DETAILED ACTION
An Office Action was mailed 07/16/2025.
Applicant filed a Response, and amended the abstract and claim 1 on 09/17/2025.
Claims 1-10 and 13 are pending.
Claims 6-10 and 13 are withdrawn.
Claims 1-5 are rejected.
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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al, US 2019/0351450 A1 (Yoshida) in view of Yamamoto et al, JP 2015-209493 A (Yamamoto).
Yoshida and Yamamoto are cited in the IDS filed 05/30/2023. The English machine translation of Yamamoto is referenced below.
Regarding claims 1 and 5, Yoshida teaches a water-repellent coating comprising an undercoat containing at least one type of spherical particle having an average diameter of 2-50µm, and selected from the group consisting of spherical molten silica particles, spherical molten alumina particles and spherical silicone resin particles; and an underlying resin (i.e., a base resin) (Yoshida; [0009] and [0020]).
The average particle diameter of the spherical particles is 2 µm or more and 50 µm or less, preferably 4 µm or more and 20 µm or less (Yoshida; [0022]). The particle diameter range of 2 µm or more and 50 µm or less, and the preferred range of 4 µm or more and 20 µm or less, both fall within the claimed spherical particle average diameter range of 2 µm or more and 1000 µm or less.
The thickness of the undercoat layer is preferably 1/3 times or more and 5 times or less as large as the average particle diameter of the spherical particles in terms of average thickness. When the thickness of the undercoat layer is less than 1/3 times as large as the average particle diameter of the spherical particles, sufficient wear resistance is not obtained in some cases. When the thickness of the undercoat layer is more than 5 times as large as the average particle diameter of the spherical particles, the strength of the undercoat layer is reduced, or the external appearance of the water repellent coating film is degraded in some cases (Yoshida; [0027]).
Based on the above teachings, the thickness of the undercoat layer of Yoshida can be calculated as follows:
When the spherical particles have an average particle diameter of 2-50 µm, the coating has a thickness of:
1/3 * 2 µm = 0.67 µm
5 * 50 µm = 250 µm
The undercoat has a thickness of 0.67-250 µm, which overlaps with the claimed average thickness of 1.0 µm or more and 500 µm or less.
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).
When the spherical particles have a preferred average particle diameter of 4-20 µm, the coating has a thickness of:
1/3 * 4 µm = 1.33 µm
5 * 20 µm = 100 µm
The undercoat has a preferred thickness of 1.33-100 µm, which falls within the claimed average thickness of 1.0 µm or more and 500 µm or less.
Yoshida further exemplifies undercoat layers of the claimed thicknesses in Examples 1-23 (Yoshida; [0058-0066], [0073-0075], [0079-0088] and Tables 3-5).
The coating further comprises a topcoat layer formed on the undercoat layer comprising inorganic fine particles having an average diameter of 2-20nm, preferably 5nm or more or 15nm or less, which falls within the recited water-repellent particle size range of 5nm or more to 30nm or less; and a water-repellent resin (Yoshida; [0009] and [0029]).
The inorganic fine particles in the topcoat layer include silica, aluminum, zirconia and titania whose surfaces have been hydrophobized (i.e., hydrophobized inorganic water-repellent particles as claimed in claim 5) (Yoshida; [0028]).
Yoshida exemplifies coatings comprising an undercoat comprising spherical particles and base resins as claimed, and topcoats comprising water-repellent particles and water-repellent resins as claimed (Yoshida; Examples 1-7, [0058-0066] and Examples 8-9, [0073-0075]).
Yoshida teaches that the water-repellent coatings have been made in order to solve the problems of wear, such that the coatings hardly undergo a reduction in water repellency even when the surface is worn by friction or the like (Yoshida; [0008] and [0010]).
Yoshida teaches that the spherical silicone particles present in the undercoat layer are excellent in water repellency, and hence surfaces exposed after wear have water repellency (Yoshida; [0021]). Yoshida teaches that the spherical molten silica and alumina particles can be subjected to hydrophobizing treatments in order to enhance the water repellency of the exposed surfaces after wear (Yoshida; [0023]).
The underlying resin may be, e.g., a polyurethane, a silicone resin, or acrylic resins, wherein silicone resins and fluororesins are preferred because of their excellent water repellency (Yoshida; [0023]).
Yoshida teaches that a known additive may be added to the coating composition for undercoat layer formation in order to improve applicability or improve the water repellency of the underlying resin (Yoshida; [0026] last sentence).
Based on these combined teachings, those skilled in the art would recognize the importance of the water-repellency of the undercoat layer of Yoshida, especially after being exposed because of wear.
The water-repellent coatings can be used, e.g., on an outdoor unit of an air conditioner. When used on the surface of a fan, the adhesion of snow and ice can be reduced over a long period time, reducing frictional force (Yoshida; [0056]).
Yoshida does not explicitly teach wherein the undercoat layer contains the inorganic fine particles, i.e., water repellent particles as claimed.
With respect to the difference, Yamamoto teaches a water-repellent member whose water repellency is not decreased by physical stress such as abrasion, and has a water-repellent film superior in water repellency over a period of time (Yamamoto; Abstract and [0006]). The water repellent layer (2) includes a primer resin layer (3), a resin intermediate layer (4), and a water repellent layer (5) (Yamamoto; [0012] and Fig. 1).
The water-repellent layer has a structure in which silica particles (6) and inorganic particles (7) and dispersed in a fluororesin (8). The silica particles give a nano-level uneven structure to the surface of the water-repellent layer, and the inorganic particles give a micron-level uneven structure to the surface of the water-repellent layer. In combination with such a fine concave-convex structure, the water repellent layer can have ultra water repellency with a water contact angle of 150o or more (Yamamoto; [0025]).
The silica particles provide a nano-level uneven structure on the surface of the water repellent layer, and thereby enhance the water repellency by reducing the contact area with water droplets. The silica particles are preferably silica particles which have been subjected to hydrophobic treatment (Yamamoto; [0026]).
The silica particles preferably have a particle diameter of 5-100nm. If less than 5nm a fine, uneven structure cannot be sufficiently formed on the surface of the water-repellent layer, and if over 100nm the uneven structure becomes too large and the durability of the water-repellent layer may decrease (Yamamoto; [0033]).
The inorganic particles are 1-100µm, may be spherical, and include alumina and silica (Yamamoto; [0034-0036]).
Since the water-repellent films do not deteriorate over time or due to physical stress such as abrasion, the films can be used on various electric appliances such as an outdoor unit of an air conditioner (Yamamoto; [0050-0051]). The excellent water repellency keeps snow, ice, dirt, etc. from adhering to the fan (Yamamoto; [0052]).
Yamamoto is analogous art as it teaches water-repellent films comprising spherical microparticles, silica nanoparticles, and a fluororesin.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an additive in the undercoat of Yoshida in order to improve the water repellency of the underlying resin because Yoshida teaches the inclusion of such additives and the importance of water-repellency of the undercoat after exposure due to wear. In light of the motivation provided by Yamamoto, it would have been obvious to one of ordinary skill in the art to select hydrophobized silica nanoparticles as the undercoat additive, such as the silica fine particles of Yoshida, and thereby arrive at the claimed invention, because Yamamoto teaches that when combining silica nanoparticles with micron-sized spherical particles, improved water repellency, friction resistance, and durability of the coatings over time is achieved, and ultra-water repellent layers having water contact angles of 150o or more can be obtained.
Further, the combination of known substances for the same purpose, i.e., water-repellent coatings for outdoor air conditioner units, has been held to have been prima facie obvious. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerhoevn, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 2, Yoshida in view of Yamamoto are relied upon as teaching the limitations of claim 1 as discussed above.
Yoshida does not explicitly teach wherein the undercoat layer includes an undercoat lower layer containing the spherical particles and the base resin, and an undercoat upper layer containing the water-repellent particles and the base resin.
With respect to the difference, Yamamoto, teaches that when the silica particles (6) and inorganic particles (7) and dispersed in a fluororesin (8) in the water-repellent layer (5), a lower layer is formed containing the inorganic or spherical particles and fluororesin (green), and an upper layer is formed containing the silica or water-repellent particles and fluororesin (yellow) as claimed (Yamamoto; Figure in “[Overview] PROBLEM TO BE SOLVED,” and [0012]).
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Therefore, it is clear that upon adding the silica fine particles to the base coat layer of Yoshida as discussed above, the undercoat layer will comprise an undercoat lower layer containing the spherical particles and the base resin (green), and an undercoat upper layer containing the water-repellent particles and the base resin (yellow) as taught by Yamamoto.
Regarding claim 3, Yoshida in view of Yamamoto are relied upon as teaching the limitations of claim 1 as discussed above. The underlying resin (i.e., base resin) is preferably a fluororesin or a silicone resin because of being excellent in water repellency (Yoshida; [0024]). The underlying resin may also preferably be a polyurethane resin because of excellence in wear resistance (Yoshida; [0024]). Yoshida further exemplifies the use of a fluororesin in the undercoat (Yoshida; [0073-0075] and [0085-0088]), or a polyurethane in the undercoat (Yoshida; [0058] and [0061-0066]).
Regarding claim 4, Yoshida in view of Yamamoto are relied upon as teaching the limitations of claim 1 as discussed above. The water repellent resin in the topcoat is preferably a fluororesin or a silicone resin because of being excellent in water repellency (Yoshida; [0030]). Yoshida further exemplifies the use of a fluororesin in the topcoat (Yoshida; [0073-0075] and [0085-0088]), or a silicone resin in the topcoat (Yoshida; [0059] and [0061-0066]).
Response to Arguments
Applicant’s Amendments filed 09/19/2025 have overcome the previous objection to the specification.
Regarding the 35 U.S.C. 103 rejection over Yoshida in view of Yamamoto, Applicant's arguments filed 09/17/2025 have been fully considered, but they are not persuasive for the following reasons.
Applicant primarily argues:
“As first recognized by the present inventor, the thickness range of the undercoat layer recited in the amendment to Claim 1 advantageously keeps the particles from being too sparse to provide adequate friction while maintaining a smooth appearance to the water-repellent coat ... It is believed that no art of record discloses or suggests these features.
Remarks, pages 7-8.
Firstly, Yoshida does recognize the criticality of the thickness of the undercoat. Specifically, Yoshida teaches that the thickness of the undercoat layer affects the external appearance of the water repellent coating film (Yoshida; [0027]). Yoshida also teaches that when the spherical particles are exposed after the coating is subjected friction, the spherical particles have a high surface smoothness (Yoshida; [0021]).
Secondly, even if Yoshida may recognize latent properties of the thickness of the undercoat that differ from the inventors, including that presently claimed, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues:
“For example, Yoshida describes an undercoat layer but does not disclose any specific thickness range for it (Yoshida. [0009], [0058]-[0066], and [0073]-[0075], for example).”
Remarks, page 8.
Examiner respectfully traverses because Yoshida teaches the undercoat has a thickness of 0.67-250 µm, which overlaps with the claimed average thickness of 1.0 µm or more and 500 µm or less (Yoshida; [0027] and Examples 1-23 at [0058-0066], [0073-0075], [0079-0088] and Tables 3-5). See pages 4-5 of the Office Action set forth above.
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).
Applicant lastly argues:
“Yamamoto describes a water-repellent layer (not explicitly an undercoat) with no mention of a specific thickness range (Yamamoto,[0012] and [0025]). Therefore, no combination of these references discloses or suggests the amended features of Claim 1 …”
Remarks, page 8.
Yamamoto is not relied upon as teaching the newly claimed undercoat thickness. As set forth in the above on pages 4-5 of the Office Action and item #2 above, Yoshida teaches the claimed undercoat thickness. Therefore, the combination of Yoshida and Yamamoto teach the amended features of claim 1.
For the above reasons, Applicant’s Remarks have been fully considered, but are not deemed persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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