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 .
DETAILED ACTION
Election/Restriction
Claims 19-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/26/2024.
Applicant's election with traverse of Group I in the reply filed on 07/26/2024 is acknowledged. The traversal is on the ground(s) that since all the claims of Groups II-IV depend from claim 1, there is unity of invention in that all the claims share the special technical feature of claim polymeric film. This is not found persuasive because while the claims share a technical feature, that feature is not special, i.e. undisclosed in the prior art. As noted, the technical feature of claim 1 is disclosed in the prior art, see both the Written Opinion of the ISA in PCT/GB2020/050789, as well as the 103 prior art rejection below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubrow et al (US 20060159916 A1) in view of Ebert et al (US 20160075883).
Dubrow discloses a nanofiber enhanced surface area [abstract] wherein the nanofibers are attached to a substrate and both the nanofibers and the substrate may be made out of polymers including PMMA [0144] wherein the substrate has a film shape [Fig. 18] and the nanofibers have a desired property including hydrophobic moieties. The nanofibers may be arranged with in a pattern/array having different regions with different hydrophobicity /hydrophilicity [0010, 0016] including super-hydrophobicity [0010] wherein the hydrophobic moieties may be attached to the nanofibers and/or the base substrate region [Fig. 18].
Dubrow does not disclose the claimed metal oxide particles, but does disclose that the hydrophobic moiety may be attached vis an exogenous moiety [0016].
Ebert discloses films coated with superhydrophobic metal oxide nanoparticles and a resin binder (adhesive) [abstract] wherein the particles are modified with an aliphatic hydrocarbon chain with 18 carbon atoms covalently bonded thereto via a phosphonate group [Fig 4, 0022]. An example includes 30 mL of hydrophobic particle solution comprising 10 mg/mL of SiO2 particles, i.e. 300 mg of SiO2, and 150 mg of methylphenyl silicone resin (adhesive) [0036-0037], i.e. a mass ratio of the hydrophobic particles to the adhesive of 2:1. The particle size ranges from 1 to 100 nm or up to 150 nm [0023]. Substrates include thermoplastic films including PMMA (a vinyl polymer) [0034].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have used a metal oxide nanoparticle according to the claims as the exogenous hydrophobic moiety of Dubrow because Ebert teaches that they provide a superhydrophobic surface with good wear resistance [0008].
Claim(s) 1-4, 6, 8, and 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubrow et al (US 20060159916 A1) in view of Ebert et al (US 20160075883) in view of Iwamoto et al (US 20160130487 A1).
Modified Dubrow, discussed above, does not disclose the claimed aluminum oxide nanoparticles, but does disclose that the metal oxide is preferably SiO2 and ZnO [claim 10 of Ebert (US 20160075883)].
Iwamoto discloses a resin formed body comprising a surface layer with 40 to 300 parts by weight, preferably 40 to 200 parts by weight, of hydrophobic fine particles per 100 parts by weight of resin, which reads on an adhesive [abstract, 0026]. The hydrophobic fine particles that exhibit such a high hydrophobic property are obtained by modifying the surfaces of fine particles of a metal oxide such as silica (i.e. SiO2), alumina (i.e. aluminum oxide) or titanium oxide with a hydrophobic functional group [0045]. The particles can be modified by an alkyl group [0028]. The resin preferably includes a polyolefin [0053-0054] and may have a multilayered structure [0055] and may be coated on another base material made out of resin [0056].
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the aluminum oxide of the claims in the composition of Modified Dubrow because Iwamoto teaches that the claimed aluminum oxide/alumina and the Silica/SiO2 of Ebert are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubrow et al (US 20060159916 A1) in view of Iwamoto et al (US 20160130487 A1)
Dubrow, discussed above, does not disclose the claimed metal oxide particles, but does disclose that the hydrophobic moiety may be attached vis an exogenous moiety [0016].
Iwamoto, discussed above, discloses a film comprising an aluminum oxide fine particle modified with an alkyl group and a resin (adhesive) in amounts overlapping with the claimed range of mass ratio of hydrophobic particles to adhesives. Iwamoto also discloses that “fine particles” refers to particles with a particle diameter of 3 to 100 nm [0004]. The substrate may include methyl polymethacrylate (PMMA) and other polymers [0053].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have used a metal oxide nanoparticle according to the claims as the exogenous hydrophobic moiety of Dubrow because Iwamoto teaches that they provide a hydrophobic surface with good water sliding property even with use in small amounts [0099].
Claim(s) 1-4, 6, 8, and 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubrow et al (US 20060159916 A1) in view of Iwamoto et al (US 20160130487 A1) in view of Ebert et al (US 201060075883).
Modified Dubrow, discussed above, does not disclose the hydrocarbon chain having from 2 to 40 carbon atoms, as required by the claims.
Ebert, also discussed above, discloses films coated with superhydrophobic metal oxide nanoparticles and a resin binder (adhesive) modified with a hydrophobic group, including an alkyl chain. Ebert teaches that the modification to make metal oxide particles hydrophobic can be easily done with octadecylphosphonic acid (ODP) [0022] resulting in with an aliphatic hydrocarbon chain with 18 carbon atoms covalently bonded thereto via a phosphonate group [Fig 4, 0022].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have used the claimed hydrocarbon chain having 2 to 40 carbon atoms as the alkyl modification of Modified Dubrow because Iwamoto discloses that the hydrophobic modification with octadecylphosphonic acid (18 carbon atom chain) is done easily.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/Primary Examiner, Art Unit 1766