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 .
Election/Restriction
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 28 July 2026 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 28 July 2026.
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.
Claims 1-14 and 21-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 9-12 of U.S. Patent No. 12,031,052 B2 (hereinafter “’052”) in view of Bower et al. (US 2012/0329934 A1, “Bower”). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 1-5, 12, and 21-22, ‘052 discloses a coated substrate, comprising: a substrate; a first elastomer coating disposed on the substrate, the first elastomer coating comprising a first elastomer selected from the group consisting of a polyurea, a polyurethane, a polyurea-polyurethane copolymer, and combinations thereof; and a second elastomer coating disposed on the first elastomer coating, the second elastomer coating is substantially free of sulfur, wherein: the first elastomer is the same as or different than the second elastomer, and the second elastomer is a polyurea-polyurethane copolymer having a hardness (shore D) of about 55 D to about 65 D according to ASTM D-2240, a tear resistance of about 400 PLI to about 800 PLI according to ASTM D-624, a tensile strength of about 2,000 PSI to about 4,000 PSI according to ASTM D-412, and an elongation of about 500% to about 750% according to ASTM D-412 (claim 1).
However, ‘052 does not disclose wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the second elastomer coating has a predetermined thickness, and exposure of the first visual appearance indicates the predetermined thickness of the second elastomer coating has been worn out, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Bower teaches the addition of a colorant that is a pigment, dye, or combination thereof, to elastomeric compositions in order to provide a desired color; the colors are different from one another ([0059-0063]). The elastomers are used in geotextile applications ([0113]).
‘052 and Bower are analogous inventions in the field of elastomers used in geotextile applications.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric layers of ‘052 to contain different colored colorants as taught by Bower in order to provide elastomeric layers having desired color (Bower, [0059-0063]). Thus, because the elastomer layers have different colors, they inherently have a first and second visual appearance that are different from each other, such that the wear of the second elastomeric layer visually exposes the first elastomeric layer to provide a visual indication of wear of the second elastomeric layer. Further, given the elastomeric layers inherently have a predetermined thickness by virtue of their existence, then upon the first visual appearance being exposed, the second elastomeric layer will have been worn out as presently claimed.
The copending claims require that the second elastomer have properties of hardness, tear resistance, tensile strength, and elongation while the second elastomer of the present claims can have only one property of hardness, tear resistance, tensile strength, or elongation. However, it would have been obvious to one of ordinary skill in the art that the specific second elastomer of the copending claims would fall within the broader second elastomer presently claimed.
With respect to claim 6, ‘052 discloses the substrate comprises a geotextile fabric sheet comprising woven fibers or non-woven fibers (claim 9).
With respect to claim 7, ‘052 discloses the substrate comprises a foam having a density of about 1 lb/ft3 to about 3 lb/ft3 (claim 10).
With respect to claim 8, ‘052 discloses a plurality of abrasive material disposed between a first surface of the first elastomer coating and a first surface of the second elastomer coating, wherein the second elastomer coating has a plurality of protrusions at a second surface of the second elastomer coating opposite the first surface of the second elastomer coating (claim 2).
With respect to claim 9, ‘052 discloses wherein the abrasive material of the plurality of abrasive material is selected from the group consisting of sand, coal slag, aluminum oxide, crumb rubber, ceramic beads, glass beads, and combinations thereof (claim 3).
With respect to claim 10, ‘052 discloses wherein the abrasive material of the plurality of abrasive material is substantially spherical and has an average particle diameter of about 0.5 mm to about 1.5 mm (claim 4).
With respect to claim 11, ‘052 discloses wherein the first surface of the first elastomer coating has a coverage in weight per unit area by the plurality of the abrasive material of about 0.1 oz/ft2 to about 1 oz/ft2 (claim 5).
With respect to claim 13, ‘052 discloses wherein each of the first elastomer and the second elastomer is a polyurea-polyurethane copolymer (claim 11).
With respect to claim 14, ‘052 discloses a body of water, comprising: a liquid retention area; and the coated substrate of claim 1 disposed on the liquid retention area (claim 12).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5, 12-14, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Whitener (US 2015/0284924 A1) in view of Freedom Chemical (Freedomtuff® 1570 Product Information Bulletin) and Bower et al. (US 2012/0329934 A1, “Bower”).
With respect to claims 1, 3-5, 12-13, and 21-22, Whitener discloses a cover for water retention ponds and water storage tanks ([0005], [0009]). The cover comprises a polyurea coated textile covering a polyurea coated foam ([0006], [0013]) (i.e., a structure as follows: polyurea (second coating)/textile/polyurea (first coating)/foam (substrate)). The polyurea has a thickness of 30-60 mils ([0019]) (i.e., has a predetermined thickness).
Whitener does not disclose the polyurea is an elastomeric polyurea, nor wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Freedom Chemical teaches an elastomeric polyurea coating known as Freedomtuff 1570 which provides a protective, waterproof coating suitable for use on geotextiles and is abrasion and impact resistant (page 1, 1st paragraph). Freedomtuff 1570 is identical to that described by Applicant as being a polyurea/polyurethane copolymer (instant specification, page 8, [0038]), and thus is an elastomeric polyurea-polyurethane copolymer. Freedomtuff 1570 has a tear resistance as measured according to ASTM D-624 of 415 PLI, a tensile strength as measured according to ASTM D-412 of 2,350 psi, and an elongation as measured according to ASTM D-412 of 700% (page 2, “FREEDOMTUFF® 1570 TYPICAL PROPERTIES”).
Whitener and Freedom Chemical are analogous inventions in the field of waterproof polyurea coatings.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Freedomtuff 1570 as both the first and second polyurea coatings in Whitener in order to provide a waterproof, abrasion resistant, impact resistant coating (Freedom Chemical, page 1, 1st paragraph).
However, Whitener in view of Freedom Chemical does not disclose wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the second elastomer coating has a predetermined thickness, and exposure of the first visual appearance indicates the predetermined thickness of the second elastomer coating has been worn out, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Bower teaches the addition of a colorant that is a pigment, dye, or combination thereof, to an elastomeric composition in order to provide a desired color; the colors are different from one another ([0059-0063]). The elastomers are used in geotextile applications ([0113]).
Whitener in view of Freedom Chemical and Bower are analogous inventions in the field of elastomers used in geotextile applications.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric polyurea layers of Whitener in view of Freedom Chemical to contain different colored colorants as taught by Bower in order to provide an elastomer having desired color (Bower, [0059-0063]). Thus, because the elastomer layers have different colors, they inherently have a first and second visual appearance that are different from each other, such that the wear of the second elastomeric layer visually exposes the first elastomeric layer to provide a visual indication of wear of the second elastomeric layer. Further, given the elastomeric layers have a predetermined thickness (Whitener, [0019]), then upon the first visual appearance being exposed, the second elastomeric layer will have been worn out as presently claimed.
With respect to claim 14, Whitener discloses the material covers the surface of water retention ponds and tanks ([0005]) (i.e., the material and pond/tank form a body of water). The retention pond/tank corresponds to the liquid retention area presently claimed. Because the material covers the surface, the coated substrate is disposed on the liquid retention area.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Whitener (US 2015/0284924 A1) in view of Freedom Chemical (Freedomtuff® 1570 Product Information Bulletin) and Bower et al. (US 2012/0329934 A1, “Bower”) as applied to claim 1 above, and further in view of Thurston et al. (US 2019/0270583 A1, “Thurston”).
With respect to claim 7, while Whitener in view of Freedom Chemical and Bower discloses the use of a foam substrate as set forth in the above rejection of claim 1, Whitener in view of Freedom Chemical and Bower does not disclose wherein the foam has a density of about 1-3 lb/ft3.
Thurston teaches a cover for a water tank ([0002]) including a lid having a foam density of 0.5-8 lb/ft3 ([0016]).
Whitener in view of Freedom Chemical and Bower and Thurston are analogous inventions in the field of covers for water tanks having foam layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foam substrate of Whitener in view of Freedom Chemical and Bower to have a density taught by Thurston, including over values presently claimed, and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945). See also In re Leshin, 227 F.2d 197 (CCPA 1960).
Claims 1-4, 12-14, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Whitener (US 2015/0284924 A1) in view of Freedom Chemical (Freedomtuff® 1595 Product Information Bulletin) and Bower et al. (US 2012/0329934 A1, “Bower”).
With respect to claims 1-4, 12-13, and 21-22, Whitener discloses a cover for water retention ponds and water storage tanks ([0005], [0009]). The cover comprises a polyurea coated textile covering a polyurea coated foam ([0006], [0013]) (i.e., a structure as follows: polyurea (second coating)/textile/polyurea (first coating)/foam (substrate)). The polyurea has a thickness of 30-60 mils ([0019]) (i.e., has a predetermined thickness).
Whitener does not disclose the polyurea is an elastomeric polyurea, nor wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Freedom Chemical teaches an elastomeric polyurea coating known as Freedomtuff 1595 which provides a protective, waterproof coating suitable for use on geotextiles and is abrasion and impact resistant (page 1, 1st paragraph). Freedomtuff 1595 is identical to that described by Applicant as being a polyurea/polyurethane copolymer (instant specification, page 8, [0038]), and thus is an elastomeric polyurea-polyurethane copolymer. Freedomtuff 1595 has a hardness (shore D) measured according to ASTM D-2240 of 60 D, a tear resistance as measured according to ASTM D-624 of 668 PLI, and a tensile strength as measured according to ASTM D-412 of 3,080 psi (page 2, “FREEDOMTUFF® 1570 TYPICAL PROPERTIES”).
Whitener and Freedom Chemical are analogous inventions in the field of waterproof polyurea coatings.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Freedomtuff 1595 as both the first and second polyurea coatings in Whitener in order to provide a waterproof, abrasion resistant, impact resistant coating (Freedom Chemical, page 1, 1st paragraph).
However, Whitener in view of Freedom Chemical does not disclose wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the second elastomer coating has a predetermined thickness, and exposure of the first visual appearance indicates the predetermined thickness of the second elastomer coating has been worn out, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Bower teaches the addition of a colorant that is a pigment, dye, or combination thereof, to an elastomeric composition in order to provide a desired color; the colors are different from one another ([0059-0063]). The elastomers are used in geotextile applications ([0113]).
Whitener in view of Freedom Chemical and Bower are analogous inventions in the field of elastomers used in geotextile applications.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric polyurea layers of Whitener in view of Freedom Chemical to contain different colored colorants as taught by Bower in order to provide an elastomer having desired color (Bower, [0059-0063]). Thus, because the elastomer layers have different colors, they inherently have a first and second visual appearance that are different from each other, such that the wear of the second elastomeric layer visually exposes the first elastomeric layer to provide a visual indication of wear of the second elastomeric layer. Further, given the elastomeric layers have a predetermined thickness (Whitener, [0019]), then upon the first visual appearance being exposed, the second elastomeric layer will have been worn out as presently claimed.
With respect to claim 14, Whitener discloses the material covers the surface of water retention ponds and tanks ([0005]) (i.e., the material and pond/tank form a body of water). The retention pond/tank corresponds to the liquid retention area presently claimed. Because the material covers the surface, the coated substrate is disposed on the liquid retention area.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Whitener (US 2015/0284924 A1) in view of Freedom Chemical (Freedomtuff® 1595 Product Information Bulletin) and Bower et al. (US 2012/0329934 A1, “Bower”) as applied to claim 1 above, and further in view of Thurston et al. (US 2019/0270583 A1, “Thurston”).
With respect to claim 7, while Whitener in view of Freedom Chemical and Bower discloses the use of a foam substrate as set forth in the above rejection of claim 1, Whitener in view of Freedom Chemical and Bower does not disclose wherein the foam has a density of about 1-3 lb/ft3.
Thurston teaches a cover for a water tank ([0002]) including a lid having a foam density of 0.5-8 lb/ft3 ([0016]).
Whitener in view of Freedom Chemical and Bower and Thurston are analogous inventions in the field of covers for water tanks having foam layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foam substrate of Whitener in view of Freedom Chemical and Bower to have a density taught by Thurston, including over values presently claimed, and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945). See also In re Leshin, 227 F.2d 197 (CCPA 1960).
Claims 1, 3-6, 8-13, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Jewett (US 2004/0123541 A1) in view of Freedom Chemical (Freedomtuff® 1570 Product Information Bulletin), Bower et al. (US 2012/0329934 A1, “Bower”), and the evidence provided by Raptor Blaster (Sandblasting Grit Conversion Chart).
With respect to claims 1, 3-5, 12-13, and 21-22, Jewett discloses a wall covering comprising a wall substrate including concrete ([0019]), a first layer of elastomer including a polyurea-urethane, a second elastomeric layer ([0023]), and a third elastomeric layer ([0024-0025]). The third elastomeric layer corresponds to the claimed second coating and contains a layer of aggregate (i.e., abrasive) material including sand ([0026]). The elastomeric layers have thicknesses of 1/16 of an inch to 1/4 of an inch ([0053]) (i.e., the elastomeric coatings have pre-determined thicknesses).
Jewett does not disclose wherein the third elastomeric layer (corresponding to the claimed second coating layer) comprises polyurea-polyurethane, nor wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Freedom Chemical teaches an elastomeric polyurea coating known as Freedomtuff 1570 which provides a protective, waterproof coating suitable for use on geotextiles and is abrasion and impact resistant (page 1, 1st paragraph). Freedomtuff 1570 is identical to that described by Applicant as being a polyurea/polyurethane copolymer (instant specification, page 8, [0038]), and thus is an elastomeric polyurea-polyurethane copolymer. Freedomtuff 1570 has a tear resistance as measured according to ASTM D-624 of 415 PLI, a tensile strength as measured according to ASTM D-412 of 2,350 psi, and an elongation as measured according to ASTM D-412 of 700% (page 2, “FREEDOMTUFF® 1570 TYPICAL PROPERTIES”).
Jewett and Freedom Chemical are analogous inventions in the field of waterproof polyurea coatings.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Freedomtuff 1570 as the third elastomeric layer (corresponding to the claimed second coating layer) in Jewett in order to provide a waterproof, abrasion resistant, impact resistant coating (Freedom Chemical, page 1, 1st paragraph).
However, Jewett in view of Freedom Chemical does not disclose wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the second elastomer coating has a predetermined thickness, and exposure of the first visual appearance indicates the predetermined thickness of the second elastomer coating has been worn out, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Bower teaches the addition of a colorant that is a pigment, dye, or combination thereof, to an elastomeric composition in order to provide a desired color; the colors are different from one another ([0059-0063]). The elastomers are used in geotextile applications ([0113]).
Jewett in view of Freedom Chemical and Bower are analogous inventions in the field of elastomers used in geotextile applications.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric polyurea layers of Jewett in view of Freedom Chemical to contain different colored colorants as taught by Bower in order to provide an elastomer having desired color (Bower, [0059-0063]). Thus, because the elastomer layers have different colors, they inherently have a first and second visual appearance that are different from each other, such that the wear of the second elastomeric layer visually exposes the first elastomeric layer to provide a visual indication of wear of the second elastomeric layer. Further, given the elastomeric layers have a predetermined thickness (Jewett, [0053]), then upon the first visual appearance being exposed, the second elastomeric layer will have been worn out as presently claimed.
With respect to claim 6, Jewett discloses that it is known to use geotextile fabrics with wall substrates in order to provide reinforcement and to catch fragmentation ([0008]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a layer of geotextile on the wall substrate of Jewett for reinforcement and to catch fragmentation. The geotextile fabric would inherently be made from either woven or non-woven fibers.
With respect to claim 8, Jewett discloses the final, third elastomeric layer (corresponding to the claimed second elastomer coating as set forth above) contains aggregate (i.e., abrasive) material such as sand that is mixed into the resin in order to provide increased adhesion to other coatings ([0048]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use aggregate (i.e., abrasive) material in the first elastomeric layer (corresponding to the claimed first elastomer coating) of Jewett in order to enhance the adhesion of that layer to the additional layers. The aggregate (i.e., abrasive) material would necessarily form protrusions at a second surface of the elastomer coating opposite the first surface of the second elastomer coating.
With respect to claims 9-10, Jewett discloses the aggregate (i.e., abrasive) material includes sand ([0048]), which is necessarily substantially spherical. Jewett further discloses the sand has a grit size of 30-60 ([0048]). As evidenced by Raptor Blaster, a grit size of 60 is equivalent to an average micron size of 254 (0.254 mm) while a grit size of 30 is equivalent to an average micron size of 559 (0.559 mm) (page 2), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257; In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).
With respect to claim 11, Jewett discloses the aggregate (i.e., abrasive) material is mixed into the resin in order to provide increased adhesion to other coatings ([0048]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the amount of aggregate (i.e., abrasive) material, including over values presently claimed, in order to provide a desired level of adhesion to different layers.
Claims 1-4, 6, 8-13, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Jewett (US 2004/0123541 A1) in view of Freedom Chemical (Freedomtuff® 1595 Product Information Bulletin) and the evidence provided by Raptor Blaster (Sandblasting Grit Conversion Chart).
With respect to claims 1-4, 12-13, and 21-22, Jewett discloses a wall covering comprising a wall substrate including concrete ([0019]), a first layer of elastomer including a polyurea-urethane, a second elastomeric layer ([0023]), and a third elastomeric layer ([0024-0025]). The third elastomeric layer corresponds to the claimed second coating and contains a layer of aggregate (i.e., abrasive) material including sand ([0026]). The elastomeric layers have thicknesses of 1/16 of an inch to 1/4 of an inch ([0053]) (i.e., the elastomeric coatings have pre-determined thicknesses).
Jewett does not disclose wherein the third elastomeric layer (corresponding to the claimed second coating layer) comprises polyurea-polyurethane, nor wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Freedom Chemical teaches an elastomeric polyurea coating known as Freedomtuff 1595 which provides a protective, waterproof coating suitable for use on geotextiles and is abrasion and impact resistant (page 1, 1st paragraph). Freedomtuff 1595 is identical to that described by Applicant as being a polyurea/polyurethane copolymer (instant specification, page 8, [0038]), and thus is an elastomeric polyurea-polyurethane copolymer. Freedomtuff 1595 has a hardness (shore D) measured according to ASTM D-2240 of 60 D, a tear resistance as measured according to ASTM D-624 of 668 PLI, and a tensile strength as measured according to ASTM D-412 of 3,080 psi (page 2, “FREEDOMTUFF® 1570 TYPICAL PROPERTIES”).
Jewett and Freedom Chemical are analogous inventions in the field of waterproof polyurea coatings.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Freedomtuff 1595 as the third elastomeric layer (corresponding to the claimed second coating layer) in Jewett in order to provide a waterproof, abrasion resistant, impact resistant coating (Freedom Chemical, page 1, 1st paragraph).
However, Jewett in view of Freedom Chemical does not disclose wherein the first elastomer coating has a first visual appearance and the second elastomer coating has a second visual appearance different from the first visual appearance, such that wear of the second elastomer coating visually exposes the first elastomer coating to provide a visual indication of wear of the second elastomer coating, nor wherein the second elastomer coating has a predetermined thickness, and exposure of the first visual appearance indicates the predetermined thickness of the second elastomer coating has been worn out, nor wherein the first visual appearance of the first elastomer coating includes a first color and the second visual appearance of the second elastomer coating includes a second color, wherein the visual indication of wear of the second elastomer coating includes visual exposure of the first color.
Bower teaches the addition of a colorant that is a pigment, dye, or combination thereof, to an elastomeric composition in order to provide a desired color; the colors are different from one another ([0059-0063]). The elastomers are used in geotextile applications ([0113]).
Jewett in view of Freedom Chemical and Bower are analogous inventions in the field of elastomers used in geotextile applications.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric polyurea layers of Jewett in view of Freedom Chemical to contain different colored colorants as taught by Bower in order to provide an elastomer having desired color (Bower, [0059-0063]). Thus, because the elastomer layers have different colors, they inherently have a first and second visual appearance that are different from each other, such that the wear of the second elastomeric layer visually exposes the first elastomeric layer to provide a visual indication of wear of the second elastomeric layer. Further, given the elastomeric layers have a predetermined thickness (Jewett, [0053]), then upon the first visual appearance being exposed, the second elastomeric layer will have been worn out as presently claimed.
With respect to claim 6, Jewett discloses that it is known to use geotextile fabrics with wall substrates in order to provide reinforcement and to catch fragmentation ([0008]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a layer of geotextile on the wall substrate of Jewett for reinforcement and to catch fragmentation. The geotextile fabric would inherently be made from either woven or non-woven fibers.
With respect to claim 8, Jewett discloses the final, third elastomeric layer (corresponding to the claimed second elastomer coating as set forth above) contains aggregate (i.e., abrasive) material such as sand that is mixed into the resin in order to provide increased adhesion to other coatings ([0048]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use aggregate (i.e., abrasive) material in the first elastomeric layer (corresponding to the claimed first elastomer coating) of Jewett in order to enhance the adhesion of that layer to the additional layers. The aggregate (i.e., abrasive) material would necessarily form protrusions at a second surface of the elastomer coating opposite the first surface of the second elastomer coating.
With respect to claims 9-10, Jewett discloses the aggregate (i.e., abrasive) material includes sand ([0048]), which is necessarily substantially spherical. Jewett further discloses the sand has a grit size of 30-60 ([0048]). As evidenced by Raptor Blaster, a grit size of 60 is equivalent to an average micron size of 254 (0.254 mm) while a grit size of 30 is equivalent to an average micron size of 559 (0.559 mm) (page 2), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257; In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).
With respect to claim 11, Jewett discloses the aggregate (i.e., abrasive) material is mixed into the resin in order to provide increased adhesion to other coatings ([0048]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the amount of aggregate (i.e., abrasive) material, including over values presently claimed, in order to provide a desired level of adhesion to different layers.
Response to Arguments
The examiner notes that withdrawn claims 15-19 were inadvertently included in the non-statutory double patenting rejections. The non-statutory double patenting rejections of claims 15-19 have been withdrawn. Claims 15-20 remain withdrawn from consideration.
Due to the amendment to claim 1, the 35 U.S.C. 112(b) rejections of claims 1-14 are withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 112(d) rejection of claim 12 is withdrawn.
Due to the amendments to the claims, the non-statutory double patenting rejections and 35 U.S.C. 103 rejections have been modified as set forth above.
Applicant's arguments filed 28 July 2026 have been fully considered but they are not persuasive.
Regarding the non-statutory double patenting rejections, Applicant states that upon indication of allowable subject matter, they will file an appropriate terminal disclaimer. However, given that Applicant has not provided any reasoning on why the non-statutory double patenting rejections should be withdrawn, the non-statutory double patenting rejections over US 12,031,052 B2 in view of Bower as set forth above are maintained.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the cited references do not disclose the amended claims, specifically that the cited references do not disclose the limitations drawn to the first and second appearances of the elastomeric coating. The examiner respectfully disagrees.
In response to Applicant’s arguments, it is first noted that the rejections have been updated to reflect the use of a new secondary reference, Bower. The examiner acknowledges the previously cited references do not disclose the claimed first and second appearances. However, Bower teaches the addition of a colorant that is a pigment, dye, or combination thereof, to an elastomeric composition in order to provide a desired color; the colors are different from one another ([0059-0063]). The elastomers are used in geotextile applications ([0113]). Whitener and Jewett (the two primary references) and Bower are analogous inventions in the field of elastomers used in geotextile applications. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the elastomeric polyurea layers of Whitener/Jewett in view of Freedom Chemical to contain different colored colorants as taught by Bower in order to provide an elastomer having desired color (Bower, [0059-0063]). Thus, because the elastomer layers have different colors, they inherently have a first and second visual appearance that are different from each other, such that the wear of the second elastomeric layer visually exposes the first elastomeric layer to provide a visual indication of wear of the second elastomeric layer. Further, given the elastomeric layers have a predetermined thickness (Whitener, [0019]; Jewett, [0053]), then upon the first visual appearance being exposed, the second elastomeric layer will have been worn out as presently claimed.
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
