DETAILED ACTION
In response to Amendments/Arguments filed 8/24/2026. Claims 16, 19-20, 23-27, 29-30, 32-36, and 38-39 are pending. Claim 34 is withdrawn. Claims 16, 19-20, 23-27, 29-30, 32-33, 35-36, and 38-39 are examined thusly. Claims 36 and 38 were amended. Claims 18 and 40 were cancelled.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16, 19-20, 23-26, 32-33, are 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al. (Applied Surface Science) with evidence from Sowe et al. (International Journal of Polymer Analysis and Characterization) and Neinhuis et al. (New Phytologist).
Zou discloses a superhydrophobic coatings for various substrates. Concerning claims 16, 20, and 25-26, Zou discloses a superhydrophobic coating comprising raspberry-like hollow particles are disposed onto a surface of a substrate, wherein the substrate can be PVC, a gingko leaf, and the like (abstract). The raspberry-like hollow particles have a double-scale roughness, wherein this is considered to be small particles disposed on the surface of a larger particle and the raspberry-like hollow particles are functionalized with a hydrophobic agent that is an organosilane that is a fluorinated perfluoropolyether group with silicon atom that has at least one hydrolyzable group and is done prior to deposition of the particles onto a surface (FIG. 1; section 3.1). While it is noted that the water contact angle of the surface of substrate prior to coating versus the water contact angle is not necessarily patentable, it is noted that as evidenced by Sowe that PVC has a water contact angle greater than 60° (Sowe; FIG. 2, Pure PVC) and gingko leaves have a water contact angle above 100° (Neinhuis; FIG. 7), wherein after coating, the water contact angle of the above cited materials is 157° and 160° respectively (section 3.5). The resulting coating is at least about 50 nm as shown in Figures 1 and 2 with respect to the particle size and the result after dip coating as shown in Figure 1.
Examiner further notes that Zou discloses the surface roughness is controlled to be less than 100 nm to minimize light scattering and achieve good transparency and as such, have a thickness within the claimed range (p. 704). Alternatively, it would have been obvious to one of ordinary skill in the art to have the claimed thickness in order to provide good transparency. Examiner notes that the visible light spectrum has a range of about 380 to 750 nm and since the thickness is largely below the visible light spectrum, the thickness of the coating of Zou must be within the claimed range in order to have the visible transmittance as disclosed by Zou.
Given that the structure has the same water contact angles prior to coating and after coating and the materials are the same as that claimed wherein the process of coating the material is the same or similar as that disclosed, the articles are capable of having at least 90% by weight of the superhydrophobic coating being removed by a cloth and more specifically, the dry cloth of claim 32 and the number of swipes. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 19, the particles are dispersed in a sol and as such, the sol would serve as a binder for the particles (sections 2.2 and 2.3). With respect to claims 23-24 and 36, Zou discloses the above including the raspberry-like hollow silica particles have small particles grafted to the core particles wherein the small particles and core particles have different sizes based upon the size bars and the core particles are about 50 nm with the small particles being less than 50 nm (FIGS. 2 and 3). Concerning claim 33, the coated PVC has a transmittance above 90% and since the materials are the same and the haze is therefore within the claimed range. Regarding claim 35, the limitation is a process limitation that is not given patentable weight since the claims are directed to a product.
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al. (Applied Surface Science) with evidence from Sowe et al. (International Journal of Polymer Analysis and Characterization) and Neinhuis et al. (New Phytologist) as applied to claim 16 above, and further in view of Ebert et al. (US 20160075883).
Zou discloses the above but is silent for use in an ophthalmic lens.
Ebert discloses a hydrophobic coating disposed onto an ophthalmic lens to provide hydrophobic properties (para. 0004-0021). As such, it would have been obvious to one of ordinary skill in the art to provide a lens with hydrophobic properties.
Allowable Subject Matter
Claim 38 is allowed. The prior art is silent to the surface being a treated surface of the claimed materials having all the specific elements as claimed.
Claims 27 and 39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art is silent to the treatment of the surface with the with the claimed materials prior to deposition of the raspberry-like hollow particles having different diameters as claimed.
Response to Arguments
Applicant’s arguments, see p. 6, filed 8/24/2026, with respect to the objection of claim 36 have been fully considered and are persuasive. The objection of claim 36 has been withdrawn. Examiner acknowledges the amendment as overcoming the previous objection.
Applicant’s arguments, see p. 6, filed 8/24/2026, with respect to 35 USC 112(b) rejection of claim 18 have been fully considered and are persuasive. The rejection of claim 18 has been withdrawn. Examiner acknowledges the cancellation of claim 18 overcomes the previous rejection.
Applicant's arguments filed 8/24/2026 with respect to the rejections under Zou as the primary reference have been fully considered but they are not persuasive. Applicant asserts Zou does not have the claimed thickness and the thickness would be in the micrometer range because of the term “microstructure” and “micropores”. Examiner respectfully disagrees and notes that Zou explicitly recites the term “nanostructure” on p. 702 is not “microstructure”. Applicant further asserts that other coatings having thicknesses of 750 nm or greater are transparent. However, Applicant has provided no evidence or showing to that end of the comparative materials or coatings having the particles. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the thickness of the coatings of Zou being multitudes of microns must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
When looking at Figure 5, it appears that the thickness of the coated section would be within the claimed range since the article is transparent and contains particles. Again, Examiner relying upon the prior art as a whole for the above. Examiner further notes that the PTO does not possess any testing facilities to test the prior art and Applicant has not met the burden of showing that the prior art would not possess the claimed thickness at the processing conditions. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. As such, the rejections are maintained.
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 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 PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
