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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/15/2026 has been entered.
The status of the claims is as follows: claim 10 is amended; claims 1-9 and 22-23 are withdrawn; claims 17-18, 21, 24-28 are cancelled; resulting in claims 10-16, 19 and 20 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/16/2026 is considered by the examiner.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-16, 19 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 10, the limitations reciting “a composite coating configured to coat at least a portion of a substrate” in line 2 and “wherein the first material and/or second material is positioned on an external surface of the article” in lines 11-12 are indefinite.
The overall claim is directed to an article, and the language requiring a substrate has been cancelled from the claim (see amendments filed 06/15/2026). Lines 11-12 make it clear that the first and/or second material are on an external surface of the substrate. However, line 2 recites the intended use of the composite coating, which includes the first and second material, and states that the composite coating is configured to coat at least a portion of the substate.
It is not clear if the substrate and the article are one in the same, or if the substrate is a structural component that is applied to the composite coating/article structure at a later point in time, in which case the structure would be substrate/composite coating/article. This does not align with the figures of the instant application. In the Figures, see Figure 3A-3C, the article is shown as being comprised of the substrate and the coating.
The structure of the claimed invention of the instant application is not clear, and therefore, the claims are indefinite.
Claims 11-16, 19 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph based on their dependency from claim 10.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 10, 11 and 14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tsukada et al. (US 2020/0032075).
Regarding claim 10, Tsukada et al. teaches a method of producing an anti-fouling coating film and an anti-fouling coating film as shown by Figure 5 (Abstract; [0004, 0015-0026, 0042, 0045, 0054, 0056-0058, 0065, 0077-0078]). The invention taught by Tsukada et al. is comprised of a base substrate (20; article) and an anti-foulant coating thereon (10; composite coating), wherein the anti-foulant coating (10; composite coating) is comprised of a fine uneven layer (11; first material) of silica and polysilazane; a modification layer (13; second material) of polysiloxane and/or perfluoropolyether; and a lubricating oil (15) of silicone oil or fluorinated oil ([0015-0026, 0042, 0045, 0054, 0056-0058, 0065, 0077-0078]). Tsukada et al teaches that the fine uneven layer (11; first material) is a layer of silica and polysilazane, which would inherently be associated with a first set of optical properties over a range of wavelengths and that the modification layer (13; second material) is comprised of polysiloxane and/or perfluoropolyether, which would be associated with a second set of optical properties over a range of wavelengths, as the layers are comprised of different materials.
As shown by Figure 5, the fine uneven layer (11; first material) is positioned on an external surface of the base substrate (20; article) ([0056-0058, 0065, 0077-0078]). Tsukada et al. teaches that the anti-foulant coating thereon (10; composite coating) imparts excellent anti-fouling property and excellent durability ([0065]).
The limitation “wherein, when the composite coating is exposed to a fluid comprising one or more foulants and associated with a third set of optical properties over a range of wavelengths, a mean percentage difference between the third set of optical properties and an average of the first set of optical properties and the second set of optical properties is about 20% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore Tsukada et al. teaches the structural features required by claim 10 as described in the above rejection, and therefore would be capable of performing in the manner claimed.
Regarding claim 11, Tsukada et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the mean percentage different is about 10% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Tsukada et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 14, Tsukada et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the average is a weighted average weighed by volume fraction” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Tsukada et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
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.
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.
Claims 12, 13, 15, 16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tsukada et al. (US 2020/0032075).
Regarding claim 12, Tsukada et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 10nm to 1mm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 12, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 13, Tsukada et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 100 nm to 700nm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 13, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 15, Tsukada et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of refractive indices and the second set of optical properties is a second set of refractive indices, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize a refractive index measurement based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of refractive indices” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Tsukada et al. teaches all the structural features of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 16, Tsukada et al. teaches all the limitations of claims 10 and 15 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of refractive indices and the second set of refractive indices from the third set of refractive indices is about 0.5 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Tsukada et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 19, Tsukada et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of dielectric response values and the second set of optical properties is a second set of dielectric response values, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of dielectric response values” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Tsukada et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 20, Tsukada et al. teaches all the limitations of claims 10 and 19 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of dielectric response values and the second set of dielectric response values from the third set of dielectric response values is about 10 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Tsukada et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Claims 10-16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hossain et al. (US 2016/0329111).
Regarding claim 10, Hossain et al. teaches enhanced surface treatments for support surfaces of articles used in the nuclear, transportation or shipping industry, which are exposed to such harsh environments that result in physical and/or chemical changes to the exterior surfaces of such articles ([0003-0005]). Hossain et al. teaches a support material having a surface (substrate) and a multilayer coating (composite coating) on at least a portion of the exterior surface thereof, the multilayer coating (composite coating) comprised of a first layer of a material (204; first region comprising a first material) and a second layer of ceramic nitride or oxynitride (206; second region comprising a second material) (Figure 2; [0016-0029]). As the first layer of material (204; first region comprising a first material) and a second layer of ceramic nitride or oxynitride (206; second region comprising a second material) taught by Hossain et al. are comprised of two different materials, the first layer of material (204; first region comprising a first material) would inherently have a first set of optical properties over a range of wavelengths and the second layer of ceramic nitride or oxynitride (206; second region comprising a second material) would inherently have a second set of optical properties of the range of wavelengths as claimed. Hossain et al. teaches that the multilayer coating (composite coating) provides anti-corrosion properties to underlying supports ([0003-0005, 0015-0016, 0020-0030, 0043]).
While the reference does not expressly teach that the multilayer coating exhibits resistance to fouling, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the multilayer coating would exhibit a degree of resistance to fouling. Hossain et al. is directed to an enhanced surface treatment for support surfaces of articles used in the nuclear, transportation or shipping industry, which are exposed to such harsh environments that result in physical and/or chemical changes to the exterior surfaces of such articles ([0003-0005]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the multiplayer coating taught by Hossain et al. would exhibit a degree of resistance to fouling given that the coating is used for surfaces of articles used in the nuclear, transportation or shipping industry, which are exposed to such harsh environments that result in physical and/or chemical changes to the exterior surfaces of such articles ([0003-0005]).
The limitation “wherein, when the composite coating is exposed to a fluid comprising one or more foulants and associated with a third set of optical properties over a range of wavelengths, a mean percentage difference between the third set of optical properties and an average of the first set of optical properties and the second set of optical properties is about 20% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Furthermore, Hossain et al. teaches all the structural features of claim 10 above, and would be capable of performing in the manner claimed.
Regarding claim 11, Hossain et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the mean percentage different is about 10% or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 12, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 10nm to 1mm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 12, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
Regarding claim 13, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the wavelength range pertaining to the first set of optical properties of the first material and the second set of optical properties of the second material is from 100 nm to 700nm, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention to utilize any wavelength claimed, such as a wavelength within in the range disclosed by claim 13, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art
Regarding claim 14, Hossain et al. teaches all the limitations of claim 10 above. The limitation reciting “wherein the average is a weighted average weighed by volume fraction” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 15, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of refractive indices and the second set of optical properties is a second set of refractive indices, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of refractive indices” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 16, Hossain et al. teaches all the limitations of claims 10 and 15 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of refractive indices and the second set of refractive indices from the third set of refractive indices is about 0.5 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 19, Hossain et al. teaches all the limitations of claim 10 above. While the reference does not expressly teach that the first set of optical properties is a first set of dielectric response values and the second set of optical properties is a second set of dielectric response values, it would have been obvious to one of ordinary skill in the art before the effect of the filing date of the claimed invention utilize a refractive index measurement, based upon the desired optical property being measured. Such a modification would have be capable of being achieved through routing optimization within the level of skill of an ordinary person of the art.
The limitation reciting “and the third set of optical properties is a third set of dielectric response values” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Regarding claim 20, Hossain et al. teaches all the limitations of claims 10 and 19 above. The limitation reciting “wherein a root-mean-square deviation of an average of the first set of dielectric response values and the second set of dielectric response values from the third set of dielectric response values is about 10 or less” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. Hossain et al. teaches all the structural of claim 10 as stated above, and therefore is capable of performing in the manner claimed.
Response to Arguments
Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see pages 6-7, filed 06/16/2026, with respect to claims 10-16 and 19-20 and the rejections over Lamine et al. (US 2015/0239774) have been fully considered and are persuasive. The previous rejections of claims 10, 11 and 14 under 35 U.S.C. 102(a)(1) as being anticipated by Lamine et al. (US 2015/0239774, cited on IDS and ISR); and of claims 12, 13, 15, 16, 19 and 20 under 35 U.S.C. 103 as being unpatentable over Lamine et al. (US 2015/0239774; cited on IDS and ISR) have been withdrawn.
The amendments to independent claim 10 requiring that the first material and/or second material are positioned on an external surface of the article overcome the rejections over Lamine et al. As shown by Figure 1, Lamine et al. teaches that neither the transparent electrically conductive oxide (2) nor the silicon nitride barrier film (3) are positioned on an external surface of the glass substrate (1; substrate/article. There is no motivation or suggestion to modify the glazing unit taught by Lamine et al. to arrive at the invention of the instant application.
Applicant's arguments filed 7-8 with respect to the rejections of Hossain et al. (US 2016/0329111) have been fully considered but they are not persuasive. The reference is not being applied under 35 U.S.C. 103, and the arguments still deemed valid will be addressed herein.
The Applicant argues on page 7 that Hossain et al. does not teach or suggest a composite coating that exhibits a resistance to fouling. The Applicant argues that the teaching of Hossain et al. to provide anti-corrosion properties to underlying supports ([0043]) does not teach a resistance to fouling as presently claimed. The instant application describes fouling in paragraph [0063] as referring to the unwanted accumulation of molecules, including corrosion products on a surface, which is different than the corrosion of the substrate itself. This argument is not persuasive.
Hossain et al. is directed to an enhanced surface treatment for support surfaces of articles used in the nuclear, transportation or shipping industry, which are exposed to such harsh environments that result in physical and/or chemical changes to the exterior surfaces of such articles ([0003-0005]). As stated in the rejections above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the multilayer coating taught by Hossain et al. would exhibit a degree of resistance to fouling given that the coating is used for surfaces of articles used in the nuclear, transportation or shipping industry, which are exposed to such harsh environments that result in physical and/or chemical changes to the exterior surfaces of such articles ([0003-0005]).
Conclusion
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
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