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 24 February 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 15 and 44 have been amended, and claim 46 is newly canceled.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it exceeds 150 words in length.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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 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, 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).
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) 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 were not restricted and therefore 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 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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 48 and 50 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention
Claim 48 recites wherein the coating consists of TiC and/or TiN, etc. and claim 50 recite s wherein the coating consists of an oxygen-free material that comprises TiC, etc. However, the base claim has been amended to remove TiC and TiN as possible choices of material. Deleting these materials as possible choices in the base claim while keeping them in the dependent claims renders these claims as indefinite because it is not clear as to whether or not the coating materials may be or include TiC and/or TiN.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 48 and 50 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing include all the limitations of the claim upon which it depends.
Claim 48 recites wherein the coating consists of TiC and/or TiN, etc. and claim 50 recite s wherein the coating consists of an oxygen-free material that comprises TiC, etc. However, the base claim has been amended to remove TiC and TiN as possible choices of material. Therefore, claims 48 and 50 are broader in scope than the base claim by including materials not previously recited and listing the materials as alternatives to the previously listed materials.
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 1-2, 4, 12, 15, 17-20, 44, and 47-50 are rejected under 35 U.S.C. 102(a)(1) 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.
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 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).
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 9 and 51-53 are rejected under 35 U.S.C. 103 as being unpatentable over Taki et al. (US 2016/0000978, previously cited).
Claims 9 and 51-53: The teachings of Taki regarding claims 1 and 44 are outlined above. Furthermore 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.
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 the range of thickness of the ta-C:Ti film (i.e. the coating) overlaps that of the prior art and therefore is considered to be prima facie obvious, and one would have had a reasonable expectation of success.
Response to Arguments
Applicant has filed a copy of the abstract of the disclosure on a separate sheet which overcomes the objection previously set forth in the Office Action mailed 03 November 2025. However, upon further consideration, the abstract does not meet all of the guidelines of MPEP § 608.01(b), as outlined above, and the specification is objected to because the abstract is too long.
Applicant’s arguments, see p. 7-8, filed 24 February 2026, with respect to the double patenting rejections, have been fully considered but are not persuasive. Applicant requests for the double patenting rejection to be held in abeyance at this time. However, the nonstatutory double patenting rejections are maintained, after adjusting for claim amendments, because the amended limitations are taught or obvious over the ‘639 patent and the ‘320 application, as outlined above.
The amendments have overcome the indefiniteness previously set forth in the Office Action mailed 03 November 2025 due to cancellation of the disputed claim rendering the rejection as being moot. However, upon further consideration, new grounds of indefiniteness are set forth, as outlined above, as a result of amendments.
Applicant’s arguments, see p. 8-9, filed 24 February 2026, with respect to the prior art rejection(s) of the claim(s) under 35 U.S.C. 102 and 103, have been fully considered but are not persuasive for the following reasons:
Applicant argues that the Ti-doped tetrahedral amorphous carbon (ta-C:Ti) is not identical to titanium carbide (TiC) because TiC is often crystalline with a 1:1 ratio of titanium atoms to carbon atoms whereas ta-C:Ti has an amorphous network of sp3 bonded carbon atoms and titanium is doped into the network in very low concentrations. However, the rejection outlines that ta-C:Ti includes amorphous carbon (i.e. one of the listed materials) with TiC. There is no limitation regarding the fraction of TiC, whereas the doped Ti bonded to C (i.e. within the network of tetrahedral amorphous carbon) would still be considered to be TiC (e.g., a “crystal” size of one Ti atom bonded to a C atom and which are further bonded within the carbon network).
Applicant has not addressed that Taki teaches the coating being amorphous carbon (i.e. the Ti-doped tetrahedral amorphous carbon) and does not indicate ta-C:Ti to be substantially different from the recited amorphous carbon. Instead Applicant seems to reinforce that the ta-C:Ti is substantially identical to the recited amorphous carbon in arguing that the Ti-doped tetrahedral amorphous carbon is known to have an amorphous network of sp3 bonded carbon atoms and Ti is introduced into the network in very low concentrations as impurities (see remarks, p. 9, lines 5-7).
Furthermore, upon further consideration and in view of the amendment to claim 15 reciting the material of the coating, claims 15 and 17-20 are now considered to be anticipated by Taki because substantially identical materials have substantially identical properties. See MPEP § 2112.01.
Conclusion
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