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 .
Status of the Application
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/25 has been entered.
Claims 1-7, 9-10, and 12-14 have been examined in this application. This communication is a Final Rejection in response in response to the amendment filed 12/18/25. All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. See MPEP § 706.07(b).
Claim Interpretation
For the purpose of applying prior art the following broadest reasonable interpretations are applied. The disclosure does not set forth uncommon, special, or otherwise explicit definitions for terms for which the following aforementioned broadest reasonable interpretations are provided. These broadest reasonable interpretations do not appear inconsistent with Applicant’s disclosure.
Broadest Reasonable Interpretations
In regards to claim 9, the term oleophobic is interpreted as “having or relating to a lack of strong affinity for oils”, in accordance with the attached definition of “oleophobic” obtained from Merriam-Webster dictionary online.
In regards to claim 1, and as set forth previously in the non-final rejection dated 02/28/25 with regard to claim 8, the term tacky is interpreted as “somewhat sticky to the touch”, in accordance with the previously attached definition of “tacky” obtained from Merriam-Webster dictionary online.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
establish antecedent basis in the specification for the subject matter of claim 9—a polymeric coating that is both hydrophobic (claim 1) and oleophobic (claim 9).
The amendment filed 12/18/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “[…] the high friction surface may be hydrophobic (repel water) and/or hydrophilic and/or be oleophobic (repel oils)”.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claim 9, and in accordance with the definition afforded to “oleophobic” set forth in this action under title “Claim Interpretation”, there appears no support in application for the subject matter of claim 9. Specifically, the originally filed disclosure fails to support: a polymeric coating that is both hydrophobic (claim 1) and oleophobic (claim 9).
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 1-7, 9-10, and 12-14 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.
As per claim 1, and as previously set forth in the non-final rejection dated 02/28/25 with regard to claim 8, the limitation “the polymeric high friction coating is tacky and not sticky” is ambiguous. The terms “tacky” and “sticky” are per se unclear as they relative terms for which the claims lacks some standard for measuring the degree intended. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. See MPEP § 2173.05(b). Furthermore, the limitation “tacky and non-sticky” is unclear in view of the interpretation for “tacky” set forth herein under the title “Claim Interpretation” –i.e. “somewhat sticky to the touch”. It is unclear how something can be simultaneously “somewhat sticky to the touch” and “non-sticky”.
As per claim 9, and as previously set forth, the limitation “oleophobic” constitutes new matter. As such, the particular scope intended is uncertain. See MPEP § 2173.05(a). Furthermore, and in accordance with the definition set forth in this action under title “Claim Interpretation”, the term “oleophobic” is a relative term for which the specification lacks some standard for measuring the degree intended. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. See MPEP § 2173.05(b).
Claims 2-7, 9-10, and 12-14 depend from claim 1 and thus inherit the deficiencies thereof.
In view of the numerous indefiniteness issues noted above, although a search of the prior art has been conducted, no meaningful application of prior art against claims 1-7, 9-10, and 12-14 can be made at this time. This should not be taken as an indication that the claims would be allowable if all of the noted issues are corrected. “Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
Response to Arguments
In regards to the objection to the specification issued in the final rejection dated 06/18/25, the remarks filed 12/18/25 has been fully considered but are not found persuasive. Applicant requests withdrawal of the objection by arguing that an amendment to the specification filed 06/18/25 properly establishes antecedent basis for claimed subject matter. However, as set forth herein, the amended specification constitutes new matter and Applicant is required to cancel the new matter in the reply to this Office Action.
In regards to the rejection of claim 9 under 35 USC § 112(a), the remarks filed 06/18/25 have been fully considered but are not found persuasive. Applicant requests withdrawal of the rejection by arguing that the specification now clearly provides support for oleophobic of claim 9. However, as set forth herein, the amended specification constitutes new matter and Applicant is required to cancel the new matter in the reply to this Office Action.
In regards to the rejection of claim 11 under 35 USC § 112(a), the remarks filed 06/18/25 are persuasive and the rejection is withdrawn.
In regards to the rejections of claim 9 under 35 USC § 112(b), the remarks filed 06/18/25 have been fully considered but are not found persuasive. Applicant requests withdrawal of the rejections by arguing that one skilled or with ordinary skill reading the present application together with one’s common knowledge of general science and in view of numerous dictionary definitions of oleophobic, would be able to determine with reasonable certainty whether or not a coating is oleophobic. In response, and as previously set forth previously and in this office action, oleophobic does not appear in the application as originally filed and in accordance with the definition set forth in this action under title “Claim Interpretation”(i.e. having or relating to a lack of strong affinity for oils) the term “oleophobic” is a relative term for which the specification lacks some standard for measuring the degree intended. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. See MPEP § 2173.05(b).
In regards to the claim rejections under prior art issued in the final rejection dated 06/18/25, the remarks filed 12/18/25 have been fully considered but are moot because they do not apply to the current reject contained in this office action.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The prior art made of record in FORM PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period with expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(A) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Gruby, whose telephone number is (571) 272-3415. The examiner can normally be reached from Monday to Friday between 8:00 AM and 5:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Paul Durand, can be reached at (571) 272-4459.
Another resource that is available to applicants is the Patent Data Portal (PDP). Information regarding the status of an application can be obtained from the (PDP) system. For more information about the PDP system, see https://opsg-portal.uspto.gov/OPSGPortal/. Should you have questions on access to the PDP system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/R.A.G/Examiner, Art Unit 3754
/FREDERICK C NICOLAS/Primary Examiner, Art Unit 3754