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
Amendments to the claims, filed on 12/18/25, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 11-16 and 18-20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hoerner et al (US 3,578,550 A).
Regarding claims 11 and 14-16, Hoerner teaches a protective covering system (e.g., non-skid sheet) comprising a substrate (e.g., a release liner) (6) comprising an exposed major surface; a first layer (e.g., silane-containing polyurethane binder) (4) applied to the exposed major surface of the substrate, the first layer comprising a first material (e.g., silane-containing polyurethane binder); a second layer comprising a particulate (e.g., frictional particles) (2) applied to the first layer, a first portion of the particulate penetrating into the first layer and a second portion of the particulate sits above the first layer; wherein the second portion of the particulate sitting above the first layer forms a varied topography; and wherein the first material is removably bonded to the exposed major surface of the substrate (e.g., release liner so removable); wherein the particulate has a particulate size that is greater than a thickness of the first layers; wherein the second layer is discontinuous; and, wherein the first layer is continuous (col 2, lines 10-48, col 3, lines 25-48; figure).
The limitation via spray application of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 11 and the product of Hoerner.
Regarding the first layer being continuous, the figure of Hoerner would have reasonably suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention said limitation (e.g., areas wherein the binder is continual). However, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the embedded depth of the frictional particles in the binder of Hoerner to insure the particles are properly bound while also allowing to provide frictional properties; and therein optimizing the continuity or thickness of the first layer.
It is noted Hoerner does not expressly disclose “wherein the particulate has a particulate size that is greater than a thickness of the first layers.” However, the figure of Hoerner would have reasonably suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention said limitation.
The additional foil (3) and pressure sensitive adhesive (5) layers are noted (col 2, lines 10-48, figure). However, the claim uses the transitional term “comprising.” The transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (MPEP § 2111.03).
Regarding claims 12 and 13, Hoerner teaches the particulate (e.g., frictional particles) is selected from polymeric material (e.g., rubber) and/or inorganic material (silicon carbide or aluminum oxide) (col 3, lines 25-48). The limitations of claim 13 depend upon an optional limitation and need not be taught by the prior art.
Regarding claims 18-20, Hoerner teaches a third layer (7) comprising a second polymer (e.g., elastomeric size coat), the third layer applied to the second layer and in partial contact with the first layer; wherein the third layer is continuous; wherein the varied topography translates through the third layer (col 2, lines 10-48, col 3, lines 25-48; figure).
Claims 1, 2, and 4-10 are rejected under 35 U.S.C. 103 as obvious over Hoerner in view of Rintoul et al (US 2009/0214814 A1).
Regarding claims 1, 2, 4, and 5, Hoerner teaches a protective coating (e.g., non-skid sheet) comprising a first major surface opposite a second major surface, the protective coating comprising a first layer comprising a first polymer (e.g., silane-containing polyurethane binder) (4), the first layer having a first thickness; a second layer comprising a particulate (e.g., frictional particles) (2) having an average particulate size; wherein the average particle size is greater than the first thickness of the first layer, and wherein at least a first portion of the particulate penetrates into the first layer thereby overlapping with at least a portion of the first thickness, and wherein a second portion of the particulate sits above the first layer; wherein the second major surface of the protective coating comprises the first layer; and wherein the first major surface of the protective coating comprises a varied topography formed in part by the second portion of the particulate; wherein the particulate size is greater than the first thickness; wherein the protective coating has an overall thickness as measured between the first major surface and the second major surface (col 2, lines 10-48, col 3, lines 25-48; figure).
It is noted Hoerner does not expressly disclose “wherein the average particle size is greater than the first thickness of the first layer” However, the figure of Hoerner would have reasonably suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention both limitations.
Hoerner fails to teach the particulate comprising wood; wherein the particulate is selected from natural wood fiber, composite wood fiber, textile material, and blends there; and wherein the particulate is water absorbable. However, Hoerner teaches the particulate (e.g., frictional particles) is selected from polymeric material (e.g., rubber) and/or inorganic material (silicon carbide or aluminum oxide) (col 3, lines 25-48).
Rintoul teaches slip resistant coating systems comprising texturing agents such as rubber [articles, alumina (Al2O3) particles, and/or saw dust and wood particles (i.e., natural wood fiber and water absorbable) (abstract, para 32).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the saw dust and/or wood particles of Rintoul for the rubber particulates and aluminum oxide (i.e., alumina) particulates of Hoerner, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II), and ,since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Regarding claims 6-10, Hoerner teaches wherein the second layer is discontinuous; wherein the first layer is continuous; wherein the protective coating comprises a third layer (7) comprising a second polymer (e.g., elastomeric size coat); wherein the third layer is in at least partial contact with both of the first layer and the second layer; wherein the third layer forms a seal encapsulating the second portion of the particulate from the first major surface of the protective coating; wherein the third layer is continuous (col 2, lines 10-48, col 3, lines 25-61; fig 1).
Regarding the first layer being continuous, the figure of Hoerner would have reasonably suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention said limitation (e.g., areas wherein the binder is continual). However, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the embedded depth of the frictional particles in the binder of Hoerner to insure the particles are properly bound while also allowing to provide frictional properties; and therein optimizing the continuity or thickness of the first layer.
Claims 30 and 31 are rejected under 35 U.S.C. 103 as obvious over Hoerner in view of Ogawa et al (JP 2010-229180 A) and Rintoul.
Hoerner teaches a protective coating (e.g., non-skid sheet) comprising a first major surface opposite a second major surface, the protective coating comprising a first layer comprising a first polymer (e.g., silane-containing polyurethane binder) (4), the first layer having a first thickness; a second layer applied to the first layer comprising a particulate (e.g., frictional particles) (2) having an average particulate size; a third layer (7) comprising a second polymer matrix (e.g., elastomeric size coat); wherein the average particle size of the particulate is greater than the first thickness of the first layer; wherein the second layer is applied such that a first portion of the second layer at least partially penetrates the first layer and at least a second portion of the second layer sits above the first layer; and wherein the third layer encapsulates the second portion of the second layer. (col 2, lines 10-48, col 3, lines 25-48; figure).
It is noted Hoerner does not expressly disclose “wherein the average particle size of the particulate is greater than the first thickness of the first layer” However, the figure of Hoerner would have reasonably suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention both limitations.
Hoerner fails to teach first polymer selected from rubber and silicone and a cellulosic particulate. However, Hoerner teaches the particulate (e.g., frictional particles) is selected from polymeric material (e.g., rubber) and/or inorganic material (silicon carbide or aluminum oxide) (col 3, lines 25-48).
Ogawa teaches a friction member comprising silica particles exposed in a rubber matrix; wherein the rubber may comprise polyurethane rubber, silicone, rubber, or natural rubber (page 1-3).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the saw dust and/or wood particles of Rintoul for the rubber particulates and aluminum oxide (i.e., alumina) particulates of Hoerner as modified by Ogawa, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II), and ,since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Rintoul teaches slip resistant coating systems comprising texturing agents such as rubber [articles, alumina (Al2O3) particles, and/or saw dust and wood particles (i.e., cellulosic particulates) (abstract, para 32).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the saw dust and/or wood particles of Rintoul for the rubber particulates and aluminum oxide (i.e., alumina) particulates of Hoerner as modified by Ogawa, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II), and ,since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Response to Arguments
Applicant’s arguments, filed 12/18/25, with respect to instant claims 1, 2, and 4-10 have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of a new combination of prior art of record. The Applicant is directed to the 35 USC § 103 section above.
Applicant's arguments filed , filed 12/18/25, with respect to instant claims 10-16 and 18-20 have been fully considered but they are not persuasive. The limitation via spray application of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 11 and the product of Hoerner.
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 NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/ Primary Examiner, Art Unit 1783