of the leather product is exposed in the article) (note [0002] and [0014]).
Yoshioka does not explicitly disclose wherein the surface film (the material) is a semiconductor material, and Yoshioka does not explicitly disclose treating the fur, skin, or feather commodity after applying the semiconductor material.
However, Zhou teaches a coating solution that comprises the following raw material ingredients: graphene (a semiconductor material), polyurethane resin and water (Abstract). A specific application method comprises the step of coating leather-based fabrics with the coating solution, wherein the leather-based fabrics comprise one or more of knitted fabrics, woven fabrics, non-woven fabrics, ultra-fiber non-woven fabrics and true skin (Abstract). The graphene is compounded into a coating material, so that prepared leather products, particularly leather summer-sleeping mats have excellent functions such as wear resistance, scratch resistance, electrostatic resistance, wave absorbing, bacterial resistance, mildew proofing, UV aging resistance, flame retarding, smoke suppressing, electromagnetic shielding and far-infrared health care function (Abstract). In embodiments, Zhou also teaches that a coating liquid prepared in each Example and Comparative Example was dried to form a film with a thickness of 5 µm (treating the fur, skin, or feather commodity after applying the semiconductor material), and the mechanical properties thereof were measured (page 10, lines 15-16).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have applied the surface film of Yoshioka as a coating that comprises graphene (a semiconductor material), polyurethane resin, and water, wherein the coating is dried to form a film after being applied to the leather substrate, in order to obtain a surface film for leather that provides excellent functions such as wear resistance, scratch resistance, electrostatic resistance, wave absorbing, bacterial resistance, mildew proofing, UV aging resistance, flame retarding, smoke suppressing, electromagnetic shielding and/or far-infrared properties (Zhou: see Abstract).
Regarding claim 22, Yoshioka in view of Zhou does not explicitly disclose wherein the semiconductor material has a circular shape.
However, it would have been an obvious matter of design choice to have incorporated the leather product (the fur, skin, or feather commodity) comprising the surface film (the semiconductive material) in a circular shape when incorporating it as only a part of an article, since applicant has not disclosed that the shape solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with various shapes.
Claim Rejections - 35 USC § 103
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka (JP 2003125781 A, attached 8/16/24) in view of Zhou (CN107022295A, attached 4/24/25), as applied to claim 1 above, further in view of Baumgart (CA 2449209 A1, attached 4/24/25).
Regarding claims 8-9, Yoshioka in view of Zhou remains as applied above.
Yoshioka in view of Zhou does not explicitly disclose wherein the semiconductor material is applied in a solid state or as an aerosol.
However, Baumgart teaches coating materials that may be used as adhesives and sealing compounds for producing adhesive films and seals and may serve for the coating, bonding and/or sealing of primed or unprimed substrates made of metal, plastic, glass, wood, textile, leather, natural stone and artificial stone, concrete, cement, or composites of these materials (page 48, lines 7-14). The examiner notes that the coating material may comprise polyaddition resins such as polyurethanes and may be curable (Abstract and pages 10-11, lines 27-4). Baumgart teaches that the coating materials may be conventional coating materials, containing organic solvents, aqueous coating materials, substantially or fully solvent-free -and water-free liquid coating materials (100% systems), substantially or fully solvent-free and water-free solid coating materials (powder coating materials), or substantially or fully solvent-free powder coating suspensions (powder slurries) (page 38, lines 1-10). In terms of its method, the application of dual-cure coating materials for use has no special features but may instead take place by any customary and known application method suitable for the coating material in question, such as electrodeposition coating, spraying, knife coating, brushing, flow coating, dipping, trickling or rolling, for example (pages 38-39, lines 24-2).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the coating of Yoshioka in view of Zhou as curable coatings that are applied in a variety of forms, including as substantially or fully solvent-free and water-free solid coating materials (e.g., as powder coating materials or powder slurries) (i.e., in solid form), or through spraying (as an aerosol), because Baumgart teaches that these are conventional coating materials and customary and known application forms that are suitable for coatings applied to substrates such as leather (see page 38, lines 1-10, pages 38-39, lines 24-2, and page 48, lines 7-14; also see Abstract and pages 10-11, lines 27-4).
In this regard, it would also have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have cured the coatings after applying the curable coatings to the leather (treating the fur, skin, or feather commodity after applying the semiconductor material) in order to solidify and/or adhere the coatings on the surface of the leather.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive.
Applicant contends the following: “Yoshioka discloses applying coating to an entire leather surface. It explains that the application of a base coat and middle coat hides scratches, and the application of a top coat "prevents color loss on the surface and adjusts the feel, gloss, and the like." (Yoshioka, ¶ [0008]). A person of ordinary skill in the art would understand that it is desirable to hide scratches on an entire surface of a leather good. Likewise, a person of ordinary skill in the art would understand that it is desirable to prevent color loss on an entire surface of a leather good, and to provide a consistent feel and gloss over the entire surface of the leather good.” Applicant similarly contends that a person of ordinary skill would understand that it would be desirable for the entire surface of a leather-based fabric to have the features taught by Zhou, and that modifying Yoshioka or Zhou to coat "only a portion of the article" would improperly change their principle of operation or render them inoperable for their intended purposes.
Regarding these contentions, Yoshioka teaches that leather is (generally) used for all or a part of products such as bags, gloves, upper garments, trousers, skirts, dresses, coats, pullovers, cardigan and other sweaters ([0002]). A person having ordinary skill in the art would reasonably have applied the coating taught by Yoshioka and Zhou to the side and/or portion of leather that is exposed in the article in order to protect that exposed surface while also providing the exposed surface with the aesthetic and tactile properties taught by Yoshioka and Zhou. Therefore, applying the coating (the semiconductor material) to only a portion of the leather product (the fur, skin, or feather commodity) would not change the principle of operation of Yoshioka and Zhou or render the product of Yoshioka and Zhou inoperable for its intended purpose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Worrell whose telephone number is (571)270-7728. The examiner can normally be reached Monday-Friday.
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, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789