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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/24/2025 has been entered.
The amendment filed 9/24/2025 has been entered. Claims 1-40, 43, and 46 have been canceled. New claim 62 has been added. Claims 41-42, 44-45, and 47-62 are pending in the application. Claims 48-49 and 51-61 have been withdrawn from consideration as being directed to non-elected species and non-elected inventions. 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 Rejections - 35 USC § 103
Claims 41-42, 44-45, 47, 50, and new claim 62 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi (WO2017/179678A1, please refer to US2020/0347258A1 as an English language translation of the WIPO document for the below cited sections), in further view of Liu (US2012/0296029A1) for generally the reasons recited in the prior office action and restated below with respect to the amended/new claims, wherein it is further noted that with respect to amended claim 42 and new claim 62, Yamaguchi specifically teaches IPA or isopropyl alcohol as a suitable solvent for the mixed solvent of the curable composition (Paragraph 0103, Example 11, as in new claim 62), while Liu also teaches that suitable solvents for their coating composition include alcohol solvents (Paragraphs 0068 and 0286).
As discussed in the prior office action, Yamaguchi teaches a curable composition for forming a super-liquid-repellent coating film having abrasion resistance, wherein the composition comprises, as a fluorine compound, fine particles (A) that are modified to contain a fluorine-containing compound bound to the surface thereof as described in Section 2.1, and/or a polyfunctional crosslinkable compound (B) that imparts excellent abrasion resistance to the coating, such as a radically polymerizable-group containing compound or monomer as described in Section 2.2 (Entire document, particularly Abstract, Paragraphs 0029-0053); with examples utilizing triacryloylheptadecafluorononenyl pentaerythritol (TAHFNHA) as the polyfunctional crosslinkable compound (B) (reading upon the claimed “[2] a monomer (Bm)”) and a copolymer produced from a fluorinated methacrylate of C6F13CH2CH2OCOC(CH3)=CH2 abbreviated as Rf(C6)methacrylate (as in instant claim 50 and also reading upon the polymerizable group (b) of instant claims 44-45) and fine silica particles (reading upon the claimed “(i) core particle” of amended claim 41 and more particularly “wherein the core particle (i) comprises an inorganic particle” as in instant claim 47) having an average primary particle diameter of 12 nm (falling within the claimed “number average particle size of 0.5 nm to 1000 nm” of amended claim 41) and a radically reactive group on the surface thereof (reading upon the claimed “(ii) one or more modifying moieties” that “have one or more polymerizable groups (a)” as in instant claim 41 and “radically reactive group” as in instant claim 44), as the modified particles (A) such that the resulting copolymer reads upon the claimed “[1] a polymer constituting a water-repellent component, the polymer containing a constituent unit derived from (A) at least one modified particle containing (i) a core particle and (ii) one or more modifying moieties that modify the core particle” as recited in instant claim 41; and the Rf(C6)methacrylate reading upon the claimed “a constituent unit derived from (Bs) at least one compound containing one or more polymerizable groups (b) in the molecule, and containing fluorine” as recited in instant claim 41 (Note: Paragraph 0144 of the WIPO document shows the correct formula for Rf(C6)methacrylate while Paragraph 0128 of the US document contains an obvious typographical error in the formula in that it is missing an additional carbon atom given that a methacrylate end group is “OCOC(CH3)=CH2”; Examples). Yamaguchi teaches that the proportion of fine particles (A) is not particularly limited and in general is preferably about 1 to 15 wt% (Paragraph 0044), and that the composition may further contain, in addition to the fine particles (A) and the polyfunctional crosslinkable compound (B), at least one compound having one reactive group in the molecule as a constituent component (Paragraph 0089, also reading upon the claimed “monomer (Bm)”), wherein given that the modified particles (A) can be attributed to the claimed “water-repellant component” and the remaining proportion of about 99 to 85wt% including the polyfunctional crosslinkable compound (B) (or any portion thereof) and the at least one compound having one reactive group in the molecule can be attributed to the claimed “abrasion-resistant component”, Yamaguchi clearly teaches a ratio of the mass of the abrasion resistant component to a total mass of the water-repellent component and the abrasion-resistant component of 85:100 reading upon the claimed ratio as recited in instant claim 41, particularly in light of the working examples of Yamaguchi (Examples).
Yamaguchi also teaches that the curable composition “may further contain a single solvent or a mixed solvent in which each component, such as a polymerization initiator, in addition to the above components (A) and (B), can be uniformly dissolved”, wherein “[e]xamples of single solvents include fluorine-based solvents (C) and the like” (emphasis added), and examples of mixed solvents include a mixture containing a fluorine-based solvent (C), with specific examples thereof including a mixture of fluorine-based solvent with isopropyl alcohol (IPA) (as in instant claim 62) or with butyl acetate as recited in Paragraph 0103, wherein the fluorine-based solvent is one in which the fluorine-containing polymer formed is highly soluble (Paragraph 0104); and although Yamaguchi only recites ratios of 50/50 (w/w), 75/25 (w/w), and 95/5 (w/w) for the fluorine-based solvent/IPA mixed solution, and 67/33 (w/w) and 80/20 (w/w) for the fluorine-based solvent/butyl acetate, Yamaguchi does not limit the solvent to the example solvents and solvent mixtures as recited in Paragraph 0103, and does not explicitly require the solvent to contain a main portion, or even 20% or more by mass of the entire composition, of the fluorine-based solvent given the above “and the like” limitation (wherein the Examiner notes that the IPA taught by Yamaguchi would read upon “a solvent containing more than 60 mass% of one or more solvents selected from the group consisting of non-fluorine organic solvents and water,” emphasis added, as recited in amended claim 41 given that IPA alone is 100 mass% of one solvent selected from a non-fluorine alcohol solvent, and the claim does not exclude other solvents. Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any solvent or solvent mixture capable of dissolving or dispersing each of the components of the composition as taught by Yamaguchi to form a coating composition as long as the resulting coating film has properties as required by Yamaguchi, i.e. a fluorine content of 1 to 60wt% and a coating film surface that has an average surface roughness Ra of 0.5 to 20 µm, a specific surface area ratio of 1.7 to 5, a contact angle with water of 150° or more, a contact angle with n-hexadecane of 80° or more, and a contact angle with water of 150° or more after being rubbed 100 times with a PET film under a load of 100 g as recited by Yamaguchi in the Abstract and Claim 1.
Further, as discussed in detail in the prior office action(s), Liu teaches a similar coating composition for providing water-repellency comprising fluorine-containing multifunctional nano/microspheres having a size in some embodiments of from about 100 nm to about 1000 nm (as in Yamaguchi, also falling within the claimed number average particle size range of amended claim 41) and comprising a core nano- or micro-sized particle that may be an inorganic particle, particularly a silica particle (as in Yamaguchi), that is surface modified to provide polymerizable groups thereon to which is grafted a fluorine-containing (co)polymer utilizing fluorinated (meth)acrylate monomer(s) and providing at least one reactive functional group capable of bonding covalently with an adhesive or an adhesive precursor (Entire document, particularly Abstract, Paragraphs 0009-0018, 0024-0030, and 0060), such as a superglue consisting initially of a cyanoacrylate monomer, an epoxy adhesive, isocyanate adhesive, or polyurethane adhesive that may be combined with the multifunctional microspheres (as in Yamaguchi) and then applied to a material surface to provide a coating having excellent amphiphobic properties, particularly a water contact angle of greater than about 90°, about 150°, about 170°, or about 175° (Paragraph 0062; as in Yamaguchi), and an oil contact angle of greater than about 90° (Paragraph 0062; as in Yamaguchi), as well as high durability, increased stability, increased wear resistance and/or precise control of performance properties (Paragraphs 0241-0251, 0253, and 0266); and that may be more cost-effective than existing coatings (Paragraph 0266). Liu teaches that the composition may further comprise a solvent that can be a non-halogenated organic solvent, a halogenated organic solvent such as a fluorinated organic solvent (as in Yamaguchi), an aqueous solvent, or water (Paragraphs 0067-0068, 0081, 0252, 0256-0257, and 0264), which may be used to solubilize or disperse a multifunctional microsphere, wherein a solvent can be “chosen by a skilled artisan based on multifunctional microspheres used, desired reaction conditions, substrates or materials surfaces to be coated, and so on,” with non-limiting examples of solvents including alkanes, alkenes, aromatics, alcohols, ethers, ketones, esters, aldehydes, halogenated alkanes, halogenated alkenes, halogenated aromatics, halogenated alcohols, halogenated ethers, halogenated ketones, halogenated esters, or combinations thereof (Paragraph 0286).
More specifically, Liu teaches an example comprising composite silica particles grafted with two diblock polymers P1 and P2, with P1 comprising a poly[3-(triisopropyloxysilyl)propyl methacrylate] (PIPSMA) block polymerized with a poly(perfluorooctylethyl methacrylate) (PFOEMA) block, and P2 comprising a PIPSMA block with a poly(tert-butyl acrylate) (PtBA) block, wherein relative amounts of grafted P1 and P2 could be tuned by changing the P1 to P2 ratio, and casting of the coated particles in a solvent selective for either PFOEMA or PtBA can yield films of bumpy silica particles whose surfaces are enriched by the polymer that was soluble in the casting solvent, such that particulate coatings with tunable surface wetting properties can be obtained by changing either the proportion of grafted P1 and P2 or by changing the casting solvent (Paragraph 0394). Liu also teaches that whether the coating is rugged or smooth is dependent upon the selective solvent and the polymer chains grafted on the microspheres given that whether the surface is rugged or smooth is dependent upon the degree at which the polymer chains grafted on the microspheres collapse in a selective solvent (Paragraph 0432), wherein particles coated with a singular brush polymer were smooth because the polymer chains collapsed uniformly on the silica surface while particles coated with a mixture of P1 and P2 appeared rugged because the particles were co-grafted by the two different polymers that collapsed at different degrees when the particles were last cast from a selective solvent (Paragraph 0432). Liu further teaches that the examples revealed that segregation patterns of PtBA and PFOEMA changed depending on the solvent from which the coated silica particles were cast, which can directly affect the wetting properties of films of the coated silica particles, including oil and water repellency; and that in one embodiment, films cast from C7F14 should have the best amphiphobicity because C7F14 is selective solvent for PFOEMA such that casting from such solvent should help enrich the material surface with PFOEMA, while casting from methanol (i.e. a non-fluorine alcohol/organic solvent), a selective solvent for PtBA, the silica surfaces should be enriched with PtBA (Examples, particularly Examples 10-11). Hence, Liu provides a clear teaching and/or suggestion that the properties of the coating can be tailored not only by the polymer chains grafted to the core particles but also by the selection of solvent utilized to cast the composition, and given that Liu is of the same field of endeavor as Yamaguchi with both directed to providing a surface with a hydrophobic/amphiphobic coating having a high water contact angle and desired surface roughness properties, the Examiner maintains her position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 41-42, 44-45, 47, 50, and 62 would have been obvious over the teachings of Yamaguchi in view of Liu given that is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum solvent or solvent mixture to provide the desired properties for a particular end use of the composition taught by Yamaguchi in view of Liu (see Liu, Entire document, particularly as noted above, Figures and Examples).
Further with respect to the claimed number average particle size range as recited in amended claim 41 and the claimed “inorganic particle” of instant claim 47, in addition to the examples disclosed by Yamaguchi utilizing silica particles having an average primary particle size of 12 nm as noted above, Yamaguchi teaches that the fine particles have a size such that the mean particle size of the primary dispersion as defined in DIN 53206 is preferably 0.5 nm to 1000 nm, more preferably 1 nm to 100 nm (Paragraph 0032) as in instant claim 41; and may be selected from a wide variety of inorganic particles such as silica fine particles and metal oxide fine particles, as well as a wide variety of organic fine particles, wherein given that the working examples utilize inorganic silica particles, the claimed invention as recited in instant claim 47 would have been further obvious over the teachings of Yamaguchi in view of Liu.
Response to Arguments
Applicant's arguments filed 9/24/2025 have been fully considered but are not persuasive with respect to the obviousness rejection of claims 41-42, 44-45, 47, 50, and 62 over the teachings of Yamaguchi in view of Liu as discussed above. The Applicant argues in Section III of the response that “Applicant’s invention achieves effects that [allegedly] could not have been predicted by a person skilled in the art, in view of the cited references” (emphasis in original, see first full paragraph of page 8), wherein as “described in the specification, Applicant’s invention can contribute to reducing the cost of the super-water-repellent materials and expanding the range of applications” (see second full paragraph of page 8). The Applicant argues that “despite using such a small amount of fluorine organic solvent, Applicant’s invention achieves remarkable effects in terms of exhibiting performance equivalent to that of coating films formed of a dispersion prepared with a fluorine organic solvent,” referring to Paragraph 0193 of the specification which discusses results of Test Examples A1 to A6 revealing performance equivalent to the performance of coating films prepared with a conventionally used fluorine organic solvent and which states that “the present disclosure has the potential to contribute to reducing the cost of super-water-repellent materials and expanding applications” (emphasis added). The Applicant also refers to Paragraph 0202 which similarly discusses the results of Test Examples B1 to B6 as revealing performance equivalent to the performance of a dispersion prepared with conventionally used fluorine organic solvent and similarly states that the results “confirmed that the present disclosure has the potential to contribute to reducing the cost of super-water-repellent materials and expanding applications” (emphasis added). The Applicant argues that the “effects achieved by the Applicant [allegedly] could not have been predicted, even with consideration of Yamaguchi and Liu” (see last paragraph of page 8), and then further argues that amended claim 42 which recites that the non-fluorine organic solvent is an alcohol solvent and new claim 63 which recites that the alcohol solvent is isopropyl alcohol “[allegedly] exhibit the above effects particularly significantly, demonstrating an excellent effect [allegedly] far exceeding what could have been expected by those skilled in the art” (see first paragraph of page 9 of the response). However, the Examiner respectfully disagrees and first notes that the data relied upon by the Applicant is not commensurate in scope with the claimed invention given that all of the examples relied upon by the Applicant utilize a copolymer of Rf (C6) methacrylate and silica particles, and given that one having ordinary skill in the art could not reasonably extend the probative value thereof to any (A) modified particle containing any core particle or even any inorganic core particle, and/or to any (Bs) compound containing one or more polymerizable groups (b) in the compound and containing fluorine as recited in the instant claims, Applicant’s arguments are not persuasive. It is also noted that the Applicant provides no clear showing of criticality and/or unexpected results over the closest prior art teachings of Yamaguchi, wherein as noted above Yamaguchi clearly teaches both fluorinated and non-fluorinated solvents and does not specifically limit the invention to any particular solvent(s) or solvent mixtures, and although the Applicant argues that the instant invention has the “potential” to contribute to reducing the cost of super-water-repellent materials and expanding applications, such “potential” is not a proper showing of unexpected results in order to overcome the obviousness rejection over Yamaguchi in view of Liu, particularly given that Liu generally teaches that the multifunctional microspheres, similar to the particles in the invention taught by Yamaguchi, “may provide a coating which is more cost-effective than existing coatings” (Paragraph 0266), and that one skilled in the art would clearly recognize that fluorinated solvents generally have a higher cost than non-fluorinated solvents such that a reduction in the amount of fluorinated solvent(s) (e.g. the 50/50 fluorine-based solvent/IPA as taught by Yamaguchi vs. the 75/25 fluorine-based solvent/IPA as taught by Yamaguchi) would also provide a “potential” to contribute to reducing the cost of the coating (see also Jing, US2004/0241396A1, Paragraph 0040, which refers to the “high cost” of fluorinated solvents vs. non-fluorinate solvents; or USPN 6,511,721, which also refers to the higher cost of fluorine-based solvents over inexpensive non-fluorine-based solvent, Col. 6, line 64-Col. 7, line 2; or more particularly, Kurihara, JP2012097125A, Entire document, machine translation also attached, which is directed to a similar water and oil repellent coating as in Yamaguchi and/or Liu comprising a fluorinated acrylic copolymer in a non-fluorine based organic solvent from the standpoint of cost and environment, see Abstract, second paragraph of page 2 of the translation). Hence, the Examiner maintains her position that the claimed invention as recited in instant claims 41-42, 44-45, 47, 50, and 62 would have been obvious over the teachings of Yamaguchi in view of Liu.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 9/24/2025.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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, Callie Shosho can be reached at 571-272-1123. 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.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787