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 .
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 44 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.
Regarding claim 44, the claim recites that the binding agent comprises a substituted alkoxysilane. Applicants’ specification as originally filed does not recite the limitation as claimed, including at paragraphs 0079-0080. Note that although paragraphs 0079-0080 recite binding agents being alkylalkoxysilanes, methyltrimethoxysilanes, and methyltriethoxysilanes, the recitation of “substituted alkoxysilanes” generally does not appear to be recited in the specification. Therefore, the limitation constitutes new matter.
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.
Claims 13-18, 21, 22, 33-35, 38, 43, and 44 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 11,987,501 to Nguyen in view of WO 2005/068400 to Zhang and US Pub. No. 2017/0204279 to Larimer.
Regarding claims 13-18, 21, 22, 33-35, 38, 43, and 44, Nguyen teaches an aqueous hydrophobic silica dispersion including a hydrophilic particulate silica and a hydrophobic particulate silica (Nguyen, Abstract). Nguyen teaches that the hydrophobic particulate silica may include a hydrophobic fumed silica treated with a siloxane compound or alkyldialkoxysilane (Id., column 4 lines 29-39) and polydimethylsiloxane (Id., column 10 lines 36-63). Nguyen teaches that the dispersions can be used to prepare a treatment composition for a textile (Id., column 5 lines 46-52). Nguyen teaches that the coating layer can have a thickness from 2 microns to 20 mm (Id., column 17 lines 48-63). Nguyen teaches that the dispersions can coat textiles in the form of woven and non-woven fabrics, wherein the fibers comprise one or more of rayon, nylon, polyethylene, cellulose and others (Id., column 21 lines 42-64). Nguyen teaches that the coatings have water/humidity resistance, corrosion resistance, UV stability with no yellowing, high clarity, high abrasion and scratch resistance, stain and impact resistance, and low gloss (Id., column 19 lines 11-42).
Regarding the hydrophobic coating being superhydrophobic, Nguyen teaches that the dispersions can coat textiles in the form of non-woven fabrics, wherein the fibers comprise one or more of rayon, nylon, polyethylene, cellulose and others. Additionally, Zhang teaches a similar hydrophobic coating composition comprising nanoparticles, microparticles and an organic solvent, whereby on application of the coating composition to a surface of a substrate and then curing, a hydrophobic coating having both microscale and nanoscale roughness is formed on the surface (Zhang, Abstract). Zhang teaches that the coating composition comprises a mixture of a sol solution prepared by the hydrolysis and condensation of a tri-functionalised alkylsilane, microparticles and an organic solvent (Id., page 10 lines 3-24, page 14 lines 5-21). Zhang teaches that the tri-functionalised alkylsilane may be copolymerized with a hydrophobic polymer, wherein the hydrophobic polymer may be a hydroxy-terminated polysiloxane such as polydimethylsiloxanes (Id., page 14 line 25 to page 15 line 17). Zhang teaches that the microparticles may be fumed silica (Id., page 15 line 25 to page 16 line 4). Zhang teaches a composition comprising methyltrimethoxysilane and polydimethylsiloxane, wherein the hydrophobicity of the nanoparticles together with the microscale and nanoscale roughness contributes to the hydrophobicity of the coating, forming superhydrophobic surfaces with contact angles greater than 130º (Id., page 17 line 1 to page 18 line 2) or greater than 165º (Id., page 18 line 8 to page 19 line 2). Zhang teaches applying the composition to a substrate by spraying (Id., page 19 lines 17-21). Zhang teaches that the coating composition can be used to render a surface water-resistant, and reduce or inhibit fouling of the surface by biological organisms, dirt, ice or chemicals (Id., page 21 lines 3-11)
Additionally, Larimer teaches stretchable hydrophobic materials made with silica particles embedded into a liquid polymer (Larimer, Abstract). Larimer teaches articles coated with the hydrophobic material including personal protective equipment such as masks and gloves (Id., paragraphs 0008, 0087). Larimer teaches that liquid polymer may comprise polydimethylsiloxane, that the hydrophobic particles comprise silica particles having a hydrophobic shell, such as silica coated with hexamethyldisilazane or polydimethylsiloxane (Id., paragraphs 0010-0013). Larimer teaches that the compositions form a superhydrophobic and stretchable coating when applied to a substrate (Id., paragraph 0013), having a water contact angle greater than 150 degrees (Id., paragraphs 0041, 0051). Larimer teaches that substrates include textiles such as cotton or canvas fabric (Id., paragraphs 0061, 0106).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the hydrophobic coating of Nguyen, wherein the dispersion comprises a functionalized alkylsilane and hydrophobic polymer, such as methyltrimethoxysilane and polydimethylsiloxane, such that the coating is superhydrophobic, as taught by Zhang, motivated by the desire of forming a conventional hydrophobic coating having additional and predictably advantageous properties including rendering a surface water-resistant and reducing or inhibiting fouling of the surface by biological organisms, dirt, ice or chemicals, and as Larimer establishes that superhydrophobic materials were known in the art as being predictably suitable for use in masks and gloves.
Regarding claims 33 and 44, the prior art combination teaches the inclusion of a methyltrimethoxysilane, which appears to be within the scope of the claimed substituted alkoxysilane binding agent.
Regarding claim 43, Nguyen teaches that the coating composition may be applied by spraying (Nguyen, column 16 line 50 to column 17 line 5).
Claims 19, 36, 37, and 39-42 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen in view of Zhang and Larimer, as applied to claims 13-18, 21, 22, 33-35, 38, 43, and 44 above, and further in view of US Pub. No. 2008/0264259 to Leung.
Regarding claims 19, 36, 37, and 39-42, the prior art combination teaches use of the superhydrophobic coating on masks. Additionally, Leung teaches nanofiber filter facemasks, including a fine filter layer and a coarse filter layer, optional cover layers, and an optional hydrophobic coating (Leung, Abstract, paragraphs 0014, 0046). Leung teaches that the fibers include polyolefin, polyester, and cellulose ether and ester (Id., paragraph 0017). Leung teaches that the hydrophobic layer can be configured to allow free gas exchange while preventing water and other aqueous liquids from entering, in addition to prevent virus bearing water droplet from wetting and penetrating the cover (Id., paragraph 0049).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the coated mask of the prior art combination, wherein the mask is a multi-layered textile, such as the claimed mask structure, as taught by Leung, motivated by the desire of forming a conventional hydrophobic-coated textile comprising a mask structure known in the art as being predictably suitable for such applications.
Regarding claims 39-42, the prior art combination suggests that the mask is configured to allow free gas exchange while preventing water and other aqueous liquids from entering, in addition to prevent virus bearing water droplet from wetting and penetrating the cover. Note that the recitation that an element is “configured to” perform a function is not a positive limitation but only requires the ability to so perform. Since the prior art combination teaches a substantially similar structure and composition as claimed, for use in the claimed manner with the claimed properties, it is reasonable for one of ordinary skill to expect that the mask may be configured as claimed.
Response to Arguments
Applicants’ arguments filed December 9, 2025, have been fully considered but they are not persuasive. Applicants argue that Nguyen does not teach a superhydrophobic coating comprising a hydrophobic silica, an alkoxysilane functionalized with an alkyl group, and a hydrophilic silica, as treating a hydrophobic fumed silica with a siloxane results in a new molecule, and the final composition does not comprise an alkoxysilane functionalized with an alkyl group disposed on the surface of the fabric.
Regarding Applicants’ arguments, Examiner respectfully disagrees. Although Nguyen alone is not relied on to teach the coating being superhydrophobic, the claimed coating comprises a hydrophobic silica, an alkoxysilane functionalized with an alkyl group, and a hydrophilic silica. As set forth above, Nguyen teaches an aqueous hydrophobic silica dispersion including a hydrophilic particulate silica and a hydrophobic particulate silica, wherein the hydrophobic fumed silica is treated with a siloxane compound or alkyldialkoxysilane. Note that Applicants’ specification similarly references at paragraphs 0077-0085 superhydrophobic coatings comprising hydrophobically treated fumed silica particles and alkoxysilane compounds functionalized with alkyl groups, where silane and/or binding agents includes alkyl-methoxy silanes among others. Applicants’ specification does not reference alkoxysilanes functionalized with an alkyl group in any other context. Therefore, the treated hydrophobic fumed silica of Nguyen appears to be within the scope of the claimed hydrophobic silica and alkoxysilane functionalized with an alkyl group.
Additionally, note that although Applicants reference the Affidavit of December 9, 2025, as showing the alkoxysilane couples with the surface of the fabric and with the alkyl group (e.g., octyltriethoxysilane), Applicants’ specification neither references such a function, nor recites the identity of an alkyl group being octyltriethoxysilane. It is unclear if the Affidavit relies only on the octyltriethoxysilane to accomplish the function argued. Therefore, it is unclear if the Affidavit is consistent with the specification as originally filed.
Additionally, note that Applicants’ previous reliance in the remarks of August 11, 2025, on paragraph 0102, does not establish the function argued, as the paragraph relies on a reactive silicone, CoatOSil 2059, which is an unidentified product.
Applicants argue that Zhang teaches away from use of the composition in a fabric. Examiner respectfully disagrees. Nguyen already establishes a hydrophobic coating composition for use in coating textiles. Zhang is relied on to teach a similar hydrophobic coating composition comprising nanoparticles, microparticles and an organic solvent, whereby on application of the coating composition to a surface of a substrate, the coating is formed as a superhydrophobic coating.
Applicants argue that a person skilled in the art would not understand a fumed silica particle coated with a hydrophobic shell to be an alkoxysilane functionalized with an alkyl group. Examiner respectfully disagrees. Larimer is not relied on to teach the claimed alkoxysilane functionalized with an alkyl group, as such a structure is already established by the teachings of the prior art.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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