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 .
DETAILED ACTION
Information Disclosure Statement
1. The references disclosed within the information disclosure statement (IDS) submitted on September 11, 2024, has been considered and initialed by the Examiner.
Claim Rejections – 35 USC 112
2. 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.
3. Claims 5-7 and 36 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
In claims 5-7, the phrase, “high strength” is indefinite, as “high” is a relative term. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In claim 36, the phrase, “low friction coating” is indefinite, as “low” is a relative term. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
5. Claims 5-8, 11-17, 36 and 46-48 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (CN 112590333 A).
Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness. The hardness of the rubber layer, Shore D, is 65-85, the hardness of the thermoplastic polyurethane elastomer rubber layer, Shore D is 30-45, and the hardness of the thermoplastic polyurethane elastomer rubber layer of the inner layer is greater than the surface layer. Yang discloses the hardness of the thermoplastic polyurethane elastomer rubber layer (paragraphs 8-9). The thermoplastic polyurethanes (TPU) of the two films differing with regard to their Shore D hardness, and thereby implicitly also differing with regard to their Shore A hardness. Yang does not appear to explicitly teach the strength or coefficient of friction, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed strength and coefficient of friction, as in claim 5.
Concerning claim 6, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9).
Yang does not appear to explicitly teach the tensile strength, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed tensile strength.
Concerning claim 7, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9).
Yang does not appear to explicitly teach the tear strength, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed tear strength.
Concerning claim 8, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9). In claim 8, the phrase, “are configured to provide an abrasion resistant elastomeric pad” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 11, Yang discloses the hardness of the rubber layer, Shore D, is 65-85, the hardness of the thermoplastic polyurethane elastomer rubber layer, Shore D is 30-45, and the hardness of the thermoplastic polyurethane elastomer rubber layer of the inner layer is greater than the surface layer. Yang discloses the hardness of the thermoplastic polyurethane elastomer rubber layer (paragraphs 8-9).
Concerning claim 12, Yang discloses the hardness of the rubber layer, Shore D, is 65-85, the hardness of the thermoplastic polyurethane elastomer rubber layer, Shore D is 30-45, and the hardness of the thermoplastic polyurethane elastomer rubber layer of the inner layer is greater than the surface layer. Yang discloses the hardness of the thermoplastic polyurethane elastomer rubber layer (paragraphs 8-9).
Concerning claims 13-16, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9). Yang discloses the thickness of each layer of the thermoplastic polyurethane elastomer rubber layer is 0.15-1.96 mm (150-1900 microns).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior
art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191
USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
Cir. 1990).
Concerning claim 17, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9). Yang discloses the thickness of each layer of the thermoplastic polyurethane elastomer rubber layer is 0.15-1.96 mm (150-1900 microns). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Concerning claim 36, Yang discloses the composite board further includes a UV coating, and the UV coating is attached to the scratch-resistant and wear-resistant layer (paragraph 30).
Concerning claim 46, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9).
Yang does not appear to explicitly teach the abrasion resistance, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed abrasion resistance.
Concerning claim 47, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9).
Yang does not appear to explicitly teach the abrasion resistance, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed abrasion resistance.
Concerning claim 48, Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness (paragraphs 8-9).
Yang does not appear to explicitly teach the abrasion resistance, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed abrasion resistance.
Claim Rejections – 35 USC § 103
6. Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (CN 112590333 A) in view of Soane et al (U.S. 2002/0120067).
Yang discloses a composite board comprising a substrate layer, a scratch resistant and wear resistant layer, where the two layers include thermoplastic polyurethane elastomer rubber with different hardness. The hardness of the rubber layer, Shore D, is 65-85, the hardness of the thermoplastic polyurethane elastomer rubber layer, Shore D is 30-45, and the hardness of the thermoplastic polyurethane elastomer rubber layer of the inner layer is greater than the surface layer. Yang discloses the hardness of the thermoplastic polyurethane elastomer rubber layer (paragraphs 8-9). The thermoplastic polyurethanes (TPU) of the two films differing with regard to their Shore D hardness, and thereby implicitly also differing with regard to their Shore A hardness. Yang does not appear to explicitly teach the strength or coefficient of friction, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed strength and coefficient of friction. Yang does not disclose the thermoplastic elastomer layer(s) are optically clear. Soane teaches composite articles (paragraph 49) where thermoplastic elastomers are known to be optically clear (paragraph 50). Yang and Soane are combinable because they are related to a similar technical field, which is composite articles. It would have been obvious to one of ordinary skill in the art
For the thermoplastic elastomer layers of Yang to be optically clear, as taught in Soane, because Soane teaches it is known in the art for thermoplastic elastomers to be optically clear, as in claim 28.
Allowable Claims
7. Claims 3-4 are allowed. The closest prior art does not teach or suggest the recited device further including a film disposed on the substrate for contact with the target surface having a second Shore A hardness of at least fifty, a second thickness not exceeding five hundred microns, a tensile strength of at least ten Megapascals, an elongation at break of at least three hundred percent, and a kinetic coefficient of friction against matte steel not exceeding 1.5. The closest prior art does not teach or suggest the recited device further including wherein the first elastomer has a Shore A hardness not exceeding twenty. The closest prior art does not teach or suggest the recited device further including wherein the first elastomer has a Shore A hardness not exceeding five.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Claim Objections
8. Claims 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art does not teach or suggest the recited device further including wherein the first elastomer has a Shore A hardness not exceeding twenty. The closest prior art does not teach or suggest the recited device further including wherein the first elastomer has a Shore A hardness not exceeding five.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Claim 48 is objected to because of the following informalities: There is a pending claim 48 and a cancelled claim 48. Appropriate correction is required.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781