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 Amendment
Applicants’ response filed 12/12/2025 amended claim 8. Applicants’ arguments regarding the objections to the specification from the office action mailed 6/12/2025 are not persuasive; therefore, the objections to the specification are maintained below. Applicants’ arguments are persuasive in overcoming the 35 USC 103 rejections over Sunder in view of Schmidt and Sunder in view of Schmidt further in view of Mori from the office action mailed 6/12/2025; therefore, these rejections are withdrawn. New grounds of rejection are set forth below. This action is NON-FINAL.
Specification
3. The disclosure is objected to because of the following informalities: the specification as filed lists “anisole” as an example of a non-polar solvent. “Anisole” is a polar compound and is therefore not an example of a non-polar solvent. Appropriate correction is required.
Drawings
4. Patent application drawings must be in black and white, featuring clear, solid lines on durable white paper (A4 or 8.5" x 11") with specific margins (1" top/left, 5/8" right, 3/8" bottom). They must show every feature claimed, use reference numbers for identification, and include multiple views (e.g., perspective, top, side) for, comprehensive understanding.
Claim Objections
5. Claims 2, 5, 7-11, 64-65, 68 and 70 are objected to because of the following informalities: “The coating system” should read “The ski or snowboard base-coating system” for all dependent claims. Appropriate correction is required.
Claim Rejections - 35 USC § 103
6. 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.
7. 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.
8. Claims 1-2, 5, 64-65, 68 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al., US Patent Application Publication No. 2006/0153993 (hereinafter referred to as Schmidt) in view of Sunder et al., International Publication No. WO/2014/120662 A1 (hereinafter referred to as Sunder).
Regarding claims 1-2, 5, 64-65, 68 and 70, Schmidt discloses a coating system for use on skis and skateboards (Para. [0088]) comprising; silane compounds such as those represented by formula (III) in paragraph 0038, examples include dimethyldimethoxy silane (as recited in claims 65 and 68), and a triarylsulfonium hexafluoroantimonate salt free radical photoinitiator (free-radical initiator as recited in claim 1 and reads on claim 5) (Para. [0051] and [0097]).
Schmidt discloses all the limitations discussed above and further discloses the presence of additional silane compounds (see Examples 1-2/Para. [0094]-[0096]) but does not explicitly disclose a polymerizable non-fluorinated silane hydrophobic compound when cured as recited in claim 1.
Sunder discloses a hydrophobic coating for plastic (see Abstract) comprising; 75 to 94 wt% of a solvent, such as, xylene (“non-polar carrying solvent” as recited in claim 1) (Para. [0062]), 0.5 to 20 wt% of a hydrophobic agent, such as, dialkyl silane (reads on “a polymerizable non-fluorinated silane” as recited in claim 1 and reads on claim 70) (Para. [0069]-[0072]), and an amino-containing organofunctional silane compound (“adhesion agent” as recited in claim 2 and reads on claim 64) (Para. [0071]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the hydrophobic agent of Sunder in the composition of Schmidt in order to enhance the hydrophobic nature of the polymer/substrate surface (Para. [0069] of Sunder).
Claim Rejections - 35 USC § 103
9. Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Sundar as applied to claims 1-3, 5, 64-65 and 68-70 above, and further in view of Mori et al., US Patent No. 8,440,267 (hereinafter referred to as Mori).
Regarding claims 7-9 and 11, Schmidt/Sundar disclose all the limitations discussed above and Schmidt further discloses that the coating composition is cured by a combination of exposure to light and heating. It is preferred to cure first by a combined treatment of irradiation and heating and subsequently complete the curing step by further heating alone. The appropriate irradiation includes UV radiation or laser light may be employed. During the step of exposing to light or radiation and/or heating, the cationic initiator may generate an acid. Besides the polymerisation of the cationically polymerizable groups (crosslinking), this acid may also assist in curing the siloxane framework (inorganic condensation) almost to completion, especially when the coating is heated (Para. [0057]-[0058]).
Schmidt/Sundar do not explicitly disclose the chamber or controller recited in claim 7.
Mori discloses that it is known in the art to utilize a light energy source, and photo-polymerizable chamber for curing a photo-polymerizable coating agent on a base material wherein the curing occurs at room temperature (as recited in claims 7-9 and 11) (see Figure 1, Col. 11/L. 19-67 and Col. 12/L. 1-2 and 40-47). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Schmidt/Sundar with the teaching of Mori for the purpose of providing the recited photoinitiator to form a desired hydrophobic coating on a ski.
Regarding claim 10, Mori further discloses in column 12, lines 58-63 that the light source which is a source for generating light (active energy rays) such as ultraviolet rays caused by a non-electrode lamp or the like connects to an electric source and a control apparatus not shown.
Double Patenting
10. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
11. Claims 1-2, 5, 7-12, 52-54, 56-57, 59, 64-68 and 70 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 6-15, 26-33, 37-38, 44 and 64-75 of co-pending application No. 18/349,916. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending ‘916 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above and incorporated herein by reference.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Response to Arguments
12. Applicants’ response filed 12/12/2025 regarding claims 1-2, 5, 7-11, 64-65, 68 and 70 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
Applicants argue that Sundar is non-analogous art to the claimed invention and therefore the obviousness rejection set forth above is improper. This argument is not persuasive. This argument is not persuasive as Sundar is concerned with coating compositions for plastics, similar to what is taught in Schmidt and what is claimed in the instant application.
Applicants also argue that the modification of Schmidt with the silane hydrophobic component of Sundar is improper. This argument is not persuasive as the fluorinated silane component of Schmidt is not being replaced by the silane hydrophobic component of Sundar. The Sundar hydrolysable silane of Sundar is being added to the coating composition of Schmidt in order to enhance the hydrophobic nature of the polymer/substrate surface as discussed above.
Applicants further argue that the coating of Sundar requires mixing the hydrolysable silane compound with an etchant which would reduce the texture and porosity of a base material. Applicants merely allege this to be the case but have not shown it to be so. It seems as if the etchant does not reduce the porosity of the plastic base materials when used as a coating component in the applications of Sundar.
Applicants argue that Mori does not disclose a controller as recited in claim 10, nor the heater recited in claim 11. This argument is also not persuasive. Mori explicitly discloses in column 12, lines 58-63 that the light source which is a source for generating light (active energy rays) such as ultraviolet rays caused by a non-electrode lamp or the like connects to an electric source and a control apparatus not shown.
Mori also discloses in column 11, lines 19-24, during a period of from just after completion of application of the coating agent to starting of curing the coating film, it is desired to retain the base material on which the coating film has been formed under the circumstance that the temperature is not higher than room temperature as recited in claim 38.
Applicants also provide objective evidence of nonobviousness in the form of an Affidavit signed by Chad Horne on 8/6/2025; to overcome the obviousness rejections set forth above. The arguments presented regarding commercial success are not persuasive.
To be entitled to substantial weight, the applicant should establish a nexus between the rebuttal evidence and the claimed invention, i.e., objective evidence of nonobviousness must be attributable to the claimed invention. The Federal Circuit has acknowledged that applicant bears the burden of establishing nexus, stating:
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sales constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 ([BPAI] 1990) (evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success. In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also GPAC, 57 F.3d at 1580, 35 USPQ2d at 1121; In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the obviousness rejection was not probative of nonobviousness.).
Additionally, the evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed. Cir. 1983). In re Soni, 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995) does not change this analysis. In Soni, the court declined to consider the Office’s argument that the evidence of nonobviousness was not commensurate in scope with the claim because it had not been raised by the examiner. Id. 54 F.3d at 751, 34 USPQ2d at 1688. In other words, in order for evidence of secondary considerations to be accorded substantial weight, there must be a nexus, i.e., a legally and factually sufficient connection or correspondence between the submitted evidence and the claimed invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020). “A presumption of nexus requires both that the product embodies the invention and is coextensive with it.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202,1211-12, 2023 USPQ2d 1000 (Fed. Cir. 2023) (While Volvo Penta provided insufficient evidence to show a presumption of nexus, they did provide sufficient evidence to show nexus, independent of the presumption, through evidence of commercial success and copying due to the unique features of the claimed invention.). See MPEP § 716.01(b).
In this case what is claimed is much broader than what is tied into the commercial success.
Regarding the double patenting rejection as is stated above, the claim limitations that are not present in the instant claims would be obvious in light of the references discussed above and incorporated by reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771