DETAILED ACTION
Claim Interpretation
Regarding claim 1, a material implicitly has a surface. Accordingly, “the surface” in line 10 and throughout claim 1 has proper antecedent basis even though this term is not previously recited.
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 1-9, 15-16, 27 and 30-32 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.
Regarding claim 1, the examiner does not find any teaching in the original disclosure or claims of grafting a hydrophilic polymer. Applicant points to Example 12 for support. However, this example is clearly drawn to grafting a hydrophilic monomer (vinyl pyrrolidone), not a polymer. There is no indication that the subsequently applied mixture of polyvinylpyrrolidone and carboxymethyl cellulose is grafted. Accordingly, Applicant was not in possession of this new limitation at the time the application was filed.
Claim Rejections - 35 USC § 103
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.
Claims 1-9, 15-16, 25, 27 and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Bilyk (US 2003/0194504 A1) in view of Cohen (US 2010/0035074 A1) and Kuckertz (US 2002/0012756 A1).
Regarding claim 1, Bilyk teaches a method for surface modifying a material to produce a surface modified material, comprising oxidizing the material to obtain an oxidized material and surface coating the oxidized material to produce the surface modified material (paragraphs 26-30, 38-53 and 115). Bilyk teaches the surface coating comprises subjecting the oxidized material to grafting a hydrophilic polymer, such as one which contains amino groups and may further contain acrylate, methacrylate or ethylene oxide groups (paragraphs 29, 39, 58 and 115).
Bilyk differs from claim 1 in that:
i. Bilyk does not recite the specified properties achieved by oxidizing recited in lines 9-19 of claim 1.
ii. Bilyk does not explicitly recite the surface coating of the oxidized material increases a weight of the oxidized material by less than about 5%.
(i) Bilyk suggests surface modifying a wide range of organic polymers and suggests oxidizing using atmospheric plasma treatment (paragraphs 35-39). The oxidizing and surface coating provides greater surface adhesion to such polymer materials (paragraphs 1-2 and 26). Bilyk further teaches that the oxidizing treatment provides functional groups for grafting of the polymeric material (paragraphs 1-2, 8-9, 18-19, 26-32, 39 and 64). Naturally organic polymers have C-C bonds at the surface. In related art, it is known the surface active sites formed by plasma treatment may include groups having C-O bonds such as peroxides, oxides, hydroxyls or epoxides. See Cohen (paragraph 14). Cohen suggests surface modifying any organic polymer and suggests oxidizing using atmospheric plasma treatment (paragraphs 69-70). As in Bilyk, the oxidizing and surface coating of Cohen provides greater surface adhesion to such polymer materials (paragraph 72). Cohen further teaches that plasma treatment variables such as plasma power, treatment time and choice of carrier gas can be adjusted to provide the necessary formation of surface active sites which become sites for grafting (paragraphs 10 and 70). Thus Cohen suggests changing plasma treatment variables to provide a desired increase in C-O surface bonds to provide a desired density of functional groups for subsequent grafting. Ultimately, as noted above, the result is a desired improvement in surface adhesion to treated polymer materials.
Bilyk and Cohen are silent as to particular C-O/C-C percent increase at the claimed surface depth, C-O/C-C percentage at the claimed surface depth, or O/C atomic number ratio at the claimed surface depth, all as measured by X-ray photoelectron spectroscopy (XPS). It is noted that a positive step of measuring with XPS is not required. The recitation of XPS only serves to clearly define the claimed properties.
In related art, Kuckertz suggests atmospheric plasma treatment of polyethylene or polypropylene increases the O/C atomic number ratio from 0.01 to anywhere from 0.02 to 0.19 depending on the treatment conditions (paragraphs 23-25; Table 1), which substantially overlaps with the corresponding claimed range. Kuckertz teaches such treatment may be applied to various polymeric materials (paragraph 30) to provide enhanced wettability for adhesives (paragraph 2, 28, 34). Kuckertz teaches the surface is oxidized by addition of oxygen containing groups and plasma treatment should not be excessive to avoid damage to the treated material (paragraphs 34 and 44). Similarly, Applicant suggests the use of atmospheric plasma treatment and many of the same polymer materials (Applicant’s published application, paragraphs 75 and 122). Given the similar treatment methods, materials and O/C ratios achieved, Kuckertz suggests that similar results would naturally be achieved, i.e. values within the claimed ranges. Moreover it is clear from the above noted teachings of Cohen and Kuckertz that the desired amount of oxidation during plasma treatment should be provided as a matter of routine experimentation by adjusting recognized plasma variables to provide sufficient activation for grafting, sufficient improvement of surface adhesion, and to avoid damage of the treated material. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05. Given the similar materials and treatment methods suggested by Bilyk, Cohen and Kuckertz, the claimed properties would reasonably be expected to naturally flow from optimized or workable plasma conditions. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide one or more of these limitations in Bilyk because one having ordinary skill in the art would have been motivated to provide suitable plasma treatment conditions as a matter of routine experimentation for the reasons provided above in view of the teachings of Cohen and Kuckertz, the claimed properties naturally flowing from such optimized or workable plasma conditions, as evidenced by the teachings of Kuckertz.
(ii) Bilyk teaches the coating thickness may be less than 3 µm, down to the order of a molecular monolayer (paragraphs 116-118). Bilyk also suggests film substrates (paragraph 37) Kuckertz suggests using film substrates having a thickness of about 10 to 200 µm (paragraph 28). It is clear that a thin coating thickness of less than 3 µm on such a film would include values less than 5 wt% of the film. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Bilyk because one having ordinary skill in the art would have been motivated to use known suitable film substrates, as suggested Kuckertz, thereby naturally providing this limitation in view of the coating thickness suggested by Bilyk for the reasons provided above.
Claims 2-5 are satisfied for the reasons provided above.
Regarding claims 6-7, Kuckertz suggests such interfacial adhering with an adhesive present between the treated material and a second material (paragraphs 2 and 28). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional steps in Bilyk because one having ordinary skill in the art would have been motivated to utilize the enhanced adhesion taught by Bilyk in known laminating techniques, as suggested by Kuckertz.
Regarding claim 8, Bilyk recognizes that plasma treatment alone only provides improved surface properties for a limited period of time (paragraphs 8 and 26). The additional step of grafting allows improved stability (paragraph 26). Thus, the method of Bilyk allows for surface bonding, as suggested by Kuckertz above, at any desired time, such as about 1 hour after surface modification. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Bilyk because one having ordinary skill in the art would have been motivated to provide such adhesion at any desired time as a matter of routine design choice for the reasons provided above.
Regarding claim 9, given that the modified method of Bilyk uses the same oxidation and surface coating as claimed, it is reasonable to expect the same results are achieved, i.e. a shear strength improvement in the claimed range. It is noted that “when a tensile test is performed” indicates the recitation of a property, i.e. improvement in shear strength under the recited testing conditions, rather than positive steps of performing the test.
Regarding claim 15, while not recited by Bilyk, Cohen suggests this step for removing contaminants (paragraph 70). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in Bilyk because one having ordinary skill in the art would have been motivated to remove contamination prior to oxidizing as suggested by Cohen.
Regarding claims 16, Bilyk clearly teaches this additional limitation.
Claim 25 is satisfied for the reasons provided above.
Claim 27 is satisfied for the reasons provided above with respect to claims 6-7.
Regarding claims 30-31, Bilyk teaches these additional limitations (paragraphs 108-115).
Regarding claim 32, Bilyk teaches this additional limitation (paragraphs 69 and 93). A catalyst, accelerator, amine or tertiary amine satisfies the claimed initiator.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Cohen in view of Kuckertz.
Regarding claim 25, this claim has not been amended to distinguish over surface coating by grafting a monomer. Accordingly, Cohen is applied here as the primary reference and Bilyk is not applied.
Regarding claim 25, Cohen teaches a method for surface modifying a material, comprising oxidizing the material and surface coating the oxidized material (Abstract; Figure 1; paragraphs 14-16, 43, 60 and 69-71). Surface coating is satisfied by Cohen’s teaching of subjecting the oxidized material to grafting of a hydrophilic monomer such as methacrylic acid, methacrylic acid, methyl methacrylate, butyl acrylate, vinyl pyrrolidone or vinyl pyridine (paragraphs 60-61 and 71).
Cohen differs from claim 25 in that:
i. Cohen does not recite the specified properties achieved by oxidizing recited in lines 8-18 of claim 25.
ii. Cohen does not explicitly recite the surface coating of the oxidized material increases a weight of the oxidized material by less than about 5%.
(i) Cohen suggests surface modifying any organic polymer and suggests oxidizing using atmospheric plasma treatment (paragraphs 69-70). The oxidizing and surface coating provides greater surface adhesion to such polymer materials (paragraph 72). Cohen further teaches that plasma treatment variables such as plasma power, treatment time and choice of carrier gas can be adjusted to provide the necessary formation of surface active sites which become sites for vinyl monomer grafting (paragraphs 10 and 70). Naturally organic polymers have C-C bonds at the surface. The surface active sites formed by plasma treatment may include groups having C-O bonds such as peroxides, oxides, hydroxyls or epoxides (paragraph 14). Thus Cohen clearly suggests changing plasma treatment variables to provide a desired increase in C-O surface bonds to provide a desired density of functional groups for subsequent vinyl monomer grafting initiation. Ultimately, as noted above, the result is a desired improvement in surface adhesion to treated polymer materials.
Cohen is silent as to particular C-O/C-C percent increase at the claimed surface depth, C-O/C-C percentage at the claimed surface depth, or O/C atomic number ratio at the claimed surface depth, all as measured by X-ray photoelectron spectroscopy (XPS). It is noted that a positive step of measuring with XPS is not requires. The recitation of XPS only serves to clearly define the claimed properties.
In related art, Kuckertz suggests atmospheric plasma treatment of polyethylene or polypropylene increases the O/C atomic number ratio from 0.01 to anywhere from 0.02 to 0.19 depending on the treatment conditions (paragraphs 23-25; Table 1), which substantially overlaps with the corresponding claimed range. Kuckertz teaches such treatment may be applied to various polymeric materials (paragraph 30) to provide enhanced wettability for adhesives (paragraph 2, 28, 34). Kuckertz teaches the surface is oxidized by addition of oxygen containing groups and plasma treatment should not be excessive to avoid damage to the treated material (paragraphs 34 and 44). Similarly, Applicant suggests the use of atmospheric plasma treatment and many of the same polymer materials (Applicant’s published application, paragraphs 75 and 122). Given the similar treatment methods, materials and O/C ratios achieved, Kuckertz suggests that similar results would naturally be achieved, i.e. values within the claimed ranges. Moreover it is clear from the above noted teachings of Cohen and Kuckertz that the desired amount of oxidation during plasma treatment should be provided as a matter of routine experimentation by adjusting recognized plasma variables to provide sufficient activation for grafting, sufficient improvement of surface adhesion, and to avoid damage of the treated material. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05. Given the similar materials and treatment methods suggested by Cohen and Kuckertz, the claimed properties would reasonably be expected to naturally flow from optimized or workable plasma conditions. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide one or more of these limitations in Cohen because one having ordinary skill in the art would have been motivated to provide suitable plasma treatment conditions as a matter of routine experimentation for the reasons provided above in view of the teachings of Cohen and Kuckertz, the claimed properties naturally flowing from such optimized or workable plasma conditions, as evidenced by the teachings of Kuckertz.
(ii) As to the additional limitation of a weight increase of less than about 5%, Cohen teaches the coating thickness may be about 40 Å, which is about 0.004 µm (paragraph 71). Kuckertz suggests using film substrates having a thickness of about 10 to 200 µm (paragraph 28). It is clear that such a thin coating film would be far less than 5 wt% of such a film. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified method of Cohen because one having ordinary skill in the art would have been motivated to use known suitable film substrates, as suggested Kuckertz, thereby naturally providing this limitation for the reasons provided above.
Response to Amendment
The declaration under 37 CFR 1.132 filed 09 January 2026 is insufficient to overcome the current grounds of rejection of the claims over prior art.
The declaration attempts to show unexpected results of improved adhesion relative to Cohen, applied above. However, the declaration does not adequately compare the present invention with Cohen. First, the cleaning method used in the declaration under the Cohen example is disclosed for cleaning a silicon wafer, not silicone rubber. These are entirely different materials and one would not expect that the same cleaning method should be used for both. Cohen suggests cleaning polymeric substrates by immersing or rinsing with solvent (paragraph 70) rather than technique used in the declaration. In fact, Cohen teaches to avoid the technique used in the declaration for polymeric substrates (paragraph 70). Additionally, the declaration uses different plasma treatment conditions for the Cohen and the current invention examples despite the fact that Cohen teaches that atmospheric plasma with air may be used for oxidation (paragraph 43). Moreover, the vinyl pyrrolidone monomer used in the Cohen example of the declaration does not have any relation to the carboxymethyl cellulose (CMC) polymer used in the inventive example, i.e. CMC is not made from vinyl pyrrolidone monomers. Why wasn’t polyvinylpyrrolidone used for comparison? Applicant is attempting to establish unexpected results with respect to grafting a polymer rather than a monomer, but does not use a polymer and monomer which have any relation to perform the comparison. For these reasons, the examples in the declaration do not clearly establish unexpected results over Cohen. Additionally, it is noted that claim 25 does not recite the alternative of grafting a polymer. Accordingly, the declaration is clearly not commensurate in scope with claim 25.
Further regarding the declaration, the claims are not limited to a silicone rubber substrate, carboxymethyl cellulose grafted polymer, cleaning with alcohol, or atmospheric plasma activation. Accordingly, the single example provided in the declaration does not establish unexpected results commensurate in scope with the much broader current claims.
Response to Arguments
Applicant's arguments filed 09 January 2026 have been fully considered but they are not persuasive.
The arguments are drawn to amended claim 1 which now recites the alternative of grafting a hydrophilic polymer rather than a hydrophilic vinyl monomer. New grounds of rejection have been applied to address the amended claims. It is noted that claim 25 has not been amended to include grafting a hydrophilic polymer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745