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 Applicant’s previous election of Group II, claims 15, 17-20 and 22 still applies and claims 1-14 and 21 remain withdrawn.
Response to Amendment
Applicant’s response of 06/26/26 has been entered. Applicant’s remarks are not persuasive and the previous rejection(s) are maintained.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 not persuasive.
Applicant argues that there is support for the claimed thickness range and MW. However, the previous remarks were not regarding general support for the claim limitations, but instead were regarding the commensurate in scope issue in terms of analyzing the claims for unexpected results. Applicant cites FIG. 4A-4F as demonstrating the improved properties that support the unexpected results argument. However, the Examiner still cannot find any indication regarding what composition was used to achieve those results. Specifically, what specific values of the Q1-Q3, m, n, and p variables as recited in the present claims were used to experimentally achieve the results in FIG. 4A-4F, as well as any other ingredients used in the composition besides just the claimed PDMS polymer. There is also no indication as to whether or not liquid PDMS was used in those figures (like in claim 19) and if so, what type of liquid PDMS. This information is required in order to determine if the experimental results being relied upon are commensurate in scope with the present claims, which is required for unexpected results.
See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Applicant cites paragraphs related to FIGS. 4A-4F but they do not appear to provide details regarding what specific polymer was used to produce that data. The only reference to the polymer with respect to these figures appears to be terminal hydroxyl groups ([0121] of the PGPub) but it is unclear if this is referring to the group that bonds to the substrate (and thus forms the Q1 group) or the group that remains unbound (i.e., Q2), and in either case, fails to fully describe even that terminal group because there are multiple versions of Q1-Q3 groups that have hydroxyl groups. The other variables in the claimed formula are not specified at all.
Applicant also cites to [0230] and [0231] but those do not appear to be related to FIGS. 4A-4F (instead FIG. 20) and appear to be for a siloxane outside the claimed scope (trimethylsiloxy terminated PDMS).
Based on the above, there is not sufficient disclosure/data in the present application to determine if the claims are commensurate in scope to support the unexpected results argument.
Applicant argues that the prior art does not disclose the particular benefits of the unexpected results, however, without the data required to perform a commensurate in scope analysis this issue is moot (the prior art is not required to predict the unexpected results for prima facie obviousness, it is only relevant in the context of unexpected results to rebut prima facie obviousness but that requires commensurate in scope).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is 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 extension fee 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.
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.
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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).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights