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
Amendments to the claims, filed on 5/21/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 10-13 are rejected under 35 U.S.C. 103 as obvious over Lin (CN-212818022-U) in view of Esposito et al (US 2008/0020166 A1) and Stevens (US 2010/0256254 A1).
Regarding claim 10, Lin teaches an apparatus (e.g., skid-proof cushion) for providing a slip-resistant surface to a skateboard, the apparatus consisting of a substrate printed with an image, wherein the image is printed with ultraviolet curable ink and consists of a top printable layer (e.g., skid-proof layer), wherein the top printable layer is printed with the image (e.g., ink layer), a middle adhesive layer, a bottom removable layer (e.g., release paper); and wherein, the bottom removable layer is removable from the substrate printed with the image to expose the middle adhesive layer, the middle adhesive layer is configured to adhere the top printable layer to a surface, and the substrate printed with the image and the image printed with ultraviolet curable ink is smoothed to conform to the shape of the piece of sporting equipment .(abstract; page 1, 3; figs 1-5).
Lin fails to suggest the substrate is non-silicone and the ultraviolet curable ink provides a slip-resistant, water-resistant, and antibacterial surface (i.e., the slip-resistant, water-resistant, and antibacterial surface of the apparatus).
Esposito teaches it was known in the art at the time of invention to make adhesive antiskid materials for skateboard decks out of vinyl, plastic, or rubber (i.e., non-silicones); wherein the antiskid material may be textured (abstract, para 30-31).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention, per the teachings of Esposito, to make the skid-proof layer of Lin out of vinyl or rubber; since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Stevens teaches radiation curable compositions (i.e., inks) comprising hyperbranched polyester acrylates (i.e., water resistant) as silicone (i.e., water resistant), slip modifiers and/or waxes (i.e., water resistant) and biocides such as bactericides, algaecides and fungicides; humectants to radiation curable inks (abstract, para 24, 30, 35, 43-44); wherein the radiation-curable compositions having lower viscosity to facilitate jetting at lower temperatures, which in turn results in better ink stability, high solvent resistance, good adhesion to substrates, high flash points, and excellent storage stability (para 7, 22).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the UV cured inks of Stevens with the UV cured inks of Lin as modified by Esposito, since It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose (e.g., UV cured inks), in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I).
In the alternative it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the UV cured inks of Stevens for the UV cured inks of Lin as modified by Esposito, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II) and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). This substitution comes with the additional motivation of using an ink having a lower viscosity to facilitate jetting at lower temperatures, which in turn results in better ink stability.
The limitations “surfboard, snowboard, sled, paddleboard, skim board, or bodyboard” are that of intended use and fail to add any structure to the embodiment of the instant claims and therein need not be taught by the prior art of record.
Regarding claims 11 through 13, the limitations of the instant claims are product by process limitations and do not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 27173). No difference can be discerned between the product that results from the process steps recited in the instant claims and the product of Lin as modified by Esposito.
Claims 15-19 are rejected under 35 U.S.C. 103 as obvious over Lin (CN-212818022-U) in view of Esposito et al (US 2008/0020166 A1), Stevens (US 2010/0256254 A1), and Abe (JP 2018-203841 A).
Regarding claim 15, Lin teaches a skid-proof cushion (i.e., kit for providing a slip-resistant surface to a skateboard); the kit comprising an apparatus consisting of a substrate printed with an image, wherein the image is printed with ultraviolet curable ink and consists of a top printable layer (e.g., skid-proof layer), wherein the top printable layer is printed with the image (e.g., ink layer), a middle adhesive layer, a bottom removable layer (e.g., release paper); and wherein, the bottom removable layer is removable from the substrate printed with the image to expose the middle adhesive layer, the middle adhesive layer is configured to adhere the top printable layer to a surface, and the substrate printed with the image and the image printed with ultraviolet curable ink is smoothed to conform to the shape of the piece of sporting equipment .(abstract; page 1, 3; figs 1-5).
Lin fails to suggest the substrate is non-silicone, the ultraviolet curable ink provides a slip-resistant, water-resistant, and antibacterial surface (i.e., the slip-resistant, water-resistant, and antibacterial surface of the apparatus), and a smoothing device.
Esposito teaches it was known in the art at the time of invention to make adhesive antiskid materials for skateboard decks out of vinyl, plastic, or rubber (i.e., non-silicones); wherein the antiskid material may be textured (abstract, para 30-31).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention, per the teachings of Esposito, to make the skid-proof layer of Lin out of vinyl or rubber; since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Stevens teaches radiation curable compositions (i.e., inks) comprising hyperbranched polyester acrylates (i.e., water resistant) as silicone (i.e., water resistant), slip modifiers and/or waxes (i.e., water resistant) and biocides such as bactericides, algaecides and fungicides; humectants to radiation curable inks (abstract, para 24, 30, 35, 43-44); wherein the radiation-curable compositions having lower viscosity to facilitate jetting at lower temperatures, which in turn results in better ink stability, high solvent resistance, good adhesion to substrates, high flash points, and excellent storage stability (para 7, 22).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the UV cured inks of Stevens with the UV cured inks of Lin as modified by Esposito, since It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose (e.g., UV cured inks), in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I).
In the alternative it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the UV cured inks of Stevens for the UV cured inks of Lin as modified by Esposito, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II) and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). This substitution comes with the additional motivation of using an ink having a lower viscosity to facilitate jetting at lower temperatures, which in turn results in better ink stability, high solvent resistance, good adhesion to substrates, high flash points, and excellent storage stability.
Abe teaches it was known in the art at the time of invention to use pressing with techniques such as hands, rollers, squeegees, and brushes to apply adhesive layers or tapes (i.e., the smoothing is performed with a roller or a smoothing edge and prevents bubbles of air forming between the surface of the piece of sporting equipment and the middle adhesive layer) (abstract, page 9).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention, per the teachings of Abe, to include a smoothing device such as a roller or squeegee with the skid-proof cushion of Lin as modified by Esposito and Stevens, as a matter of design choice as suggested by prior art at the time of invention and to ensure a smooth application of the skid-proof cushion.
The limitations “surfboard, snowboard, sled, paddleboard, skim board, or bodyboard” are that of intended use and fail to add any structure to the embodiment of the instant claims and therein need not be taught by the prior art of record.
Regarding claims 16 and 17, the limitations of the instant claims are product by process limitations and do not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 27173). No difference can be discerned between the product that results from the process steps recited in the instant claims and the product of Lin as modified by Esposito.
Regarding claims 18 and 19, it would have been obvious to one of ordinary skill in the art to include smoothing device that is a roller, and the roller includes a handle and a rubber, plastic, polymer, composite, or foam rolling tube; or a smoothing device that is a smoothing edge (i.e., squeegee), wherein the smoothing edge includes a straight edge for smoothing a surface, and the smoothing edge is metal, plastic, polymer, or a composite material; since these were common configurations and materials of construction for applicators of adhesive films, tapes, or laminates at the time of invention; and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Response to Arguments
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of a new combination of prior art of record. The Applicant is directed to the 35 USC § 103 section above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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