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, 11-17, 19 and 21-22 are pending in the application. Claims 10, 18 and 20 have been cancelled.
The amendments to claims 1, 11 and 17, filed on 3/31//2026, have been entered in the above-identified application.
Election/Restrictions
Claims 11-17, 19 and 21, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 9/28/2022 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Applicant is advised that should claims 1-6 and 22 be found allowable, claims 11-16 and 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 11 is objected to because of the following informalities: Claim 11 recites the limitation “such that the material is semiconductor molecularly adhered to the fur, skin, or feather commodity.” Appropriate correction is required.
Withdrawn Rejections
The 35 U.S.C. §103 rejections of claims 1-9 and 22 based on Yoshioka (JP 2003125781 A) in view of Zhou (CN107022295A), made of record in the office action mailed 1/28/2026, have been withdrawn. However, new grounds of rejection based on Yoshioka in view of Zhou have been applied below.
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, 11-17, 19 and 21-22 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), with evidence from Wikipedia (“Electronic properties of graphene”).
Regarding claims 1-7, 11-16 and 19, 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 (chemically treating the fur, skin, or feather commodity after applying the semiconductor material), 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], [0018], [0023]-[0024]).
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.
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).
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 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).
With respect to the claimed semiconductor material properties, Zhou teaches graphene as applied above, which is the same material disclosed by applicant. It is the position of the Office that the composition of Zhou would inherently have the claimed properties as the same compound necessarily has the same properties. In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to expect that the claimed properties would be so provided, as the reference teaches the same material, and as the properties cannot be separated from the material. Therefore, Zhou meets the claimed limitations, absent an objective showing to the contrary. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In addition, as evidenced by Wikipedia, graphene is a semimetal that has a valley degeneracy of gv = 2 and has a zero-gap semiconductor character (see the first and third paragraphs). Graphene displays remarkable electron mobility at room temperature, with reported values in excess of 15000 cm2⋅V−1⋅s−1 (see the “Electron transport” section). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Wikipedia also implies that graphene sheets have a resistivity as low as 10−6 Ω⋅cm at room temperature (same section). The disclosed resistivity is so close that prima facie one skilled in the art would have expected the same properties. In the alternative, a prima facie case of obviousness has been made as the difference is so mathematically close as to be virtually negligible, absent any showing of unexpected results or criticality. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 17, Yoshioka in view of Zhou does not explicitly teach heat treating the fur, skin, or feather commodity.
However, Zhou teaches applying coating solutions to leather followed by drying (page 10 lines 7-9 and 15-19). In addition, Yoshioka teaches that there is a technique of heating and pressing a surface of a material artificially produced to resemble a natural leather, such as an artificial leather or a synthetic leather, or a surface of a material called an embossed leather, such as a cow hide or a pig hide, to resemble another leather ([0004]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have heated the leather in order to dry the coating applied thereon and/or in order to obtain an embossed leather product (see Yoshioka: [0004]; and Zhou: page 10 lines 7-9 and 15-19).
Regarding claims 21 and 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, 17 and 19 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).
Regarding claims 17 and 19, Yoshioka in view of Zhou remains as applied above, teaching the claimed limitations. In addition, Baumgart teaches coating materials that can be cured thermally and that comprise at least one binder (Abstract).
Response to Arguments
Applicant's arguments filed 3/31//2026 have been fully considered but they are not persuasive.
Applicant contends that none of the cited references disclose, teach, or suggest a step of "chemically treating the fur, skin, or feather commodity after applying the semiconductor material."
Regarding this contention, as applied above in the new grounds of rejection, Yoshioka teaches a process for treating the finely cut test piece with collagenase, which meets the claimed limitation “chemically treating the fur, skin, or feather commodity after applying the semiconductor material.”
Conclusion
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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