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 .
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 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.
Claims 1-15, 17-22 are pending. Applicant’s previous election of Group II, claims 15, 17-20 and 22 still applies and claims 1-14 and 21 remain withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/21/25 has been entered.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 15, 17-20, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (U.S. 2019/0016903) in view of Silicone Brushes:Omniphobic Surfaces with Low Sliding Angles (provided by Applicant), in view of Tian (CN 109806780, see machine translation).
Regarding claims 15, 17-20, 22 Wong teaches a substrate of a window (as in claim 20) that may have a surface roughness overlapping claim 17 (with such surface roughness not being increased via the subsequent coating, [0071]) and is provided with a coating that repels other liquids, wherein the coating is formed on a substrate that already has hydroxyl groups and is created via dimethyldialkoxysilane monomers that are polymerized (hydrolyzed and condensed) via a sulfuric acid catalyst in isopropanol onto the surface to form siloxane chains that bond onto the surface (i.e., grafting as claimed) with a thickness overlapping claims 15, and wherein this coating further includes a polydimethylsiloxane silicone oil lubricant thereon, as in claim 19, and wherein the repellent properties of the coating advantageously include an aqueous (aqueous but not just water) contact angle hysteresis overlapping claim 18 (see abstract, [0009], [0013], [0042], [0067]-[0070], [0081]).
The polymerization of dimethyldialkoxysilane monomers as discussed above would be known to one of ordinary skill in the art as creating a linear polydimethylsiloxane polymer but is not necessarily one having only one end grafted to the surface and the other end not grafted (as claimed). However, the Silicone Brushes NPL document is directed to the same type of coating of dimethyldialkoxysilane monomers that are polymerized (hydrolyzed and condensed) via a sulfuric acid catalyst in isopropanol onto a hydroxyl groups bearing surface to produce low water contact angle hysteresis (as sought by Wong), e.g., 2 degrees (within claim 18), and teaches that such effects may be achieved by only grafting one end of the polydimethylsiloxane polymer to the substrate and leaving the other end ungrafted (i.e., a hydroxyl group, as claimed) in order to create a “liquid like,” “brush” coating (page 6823). Thus, it would have been obvious to have grafted only one end of the polydimethylsiloxane polymer in Wong as taught by the NPL document in order to create a liquid like coating that has the desired low contact angle hysteresis.
Modified Wong does not disclose the length of the PDMS chains grafted onto the substrate. However, Tian is also directed to hydroxyl functional substrates that are provided with hydroxyl terminated PDMS polymers to create an antifouling “liquid like” coating, and teaches that a suitable MW of such polymer chains overlaps the claimed range of claims 15 and 22 ([0008], [0013], [0024], [0026]). Thus, it would have been obvious to have used the MW from Tian for the undisclosed MW of the PDMS brush layer in modified Wong because Tian shows that such a MW is suitable for achieving the results desired in modified Wong (i.e., a liquid like/brush PDMS antifouling coating).
Modified Wong fails to disclose that the bonding is self catalyzed as claimed but this is an immaterial product by process limitation because it has no effect on the final article being claimed. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the prior art fails to teach the self catalyzed limitation but this is an immaterial product by process limitation as explained above.
Applicant argues that the claimed thickness range provides unexpected improvement in CAH. However, it is unclear what data in the present application supports this assertion. Applicant cites FIG. 4D and 4F but it is unclear what experimental conditions were used to produce those examples. Accordingly, it is unclear if the claims are commensurate in scope with the data used to generate FIG. 4D and 4F. That is, for unexpected results, the claimed scope would have to be compared to the experimental scope and be commensurate therewith. There is currently no indication of the polymer structure and MW used to generate FIG. 4D and 4F, therefore the claims do not appear to be commensurate in scope and the showing of unexpected results is improper.
Applicant also refers to MW as being relevant to the unexpected results, but again, it is unclear what experimental evidence is being relied upon to make this assertion.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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 on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787