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
Applicants’ response filed 8/7/2025 amended claim 12. Applicants addressed the IDS issues from the office action mailed 2/7/2025; therefore, this issue is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejections over Schmidt in view of Sundar, Schmidt in view of Sundar further in view of Mori, and Schmidt in view of Sundar further in view of Nalin form the office action mailed 2/7/2025; therefore, these rejections are maintained below. Finally, applicants’ arguments regarding the double patenting rejection are addressed below and the rejection maintained herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/7/2025 was filed after the mailing date of the non-final office action on 2/7/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. Claims 1, 6, 12-15, 26-33, 44 and 64-65 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al., US Patent Application Publication No. 2006/0153993 (hereinafter referred to as Schmidt) in view of Sunder et al., International Publication No. WO/2014/120662 A1 (hereinafter referred to as Sunder).
Regarding claims 1, 6, 12-15, 26-32, 44 and 64-65, Schmidt discloses a liquid coating system of polymer substrates (“liquid” and “polymer base” as recited in claim 1) (see Title and Para. [0009]) for use on skis and snow boards (as recited in claim 1) (Para. [0088]) comprising; a mixture of silane compounds including 0.5 to 20 wt% of the silanes represented by formula (III) in paragraph 0038 (reads on “grafting agent” as recited in claim 1 and reads on claims 13-15 - reads on (3-aminopropyl)triethoxysilane when in formula (III) – R is a monoalkylamino group, a is 1 and X’s are ethoxy groups) (Para. [0038]-[0044]), 0.1 to 10 wt% of a triarylsulfonium hexafluoroantimonate salt free radical photoinitiator (free-radical initiator as recited in claim 1 and reads on claims 26-28) (Para. [0051]-[0052] and [0097]), 0.5 to 20 wt% of methyltrimethoxysilane (reads on “stabilizer” as recited in claims 64-65) (Para. [0042]-[0044]), and a solvent, such as, water, ethanol and/or isopropanol (Para. [0048]) wherein the composition is free of wax (as recited in claim 32) (see Examples).
Schmidt discloses all the limitations discussed above and further discloses the presence of additional silane compounds (see Examples 1-2/Para. [0094]-[0096]) but does not explicitly disclose a non-fluorinated silane hydrophobic compound as recited in claim 1.
Sunder discloses a hydrophobic coating for plastic (see Abstract) comprising 0.5 to 20 wt% of a hydrophobic agent, such as, dialkyl silane (reads on “non-fluorinated silane hydrophobic compound” as recited in claim 1 and reads on claims 12-13 and 44) (Para. [0069]-[0072]), 75 to 94 wt% of a solvent, such as, octamethyltrisiloxane (as recited in claims 6 and 29-31) (Para. [0015] and [0074] and see Claim 16). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the hydrophobic agent of Sunder in the composition of Schmidt in order to enhance the hydrophobic nature of the polymer/substrate surface (Para. [0069] of Sunder).
Regarding claim 33, see discussion above.
Claim Rejections - 35 USC § 103
7. Claims 7-11, 37-38 and 66 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Sunder as applied to claims 1, 6, 12-15, 26-33, 44 and 64-65 above, and further in view of Mori et al., US Patent No. 8,440,267 (hereinafter referred to as Mori).
Regarding claims 7-11, 37-38 and 66, Schmidt/Sunder disclose all the limitations discussed above and Schmidt further discloses that the coating composition is cured by a combination of exposure to light and heating. It is preferred to cure first by a combined treatment of irradiation and heating and subsequently complete the curing step by further heating alone. The appropriate irradiation includes UV radiation or laser light may be employed. During the step of exposing to light or radiation and/or heating, the cationic initiator may generate an acid. Besides the polymerisation of the cationically polymerizable groups (crosslinking), this acid may also assist in curing the siloxane framework (inorganic condensation) almost to completion, especially when the coating is heated (Para. [0057]-[0058]). Schmidt does not explicitly disclose the controller recited in claim 7.
Mori discloses that it is known in the art to utilize a light energy source, and photo-polymerizable chamber for curing a photo-polymerizable coating agent on a base material wherein the curing occurs at room temperature (see Figure 1, Col. 11/L. 38-67 and Col. 12/L. 1-2 and 40-47). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Schmidt/Sunder with the teaching of Mori for the purpose of providing the recited photoinitiator to form a desired hydrophobic coating on a ski.
Claim Rejections - 35 USC § 103
8. Claims 66-75 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt in view of Sunder as applied to claims 1, 6, 12-15, 26-33, 44 and 64-65 above, and further in view of Nalin et al., International Publication No. WO/2014/178841 A1 (hereinafter referred to as Nalin).
Regarding claims 66-75, Schmidt/Sunder disclose all the limitations discussed above and Schmidt further discloses that the coating composition is cured by a combination of exposure to light and heating. It is preferred to cure first by a combined treatment of irradiation and heating and subsequently complete the curing step by further heating alone. The appropriate irradiation includes UV radiation or laser light may be employed. During the step of exposing to light or radiation and/or heating, the cationic initiator may generate an acid. Besides the polymerisation of the cationically polymerizable groups (crosslinking), this acid may also assist in curing the siloxane framework (inorganic condensation) almost to completion, especially when the coating is heated (Para. [0057]-[0058]). Sunder further discloses the general knowledge of coating by annealing as a surface treatment by heating at 150°C for 3 hours is required to cure the coating on the substrate. Neither Schmidt nor Sunder explicitly disclose the chamber, the humidifier, the conveyor, nor the buffing station recited in claims 66-68 and 73.
Nalin discloses a system for applying a coating to a workpiece includes an applicator head and a humidifying apparatus (see Abstract). The applicator head is arranged adjacent a conveyor which transports workpieces past the applicator head, in a transport direction, so that the edges of the workpieces can be coated. Attached to the applicator head is a paint feed apparatus (buffing station as recited in claim 73) (see Figure 1 and Para. [0018]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the system of Nalin in the system of Schmidt/Sunder as it is the use of known technique to improve similar devices (methods, or products) in the same way.
Double Patenting
9. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
10. Claims 1, 6-15, 26-33, 37-38, 44 and 64-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2, 5, 7-12, 52-54, 56-57, 59, 64-68 and 70 of co-pending application No. 17/432,629. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending ‘629 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above and incorporated herein by reference.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Response to Arguments
11. Applicants’ arguments filed 8/7/2025 regarding claims 1, 6-15, 26-33, 37-38, 44 and 64-75 have been fully considered and are not persuasive.
Applicants argue that Sundar is non-analogous art to the claimed invention and therefore the obviousness rejection set forth above is improper. This argument is not persuasive. This argument is not persuasive as Sundar is concerned with coating compositions for plastics, similar to what is taught in Schmidt and what is claimed in the instant application.
Applicants also argue that the modification of Schmidt with the silane hydrophobic component of Sundar is improper. This argument is not persuasive as the fluorinated silane component of Schmidt is not being replaced by the silane hydrophobic component of Sundar. The Sundar hydrolysable silane of Sundar is being added to the coating composition of Schmidt in order to enhance the hydrophobic nature of the polymer/substrate surface as discussed above.
Applicants further argue that the coating of Sundar requires mixing the hydrolysable silane compound with an etchant which would reduce the texture and porosity of a base material. Applicants merely allege this to be the case but have not shown it to be so. It seems as if the etchant does not reduce the porosity of the plastic base materials when used as a coating component in the applications of Sundar.
Applicants argue that Mori does not disclose a controller as recited in claim 10, nor the heater recited in claim 11. This argument is also not persuasive. Mori explicitly discloses in column 12, lines 58-63 that the light source which is a source for generating light (active energy rays) such as ultraviolet rays caused by a non-electrode lamp or the like connects to an electric source and a control apparatus not shown.
Mori also discloses in column 11, lines 19-24, during a period of from just after completion of application of the coating agent to starting of curing the coating film, it is desired to retain the base material on which the coating film has been formed under the circumstance that the temperature is not higher than room temperature as recited in claim 38.
Applicants also provide objective evidence of nonobviousness in the form of an Affidavit signed by Chad Horne on 8/6/2025; to overcome the obviousness rejections set forth above. The arguments presented regarding commercial success are not persuasive.
To be entitled to substantial weight, the applicant should establish a nexus between the rebuttal evidence and the claimed invention, i.e., objective evidence of nonobviousness must be attributable to the claimed invention. The Federal Circuit has acknowledged that applicant bears the burden of establishing nexus, stating:
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sales constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 ([BPAI] 1990) (evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success. In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). See also GPAC, 57 F.3d at 1580, 35 USPQ2d at 1121; In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the obviousness rejection was not probative of nonobviousness.).
Additionally, the evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed. Cir. 1983). In re Soni, 54 F.3d 746, 34 USPQ2d 1684 (Fed. Cir. 1995) does not change this analysis. In Soni, the court declined to consider the Office’s argument that the evidence of nonobviousness was not commensurate in scope with the claim because it had not been raised by the examiner. Id. 54 F.3d at 751, 34 USPQ2d at 1688. In other words, in order for evidence of secondary considerations to be accorded substantial weight, there must be a nexus, i.e., a legally and factually sufficient connection or correspondence between the submitted evidence and the claimed invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373, 2019 USPQ2d 483355 (Fed. Cir. 2019), cert. denied, 141 S.Ct. 373 (2020). “A presumption of nexus requires both that the product embodies the invention and is coextensive with it.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202,1211-12, 2023 USPQ2d 1000 (Fed. Cir. 2023) (While Volvo Penta provided insufficient evidence to show a presumption of nexus, they did provide sufficient evidence to show nexus, independent of the presumption, through evidence of commercial success and copying due to the unique features of the claimed invention.). See MPEP § 716.01(b).
In this case what is claimed is much broader than what is tied into the commercial success.
Regarding the double patenting rejection as is stated above, the claim limitations that are not present in the instant claims would be obvious in light of the references discussed above and incorporated by reference.
Conclusion
12. THIS ACTION IS MADE FINAL. 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 VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771