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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/8/25 has been entered.
REJECTIONS WITHDRAWN
All of the prior art rejections have been withdrawn.
REJECTIONS REPEATED
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites, ”a dyne level of 40-46 for a bond between the outer layer and the intermediate layer”. The instant specification (paragraph [0014]) provides support for a dyne level of 40-46 for a bond between the intermediate layer (backer) and the PSA layer but the specification does not provide support for ”a dyne level of 40-46 for a bond between the outer layer and the intermediate layer”.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,796,283. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,796,283 encompasses the scope of instant claim 1.
NEW REJECTIONS
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ajbani et al. (2004/0151933) in view of Rios et al. (US 2010/0183814).
Ajbani discloses a grip for a firearm (paragraph [0015]) comprising an outer layer formed of a thermoplastic olefin chemical base (paragraphs [0041 – 0055]) containing silicone (paragraphs [0034 – 0038]) and having a shore hardness of 53 (Table 3).
Ajbani does not disclose a grip for a firearm comprising an intermediate layer having a higher surface energy than the elastomer; and an inner layer of pressure sensitive adhesive.
Rios discloses a grip for a firearm comprising an intermediate layer having a higher surface energy than the elastomer, since polyolefin and vinyl acetate are disclosed which are the same material disclosed by applicant in the instant specification at paragraphs [0015 – 0016] (Rios, paragraphs [0093 – 0094] and 306 from Fig. 14); and an inner layer of pressure sensitive adhesive (paragraph [0081] and 308 from Fig. 14) for the purpose of providing high-friction in order to prevent slipping or dropping of an article (paragraphs [0002 – 0003]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided an intermediate layer having a higher surface energy than the elastomer; and an inner layer of pressure sensitive adhesive in Ajbani in order to provide high-friction to prevent slipping or dropping of an article as taught or suggested by Rios.
An intermediate layer having a higher surface energy than the thermoplastic is provided upon the combination of Ajbani and Rios since Rios discloses an intermediate layer having a higher surface energy than the elastomer, since polyolefin and vinyl acetate are disclosed which are the same material disclosed by applicant in the instant specification at paragraphs [0015 – 0016] as discussed above and Ajbani discloses an outer layer formed of a thermoplastic elastomer vulcanite as discussed above.
The combination discloses a dyne level of 40-46 for a bond between the outer layer and the intermediate layer since Rios discloses a corona treatment (paragraph [0110]) between the outer and intermediate layers which is the same treatment which results in the recited dyne level disclosed by applicant (see instant specification, paragraph [0014]).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments of 9/8/25 have been carefully considered but are deemed unpersuasive.
Applicant argues, “Applicant traverses the rejection of Claim | under 35 U.S.C. 112(a) on the grounds that the instant specification does not provide for “a dyne level of 40-46 for a bond between the outer layer and intermediate layer” because it would be understood by one of ordinary skill in the art that a dyne level of 40-46 would be attainable by the means described. Paragraphs [0014] — [0015] describes “Corona treating the backer material prior to the application of the PSA” and that the “TPV and backer are both of an olefin chemical base”. The outer layer is shown to be the TPV layer, and the backer is shown to be the intermediate layer. No basis has been presented that the same treatment to attain a dyne level of 40-46 between the intermediate and PSA layer could not be used between the outer and intermediate layers.”
However, the specification does not say that the same treatment to attain a dyne level of 40-46 between the intermediate and PSA layer can be used between the outer and intermediate layers. Furthermore, the specification does not specifically state that the outer layer, backer/intermediate layer and PSA are made from the same materials.
Applicant argues, “Applicant traverses the rejection of Claim 1 under 35 U.S.C. 103 over U.S. Patent Publication 2004/0151933 from Ajbani et al (Abjani) in view of U.S. Patent Publication 2010/0183814 from Rios et al. (Rios) because combined they do not provide motivation to one of ordinary skill for the claim as amended.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine is provided by Rios (paragraphs [0002 – 0003]) which is to provide high-friction in order to prevent slipping or dropping of an article.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
October 10, 2025