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 .
Response to Amendment
The amendment filed 09 July 2026 has been entered.
Claims 1-2, 4, 9, 12, 15, 17-20, 44-45, and 47-53 remain pending in the application, wherein claims 1-2, 15, 44-45, 47-48, and 50 have been amended.
Support for the amendments can be found on p. 7 of the instant specification. Accordingly, no new matter has been introduced by these amendments.
Response to Arguments
The replacement abstract, filed 09 July 2026, is acceptable. The objection to the abstract of the disclosure has been withdrawn.
The amendments to claims 48 and 50 have overcome the indefiniteness and improper dependency previously set forth in the Office Action mailed 09 March 2026. The rejections under 35 U.S.C. 112(b) and 112(d) have been withdrawn.
Applicant’s arguments, see p. 7-8, regarding the double patenting rejections, have been fully considered but are not persuasive. Applicant requested that the double patenting rejections be held in abeyance until a future point in time. However, as outlined below, the double patenting rejections are still considered to be proper, and are therefore maintained.
Applicant’s arguments, see p. 8-10, filed 09 July 2026, with respect to the anticipation rejection, have been fully considered and are persuasive in view of the amendments. Applicant argues that Taki does not anticipate wherein one or more foulants comprise inorganic particles. The rejection under 35 U.S.C. 102(a)(1) has been withdrawn. However, upon further consideration, a new grounds of rejection are made under 35 U.S.C. 103 in view of Taki. Although Taki does not directly teach wherein one or more foulants comprise inorganic particles, the presence of inorganic particles in water is well-known as evidenced by the mineral deposits that commonly occur as a result of exposure of a surface to well water, tap water, rainwater, etc.
Claim Interpretation
Claim 1 recites “physical contact at a molecular level” in line 4. This limitation is not recited verbatim in the instant specification. Per discussion during the interview on 24 June 2025, this limitation will be considered to refer to the coating being hydrophilic, consistent with the disclosure at p. 30 of the instant specification.
Claim 1 recites “carbon dioxide” in line 7. Although a fluid may be liquid or gas phase, per discussion during the interview on 24 June 2025, this limitation will be considered to refer to liquid carbon dioxide.
It is noted that Applicant deleted the limitation of a substrate from independent claims 1,15, and 44. However, the claims are directed to an article comprising a coating. It is noted that a coating is conventionally disposed on something (i.e. on a substrate), and therefore the deletion of this limitation (i.e. no longer reciting a substrate) does not itself materially change the claims because a substrate is necessarily present with the coating disposed on at least a portion of the substrate.
Double Patenting
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 15 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 in view of claims 4, 5, and 11 of U.S. Patent No. 12,054,639. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 15 recites an article comprising a coating, wherein the coating is configured to be exposed to a fluid comprising one or more foulants during use, whereas claim 10 of the ‘639 patent recites a coating for a surface of an object (i.e. an article) to reduce adhesion of a foulant in a fluid in contact with the object, the object having a surface (i.e. a substrate) and a coating on said surface (i.e. a coating disposed on at least a portion of the substrate), wherein the fluid comprising a foulant (i.e. one or more foulants) is in contact with said coating (i.e. the coating is configured to be exposed to the fluid), and the foulant comprises silicon dioxide. Silicon dioxide is an inorganic material (i.e. an inorganic particle), and the courts have held that a species (e.g. silicon dioxide) will anticipate a claim to a genus (e.g. an inorganic particle). See MPEP § 2131.02.
Instant claim 15 recites wherein the coating is associated with a first set of optical properties over a range of wavelengths and wherein the fluid is associated with a second set of optical properties. Since optical properties are a material property, the coating and fluid of claim 10 of the ‘639 patent are considered to have the first and second set of optical properties, respectively.
Instant claim 15 recites the coating comprises Na3AlF6, CaF2, etc. whereas claim 10 of the ‘639 patent recites the coating comprises a chemical selected from the group consisting of cryolite (i.e. Na3AlF6), fluorite (i.e. CaF2), etc.
Instant claim 15 recites wherein a mean percentage difference between the first set of optical properties and the second set of optical properties is about 20% or less, whereas claim 10 of the ‘639 patent recites wherein said coating has an index of refraction within 10% of an index of refraction of said fluid in some portion of the complete optical spectrum (i.e. index of refraction is an optical property). These ranges overlap and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claim 15 recites the coating is in physical contact at a molecular level with a flowing fluid, and claim 10 of the ‘639 patent recites the fluid is in contact with the coating (i.e. considered to be in physical contact at a molecular level). Claim 1 of the ‘639 patent does not specify the fluid as flowing, but this limitation would be obvious in view of claim 11 of the ‘639 patent where the coating is of an object used in a geothermal power plant (i.e. which requires flowing water for transfer of thermal energy).
Instant claim 15 recites wherein the fluid comprises at least one (of the recited fluids which list liquid water as one option) whereas claim 10 of the ‘639 patent recites the fluid comprises water (i.e. liquid water since the water is not specified as steam or water vapor).
While not reciting an exact duplicate claim, it would have been obvious to one of ordinary skill in the art before the effective filing date due to the substantial overlap of claim limitations and overlapping range of optical properties.
Instant claims 17 and 18 recite wherein the range of wavelengths ranges from 10 nm to 1 µm (instant claim 17) or from 100 nm to 700 nm (instant claim 18), whereas claims 4 and 5 of the ‘639 patent recites the portion of the complete optical spectrum (i.e. range of wavelengths) comprises 400-800 nm (claim 4) or comprise 10-400 nm (claim 5), and these ranges each overlap the instantly claimed ranges of instant claims 17 and 18. See MPEP § 2144.05. Although claims 4 and 5 of the ‘639 patent do not depend from claim 10, this is considered an obvious variation of the claims of the ‘639 patent.
Instant claim 19 recites wherein the optical properties are refractive indices, and claim 10 of the ‘639 patent recites index of refraction.
Claims 15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 12-13, 15, and 19 in view of claims 9 and 23 of copending Application No. 17/910,320 (reference application) and further in view of Taki (US 2016/0000978, previously cited).
Instant claim 15 and claim 10 of the ‘320 application both recite an article comprising a substrate and a coating disposed on at least a portion of the substrate wherein the coating is (configured to be) exposed to a fluid comprising one or more foulants during use, wherein the fluid is associated with a set of optical properties over a range of wavelengths (i.e. corresponding to the instantly claimed “second set of optical properties”).
Instant claim 15 recites the coating is in physical contact at a molecular level with a flowing fluid, and claim 10 of the ‘320 application recites the fluid is in contact with the coating (i.e. considered to be in physical contact at a molecular level). Claim 10 of the ‘320 application does not specify the fluid as flowing, but this limitation would be obvious to choose as fluid can be either static or flowing (i.e. limited choices to select from), and one would have had a reasonable expectation of success.
Instant claim 15 recites wherein the fluid comprises at least one (of the recited fluids). This limitation is obvious in view of claims 9 and 23 of the ‘320 application which recites the fluid comprises water (i.e. liquid water since the water is not specified as steam or water vapor). It is noted that claims 9 and 23 correspond to other embodiments of the ‘320 application; however, the claims are considered to be related inventions.
Instant claim 15 recites such that foulant adhesion to the coating is minimized thereby minimizing coating surface geometry changes, whereas claim 10 of the ‘320 application recites wherein the composite coating exhibits a resistance to fouling (i.e. foulant adhesion is minimized and therefore geometry changes would also be minimized).
Instant claim 15 recites wherein the one or more foulants comprise inorganic particles. Claim 10 of the ‘320 application is silent regarding the nature of the foulants (i.e. whether organic or inorganic); however, the presence of inorganic foulants in water is well-known (i.e. as evidenced by the mineral deposits that occur on surfaces from repeated exposure to well water, tap water, rainwater, etc.).
Instant claim 15 recites wherein the coating is associated with a first set of optical properties over a range of wavelengths whereas claim 10 of the ‘320 application recites the coating as having a first set of optical properties, a second set of optical properties, and an average of the first set of optical properties and the second set of optical properties (i.e. these result in a set of optical properties of the coating, which corresponds to the instantly claimed “first set of optical properties”).
Instant claim 15 recites a mean percentage difference between the first set of optical properties (i.e. corresponding to the coating) and the second set of optical properties (i.e. corresponding to the fluid) is about 20% or less, whereas claim 10 of the ‘320 application recites a mean percentage difference between the optical properties (corresponding to the coating) and the optical properties (corresponding to fluid) is about 20% or less.
Instant claim 15 differs from the claims of the ‘320 application insofar as reciting that the coating comprises Na3AlF6, amorphous FTO, amorphous carbon, fluorinated diamond-like carbon (F-DLC), and/or CaF2.
In a related field of endeavor, Taki teaches a functional film applied to a surface of a base material (i.e. a substrate and a coating disposed on at least a portion of the substrate) (paragraph 0009). The functional film has a surface property with both hydrophilic and antifouling properties (paragraph 0003). Taki teaches that components can elute into liquid and become reprecipitated on the surface, the precipitates being peeled off by a water/liquid flow and being attached leading to possible defects (paragraph 0006). Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (paragraph 0009) (i.e. the coating comprises amorphous carbon).
As Taki teaches an antifouling film used in contact with water/liquid (i.e. a fluid), it is analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the article of the ‘320 application to include the type of material of the coating being an amorphous carbon film as taught by Taki as this is considered a known material known to afford an antifouling property, and one would have had a reasonable expectation of success.
Instant claim 17 and claim 12 of the ‘320 application both recite wherein the range of wavelengths ranges from 10 nm to 1 µm.
Instant claim 18 and claim 13 of the ‘320 application both recite wherein the range of wavelengths ranges from 100 nm to 700 nm.
Instant claim 19 recites wherein the optical properties are refractive indices, whereas claim 15 of the ‘320 application recites (each of the recited sets of) optical properties is a set of refractive indices.
Instant claim 20 recites wherein the optical properties are dielectric response values, whereas claim 19 of the ‘320 application recites (each of the recited sets of) optical properties is a set of dielectric response values.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-2, 4, 9, 12, 15, 17-20, 44, and 47-53 are rejected under 35 U.S.C. 103 as being anticipated by Taki et al. (US 2016/0000978, previously cited).
Claim 1: Taki teaches a liquid immersion member (i.e. an article) using a functional film having a surface property with both hydrophilic and antifouling properties (paragraph 0003). The functional film is applied to a surface of a base material (i.e. a coating disposed on at least a portion of a substrate) used in a state of being immersed in liquid (paragraph 0009). Taki teaches that components can elute into liquid and become reprecipitated on the surface of a member and the precipitates being peeled off by a water/liquid flow and being attached to the substrate leading to possible defects (i.e. the precipitates are foulants) (paragraph 0006). The teaching of water/liquid flow and a hydrophilic surface property is considered to teach wherein the coating is configured to be exposed to and in physical contact at a molecular level (see claim interpretation outlined above) with a flowing fluid comprising one or more foulants during use and wherein the flowing fluid is liquid water. Since Taki teaches having a surface property of antifouling properties, this is considered to teach minimizing foulant adhesion which would minimize coating surface geometry changes (i.e. since the attachment of precipitates can lead to possible defects). Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (also referred to as a ta-C:Ti film) (paragraph 0009). Taki teaches that a contamination index of a surface of the film can be equal to or less than 80% (paragraph 0015) which is dependent on the Ti/C atomic ratio inversely with the hydrophilic property (paragraphs 0101-0106), but does not specify the Hamaker constant associated with the coating and fluid. However, this property (i.e. the Hamaker constant) is considered to be present because Taki teaches substantially identical materials as the materials recited in the instant claims (i.e. liquid water and amorphous carbon which being Ti-doped is considered to also include TiC), and substantially identical materials have substantially identical properties. See MPEP § 2112.01. Taki is silent regarding the nature of the foulants (i.e. whether the foulant is organic or inorganic); however, the presence of inorganic foulants in water is well-known (i.e. as evidenced by the mineral deposits that occur on surfaces from repeated exposure to well water, purified tap water, rainwater, etc.).
While not teaching a singular example of the instantly claimed article, it would have been obvious to one of ordinary skill in the art before the effective filing date as Taki teaches the instantly claimed features except for the nature of the foulants, which would be immediately understood by one of ordinary skill in the art as a common foulant present in water.
Claim 2: Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (also referred to as a ta-C:Ti film; i.e. an amorphous carbon; i.e. the carbon film being Ti-doped is also considered to include TiC) (paragraph 0009).
Claim 4: Taki teaches the composition of the ta-C:Ti film of examples being substantially 0.0 atomic% (Fig. 5), which is considered to teach wherein the coating is an oxygen-free material.
Claim 9: Taki teaches that the thickness of the ta-C:Ti film (i.e. the coating) can be set to be equal to or greater than 5 nm, preferably 10 nm to 1 µm (paragraph 0166). This range overlaps the instantly claimed ranges, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Claim 12: Taki teaches that the functional film is applied to a surface of a base material (i.e. a coating disposed on at least a portion of a substrate) used in a state of being immersed in liquid (paragraph 0009) and that components can elute into liquid and become reprecipitated on the surface of a member and the precipitates being peeled off by a water/liquid flow and being attached to the substrate leading to possible defects (i.e. the fluid is water) (paragraph 0006).
Claim 15: Taki teaches a liquid immersion member (i.e. an article) using a functional film having a surface property with both hydrophilic and antifouling properties (paragraph 0003). The functional film is applied to a surface of a base material (i.e. a coating disposed on at least a portion of a substrate) used in a state of being immersed in liquid (paragraph 0009). Taki teaches that components can elute into liquid and become reprecipitated on the surface of a member and the precipitates being peeled off by a water/liquid flow and being attached to the substrate leading to possible defects (i.e. the precipitates are foulants) (paragraph 0006). The teaching of water/liquid flow and a hydrophilic surface property is considered to teach wherein the coating is configured to be exposed to and in physical contact at a molecular level (see claim interpretation outlined above) with a flowing fluid comprising one or more foulants during use and wherein the flowing fluid is liquid water. Since Taki teaches having a surface property of antifouling properties, this is considered to teach minimizing foulant adhesion which would minimize coating surface geometry changes (i.e. since the attachment of precipitates can lead to possible defects). Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (also referred to as a ta-C:Ti film) (paragraph 0009). Taki teaches that a contamination index of a surface of the film can be equal to or less than 80% (paragraph 0015) which is dependent on the Ti/C atomic ratio inversely with the hydrophilic property (paragraphs 0101-0106). Taki does not teach the optical properties of the coating or of the fluid, but optical properties are a material property and therefore the materials are considered to have optical properties. Taki also does not specify the mean percentage difference (i.e. of about 20% or less as recited in the claim) between the optical properties associated with the coating and fluid. However, this property (i.e. the mean percentage difference between the optical properties) is considered to be present because Taki teaches substantially identical materials as the materials recited in the instant claims (i.e. liquid water and amorphous carbon which being Ti-doped is considered to also include TiC), and substantially identical materials have substantially identical properties. See MPEP § 2112.01.
Claim 17-20: Taki does not specify the range of wavelengths for the optical properties or the types of optical properties of the coating and the fluid; however, because Taki teaches substantially identical materials as the materials recited in the instant claims (i.e. liquid water and amorphous carbon which being Ti-doped is considered to also include TiC), and substantially identical materials have substantially identical properties (see MPEP § 2112.01), the optical properties are considered to include optical properties at the recited ranges of wavelengths and for refractive indices and dielectric response values.
Claim 44: Taki teaches a liquid immersion member (i.e. an article) using a functional film having a surface property with both hydrophilic and antifouling properties (paragraph 0003). The functional film is applied to a surface of a base material (i.e. a coating disposed on at least a portion of a substrate) used in a state of being immersed in liquid (paragraph 0009). The base material can be Si or Ti (i.e. the substrate is a metal) (paragraph 0111). Taki teaches that components can elute into liquid and become reprecipitated on the surface of a member and the precipitates being peeled off by a water/liquid flow and being attached to the substrate leading to possible defects (i.e. the precipitates are foulants) (paragraph 0006). The teaching of water/liquid flow and a hydrophilic surface property is considered to teach wherein the coating is configured to be exposed to and in physical contact at a molecular level (see claim interpretation outlined above) with a flowing fluid comprising one or more foulants during use and wherein the flowing fluid is liquid water. Since Taki teaches having a surface property of antifouling properties, this is considered to teach minimizing foulant adhesion which would minimize coating surface geometry changes (i.e. since the attachment of precipitates can lead to possible defects). Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (also referred to as a ta-C:Ti film; i.e. the coating comprises amorphous carbon) (paragraph 0009). Taki teaches that a contamination index of a surface of the film can be equal to or less than 80% (paragraph 0015) which is dependent on the Ti/C atomic ratio inversely with the hydrophilic property (paragraphs 0101-0106), but does not specify the Hamaker constant associated with the coating and fluid. However, this property (i.e. the Hamaker constant) is considered to be present because Taki teaches substantially identical materials as the materials recited in the instant claims (i.e. liquid water and amorphous carbon), and substantially identical materials have substantially identical properties. See MPEP § 2112.01.
Claim 47: Taki teaches an example where the base material is formed of Ti and does not teach inclusion of additional coatings, layers, or materials (paragraph 0111) (i.e. the substrate consists of the metal Ti).
Claim 48: Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (also referred to as a ta-C:Ti film; i.e. the coating comprises amorphous carbon; i.e. being Ti-doped ta-C is also considered to include TiC; i.e. the coating consists of amorphous carbon and TiC) (paragraph 0009).
Claim 49: Taki teaches the composition of the ta-C:Ti film of examples being substantially 0.0 atomic% O (Fig. 5), which is considered to teach wherein the coating consists of an oxygen-free material.
Claim 50: Taki teaches the functional film is a Ti-doped tetrahedral amorphous carbon film (also referred to as a ta-C:Ti film; i.e. the coating comprises amorphous carbon; i.e. being Ti-doped ta-C is also considered to include TiC) (paragraph 0009).
Claims 51-53: Taki teaches that the thickness of the ta-C:Ti film (i.e. the coating) can be set to be equal to or greater than 5 nm, preferably 10 nm to 1 µm (paragraph 0166). This range overlaps the instantly claimed ranges, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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