DETAILED ACTION
This is the initial Office action for application SN 18/866,878 having an effective date of 18 November 2024 and a provisional priority date of 18 May 2022. A preliminary amendment was filed on 18 November 2024. Claims 1-22 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 4, 8 and 15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 4 recites the broad recitation “an H60s hardness in the range of 40 to 250 g”, and the claim also recites “50 to 150 g, or about 60 to about 120 g” which is the narrower statement of the range/limitation.
Claim 4 recites the broad recitation “a final load hardness from 40 to 250 g”, and the claim also recites “50 to 150 g, or about 60 to 120 g” which is the narrower statement of the range/limitation.
Claim 4 recites the broad recitation “a durometer hardness in the range of 10 to 53 Shore OOO”, and the claim also recites “17 to 42 Shore OOO, or 23 to 37 Shore OOO” which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “an H60s hardness in the range of 40 to 250 g”, and the claim also recites “50 to 150 g, or 60 to 120 g” which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “a final load hardness from 40 to 250 g”, and the claim also recites “50 to 150 g, or about 60 to 120 g” which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “a durometer hardness in the range of 10 to 53 Shore OOO”, and the claim also recites “17 to 42 Shore OOO, or 23 to 37 Shore OOO” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 contains the indefinite language “including but not limited to” set forth in lines 25-26.
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.
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.
Claim(s) 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over Renner et al (US 10,421,866).
Renner et al [“Renner”] discloses systems and methods for creating durable lubricious surfaces (DLS) via interfacial modification. The DLS can be prepared via a combination of a solid, a liquid, and an additive that modifies the interface between the DLS and a contact liquid, resulting in an interfacial layer that acts as a lubricant and/or protective coating between the DLS and the contact liquid. Renner discloses that the lubricating effect created between the additive and the contact liquid results in enhanced slipperiness, as well as the protective properties that can help with durability of the DLS (Abstract).
Renner sets forth Figure 1 which shows a schematic block diagram of various components of a durable lubricious surface with enhanced durability. Renner sets forth Figure 2 which shows a process flow diagram for preparing an enhanced liquid impregnated surface via a single-step approach. Renner sets forth Figure 3 which shows a process flow diagram for preparing an enhanced liquid impregnated surface via a sprayed-on approach. Applicant’s Figures 1, 2 and 3 are essentially identical to Figures 1, 2 and 3 in Renner. Renner discloses that the substrate 110 can include one or more tubes, bottles, vials, flasks, molds, jars, tubs, cups, and many more. See COL. 10, L36-45. Renner discloses that the liquid 160 is includes silicone oils, fluorinated hydrocarbons, fluorinated perfluoropolyethers, and hydrocarbon liquids including mineral oil, paraffin oil, C13-C14 isoparaffins, C16-C18 isoparaffins, diglycerides and triglycerides. COL.8, L23-36. Renner discloses that solid particles disposed in the liquid 160 include insoluble fibers, waxes (e.g., carnauba wax, Japan wax, beeswax, candelilla wax), polysaccharides, and many others. See COL.9, L7-56. Renner discloses that the additive 180 is an interfacial modifier.
Renner discloses that the substrate 110 can have a surface that has inherent surface structures, and/or a surface that is chemically and/or physically modified. For example, the substrate 110 can have a surface that is flat, bumpy, smooth, textured with regular periodic patterns, or textured with random shapes and contours. See COL.11, L2 to COL.13.
Renner discloses that the solid 140 can include different materials, including surface features already present on the substrate 110. The solid 140 can include one or more members of block copolymers. See COL.14, L3-24. Renner discloses that the solid 140 can comprise a matrix of solid features formed from one or more of materials from some classes of gel forming materials. Some of the gel forming materials include silicones, specifically elastomers, silicone waxes, and others. In some embodiments, the solid 140 can also comprise gel forming liquids. In some embodiments, the gel forming solids/materials include materials which are formed in to gel by the infusion of several classes of liquids. In some embodiments, this is defined as having viscoelastic properties typical of gel materials defined by storage modulus, loss modulus and a phase angle measured in tensile and shear loads. See COL.14, L24-51.
Thus, the examiner is of the position that Renner meets the limitations of the claimed method for preparing an elastomeric gel block having a lubricious surface since the components may be the same. See Figure1 of Renner. The examiner is of the position that the properties set forth in the dependent claims such as H60s hardness, final load hardness and durometer hardness are expected to be the same or similar to Renner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Renner et al (US 10,428,222) and (US 11,046,853) disclose systems and methods for creating durable lubricious surfaces via interfacial modification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771 EMcAvoy
May 22, 2026
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