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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 13, 2026, has been entered.
Claim Rejections - 35 USC § 103
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.
Claims 1, 2, 4-6, 8 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,866,030 Reyes-Gavilan et al in view of US 5,869,798 Ryu et al.
Regarding claim 1, Reyes-Gavilan teaches a structure for use as a liquid impregnated surface (LIS) (column 4, lines 60-65) comprising:
a substrate (steel, column 4, lines 59-65),
a surface disposed on the substrate (column 4, lines 59-65),
a hydrocarbon liquid (column 3, line 66 – column 4, line 2) disposed on the surface, wherein the hydrocarbon liquid is spread on the surface (oil wets the chip, column 4, lines 32-35).
Reyes-Gavilan does not teach the presence of surface features. Ryu teaches wear-resistant and lubricated materials including a steel substrate with lugs (column 2, line 66 – column 3, line 15) having a micro-texture (Table 1, welding thickness), where a lubricant is applied to the substrate (column 3, lines 16-22) and capable of being retained within the surface by capillary forces exerted from the surface features. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the surface features of Ryu in the product of Reyes-Gavilan because this allows for the product to have improved wear resistance, seizure resistance and lubrication (column 3, lines 23-27).
Neither Reyes-Gavilan nor Ryu teaches the viscosity of the hydrocarbon liquid. However, as Reyes-Gavilan satisfies all of the previous limitations, Reyes-Gavilan’s materials (PAO) are indistinguishable from the claimed materials (PAO, see claim 2). Therefore, it is reasonable to expect that Reyes-Gavilan's hydrocarbon liquid would also exhibit a viscosity of less than about 500 mPa×sec at 25°C. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claim 2, Reyes-Gavilan teaches that the hydrocarbon liquid is polyalphaolefin (column 3, line 66 – column 4, line 2).
Regarding claims 4 and 23, Reyes-Gavilan does not explicitly teach the viscosity or surface tension of the hydrocarbon liquid. However, as Reyes-Gavilan satisfies all of the previous limitations, Reyes-Gavilan’s materials (PAO) are indistinguishable from the claimed materials (PAO, see claim 2). Therefore, it is reasonable to expect that Reyes-Gavilan's low viscosity hydrocarbon would also exhibit a viscosity of less than about 250 mPa×sec at 25°C, and would have a surface tension of less than 30 mN/m. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claims 5, 6, 8 and 22, Reyes-Gavilan does not explicitly teach the ice formation temperature of the hydrocarbon liquid or the liquid index number. However, when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, the examiner has basis for shifting the burden of proof to Applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §2112, Section V. In this case, Reyes-Gavilan appears to form the same product with the same structure as that of the instant invention, which would meet the claimed equation. Applicant may provide evidence proving a difference between the products.
Regarding claim 24, while Reyes-Gavilan does not specifically disclose the structure as being a component of a heat exchanger, given the reference discloses the structure of the claimed invention, the structure is deemed capable of functioning as a component of a heat exchanger, see above discussion.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,866,030 Reyes-Gavilan et al in view of US 5,869,798 Ryu et al as applied to claim 1 above, and further in view of WO 2014/076682 Semetey et al.
Regarding claim 21, Reyes-Gavilan and Ryu teach the structure of claim 1, but do not teach the use of chemical functionality. Semetey teaches a metallic substrate on which a polymer is adhered with the use of chemical functionality (page 4, second full paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the chemical functionality of Semetey to retain the liquid of Reyes-Gavilan because molecules naturally tend to detach (page 2, first full paragraph) such that the use of chemical functionalization would serve to better attach the molecules to the substrate (page 4, second full paragraph).
Response to Arguments
Applicant's arguments filed January 13, 2026, have been fully considered but they are not persuasive.
Applicant argues that the lugs of Ryu are material volume rather than texture geometry. However, Ryu teaches that the lugs are created by spark welding and therefore the welding thickness (created by the consumable portion of the weldment) must be the size of the lug. This is further supported by the absence of the lug in the comparative example in Ryu.
Applicant argues that Ryu teaches away from using liquid lubricant. However, the modification does not import a liquid lubricant into Ryu to replace Ryu’s solid lubricant. Ryu is used to show the use of surface features on a substrate used with lubricant. The surface structures of Ryu are imported into Reyes-Gavilan. This does not destroy Ryu because Ryu is not being modified. Reyes-Gavilan would need to discuss why surface texture is not desired in order for Applicant’s argument to be applicable. Applicant has not shown why this combination renders Reyes-Gavilan unsatisfactory.
Applicant argues that Ryu does not teach the use of capillary forces and such forces would not be present. However, capillary forces are always present at the micro-scale, whether discussed or not. At the corners of surfaces features and other small spaces, capillary forces are responsible for the drawing-up of liquid. Similarly, it is the combination of capillary forces and adhesion that creates the meniscus in a container of water. In other words, Ryu need not discuss or even recognize that capillary forces would be present around the surface structures in order for the combination to read on the claim. Applicant suggests that Ryu’s solid lubricant would not exhibit capillary forces. However, Rug’s lugs are imported into Reyes-Gavilan, who teaches a liquid lubricant. If Applicant believes that capillary forces would not be present in the combination of Reyes-Gavilan and Ryu, Applicant is invited to show evidence or documentation that rebuts Examiner’s position.
Applicant argues that the property of the structure is not inherent. However, this is not what the Examiner suggests. Examiner is stating that the viscosity of the hydrocarbon lubricant of Reyes-Gavilan is the same as the viscosity of the claimed hydrocarbon lubricant because they are the same type of material. As required by claim 2, and as taught by Reyes-Gavilan, the hydrocarbon liquid is polyalphaolefin.
Applicant argues that MPEP 2143 I, A requires the same function in the same way to achieve the same result. However, this portion of the MPEP refers to KSR, where KSR A does not require this feature. Furthermore, the prior art need not have the same reason as Applicant to achieve a structure that reads on the claim.
Applicant argues that Examiner’s reliance on inherency is improper. However, the rejection is based on the combination of references, not each on an individual basis. Applicant has not shown why the combination would not exhibit the claimed properties while the claimed structure has been taught.
Finally, Applicant argues that the references are non-analogous. Because Reyes-Gavilan and Ryu are not in the same field of endeavor, the Examiner is relying on the second prong of determining analogous art, where “a reference in a field different from that of applicant’s endeavor may be reasonably pertinent if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his or her invention as a whole.” (MPEP 2141.01a.) Therefore, a reference that is addressing the same problem as found by Applicant is analogous art. In this case, Ryu is reasonably pertinent because it concerns the adhesion of a surface lubricant to a substrate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781