DETAILED ACTION
In response to RCE filed 4/22/2026. Claims 16, 18-20, 23-27, 29-30, 32-36, and 38-40 are pending. Claim 34 is amended and withdrawn. Claims 16, 18-20, 23-27, 29-30, 32-33, 35-36, and 38-40 are examined thusly. Claims 16, 23-24, 36, and 38 were amended. Claims 39 and 40 are added as new. Claims 28 and 37 was cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/22/2026 has been entered.
Claim Objections
Claim 36 is objected to because of the following informalities: the term “140” is missing the degree sign with respect to the contact angle. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 recites the limitation "the fluorinated group" in first line. There is insufficient antecedent basis for this limitation in the claim. Also, claim 18 is dependent on a cancelled claim and with the instant amendment, it is not clear as to which claim the limitations depend upon.
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, 18-20, 23-26, 32-33, 35-36, and 38 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, 18, 20, 25-26, and 38, 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.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (Applied Materials & Interfaces).
Fang discloses a temporary superhydrophobic coating. Concerning claim 38, Fang discloses the coating has a thickness less than 50 microns which overlaps and includes the claimed range, wherein the particles are treated with a hydrophobic agent prior to coating the treated particles onto a surface and the surface prior to coating has a contact angle of at least 60° and after coating has a contact angle of at least 165° (Table 1, e.g. silicon wafer, PET film; p. 1450). Given that the structure and materials are the same as that claimed, film can be removed through the wiping operation as claimed.
Allowable Subject Matter
Claims 27, 39, and 40 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 combination all of the instantly claimed limitations coating a surface of article with the claimed elements of claims 27, 39, and 40 prior to the deposition of the temporary coating as set forth in the instant independent claims. As shown in the Examples of the instant invention, the article has a surface that is coated with the claimed materials of claims 27, 39, and 40 prior to the deposition of the temporary coating disposed on the coated surface prior to removal.
Response to Arguments
Applicant’s arguments, see p. 6, filed 4/22/2026, with respect to 35 USC 112(b) rejection have been fully considered and are persuasive. The rejection of the claims has been withdrawn. Examiner acknowledges the instant amendments as overcoming the previous rejection.
Applicant’s arguments, see p. 7, filed 4/22/2026, with respect to 4/22/2026 regarding the 35 USC 102(a)(1) rejection under Zou have been fully considered and are persuasive. The rejection of the claims has been withdrawn. However, it is noted that the reference is still applicable as the primary reference for an obviousness rejection. Concerning the Zou reference, Applicant asserts that the term “micropores” indicates that coating has a thickness in microns. Examiner respectfully disagrees and notes that “micropores” and “nanopores” indicates the coverage of the film on the surface of the substrate (i.e. area) and not with respect to the thickness as Applicant asserts. Indeed, when looking to Zou, 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.
Applicant further asserts that the thickness of the film and removability are tied to the film thickness. Examiner respectfully disagrees and notes that the instant specification does not recite such a relationship. Applicant also asserts that Zou does not recognize coating thickness as a parameter that effects the coating properties. Examiner respectfully disagrees and notes that the optical performance of the coating is a key property. To that end, 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. As such, Zou is still applicable to the instant claims.
Examiner again reiterates that the substrate is surface treated prior to deposition of the superhydrophobic coating. This feature is not claimed in the independent claims and as such, the instant assertions are not commensurate in scope with the Examples. As such, the rejections are maintained for the above reasons.
Conclusion
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
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