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 .
The present application is a CIP of Application No. 17/734,453 filed on May 2, 2022, which is a CIP of Application No. 17/306,104, which has been abandoned.
Drawings
The drawings were received on August 21, 2024. These drawings are acceptable.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 20, 2024 and October 22, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In paragraph 0003 of the specification, an interactive surface for a piece of sporting equipment is disclosed that “may include” “slip-resistant, water-resistant and/or antibacterial” properties. However, the specification does not disclose how the claimed grip pack for a piece of sporting equipment actually provides a surface with slip-resistant, water-resistant and antibacterial properties, only that these properties may be included.
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.
Claims 4-6 and 16-17 are 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.
Regarding claims 4 and 16, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The term “short board” in claims 5 and 17 is a relative term which renders the claim indefinite. The term “short” 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.
The term “long board” in claims 6 and 17 is a relative term which renders the claim indefinite. The term “long” 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
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 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.
Claims 1-7, 9-11 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Buck (US 11,279,858) in view of Harrell et al. (US 2016/0144935 A1).
Buck discloses a three-dimensional sticker, as shown in Figures 1A-8, which is comprised of a sticker or substrate, defined as Part #5A, having a main sheet, defined as Part #15, of polyvinyl chloride (PVC) film with an ink layer, defined as Part #30, that is printed with an image in ultraviolet (UV) curable ink, as described in lines 17-20 of column 8, a middle adhesive layer, defined as Part #35A, and a bottom release liner or removable layer, defined as Part #40, as shown in Figure 1E. Said bottom release liner or removable layer is removable from each said sticker or substrate in order to expose said middle adhesive layer, and said middle adhesive layer is configured to adhere said printed main sheet to a surface, as shown in Figure 1E. One or more protective layers, defined as Parts #60, 62 and 63, can also be disposed over said main sheet with said ink layer, as shown in Figure 1E, in order to provide a smooth protective layer. Said image that is printed on each said sticker or substrate can be custom designed with the aid of tools or applications in the form of CAD software programs, as described in lines 4-6 of column 12, and printed by means of digital inkjet technology, as described in lines 18-19 of column 12, as is known in the art.
Buck also discloses a method for providing a three-dimensional sticker on a surface, as shown in Figures 1A-8, said method being comprised of the steps of receiving a plurality of stickers or substrates, each defined as Part #5A, as shown in Figures 1J-K and 2F-G, where each of said plurality of stickers or substrates includes a main sheet, defined as Part #15, with an ink layer, defined as Part #30, that is printed with an image, a middle adhesive layer, defined as Part #35A or 120, and a bottom release liner or removable layer, defined as Part #40 or 135, as shown in Figures 1E and 7A-C, aligning each of said plurality of stickers or substrates with a sheet or surface, defined as Part #140, as shown in Figure 7B, removing said bottom release liner or removable layer from each of said plurality of stickers or substrates in order to expose said middle adhesive layer, as shown in Figure 7A, and contacting said middle adhesive layer that is exposed against said sheet or surface, as shown in Figure 7B. A digital inkjet printer can receive printing instructions for said image from an application prior to printing said image on said main sheet, as described in lines 1-19 of column 12.
Buck, as set forth above, discloses all of the features claimed except for the use of substrates that are printed with images and adhered to a surface of a sports apparatus in the form of a surfboard, where said substrates are smoothed flat to conform to the shape of said surfboard.
Harrell et al. discloses accessories for surfboards, as shown in Figures 1-9, which is comprised of a plurality of accessories, defined as Parts #52, 62 and 72, that are attachable to a surfboard, defined as Part #10, having a deck surface with a front region, defined as Part #12, a middle region, defined as Part #14, and a rear region, defined as Part #16. Said accessories are made from a substrate of flexible material in the form of PVC sheet with a patterned texture that is generated by screen printing ink onto said PVC sheet, as described in paragraph 0031. Once each of said plurality of accessories is aligned with said deck of said surfboard and adhered to a top surface of said deck, each of said plurality of accessories is smoothed flat to conform to the shape of said surfboard, as indicated in Figures 3-5. Said accessories can be made to have a variety of visible patterns, as shown in Figure 8, or a textured surface, as shown in Figure 6, that is both slip-resistant and water-resistant.
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art, to utilize a plurality of accessories that are adhered to a deck surface of a surfboard and smoothed flat to conform to the shape of said surfboard, as taught by Harrell et al., in combination with the three-dimensional sticker and method as disclosed by Buck for the purpose of providing a grip pack or substrate on a surface of surfboard that is adhered to said surface and smoothed flat to conform to the shape of said surfboard.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Buck in view of Harrell et al., and further in view of Parten (US 2005/0206130 A1).
Buck in combination with Harrell et al. shows all of the features claimed except for the use of a three-dimensional graphical film that is attached to a recreational board in the form of a skateboard.
Parten discloses a recreational board with high-definition graphics, as shown in Figures 1-5, which is comprised of a skateboard, defined as Part #10, with a deck member, defined as Part #12, that is covered by a three-dimensional lenticular graphical film, defined as Part #20, when it is attached to said deck member, as shown in Figure 1. Said skateboard, defined as Part #46 in Figure 4, includes a substrate or deck surface, defined as Part #48, that is covered with said graphical film, defined as Part #58, that is printed with an ink layer, defined as Part #56, and coated with a reflective white layer, defined as Part #54, and a protective coating, defined as Part #52. Said graphical film is attached to said substrate or deck member by means of an adhesive layer, defined as Part #50, as shown in Figure 4, and smoothed flat to conform to the shape of said skateboard, as indicated in Figure 1.
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art, to utilize a piece of sporting equipment in the form of a skateboard that is covered by a three-dimensional graphical film, as taught by Parten, in combination with the three-dimensional sticker as disclosed by Buck and the teachings of Harrell et al. for the purpose of providing a grip pack or substrate on a surface of a skateboard that is adhered to said surface and smoothed flat to conform to the shape of said skateboard.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARS A OLSON whose telephone number is (571) 272-6685. The examiner can normally be reached Monday to Friday 8:00am - 4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARC JIMENEZ can be reached at 571-272-4530. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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June 15, 2026
/LARS A OLSON/Primary Examiner, Art Unit 3615B
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