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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 8/14/2025 has been entered.
Response to Amendment
3. Applicant’s response filed 8/14/2025 attempted to amend the Abstract, specification and the claims. However, none of the amendments were done in a manner that is consistent with USPTO policy. Also, applicant should file the necessary paperwork in order to represent themselves as power of attorney should no longer reside in the applicant’s previous law firm. Furthermore, applicant should use a proper customer number and once again not the previous law firm’s number. Also, applicant should make sure that priority and parent application status is properly defined. Finally, applicant should be reminded that applicant cannot make amendments to the specification that are outside the scope of what was originally filed and that all claim amendments need to have support from the specification as originally filed.
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes, US Patent Application Publication No. 2006/0107870 (hereinafter referred to as Barnes) in view of Okamoto et al., International Publication No. WO/2005/108493 (hereinafter referred to as Okamoto).
Regarding claims 1-11 and 17-19, Barnes discloses a ski wax formulation (as recited in claim 1) (see Title) comprising varying amounts of limonene oil (monoterpene compound as recited in claim 1, limonene as recited in claims 8 and 11) (Para. [0012]), up to 100 wt% of a blend of natural waxes including soy wax and bees wax (as recited in claims 1, 11 and reads on claims 4-7; inherently reads on claim 6 as the natural waxes can be adjusted to meet the melting point based on the disclosure of Barnes) (see Abstract and see Claims of Barnes), and graphite (as recited in claim 9) (see Claim 17 of Barnes) wherein the composition if free of per- and polyfluoroalkyl substances (as recited in claim 10) (see Claims of Barnes).
Barnes discloses the presence of oils and additional additive compounds but does not explicitly disclose the oil compound recited in claim 1, nor the catalyst compound recited in claim 11.
Okamoto discloses a curable composition comprising 0.1 to 20 wt% of an oxygen-curable substance, such as, drying oils including tung oil (as recited in claims 1 and 11 and reads on claim 3) (Para. [0121]-[0124]), a wax (see Abstract), 0.1 to 20 wt% of a curing catalyst, such as, titanium chelate (as recited in claim 11) (Para. [0075]-[0081]), an alcohol for UV curing, such as, methanol (as recited in claim 2) (see Synthesis example 1/Para. [0146]), and 0.1 to 10 wt% of UV absorber, such as, benzophenone-based compounds (as recited in claims 17-19) (Para. [0126]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the drying oils and curing catalysts of Okamoto in the composition of Barnes in order to enhance the thixotropy and curability properties of the composition (see Abstract of Okamoto).
Regarding claims 12-16, see discussion above.
Claim Rejections - 35 USC § 103
7. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Barnes in view of Okamoto as applied to claims 1-19 above, and further in view of Guo et al., US Patent Application Publication No. 2004/0122153 (hereinafter referred to as Guo).
Regarding claim 20, Barnes/Okamoto disclose all the limitations discussed above but do not explicitly disclose a MEKP catalyst as recited in claim 20.
Guo discloses a curable composition for use in articles, such as, skis and ski poles (Para. [0103]) which includes a functionalized poly(arylene ether) an olefinically unsaturated monomer, a nanofiller, and a curing catalyst, such as, methyl ethyl ketone peroxide (MEKP) (as recited in claim 20) (Para. [0085]-[0086]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the MEKP catalyst of Guo in the composition of Barnes/Okamoto as it is obvious to try, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Response to Arguments
8. Applicant’s arguments filed 3/25/2025 regarding claims 1-20 have been fully considered and are not persuasive.
Applicant argues that Barnes and Okamoto are non-analogous art and therefore it would not have been obvious to combine the references. This argument is not persuasive.
In response to applicant's argument that Barnes and Okamoto are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the instant application is in the field of UV curable wax compositions that are applied to snow and water sports equipment to alter the sliding properties of said equipment. Barnes discloses ski wax formulations and Okamoto discloses curable compositions that can be used in articles to enhance the thixotropic properties of the articles that use the curable composition. This viscous property would help the sliding properties of the Barnes formulations and are very similar to what the instant application is endeavored with. For this reason, applicant’s arguments regarding non-analogous art is unpersuasive.
Applicant also argues that the combination of Barnes/Okamoto does not inherently read on claim 6 as instantly recited. This argument is not persuasive. Paragraph 0010 of Barnes explicitly states that the waxes can be blended in order to provide a desired property. The same paragraph also teaches a blend of soy wax and another natural wax which includes bees wax (see paragraph 0011 of Barnes). These are the same wax components listed in instant claim 7 which depends from claim 6 and therefore have a melting point within the range recited in instant claim 6. Applicant’s arguments are not persuasive regarding the combination of Barnes and Okamtoto references.
Conclusion
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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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771