DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/12/2025 has been entered.
Claim Interpretation
The claims contain product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 47 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. The limitation “that is not a copper” is new supported by the original specification.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 36-38, 40-44 and 48-51 is/are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Xi et al. (Applied Surface Science 255 (2009) 4836-4839).
Regarding claims 36, 37, 41-44 and 48-51: Xi et al. teach an article of two copper layers on a copper substrate prepared by electroplating in different current density (Experimental; Figures; Conclusion). The substrate, first layer, and second layer are all copper. Xi et al. teach a superhydrophobic coating without the need for an additional layer of low-surface-energy material (3.3. The hydrophobic mechanism of the electroplated copper surfaces; Conclusion). It is the position of the Office that the structural limitations of the claims are met.
Regarding claim 38: Xi et al. teach a water contact angle of 153.5 (Fig. 2; Conclusion), which is 154 according to the claimed significant figures. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1320–21 (Fed. Cir. 2001) where the district court interpreted 0.91 to include the values between 0.905 and 0.914, based on the reasoning that numbers in that range would be rounded to 0.91.
Regarding claim 40: Since the method and metal ions are the same as claimed, the deposit height will be the same as claimed. The contact angle is also evidence of the same deposit height [see instant specification paragraph 0086]. Since the contact angle is the same as claimed, the deposit height will be the same as claimed. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 39 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Xi et al. (Applied Surface Science 255 (2009) 4836-4839) as applied to claim 36 above further in view of Zhang et al. (Materials Letters 67 (2012) 327-330)
Regarding claim 39: Xi et al. does not recite a contact angle hysteresis.
However, Zhang et al. teach that the contact angle increases with the roughness of the micro-nano hierarchical structure. It is a result effective variable.
It would have been obvious to optimize the micro-nano hierarchical structure of Xi et al. for the desired contact angle hysteresis.
Claims 36-44 and 47-51 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Zhang et al. (Materials Letters 67 (2012) 327-330).
Regarding claims 36, 37, 41-44 and 47-50: Zhang et al. teach an article comprising a copper surface having plurality of porous copper structures attached to the surface and a layer of nickel covering the copper layer (Experimental; Figures). Zang et al. teach a superhydrophobic coating (Conclusion). Zhang et al. teach electrodeposition (Experimental). Zhang et al. teach that their method is an improvement over prior art in that different metallic layers can be stacked, such as Ni and Cu (Introduction). It would have been obvious to one of ordinary skill in the art to continue to stack different metals to produce a Cu/Ni/Cu hierarchical structure and multilayer coating to provide the favorable properties by combining super-hydrophobicity with metallic properties of different layers (Cu, Ni and Cu). It is the position of the Office that the structural limitations of the claims are met.
Regarding claim 38: Zhang et al. teach a contact angle of 156°C (Conclusion).
Regarding claim 39: Zhang et al. teach that the contact angle increases with the roughness of the micro-nano hierarchical structure. It is a result effective variable.
It would have been obvious to optimize the micro-nano hierarchical structure of Zhang et al. for the desired contact angle hysteresis.
Regarding claim 40: Since the method and metal ions are the same as claimed, the deposit height will be the same as claimed. The contact angle is also evidence of the same deposit height [see instant specification paragraph 0086]. Since the contact angle is the same as claimed, the deposit height will be the same as claimed. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 51: Zhang et al. produces a superhydrophobic without an additional layer of low-surface-energy material (experimental).
Response to Arguments
Applicant's arguments filed 8/11/2025 and 9/12/2025 have been fully considered but they are not persuasive.
The Applicant has made the argument that Zhang et al. teach that the second layer is nickel. This is not persuasive because instant claim 47 requires a non-copper metal between the two copper layers. Therefore, the nickel layer is required to meet the limitation of claim 47.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763