DETAILED ACTION
An Office Action was mailed on 03/24/2025.
Applicant filed a Response, amended claim 1, and added claims 15-17 on 06/24/2025.
Claims 1-17 are pending.
Claims 4-14 are withdrawn from consideration.
Claims 1-3 and 15-17 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 1-3 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida, US 2010/0096114 A1 (Yoshida) in view of Yamamoto, US 2018/0142129 A1 (Yamamoto).
Yoshida was cited in the IDS filed 11/18/2024. Yamamoto was cited in the Notice of References cited mailed 03/24/2025.
Regarding claims 1-2 and 15, 17, Yoshida teaches a coating composition which forms a coating film, the coating composition containing ultrafine silica particles (claim 1) and fluororesin particles (claim 2) (Yoshida; [0029-0030]).
The ultrafine silica particles have an average particle diameter of 15nm or less, preferably 4 nm to 12nm (Yoshida; [0031]). This falls within the claimed average particle size range of 3nm or more and 25nm or less. When the average particle diameter is more than 15nm the obtained coating film does not have sufficient strength. When the average particle diameter is less than 4nm, the stability of the coating composition may reduce or the strength and anti-soiling performance of the coating film may be degraded (Yoshida; [0031]).
The content of the ultrafine silica particles is 0.1 to 5 mass%, preferably 0.3 to 2.5 mass% (Yoshida; [0032]). This falls within the claimed range of 0.1 mass% or more to 5 mass% or less (claim 1), and overlaps with the claimed range of greater than 1.2 mass% and 5 mass% of less (claim 17). When the content of the silica particles is less than 0.1 mass%, the obtained coating film is excessively thin and the desired anti-soiling performance is difficult to achieve. When the content is more than 5 mass%, the coating film becomes non-uniform and cloudy, cracks easily form, and peeling is likely to occur (Yoshida; [0032]).
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).
The mass ratio of the ultrafine silica particles to fluororesin particles in the coating composition is 70:30 to 95:5, preferably 75:25 to 90:10 (Yoshida; [0035]). Therefore, the mass ratio of fluororesin particles to ultrafine silica particles is 30:70 to 5:95, preferably 25:75 to 10:90. These mass ratios convert to 5.3 mass% to 42.9 mass% of fluororesin particles with respect to silica ultrafine particles (30/70*100=42.9% and 5/95*100= 5.3%), preferably 11.1 to 33.3 mass% fluororesin particles with respect to silica ultrafine particles (25/75*100= 33.3% and 10/90*100=11.1%). These mass% ranges fall within the scope of the claimed 5 mass% or more and 50 mass% or less with respect to the silica fine particles (claim 2), and 5 mass% or more and less than 50 mass% with respect to silica fine particles (claim 15).
When the mass ratio of ultrafine silica particles to fluororesin particles is in the above mentioned range, a coating film in which hydrophilic portions originating from the ultrafine silica particles and hydrophobic portions originating from the fluororesin particles are mixed in a balanced manner can be obtained by drying at room temperature, and the formed coating film has excellent anti-soiling performance (Yoshida; [0035]).
FIG. 1 illustrates the upper surface of the coating film, wherein fluororesin particles 2 (hydrophobic portion) are interspersed in a silica film 1 (hydrophilic portion). Because the area of the hydrophilic portion is sufficiently larger than the area of the hydrophobic portion on the surface of the coating film, the coating film is hydrophilic as a whole, i.e., the silica fine particles are blended into the coating composition to form a hydrophilic portion on a surface of the coating film (claim 1) (Yoshida; [0035] and FIG. 1). See also Fig 2 and [0024].
Water is contained in the coating compositions (Yoshida; [0041] and Examples 1-8, [0080-0081]).
Yoshida teaches that the coating can further contain an organic solvent from the viewpoint of increasing the wettability of the coating composition and the adhesive property of the coating film (Yoshida; [0045]). There is no limitation on the organic solvent, and various organic alcoholic solvents such as glycols, esters and ether solvents may be used (Yoshida; [0047]). The content is not limited so far as the properties of the coating compositions are not adversely affected, and may be suitably adjusted according to the selected component (Yoshida; [0050]).
Yoshida does not explicitly teach the addition of a solvent having a high boiling point of 150oC or higher and 300oC or lower in a content of 20 mass% or more and 70 mass% or less.
With respect to the difference, Yamamoto discloses a coating composition comprising water, a water-soluble organic solvent that has a flash point of 80-200oC, a fluorine resin, hydrophilic silica particles, and hydrophobic silica particles (Yamamoto; Abstract). The average particle diameter of both the hydrophilic silica particles and hydrophobic silica particles is at least 5nm and not more than 30nm (Yamamoto; [0025] and [0031]). The hydrophilic silica particles are present in an amount of at least 0.001 mass% to not more than 1 mass% (Yamamoto; [0027]).
The water-soluble organic solvent not only dissolves the fluorine resin, but also serves to make the coating composition non-hazardous because it has a high flash point. Because the organic solvent with a high flash point and water constitutes the liquid phase of the coating composition, explosion-proof equipment and explosion prevention measures are unnecessary in the process of forming the coating film (Yamamoto; [0034]). The organic solvents include, for example, ethylene glycol, diethylene glycol, diethylene glycol dimethyl ether, triethylene glycol dimethyl ether, and ethylene glycol monomethyl ether acetate (Yamamoto; [0035]). Applicant’s specification at paragraph [0019] discloses that these solvents have boiling points of 150-300oC as claimed. Yamamoto further exemplifies coatings comprising tetraethylene glycol dimethyl ether (Yamamoto, Examples 1-5, [0060-0063]), which is a high boiling point solvent as claimed (Applicant’s specification; [0019]).
The content of the organic solvent is preferably at least 50% by mass and not more than 95% by mass, more preferably at least 60 mass% and not more than 90 mass% (Yamamoto; [0036]). If the content of water-soluble organic solvent is less than 50 mass%, the coat-ability on the substrate may be worse because the water content is high. A water-soluble organic solvent content in excess of 90 mass% is not desirable because the time required to dry the coating composition is longer (Yamamoto; [0036]).
Yamamoto is analogous art as it teaches a coating composition comprising water, an organic solvent, a fluorine resin, and silica fine particles.
In light of the motivation provided by Yoshida, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an organic solvent to the coating compositions in order to increase the wettability of the coating compositions and the adhesive property of the coating films. In light of the motivation provided by Yamamoto, it would have been obvious to one of ordinary skill in the art to select an organic solvent with a flash point of 80-200oC, including those having a boiling point as claimed such as tetraethylene glycol dimethyl ether, in order to obtain a non-hazardous coating composition which avoids the need for explosion-proof equipment and explosion prevention measures when forming the coating film. Further, it would have been obvious to one of ordinary skill in the art to add the organic solvent in amounts of at least 50% by mass to not more than 95% by mass, more preferably at least 60 mass% and not more than 90 mass%, which overlaps with the claimed range of 20 mass% or more and 70 mass% or less, because Yoshida teaches that the amount of organic solvent is not limited so far as the properties of the coating compositions are not adversely affected, and may be suitably adjusted in accordance with the selected component, and because Yamamoto teaches that amounts less than 50 mass% worsen the coat-ability because the water content is high, and amounts in excess of 90 mass% prolong the drying time of the coating composition.
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).
Regarding claim 3, Yoshida in view of Yamamoto are relied upon as teaching the limitations of claim 1 as discussed above. Yoshida teaches that the coating can further contain a surfactant from the viewpoint of increasing the wettability of the coating composition and the adhesive property of the coating film (Yoshida; [0045]). There is no limitation on the surfactant, and various kinds of surfactants may be used such as anionic or nonionic surfactants. Surfactants with low foamability, such as polyoxypropylene-polyoxyethylene block copolymers and polycarboxylic-type surfactants are preferred because they are easy to use, i.e., a nonvolatile hydrophilic organic substances as claimed (Yoshida; [0047]). The content is not limited so far as the properties of the coating compositions are not adversely affected, and may be suitably adjusted in accordance with the selected component (Yoshida; [0050]).
Yoshida further exemplifies the addition of the nonionic surfactant polyoxyethylene ester (i.e., a non-volatile hydrophilic organic substance) to the exemplified coating compositions in an amount of 0.1 mass% (Yoshida; [0080-0081], Examples 1-8, and Table at [0083]). Example 3-4 of the Table comprise ultrafine silica particles in an amount of 0.7 mass%. Therefore, these compositions contain 0.1 mass surfactant with respect to 0.7 mass silica fine particles, or 14.3 mass% surfactant with respect to the silica fine particles (0.1/0.7*100 = 14.3 mass%). 14.3% falls within the claimed non-volatile hydrophilic organic substance range of 10 mass% or more and 40 mass% or less with respect to the silica fine particles.
Regarding claim 16, Yoshida in view of Yamamoto are relied upon as teaching the limitations of claim 2 as discussed above. Yoshida teaches that the average diameter of the fluororesin particles is preferably 50 to 500nm, more preferably 100 to 250nm (Yoshida; [0034]). The broad average particle diameter range overlaps in scope with the claimed range of 80-550nm, and the preferred range of Yoshida falls within the claimed range. When the average particle diameter of the fluororesin particles is less than 50nm a coating composition may be unstable and it becomes difficult to expose the fluororesin particles to the surface of the coating film. When the average particle diameter of the fluororesin particles is more than 500 nm, the region of hydrophobic portion increases and irregularities of a coating film are extended excessively, and the desired anti-soiling properties may not be achieved (Yoshida; [0034]).
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).
Response to Arguments
Applicant’s arguments, see Remarks, filed 06/24/2025, with respect to the rejection of claims 1-3 under 35 USC 102(a)(1) and 35 USC 103 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 over Yoshida, US 2010/0096114 A1 (Yoshida) in view of Yamamoto, US 2018/0142129 A1 (Yamamoto).
Specifically, Applicant’s arguments, see Remarks, filed 06/24/2025, with respect to the 35 USC 102(a)(1) rejection over Yamamoto, US 2018/0142129 A1 (Yamamoto), taken in view of evidence by Sonoyama et al, US 2014/0138655 A1, have been fully considered and are persuasive.
The rejection of claim 1 has been withdrawn.
Applicant primarily argues:
“The outstanding Office action contends that Yamamoto discloses a coating composition. However, it is respectfully submitted that Yamamoto has not been shown to disclose the coating composition that is presently recited in claim 1. In particular, the coating composition of the instant claims is capable of forming a coating film having hydrophilic portions on the surface thereof. By blending the silica fine particles into the coating composition, a hydrophilic surface (or portion of the surface) having high transparency can be formed on the coating film formed of the coating composition …
In contrast, the gist of the invention regarding Yamamoto is to provide a coating composition capable of forming a coating film that confers super water repellency, i.e., a hydrophobic coating film, with few cracks.4 …
4 See, e.g., paragraph [0018] of Yamamoto.”
Remarks, pages 7-8.
Examiner agrees that Yamamoto does not teach the new claim limitation “the silica fine particles are blended into the coating composition to form a hydrophilic portion on a surface of the coating film.” In contrast, Yamamoto teaches a coating composition that confers super water repellency with few cracks (Yamamoto; [0018]). The silica particles 12 serve as an adhesive between the substrate 11 and the hydrophobic silica particles 13 and fluorine resin 14 (Yamamoto; [0022] and Fig 1). If the content of the hydrophilic silica particles 12 exceeds 1 mass% they are likely to precipitate to the outer surface of the coating film 10, detracting from the super water repellency (Yamamoto; [0027]). Therefore, it is clear that Yamamoto does not teach a hydrophilic portion on a surface of the coating film as presently claimed.
Applicant’s arguments, see Remarks, filed 06/24/2025, with respect to the 35 U.S.C. 103 over Yamamoto taken in view of evidence by Sonoyama and Fujii et al, US 2013/0321525 A1 (Fujii), have been fully considered and are persuasive. The rejection of claim 2 has been withdrawn.
Applicant primarily argues:
“In particular, as described above, Yamamoto has not been shown to render obvious the subject matter of claim 1, Claim 2 depends from claim 1.”
Remarks, page 8.
Examiner agrees for the reasons set forth in 1) above.
Applicant’s arguments, see Remarks, filed 06/24/2025, with respect to the 35 U.S.C. 103 as being unpatentable over Yamamoto taken in view of evidence by Sonoyama, and further in view of Yamamoto et al, JP 2016-089147A (herein referred to as Mitsubishi JP2016), have been fully considered and are persuasive. The rejection of claim 3 has been withdrawn.
Applicant primarily argues:
“The rejection of claim 3 under 35 U.S.C. § 103 should be withdrawn because Yamamoto has not been shown to render obvious the subject matter of claim 3. In particular, as described above, Yamamoto has not been shown to render obvious the subject matter of claim 1. Claim 3 depends from claim 1. Mitsubishi JP2016 has not been shown to cure the deficiencies of the rejection of claim 1 based on Yamamoto. Therefore, it is respectfully submitted that claim 23 is allowable for at least the reasons that claim 1 is allowable.”
Remarks, page 9.
Because Mitsubishi JP2016 does not provide those skilled in the art with motivation to alter the coatings of Yamamoto in order to provide a hydrophilic portion on a surface of the coating film as claimed, this rejection has been withdrawn primarily for the reasons set forth in 1) as discussed above.
Note, however, the new grounds of rejection under 35 U.S.C. 103 over Yoshida, US 2010/0096114 A1 (Yoshida) in view of Yamamoto, US 2018/0142129 A1 (Yamamoto), as set forth above due to Applicant’s claim amendments.
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