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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
i. Claim 9, “securing option”, which has been interpreted as a layer of adhesive, or equivalents thereof. See Applicant’s published application (paragraph 35).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1, 3-4, 6-10 and 13-14 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, line 10, “in that” should be deleted to correct the grammar.
Regarding claim 9, line 3, --an-- should be inserted before “opposite” to correct the grammar.
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 10 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 10, it is unclear what is meant by “in each case”. It is believed this refers to each of the recited applicant agent materials. However, it is unclear if it refers to some other cases. The examiner suggests using language such as --is selected from the group consisting of acrylate, silicone, polyurethane, rubber, lacquer, cellulose and combinations thereof--.
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, 3-4, 6-9 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tuma (US 2007/0063375 A1) in view of Mudd (US 2016/0331087 A1).
Regarding claim 1, Tuma teaches a fastening system consisting of a functional part which has on one side a functional surface which can be secured to a smooth adhesion surface in a releasable manner, wherein the functional surface of the functional part has a plurality of microstructures, and the plurality of microstructures are configured to interact substantially by Van der Waals forces with the smooth adhesion surface (Abstract; paragraphs 5, 8-18, 25 and 28; Figure 3).
Tuma differs from claim 1 in that:
i. Tuma does not teach an application agent which, when viewed in relation to a rough surface to which it is applied, is configured to form the smooth adhesion surface upon the rough surface, where the smooth adhesion surface is smoother in comparison to the rough surface.
ii. As noted above, Tuma teaches the plurality of microstructures are configured to interact substantially by Van der Waals forces with the smooth adhesion surface. However, Tuma does not teach this interaction with the smooth adhesion surface when the smooth adhesion surface has been applied to the rough surface and has cured in a planar manner due to its material specific inherent surface tension.
(i) and (ii) It is noted that the claims are drawn to a fastening system, not a method of use or a structure including a cured smooth adhesion surface which is planar. The limitations drawn to being configured to form a smooth adhesion surface upon a rough surface; and the smooth adhesion surface being cured in a planar manner due to its surface tension are directed to intended use. Accordingly, these limitations are interpreted in terms of the applied prior art having a structure which is capable of being used in the claimed manner.
Tuma is drawn to a functional part which can be releasably adhered to a surface via Van der Waals forces (paragraphs 8-11). Mudd is also drawn to a functional part which can be releasably adhered to a surface via Van der Waals forces (paragraphs 12-14 and 34). Mudd teaches that a smooth surface is desirable for adhesion via Van der Waals forces (paragraphs 12, 34, 44 and 64). Mudd provides such a smooth surface by applying an application agent which may have a liquid carrier which dries or evaporates to form a smooth coating, which satisfies curing (paragraphs 44, 52 and 79). Mudd also suggests applying the application agent to walls (paragraph 91), which would have been understood by the person of ordinary skill in the art to be planar. A smooth coating applied to a wall is naturally planar. As to the ability to apply the application agent to rough surfaces, Mudd suggests substrate surfaces including concrete and brick (paragraph 50), which are considered rough. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Tuma because one having ordinary skill in the art would have been motivated to provide a smooth surface to facilitate Van der Waals attraction as suggested by Mudd.
Regarding claim 3, Mudd was applied above for providing the claimed application agent. Mudd teaches this additional limitation (paragraph 44).
Regarding claim 4, naturally the applied coating of Mudd can be painted over since any coating can be covered by paint. Alternatively, Mudd teaches an embodiment in which the application agent is removable (paragraph 56). Mudd teaches similar compositions as those disclosed by Applicant, e.g. liquid based sprayable polyurethane, rubber, silicone or lacquer compositions (paragraph 44), and thus it is reasonable to expect such compositions have similar properties, i.e. the ability to be removed from the rough surface without leaving residue.
Regarding claims 6-8, Tuma teaches the functional part consists of silicone and has more than 16,000 adhesive elements per cm2 over a surface (paragraphs 13, 16 and 28). 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. The claim 6 range overlaps with greater than 16,000 per cm2, and the claim 7 range falls within greater than 16,000 adhesive elements per cm2.
Regarding claim 9, Tuma suggests the claimed functional part in the form of a film having a functional surface on one side having a plurality of microstructures. As to the securing option on the opposite surface, naturally any desired further component can be attached to this surface, thereby satisfying the “securing option”. Alternatively, Mudd suggests the functional part may comprise a hook to allow desired items to be hung on the hook. As to attaching such a hook with an adhesive layer, or equivalent, such is a well known suitable method of attaching materials. See Mudd, paragraphs 91-92. 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 Tuma because one having ordinary skill in the art would have been motivated to suitably attach a hook to the functional part using well known adhesive attachment, as suggested by Mudd for the reasons provided above.
Regarding claim 13, it is first noted that the claims are not limited to forming or providing a surface of any particular roughness. Rather claim 13 recites a capability of the claimed application agent of forming a surface with the claimed roughness. As noted above, the application agent of Mudd is similar to that of Applicant, and thus naturally has this property. Alternatively, Mudd was applied above for suggesting the application agent to provide a smooth surface to facilitate Van der Waals attraction. In particular, Mudd teaches Van der Waals forces occur between smooth surfaces (paragraphs 12, 34 and 44). Accordingly, one having ordinary skill in the art would have readily engaged in routine experimentation to allow for sufficient smoothness, i.e. low roughness, to provide for sufficient Van der Waals attraction. It has been held that 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(II)(A). Here, the general conditions of providing smoothness, i.e. low roughness, for achieving desired Van der Waals attraction are disclosed in the prior art. 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 the modified fastening system of Tuma because one having ordinary skill in the art would have been motivated to provide sufficient smoothness, i.e. low roughness, as a matter of routine experimentation in view of the above noted teachings of Mudd.
Regarding claim 14, while this limitation is not recited by Tuma, Mudd suggests rough substrate surfaces such as concrete, brick and cement, which naturally have a roughness well within the claimed range (paragraphs 50 and 55). 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 Tuma because one having ordinary skill in the art would have been motivated to provide attachment to known suitable substrate surfaces, which naturally have a roughness in the claimed range, as suggested by the teachings of Mudd.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tuma in view of Mudd as applied to claim 1, 3-4, 6-9 and 13-14 above, and further in view of Poulakis (WO 2022/017708 A1, referencing US 2023/0258212 A1 as an English language equivalent).
Regarding claim 9, above teachings of Mudd were used to suggest adhesive attachment between materials is generally known in order to suggest adhesive attachment between the functional part of Tuma and a further component such as a hook taught by Mudd. Here Poulakis is applied for specifically suggesting adhesive attachment of a functional part of the type taught by Tuma to an additional component. See Poulakis (paragraphs 36-43; Figure 3). Poulakis thus provides further motivation for such adhesive attachment. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide the claimed securing option in the modified fastening system of Tuma because one having ordinary skill in the art would have been motivated to use a known suitable attachment between the functional part suggested by Tuma and a further component, as suggested by the teachings of Poulakis.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tuma in view of Mudd as applied to claim 1, 3-4, 6-9 and 13-14 above, and further in view of Kremer (US 3776873).
Regarding claim 10, Mudd was applied above for providing the application agent, but Mudd does not recite storage in a spray can, or curing in less than a minute. Mudd does suggest acrylate, silicone, rubber, polyurethane, cellulose and lacquer based application agents (paragraphs 11 and 44). It is noted that a lacquer is satisfied by a solvent-based polymer solution. Mudd also teaches application by spraying (paragraph 44). In the related art of spraying solvent based polymer coatings, Kremer suggests application using a spray can (Example 1) and that fast drying, which satisfies curing, may be achieved by selection of low boiling solvents such as acetone or hexane (column 4, lines 13-21). One having ordinary skill in the art would readily appreciate that solvents such as acetone and hexane evaporate very quickly. Moreover, the teaching of achieving quick drying through appropriate solvent selection suggests achieving a desired drying or curing time as a matter of routine experimentation. Naturally, storage in a spray can offers convenience and portability. For example, see Kremer (column 1, lines 26-29). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitation in the modified fastening system of Tuma because one having ordinary skill in the art would have been motivated to provide a suitable spray device and/or to achieve convenience and portability as suggested by the teachings of Kremer, and because one having ordinary skill in the art would have been motivated to select a suitable fast curing time as a matter of routine experimentation by selection of an appropriate solvent in accordance with the above noted teachings of Kremer.
Response to Arguments
Applicant's arguments filed 21 October 2025 have been fully considered but they are not persuasive.
Applicant argues Mudd teaches away from gecko-type adhesive surface materials of the type taught by Tuma. While this argument may be persuasive against the previous grounds of rejection which used Mudd as a primary reference, the current grounds of rejection use Tuma as the primary reference. Since Tuma clearly does not teach away from such adhesive surface materials, this argument is not persuasive against the current grounds of rejection. It is noted that the combined new limitations of a rough surface, curing in a planar manner and material-specific surface tension necessitated the current new grounds of rejection.
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.
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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.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745