DETAILED ACTION
In response to Amendments/Arguments filed 9/26/2025. Claims 16, 18-20, 23-30, and 32-38 are pending. Claim 34 is withdrawn and amended. Claims 16, 18-20, 23-30, 32-33, and 35-38 are examined thusly. Claims 16, 18, and 23 are amended. Claims 17 and 21-22 were cancelled. Claims 35-38 were added as new.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 36 and 37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 36 recites “the temporary super-hydrophobic film comprises at least two nanoparticle populations of different sizes”. While it is noted that cancelled claim recited the term “at least two nanoparticle populations of different sizes”, the claim also recited specific average diameter ranges of 40 to 100 nm and 5 to less than 40 nm. The limitation as set forth in the instant claim 36 is open to ranges outside of the above recited ranges and of which do not have support in the instant specification. Namely, the limitations as presently claimed would include ranges that are above 100 nm and below 5 nm which are not recited or supported by the instant specification. As such, the limitations as set forth in instant claim 36 are considered to be new matter. Claim 37 is rejected as being dependent upon claim 36.
Claim Rejections - 35 USC § 102
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, 18-26, 32-33, and 35-38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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, 36, 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).
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 at the . 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 21-24 and 37, 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.
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 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al. (Applied Surface Science) in view of Ebert et al. (US 20160075883) with evidence from Sowe et al. (International Journal of Polymer Analysis and Characterization) and Neinhuis et al. (New Phytologist).
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
Claims 27 and 28 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 and 28 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 and 28 prior to the deposition of the temporary coating disposed on the coated surface prior to removal.
Response to Arguments
Applicant's arguments filed 9/26/2025 regarding the 35 USC 102(a)(1) and 103 rejections under Zou have been fully considered but they are not persuasive. Applicant asserts that the coating of Zou is not capable of being wiped off using a cloth and points to the disclosure of Zou stating the coating is “robust” as it relates to the bending test. While it is agreed that Zou discloses the coating having the claimed particles is robust, a bending test is not the same as a wiping test. Furthermore, the materials for each element are the same as that claimed. Given that the nanoparticles are the raspberry particles disclosed in the instant application, wherein the nanoparticles are treated with the same silane as presently claimed, the capability of the coating to be wiped using a dry cloth at the pressure disclosed, the coating of Zou would be capable of being removed by the process disclosed in the instant Application. Furthermore, the small particles are covalently bonded to the larger particles to form the raspberry particles as disclosed. Regarding Applicant’s further assertions that the removability of the material from a surface relies upon the interaction of the underlying surface. Examiner agrees and notes that the gingko leaf and PVC substrates of Zou have the claimed water contact angle for the substrate wherein these values are 60° and greater. Therefore, the coating of Zou would be capable of being removed using the method disclosed since the underlying surface has the claimed water contact angle. Applicant has not shown any structural difference between the claims and the disclosure of Zou or any technical basis showing that coating of Zou would not necessarily be capable of being removed using the method as disclosed. To that end, Examiner notes that the Examples of the instant invention show 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.
Applicant’s arguments, see p. 11, filed 9/26/2025, with respect to 35 USC 103 rejections under Liu have been fully considered and are persuasive. The rejections of the claims have been withdrawn. Examiner acknowledges the instant amendments as overcoming the previous rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fang et al. (Applied Materials & Interfaces) discloses a temporary superhydrophobic coating using iron oxide particles that are functionalized with a hydrophobic agent prior to deposition.
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