NON-FINAL REJECTION
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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Election/Restrictions
Applicant's election with traverse of Group II claims 7-11 in the reply filed on 7/3/2025 is acknowledged. The traversal is on the ground(s) that both Group II claims 7-11, claim 12, and Group IV claims 18-20 share common elements relating to identifying wear or observing areas of wear and a search and/or examination would not be serious. This is not found persuasive because the claimed method of determining erosion and wear of claims 7-11 having the two steps of observing a level of luminance and then determining an amount of erosion and wear from the observations is drawn to subject matter that is not required in the other groups. Specifically, the claimed observing step as part of the method of determining erosion and wear could be interpreted as “identifying portions of luminescence” but the claimed observing/identifying could be performed on any products including other luminescent slip-resistant compositions, and be a part of a process of many different processes of maintaining a surface, as well as a processes of applying a luminescent slip-resistant composition to a concrete surface.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the steps of observing a first level and second level of luminance of a first and second portion of the surface area having the luminescent slip-resistant compound applied thereon and then determining that the second level of luminance is less than the first level of luminance by determining an amount of erosion and wear of the luminescent slip-resistant compound applied to the second portion of the surface area is greater than an amount of erosion and wear of the luminescent slip-resistant compound applied to the first portion of the surface area. These steps of observing and determining as recited in the claim can be performed mentally or in a computer and are similar to the kind of ‘organizing human activity’ at issue in Alice Corp. Although the claims are not drawn to the same subject matter, the abstract idea of observing a level of luminance and determining wear from the level of luminance is similar to the abstract ideas of managing risk (hedging) during consumer transactions (Bilski) and mitigating settlement risk in financial transactions (Alice Corp.) The described method of observation and determining are directed to an abstract idea and this judicial exception is not integrated into a practical application. The claim requires a luminescent slip-resistant compound applied to a surface area, but these claim elements do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the recitation of the compound and surface area amounts to mere elements to implement the abstract idea. Taking the additional elements individually and in combination, the components of each step of the determination method are interpreted as performing generic functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application and the claimed subject matter does not amount to significantly more than the abstract idea itself. Accordingly, the claim is not patent eligible.
Further, the described elements of claims 8-11 do not define any further claim elements which integrate the abstract idea into a practical application. Therefore, claims 8-11 are also not patent eligible.
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.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: the structural claim elements which describe the connection between the claimed “high-traffic area frequently trod on by persons” and the claimed “low-traffic area”, and how these claim element are tied to the claimed method of determining erosion and wear. Merly stated that these areas are the claimed “second portion” and “first portion” do not clearly describe the claimed elements which describe the metes and bounds of the claimed invention. Therefore, the claim is indefinite.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamichi U.S. Patent Application Publication 2005/0220342.
With respect to claim 7, Yamamichi teaches an apparatus for analyzing a luminescent intensity (figure 1) comprising observing a first level of luminance of a first portion of the surface area having the luminescent slip-resistant compound applied thereon (the CCD camera 5 receiving image information of a luminescent sample 2, paragraph 26, figure 1); observing a second level of luminance of a second portion of the surface area having the luminescent slip-resistant compound applied thereon; and determining that the second level of luminance is less than the first level of luminance (image data of a sample with each concentration, interpreted a second portion having a second level of luminance, is collected by a CCD camera, paragraph 48), thereby determining that an amount of erosion and wear of the luminescent slip-resistant compound applied to the second portion of the surface area is greater than an amount of erosion and wear of the luminescent slip-resistant compound applied to the first portion of the surface area (The obtained analysis value, interpreted as amount of erosion or wear, of each gradient is compared with the concentration of a sample to check the correlation of a calibration curve, and the correlation coefficient between the gradient used as a threshold value and the concentration of a sample is obtained with the gradient with the highest correlation with the concentration is set to be a threshold value, paragraph 56, figure 6).
With respect to claim 8, Yamamichi teaches wherein observing a first level of luminance of the first portion of the surface area includes measuring a luminance of the luminescent slip-resistant compound applied to the first portion of the surface area (image data of a sample with each concentration, interpreted a second portion having a second level of luminance, is collected by a CCD camera, paragraph 48),.
With respect to claim 9, Yamamichi teaches wherein measuring the luminance includes using a luminometer to measure luminance, taking and analyzing photographs, or applying chemicals to the first portion of the surface area (image data of a sample with being collected by a CCD camera, paragraph 48),.
With respect to claim 10, Yamamichi teaches wherein the second portion of the surface area is a high-traffic area frequently trod on by persons and the first portion of the surface area is a low-traffic area trod on less often than the first portion of the surface area (interpreted as the areas of the applied sample 2, figure 1).
With respect to claim 11, Yamamichi teaches wherein determining that the second level of luminance is less than the first level of luminance includes comparing a measured level of luminance of the first portion of the surface area to a measured level of luminance of the second area (interpreted as how each gradient is compared with the concentration of a sample to check the correlation of a calibration curve, and the correlation coefficient between the gradient used as a threshold value and the concentration of a sample is obtained with the gradient with the highest correlation with the concentration is set to be a threshold value, paragraph 56, figure 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDDIE KIRKLAND III whose telephone number is (571)272-2232. The examiner can normally be reached 9am-5pm.
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FREDDIE KIRKLAND III
Primary Examiner
Art Unit 2855
/Freddie Kirkland III/Primary Examiner, Art Unit 2855 9/27/2025