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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 2, 3 and 5-17, drawn to a coating in the reply filed on 07/24/2025 is acknowledged.
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 2, 3, 5-8, and 11-17 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.
As to claim 2, Ex parte Slob, 157 USPQ 172, states, "claims merely setting forth physical characteristics desired in an article, and not setting forth specific composition which would meet such characteristics, are invalid as vague, indefinite, and functional since they cover any conceivable combination of ingredients either presently existing or which might be discovered in the future and which would impart said desired characteristics. It seems from the claim, if one meets the structure recited, the properties must be met or Applicant’s claim is incomplete.”
In this case, the claim setting forth the internal walls of the pores in the anodic oxide layer exhibiting hydrophobic properties desired for promoting affinity and wettability of the oil on the walls of the pores and not setting forth a hydrophobic/oleophilic coating comprising polytetrafluoroethylene which would meet such characteristics are invalid as vague and indefinite.
In view of Applicant’s disclosure, the walls of the pores in the anodic oxide layer are rendered hydrophobic/oleophilic with a hydrophobic/oleophilic coating comprising polytetrafluoroethylene. Incorporation of the hydrophobic/oleophilic coating comprising polytetrafluoroethylene on the internal walls of the pores in the claim would be deemed necessary to overcome an issue of indefiniteness.
Claim 7 contains the trademark/trade name KRYTOX. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name KRYTOX is used to identify/describe a source of the oil, not the oil itself and, accordingly, the identification/description is indefinite.
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 2, 3, 5-11, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (hereinafter “Lee I”), “Oil-Impregnated Aluminum Anodic Oxide Layer with Bottle-Shaped Pores for Enhanced Anti-Corrosion and Self-Healing Properties”, ECS Meeting Abstracts, September 2016, MA2016-02(12), 1283-1283, in view of Lee et al. (hereinafter “Lee II”), “Oil-Impregnated Nanoporous Oxide Layer for Corrosion Protection with Self-Healing”, Adv. Funct. Mater. 2017, 27, p 1-11.
As to claims 2, and 5-10, Lee I discloses an aluminum anodic oxide (AAO) layer comprising a plurality of bottle-shaped pores such that the pore diameter at the top is smaller than that at the bottom (abstract). The pores are impregnated with an oil to prevent the penetration of corrosive media into the porous structure. The bottle-shaped pores stably immobilize the oil in the pores, exhibiting robust anti-corrosion properties. Lee I further mentions that larger volume of oil in the bottle-shaped pore allows to cover the underlying metallic aluminum surface exposed by cracks more effectively, indicating the crack tolerance for corrosion with the unique self-healing capacity (abstract).
Lee I does not explicitly disclose (i) the inner walls of the bottle-shaped pores exhibiting hydrophobic properties (claims 2, 9 and 10); and (ii) the pores completely filled with the liquid oil wherein the liquid oil comprises fluorocarbon lubricant having a viscosity between about 10 cST and about 1000 cST (claims 5-8).
Lee II, however, discloses an oil-impregnated nanoporous oxide layer for corrosion protection with self-healing, comprising an AAO layer with a plurality high-aspect-ratio, dead-end nanopores distributed throughout the layer (figure 2). The inner walls of the nanopores are coated with a Teflon layer (figure 2e, and page 4). Polytetrafluoroethylene is commonly known by the brand name Teflon. The Teflon-coated AAO is further impregnated with a Krytox GPL 100 oil which is known as a fluorocarbon lubricant (page 4). The Krytox GPL 100 would inherently have a viscosity in the range from 10 to 1000 cST as like material has like property. The liquid oil completely fills the lumen of each nanopore (figures 2 and 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the surface of the AAO film of Lee I treated with a Teflon coating disclosed in Lee II, motivated by the desire to promote chemical affinity of the AAO to the liquid oil.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further completely fill the nanopores disclosed in Lee I with a fluorinated lubricant disclosed in Lee II motivated by the desire to impart superior anti-corrosion properties.
As to claim 3, Lee I discloses an AAO layer comprising a plurality of bottle-shaped pores such that the opening diameter at the top is smaller than the diameter at the bottom (abstract).
As to claim 11, Lee I discloses an AAO layer comprising a plurality of bottle-shaped pores (abstract). Therefore, it is not seen that the body region could not contain more of the liquid oil than the neck region.
As to claims 14-17, Lee I discloses an AAO layer comprising a plurality of bottle-shaped pores (abstract). Given the typical shape of the bottle, the examiner takes the position that (a) the ratio of the second lateral dimension to the first lateral dimension of no less than 1.5, (b) the first longitudinal dimension that is greater than the first lateral dimension, (c) the second longitudinal dimensional that is greater than the second lateral dimension, and (d) the second longitudinal dimension that is greater than the first longitudinal dimension would be present.
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Lee I in view of Lee II, as applied to claim 2, further in view of US 2015/0368823 to Curran et al. (hereinafter “Curran”).
None of the Lee references disclose or suggest the opening diameter at the top of 20 to 200 nm, the opening diameter at the bottom of 30 to 500 mm, a ratio of the second lateral dimension to the first lateral dimension of 1.5 or more, the first longitudinal dimension which is greater than the first lateral dimension, the second longitudinal dimension which is greater than the second lateral dimension, and the second longitudinal dimension which is greater than the first longitudinal dimension.
Curran, however, discloses that a portion of an aluminum substrate is converted to a porous aluminum oxide layer using an anodizing process (paragraph 31). The porous aluminum oxide layer contains a plurality of bottle shaped pores as shown in figures 3A and 3B.
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Curran discloses that the opening diameter at the top is smaller than the diameter at the bottom (figure 3B and 42). The pores have an average pore diameter from 20 to 40 nm using sulfuric acid anodizing process (paragraph 44). Alternatively, the pores have an average pore diameter from 300 to 400 nm using phosphoric acid anodizing process (paragraph 44). In view of the bottle shape of the pore shown in figure 3B, (a) the ratio of the second lateral dimension to the first lateral dimension of no less than 1.5, (b) the first longitudinal dimension which is greater than the first lateral dimension, (c) the second longitudinal dimension which is greater than the second lateral dimension, and (d) the second longitudinal dimension which is greater than the first longitudinal dimension would be present.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the opening diameters at the top and at the bottom; and the ratio of the second lateral dimension to the first lateral dimension will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such the opening diameters at the entrance and at the bottom; and the ratio of the second lateral dimension to the first lateral dimension are critical or provide unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the opening diameters at the top and at the bottom of the pore; and the ratio of the second lateral dimension to the first lateral dimension of the pore in the ranges instantly claimed, motivated by the desire to stably immobilize large volume of the oil in the pores, thereby enhancing corrosion resistance. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Curran provides necessary details regarding the dimensions of the resulting bottle-shaped pores using anodization to practice with the Lee references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788