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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 13 2026 has been entered.
Summary
The Applicant’s arguments and claim amendments received on January 13, 2026 are entered into the file. Currently, claims 1-5, 10, 18, and 19 are amended; claims 6-9 and 11-17 are withdrawn; and claim 20 is new; resulting in claims 1-5, 10, and 18-20 pending for examination.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 4 of claim 1, the limitation reciting “a plurality riblets” contains a typographical error that should instead read --a plurality of riblets--. Appropriate correction is required.
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.
Claim 19 is 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.
Regarding claim 19, the limitation reciting “wherein the edge protection does not protrude beyond the adhesive layer up to an upper edge of the film layer” is indefinite because it is not clear what structure is required by the claim. In particular, it is not clear whether the limitation is intended to require that the edge protection does not protrude at all beyond the adhesive layer, or if it is meant to require that the edge protection may extend beyond the adhesive layer but does not extend all the way to the upper edge of the film layer.
In looking to the embodiment shown in Fig. 2b, the edge protection (10) formed from powered transparent granulate is adhered only to the adhesive layer (5), such that the edge protection does not extend at all beyond the adhesive layer. In the embodiment shown in Fig. 4b, the edge protection (12) formed from a cured fluid is shown as extending beyond the adhesive layer (5) but not all the way to the upper edge (3’) of the film layer (3). It is noted that claim 1 recites that the edge protection covers the adhesive layer without protruding over the upper side of the film layer, such that either interpretation of the limitation in claim 19 set forth above would be considered to further limit the structure of the claimed film arrangement. Absent further clarification from the Applicant, the limitation in claim 19 is considered to be satisfied by the broader interpretation, corresponding to the embodiment shown in Fig. 4b, in which the edge protection may protrude beyond the adhesive layer but does not protrude up to an upper edge of the film layer.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1, 2, 5, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2019/0202547, previously cited) in view of Satake et al. (US 2001/0036553, previously cited).
Regarding claims 1, 2, 18, and 19, Wu et al. teaches an aerodynamic article (100; riblet film) comprising a base layer (106) having a microstructured surface (102; upper side) having a series of parallel ridges (120; riblets), a discontinuous printed layer (108) disposed on an underlying printable layer (110), and an adhesive layer (124) that extends across and directly contacts the printable layer ([0028], [0031], [0034], [0038], Figs. 1-2). The base layer and printable layer together are taken to correspond to the claimed film layer. Wu et al. teaches that the adhesive layer allows the aerodynamic article to be applied and secured to the surface of a suitable substrate, such as the external surface of an aircraft wing ([0001], [0038]).
Wu et al. differs from the claimed invention in that the reference does not expressly teach an edge protection as claimed.
However, in the analogous art of edge protectors, Satake et al. teaches an optical film laminate comprising an optical film layer (1), a pressure-sensitive adhesive layer (3), a protective film (2) superposed on the optical film layer on the side opposite the adhesive layer, and a release paper (4) superposed on the other side of the adhesive layer ([0012], see Fig. 2 reproduced below).
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Satake et al. teaches that non-tacky powders (5) are adhered to edge surfaces of the pressure-sensitive adhesive layer, thereby preventing the edge surfaces from directly contacting any external object ([0013], Figs. 1-2). The powder (5) taught by Satake et al. corresponds to the claimed edge protection which is formed from powdered granulate whose particles adhere to the adhesive layer. The powders preferably have a particle diameter smaller than the thickness of the pressure-sensitive adhesive layer, wherein the percentage of the edge surfaces covered by the powder is preferably 5% to 95% in order to provide the necessary effects ([0013], [0016]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aerodynamic article of Wu et al. by applying the non-tacky powders taught by Satake et al. to the edge surfaces of the adhesive bonding layer, in order to prevent the adhesive from contacting any external object. In doing so, the powders would be adhered to the adhesive layer such that they cover the adhesive layer, but do not protrude over or up to the upper side of the base layer from which the riblets extend. The aerodynamic article of Wu et al. having the non-tacky powders of Satake et al. attached thereto thus corresponds to the claimed contamination-protected film arrangement.
Regarding claim 5, Wu et al. in view of Satake et al. teaches all of the limitations of claim 1 above, and Satake et al. further teaches that examples of the powders include zinc oxide, zinc stearate, and aluminum stearate ([0019]), which are transparent materials.
Regarding claim 20, Wu et al. in view of Satake et al. teaches all of the limitations of claim 1 above. Wu et al. further teaches embodiments of the aerodynamic article (200, 300, 400) in which the base layer (206, 306, 406) has a microstructured surface (202, 302, 402) including a plurality of ridges (220, 222, 320, 420, 422; riblets) ([0047], [0070], [0071]), wherein the microstructured surface is shown has having a flat connecting surface between adjacent riblets, such that a height from the adhesive layer to the upper side of the film layer corresponds to a height from the adhesive layer to the connecting surface.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejection of claims 1-5, 10, 18, and 19 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is overcome by the Applicant’s amendments to claims 1 and 19 in the response filed January 13, 2026.
However, in light of the amendments to the claims, new issues under 35 U.S.C. 112(b) are presented in the office action above with respect to claim 19.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments, see pages 9-10 of the remarks filed January 13, 2026, with respect to the previous rejections based on Dietz et al. in view of Satake et al. are moot because they do not address the new combination of references being used in the rejections above. In light of the amendments to claim 1 and new claim 20, Wu et al. is used as the primary reference to address the claimed riblet film in place of Dietz et al. The Applicant’s arguments will be addressed insofar as they apply to the new grounds of rejection.
The Applicant argues on page 10 of the remarks that an artisan would have no apparent reason and no expectation of success in modifying the drag reduction article of Dietz in view of the optical film protecting non-tacky powders of Satake because Dietz discloses that the drag reduction article is subject to harsh conditions and must have good resistance to strong drag forces, whereas the non-tacky powders of Satake are intended to protect liquid crystal displays and touch panels by dusting the display with powder. The Applicant argues that an artisan would have no expectation that applying the powders of Satake would provide any workable or reliable protection for the edge of the drag reduction article of Dietz when subject to the high speeds and drag disclosed by Dietz.
These arguments are not persuasive and will be addressed to the extent that they apply to the new grounds of rejection over Wu et al. in view of Satake et al. As explained in the prior art rejections above, Satake et al. renders obvious the application of non-tacky powders onto the edge surfaces of a pressure-sensitive adhesive layer for the purpose of protecting the adhesive edge surfaces from coming into contact with unintended objects during transport, handling, etc. of the adhesive laminate. The non-tacky powders taught by Satake et al. can therefore reasonably be applied to the edge surfaces of the aerodynamic article taught by Wu et al. for the purpose of protecting the edges of the adhesive layer from unintended contact with an external object. Regardless of whether the powders remain adhered to the adhesive layer during high-speed operation (i.e., when the aerodynamic article is attached to a surface of a vehicle traveling at high speed), the powders taught by Satake et al. would clearly be useful at least for protecting the adhesive surface of the aerodynamic article during transport, handling, and application of the laminate onto a vehicle surface.
In light of the amendments to claim 1, Applicant’s arguments, see pages 8-9 of the remarks filed January 13, 2026, with respect to the previous rejections based on Wu et al. in view of Haverkamp have been fully considered and are persuasive. The previous rejections of claims 1, 3, 4, 10, and 18 under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2019/0202547) in view of Haverkamp (DE 102018212328) have therefore been withdrawn. Please refer to the Allowable Subject Matter section below for further explanation.
Allowable Subject Matter
Claims 3, 4, and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or render obvious the claimed invention of the instant application.
Independent claim 1 in combination with dependent claim 3 recites a contamination-protected film arrangement comprising a riblet film, an adhesive layer, and an edge protection. The riblet film comprises a film layer and a plurality of riblets projecting from an upper side of the film layer. The adhesive layer is disposed on a lower side of the film layer, such that the riblet film is configured to be adhesively bonded to a surface. The edge protection covers the adhesive layer without protruding over the upper side of the film layer. The edge protection is formed from a cured fluid which has good adhesion to the adhesive layer. The upper side of the film layer is interpreted to correspond to the portion of the film layer from which the riblets project upwards (see, e.g., upper side (3’) of film layer (3) in Figs. 4a-4b).
The closest prior art to the claimed invention is Wu et al. (US 2019/0202547) in view of Haverkamp (DE 102018212328, cited on IDS).
Wu et al. teaches an aerodynamic article (100; riblet film) comprising a base layer (106) having a microstructured surface (102; upper side) having a series of parallel ridges (120; riblets), a discontinuous printed layer (108) disposed on an underlying printable layer (110), and an adhesive layer (124) that extends across and directly contacts the printable layer ([0028], [0031], [0034], [0038], Figs. 1-2). The base layer and printable layer together are taken to correspond to the claimed film layer. Wu et al. teaches that the adhesive layer allows the aerodynamic article to be applied and secured to the surface of a suitable substrate, such as the external surface of an aircraft wing ([0001], [0038]).
Wu et al. differs from the claimed invention in that the reference does not expressly teach an edge protection formed from a cured fluid and having the claimed structural configuration in which the edge protection covers the adhesive layer of the riblet film without protruding over the upper side of the film layer.
Haverkamp was previously relied upon to address the limitations directed to an edge protection formed from a cured fluid. Haverkamp teaches a multi-layer safety device (1) comprising a multilayer security film (4, 4a) attached to a substrate (2) by means of a substrate adhesive (3), wherein exposed edges of the security film and the substrate adhesive are sealed by an edge seal (6, 6a; edge protection) ([0016]-[0017], [0036], Figs. 1-4; see Figs. 1-2 reproduced below).
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As shown in Figs. 1-4 of Haverkamp, the edge seal (6, 6a) is formed directly on a side edge of the security film (4) and substrate adhesive (3) in such a manner that the edge seal covers the adhesive but does not protrude over the upper side of the hard coating (5) provided on the security film [0017]. Haverkamp teaches that edge sealing of at least the outer edges prevents individual layers of the security film from being detached, thus preventing accidental damage and/or destruction of the film [0005]. Haverkamp does not, however, expressly teach or reasonably suggest forming the edge sealing in the specific claimed configuration relative to the upper side of the film layer of a riblet film.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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