DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 2, 10-13 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Angelescu et al. (WO 2010/028752) in view of Morgan (US 2003/0096083) as evidenced by Acosta et al. (US 2005/0020892).
Regarding claims 1 and 2, Angelescu discloses a micro-structured surface having pores and a wetting liquid phase trapped in the pores wherein wetting properties of solid surface in contact with multiple liquid phases can be tailored, see abstract and page 3 lines 30-31. A droplet of an undesired phase which may come in contact with the solid surface experiences a mixed boundary consisting partly of the solid substrate and partly of the liquid phase trapped in the surface of the microstructure, see page 3 lines 31-34 and Figs. 2, 3 & 6. By modifying the ratio of trapped wetting liquid phase area to the exposed substrate area in the micro-structured surface, the effective macroscopic wetting properties of the surface can be custom tailored such as to be comprised between those of the wetting liquid phase and those of the bare substrate, see page 3 lines 34 – page 4 line 3. These tailored wetting properties of the solid surface can be maintained in a large range of pressure and temperature of the fluid mixture in which the surface is immersed, see page 4 lines 4-6.
Additionally, the reference discloses the droplet encounters an average surface energy situated between that of the wetting liquid phase and that of the substrate, see page 6 lines 16-18. The more area that is dedicated to pores, the closer the properties of the surface will be equivalent to the wetting liquid phase, see page 6 lines 18-19. Advantageously, due to its primarily liquid nature, the interface between the droplet and the substrate will be more resistant to fouling than an equivalent solid surface, see page 6 lines 20-21. Further, by carefully designing the surface topography, it is possible to significantly reduce the probability that the wetting liquid phase may leave the microstructure, see page 6 lines 27-30.
Additionally, the reference discloses that the substrate is made of a material chosen from silicon, silicon oxide, glass, metal, ceramic, sapphire, alumina, titanium oxide, fluorinated polymers, plastics and naturally porous materials, see page 2 lines 25-30. Given the microstructured surface is formed in the substrate, the solid features correspond to the materials disclosed for the substrate, which are considered non-toxic, see pages 5-7. The reference further discloses the wetting liquid phase is fluorinert, which is also considered non-toxic, see page 7 lines 17-21; see Acosta [0071].
While the reference discloses that the microstructured surface may have application in the food processing industry, the reference fails to disclose the article as a container of a consumer product, see page 11 lines 24-27.
Morgan discloses surfaces of objects, in particular containers for receiving liquids (e.g. honey, ketchup or mayonnaise), comprising a surface that is extremely hydrophobic wherein the hydrophobic surface can be configured on different materials, such as metal, glass, plastics or ceramics, see abstract. Additionally, the reference discloses that the aim of the invention is to develop a simplified method for producing a self-cleansing, extremely hydrophobic surface, see abstract.
It would have been obvious to one of ordinary skill in the art at the time of the invention for the microstructured hydrophobic surface of Angelescu to be applied to the containers of Morgan given Morgan discloses the importance of having hydrophobic surfaces in order to produce self-cleansing surfaces and improve pouring behavior in containers for items such as liquids or flowable foodstuffs, see Morgan abstract and [0018 & 0043] and Angelescu page 1 and page 7 lines 22-28.
Regarding claims 10-13, Morgan discloses the consumer product as comprising a member selected from the group in claim 10, which is considered as shelf-stable, having the claimed viscosity and a non-Newtonian material, see abstract and [0056].
Regarding claim 17, while neither reference discloses the claimed ratio, Angelescu does disclose that by modifying the ratio of trapped wetting liquid phase area to the exposed substrate area in the micro-structured surface, the effective macroscopic wetting properties of the surface can be custom tailored such as to be comprised between those of the wetting liquid phase and those of the bare substrate, see page 3 lines 34 – page 4 line 3. As such, it would have been obvious to one of ordinary skill in the art adjust the solid-to-liquid ratio in order to achieve the desired wetting properties; see MPEP2144.05 II: wherein the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, absent a showing of criticality. MPEP 2144.05 II.
Claims 3-5, 7-9 and 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Angelescu et al. (WO 2010/028752) in view of Morgan (US 2003/0096083) as applied to claim 1 above, and further in view of Aizenberg (US 2014/0147627).
Regarding claim 3, Angelescu in view of Morgan discloses the article of claim 1 comprising a liquid-impregnated surface comprising a matrix of solid features with a liquid stably contained therebetween and/or therewithin, see above discussion. The references, however, fail to disclose the solid features comprise particles.
Aizenberg discloses a slippery liquid-infused porous surface (SLIPS) wherein roughened (e.g. porous) surfaces can be used to lock in place a lubricating liquid (Liquid B) to repel a wide range of materials (Object A), see abstract and Fig 1. Additionally, the reference discloses the roughened porous surface can be generated by a spraying method where emulsions consisting of micro/nanoparticles are sprayed onto a flat surface and the particle assembles into a roughened solid layer upon solvent drying [0185]. Examples of the micro/nanoparticles include titanium dioxide, silicon dioxide, silver, gold, platinum, zinc, titanium and hydroxyapatite, all of which correspond to non-toxic and/or edible features [0185]. Examples of Liquid B include olive oil, canola oil, vegetable oil, sunflower oil and their mixtures, all of which correspond to a non-toxic and/or edible liquid [0263].
It would have been obvious to one of ordinary skill in the art at the time of the invention for the features of Angelescu to comprise the particles as a known alternative method to roughening a surface by etching, see Angelescu detailed description and Aizenberg [0127].
Regarding claim 4, Aizenberg discloses the size scale of the features producing the roughened surface ranges from 10 nm to 100 microns, see Figure 6E and [0154 & 1056]; see MPEP 2144.05 I.
Regarding claim 5, the reference discloses the porous surface comprises fibers such as nylon, collagen, polyurethane, polycarbonate, polyvinyl alcohol, polymethacrylate, polystyrene and collagen, which corresponds to insoluble fibers [0184].
Regarding claim 7, the reference discloses the roughened surface as having a random pattern [0149].
Regarding claim 8, the reference discloses the surface can have pore sizes such as from about 10 nm to 2 mm, which discloses a feature spacing overlapping the claimed range [0161]; see MPEP 2144.05 I
Regarding claim 9, the reference discloses the roughened porous surface can be generated by a spraying method where emulsions consisting of micro/nanoparticles are sprayed onto a flat surface and the particle assemble into a roughened solid layer upon solvent drying [0185].
Regarding claim 14, Aizenberg discloses examples of Liquid B include olive oil, canola oil, vegetable oil, sunflower oil and their mixtures [0263]. It would have been obvious to one of ordinary skill in the art at the time of the invention for the wetting liquid of Angelescu to comprise one of the oils disclosed by Aizenberg as a known liquid that can repel contaminants, see Aizenberg [0310].
Claims 4-6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Angelescu et al. (WO 2010/028752) in view of Morgan (US 2003/0096083) and Aizenberg (US 2014/0147627) as applied to claim 3 above, and further in view of Nun et al. (US 2006/0147675).
Angelescu in view of Morgan and Aizenberg discloses the roughened porous surface can be generated by a spraying method where emulsions consisting of micro/nanoparticles are sprayed onto a flat surface and the particle assemble into a roughened solid layer upon solvent drying, see above discussion and Aizenberg [0185]. Examples of the micro/nanoparticles include titanium dioxide, silicon dioxide, silver, gold, platinum, zinc, titanium and hydroxyapatite, all of which correspond to non-toxic and/or edible features, see Aizenberg [0185].
The references, however, fail to disclose the claimed particle size and material.
Nun discloses a self-cleaning hydrophobic surface with improved mechanical stability wherein the surface comprises structure-producing particles selected from semimetal or metal oxides and wax, see abstract. Additionally, the reference discloses the structure-producing particles have a particle diameter most preferably from 0.5 to 10 microns [0036 & 0040].
It would have been obvious to one of ordinary skill in the art at the time of the invention for the particles of Aizenberg include the wax particle material and size of Nun given Nun discloses a mixture of particles including wax as useful for producing surface structures with improved mechanical stability, see Nun abstract.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-6, 8, 9 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 9, 11, 18 and 23-25 of U.S. Patent No. 9,625,075. Although the claims at issue are not identical, they are not patentably distinct from each other because they both require an article comprising a liquid impregnated surface and a plurality of features sufficiently spaced to contain the impregnating liquid therebetween wherein the features and liquid comprise similar materials.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 8,535,779. Although the claims at issue are not identical, they are not patentably distinct from each other because they both require an article comprising a liquid impregnated surface and a plurality of features sufficiently spaced to contain the impregnating liquid therebetween wherein the features and liquid comprise similar materials.
Claims 1-14 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 9,371,173. Although the claims at issue are not identical, they are not patentably distinct from each other because they both require an article comprising a liquid impregnated surface and a plurality of features sufficiently spaced to contain the impregnating liquid therebetween wherein the features and liquid comprise similar materials.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 10,968,035. Although the claims at issue are not identical, they are not patentably distinct from each other because they both require an article comprising a liquid impregnated surface and a plurality of features sufficiently spaced to contain the impregnating liquid therebetween wherein the features and liquid comprise similar materials.
Response to Arguments
Applicant's arguments filed September 19, 2025 have been fully considered but they are not persuasive.
Applicant argues that Angelescu fails to disclose an exposed solid portion of a surface that is non-submerged by an impregnating liquid. According to Applicant, a careful reading of Angelescu in its entirety indicates that the reference teaches a person skilled in the art that a contacting liquid should contact only the impregnating liquid. Additionally, Applicant argues that the Office’s interpretation cited portion of the reference regarding the claimed exposed surface is in direct contradiction to the express teachings and working examples of Angelescu. Applicant further argues that Morgan, Aizenberg and Nun fail to cure the deficiencies of Angelescu. Examiner respectfully disagrees.
While the portions of the reference cited by Applicant may disclose a submerged/coated surface, Examiner notes that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”; see Applicant’s remarks dated 12/3/24 pages 5-7 and MPEP 2123. As discussed above and previously, Angelescu discloses that a droplet of an undesired phase which may come in contact with the solid surface experiences a mixed boundary consisting partly of the solid substrate and partly of the liquid phase trapped in the surface of the microstructure, see page 3 lines 31-34 and Figs. 2, 3 & 6. Further, by modifying the ratio of trapped wetting liquid phase area to the exposed substrate area in the micro-structured surface, the effective macroscopic wetting properties of the surface can be custom tailored such as to be comprised between those of the wetting liquid phase and those of the bare substrate, see page 3 lines 34 – page 4 line 3. Based on the description in the cited portion of the reference as well as the Figures in the reference showing a mixed boundary of a solid and liquid surface, Examiner maintains the position that Angelescu discloses solid features that extend through an impregnating liquid. As such, the rejections under 35 U.S.C. 103 over Angelescu in view of Morgan (and Aizenberg and Nun) are respectfully maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/LAURA A AUER/Primary Examiner, Art Unit 1783