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 .
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.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 9 is found to be new matter because there is no evidence in the specification that the gel embodiment (Fig. 2) is used together with the fluid embodiment (Fig. 4).
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flood (US 2022/0002002 A1) in view of Dixon (US 2727831) in view of Di (CN 1066331621 A) in view of Gerner (US 5376479).
Claims 1, 5-6, 9, 11-12, 14, 16-17:
Flood teaches a method for masking an aerospace part, followed by treating the aerospace part with the masking medium thereon (Fig. 1). Flood is comprehensive in terms of the specific aerospace parts [0033], thermoplastic and metal materials (Id.), and types of treatment including chemical treatment in the form of a gel [0034]. The masking medium includes an adhesive tape and sealant [0036].
Flood does not explicitly teach sulfonation as the particular treatment.
However, Dixon teaches a method for treating polystyrene to have static-free surfaces by applying concentrated sulfuric acid, removing the sulfuric acid, and applying an alkali neutralizing agent, washing and drying (col. 1-2).
Additionally, Di teaches a method for improving wettability of PEEK that includes sulfonation by application of concentrated sulfuric acid fluid.
Additionally, Gerner teaches a method for forming a sulfuric acid gel comprising the combination of sulfuric acid and 3-8% fumed silica (4:13-22).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Flood wherein the chemical treatment is sulfonation using concentrated sulfuric acid gel followed by neutralization wherein sulfuric acid gel is the combination of sulfuric acid and fumed silica. Doing so has the benefit of improving wettability and reducing static from the surface of the plastic article.
Claims 2-3, 16:
Flood teaches stencil shapes, which dictate the mask shape, including O-shaped and C-shaped, which would circumscribe a region of the part [0049]. The treatment is applied to the masked region, inclusive of the interior portion.
Claims 4, 13:
Performing the operation in situ would have been obvious from an efficiency perspective because the step of removing and reinstalling the part would be eliminated.
Claims 7, 20:
Both Flood [0034] and Di teach removal of prior coating and cleaning.
Claim 8:
The mask can include vinyl cutout, plastic form [0036] that reads on barrier film.
Claim 10:
The wettability improvement is for improving subsequent coating.
Claim 15:
Fuming sulfuric acid has the composition H2SO4 xSO3 with x sulfur trioxide. Dixon teaches using concentrated sulfuric acid to perform sulfonation on polystyrene where the concentrated sulfuric acid ranges from 80% sulfuric acid up to 10% fuming sulfuric acid (2:13-14). The range is written this way because fuming sulfuric acid is essentially super concentrated sulfuric acid and the 10% represents the mass percent of sulfur trioxide.
Claims 18-19:
Claims 18-19 are a description of the sulfonation process and measurement to achieve the desired level of sulfonation. In this respect, the duration needed to achieve specific levels of sulfonation is a result effective variable and obvious through routine optimization. It is further noted that the prior art sulfonation processes all are performed to achieve specific results with respect to adhesion and wettability, for example.
Response to Arguments
Applicant’s arguments, filed 5/26/26, with respect to the rejection(s) of claim(s) under 103 have been fully considered and are persuasive in light of co-filed claim amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the previously cited prior art references with Buehler removed.
Regarding Gerner, the cited prior art establishes the desire for a sulfuric acid gel, but does not specify the composition for forming such a gel. Gerner is provided to show that sulfuric acid gel is simply produced by addition of a gelling agent to the sulfuric acid, where the gelling agent is fumed silica provided in a specific amount. It is the position of the examiner that Gerner is analogous for this limited purpose because it is pertinent to the problem of converting sulfuric acid into a gel form.
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 ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
Prosecution Insights