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 .
Response to Amendment
Applicant’s amendment to the claims filed June 25, 2026 has been entered. Claims 1, 4 and 9 are currently amended. Claims 14-20 have been canceled. Claims 1-13 are pending and under examination.
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 1-13 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 claim 1, the claim recites “the cell walls”. The recitation lacks antecedent basis in the claims. It is not clear whether these are the cell walls of the later recited cells or cell walls of the microbes or whether something else is intended. Appropriate correction and clarification are required.
As to claim 6, the claim recites “applying a texture to the first surface”. In context, it is not clear whether this is an additional texture to the texture that is provided by the surface treatment set forth in claim 1 or whether something else is intended or whether the claim now fails to further limit the claim from which it depends. As set forth in paragraph [0028] of the published application, the now claimed surface treatments are understood to provide a texture to the first surface. Appropriate correction and clarification are required.
The other claims are rejected as dependent claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As set forth in paragraph [0028] of the published application, the now claimed surface treatments set forth in claim 1 are understood to provide a texture to the first surface. As such, the recitation of applying a texture is understood to already be required by claim 1. Also see the section 112b rejection. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tapp (US 5,169,712) in view of Inagaki (US 5,055,152) and Johnston et al. (US 2002/0146540).
Regarding claims 1, 6, and 7, Tapp teaches a method for manufacturing a microbe-resistant structure comprising: providing a structural core (Abstract; col. 1, lines 5-23; e.g. polymeric foam product): providing a binding compound (col. 23, line 60-col. 24, line 42; adhesive composition); providing an anti-microbial film having a first surface and a second surface on opposite sides of the film, wherein the first surface includes a surface treatment that limits a transmission of microbes (col. 14, line 46-col. 15, line 24), forming a charge that includes the structural core, the binding compound, and the film arranged such that the second surface of the film is facing toward the structural core and the first surface is facing away from the structural core and applying heat and pressure to the charge (col. 23, line 60-col. 28, line 7; applicable thermobonding techniques described to produce the claimed configuration of layers).
Tapp does not teach the second surface includes a plurality of perforations such that the binding compound flows to substantially fill the plurality of perforations during the application of heat and pressure to the charge.
However, Inagaki teaches an analogous method wherein a corresponding film includes a plurality of perforations such that the corresponding binding compound flows to substantially fill the plurality of perforations during the application of heat and pressure (col. 2, lines 42-60; col. 3, line 44-col. 4, line 42; Figure 1 and Figures 7-10).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Tapp and Inagaki and to have formed a plurality of perforations as claimed in the second surface of the film of Tapp and to have then filled those perforations with the binding compound/adhesive during the application of heat and pressure, as suggested by Inagaki, for the purpose, as suggested by the references of controlling the bonding strength between the layers of the composite of Tapp. Further, Inagaki teaches that bonding through perforations as claimed is an art recognized suitable and effective means of bonding layers together. In the combination, the elements merely perform the same function as they do separately and on having ordinary skill would have recognized the result of the combination was predictable. As such, this is understood to correspond with a rationale of combining/substituting prior art elements according to known methods to yield predictable results or a simple substitution of one known bonding technique for another to obtain a predictable result and these provide additional rationales that support a conclusion of obviousness (see MPEP 2143).
As to claims 1, 6 and 7, Tapp do not explicitly teach the surface treatment includes texturing the film by one of the techniques as claimed to create a surface harsh enough to damage cell walls and microbes and thereby limit their transmission. However, Johnston et al. (Abstract; Figures 2a-2c; paragraphs [0001]-[0003], [0009]-[0019], [0082]-[0084], [0110]-[0113]; paragraphs [0016], [0017], [0019], [0059], [0104], [0106], [0116], and [0135] – the disclosed partial melting of the surface, embossing and hot stamping methods of forming the texturing read on the claimed “direct writing technique”, “knurling” and “instability induced patterning”) teach an analogous method wherein a textured surfaces with dimensions that overlap or a sufficiently close (see MPEP 2144.05) to the claimed dimensions in order to modify the surface of the article.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Tapp and Johnston et al. and to have textured the surface of the composite of Tapp, as suggested by Johnston et al., for the purpose, as suggested by Johnston et al., of controlling the transport of fluid on the surface of the composite for subsequent removal.
As to claim 2, as set forth above in the combination, after applying heat and pressure the adhesive/binding compound cools to produce the claimed arrangement and properties.
As to claim 3, Inagaki teach using a roll to create the perforations (col. 3, lines 52-67). The reason to combine the references is the same as that set forth above.
As to claims 4 and 5, Inagaki suggests the size of the perforations is selected to achieve a desired degree of bonding (col. 3, lines 52-col. 4, lines 42). As such, one having ordinary skill in the art would have readily optimized the size of the perforations as a result effective variable to facilitate control of the bonding strength. Similarly, selecting a shape for the openings is understood to be a routine expedient and is not understood to differentiate over the suggestion of the prior art absent a showing of new or unexpected results. MPEP 2144.04 IV B is understood to be applicable since the shape of the perforations is not understood to be significant.
As to claim 8, in the combination, the structural core/foam product has surfaces as claimed and is capable of/configured to face an interior of a vehicle (col. 26, line 64-col. 28, line 7).
As to claim 10, the combination suggests producing a perforated film having desired dimensions (e.g. thickness) and perforations having a desired configuration (Figures 7-10). It would have been prima facie obvious to one having ordinary skill in the art to have performed conventional steps, such as skiving, to ensure the film was ready for use in the manner set forth by the references.
As to claim 11, as set forth above in the combination of claim 1, each of the references suggest bringing the layers together at or in the mold (e.g. for thermobonding or calendaring) immediately prior to applying the heat or pressure to the layered configuration/charge.
As to claim 12, Tapp suggests a structure that is curved or capable of being curved (col. 26, line 64-col. 28, line 7).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tapp (US 5,169,712) in view of Inagaki (US 5,055,152) and Johnston et al. (US 2002/0146540), as applied to claims 1-8 and 10-12 above, and further in view of either one of Young et al. (US 2020/0047868) or DeBergalis et al. (US 2006/0182981).
As to claim 9, the combination teaches the method set forth above. Tapp does not tech the film includes PVF or PVDF. However, each of Young et al. (paragraphs [0044] and [0083]) and DeBergalis et al. (Abstract; paragraph [0029]) teach analogous methods wherein the film includes a fluoropolymer, such as PVF or PVDF.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Tapp and either one of Young et al. or DeBergalis et al. and to have utilized a fluoropolymer, such as PVF or PVDF, as the film of Tapp, as suggested by either one of Young et al. or DeBergalis et al., for the purpose, as suggested by the references, or utilizing a material effective for use as an outer layer and having desired properties for particular applications.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tapp (US 5,169,712) in view of Inagaki (US 5,055,152) and Johnston et al. (US 2002/0146540), as applied to claims 1-8 and 10-12 above, and further in view of Kazuno et al. (US 2014/0065932).
As to claim 13, Tapp suggests utilizing conventional adhesives, including hot melt adhesives (col. 23, lines 60-col. 24, line 57), but does not specify the materials to be utilized. However, Kazuno et al. teach an analogous laminate wherein the adhesive includes a polyester or epoxy resin (Abstract; paragraph [0020]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Tapp and Kazuno et al. and to have utilized a polyester or epoxy resin as the adhesive of Tapp, as suggested by Kazuno, for the purpose, as suggested by the references, or utilizing art recognized suitable and effective adhesives for forming laminated structures.
Response to Arguments
Applicant’s arguments filed June 25, 2026 have been fully considered. To the extent they apply to the amended claims, they are not persuasive. Applicant argues that Johnston et al. do not make up for the deficiencies of Tapp because they do not teach a surface treatment
“comprising lithographic techniques, direct writing techniques, knurling, and instability-induced polymeric patterning to create a surface harsh enough to damage the cell walls or microbes contacting the film thereby limiting a transmission of microbes or cells” as claimed. This argument is not persuasive.
As an initial matter, the examiner notes that the recitation remains open to a broad reasonable interpretation and that the scope of the quoted limitation is taught and suggested by the surface pattering methods utilized to from the structured channels and ridges in Johnston et al. Johnston et al. teach the structure can be formed by a variety of techniques including embossing, partial melting of the surface, pressure, and hot stamping (paragraphs [0016], [0017], [0019], [0059], [0104], [0116] and [0135]). The technique of partially melting the layer is understood to read upon “instability-induced polymeric patterning”. The technique of utilizing pressure or hot stamping is understood to read upon “direct writing techniques” and the embossing is understood to read upon “knurling”. These techniques are not particularly limited in the claims or the specification and the techniques set forth by Johnston et al. are understood to reasonably read upon them.
Further, while Johnston et al. do not explicitly teach the reason for treating the surface is to “create a surface harsh enough to damage the cell walls or microbes”, the treatment performed by Johnston et al. provides a texture to the surface, the textured surface has pointed ridges, and these ridges have dimensions and shapes that are substantially as those claimed and disclosed (Johnston et al.: Abstract; Figures 2a-2c; paragraphs [0001]-[0003], [0009]-[0019], [0082]-[0084], [0110]-[0113]; also see paragraphs [0016], [0017], [0019], [0059], [0104], [0106], [0116], and [0135]). Paragraph [0028] of the published application teaches that the texture formed by the now claimed surface treatment techniques is what provides the required harsh surface environment that is able to damage the cells or microbes and prevent their transmission. The resulting textured described in paragraph [0028] of the instant application has a substantially similar shape (conical), configuration, and dimensions as the texture set forth by Johnston et al. As such, since the same structure is suggested in the prior art, it follows that the same structure will have the same properties, including the creation of a surface that is harsh enough to provide the required damage. Further, the prior art does not need to have the same reason as applicant for surface treating the film by adding a texture in order for the rejection to be proper. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Absent sufficient evidence or persuasive arguments, it is submitted that the claims would need to be further amended to overcome the prima facie case of obviousness.
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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, Christina Johnson can be reached at 571-272-1176. 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.
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
Prosecution Insights