Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2 and 5-8 is/are under 35 U.S.C. 103 as obvious over US20200103121 (US’121).
Regarding claim 1, US’121 discloses ovens and articles comprising an oleophobic surface coating on one or more surfaces for heat resistance and easy to clean performance. The oleophobic surface coating comprising organofunctional silane and a perfluorinated material applied to enamelized carbon steel., stainless steel. See abstract, [0055], [0058-0060], and [0121-0123].
US’121 discloses the oleophobic surface coating comprising organofunctional oligomeric poly siloxane and a perfluorinated material applied to enamelized carbon steel., stainless steel. See [0055], [0058-0060], and [0121-0123].
US’121 discloses the oleophobic surface coating comprising organofunctional oligomeric poly siloxane, a perfluorinated material and silane coupling agent. However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1:1 ratio, the amount of siloxane, about 33% and the perfluorinated material amount, about 33%, fall within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 2, US'121 discloses that the oleophobic surface coating is applied to enamelized carbon steel. See [0058].
Regarding claim 5, US’121 discloses the oleophobic surface coating comprising silane coupling agents. See [0060].
Regarding claim 6, US’121 discloses a process comprising depositing the coating material on the surface using an aqueous carrier. The process comprises heat curing the deposited coating material at a temperature between 100 degrees Celsius to 500 degrees Celsius. For example, heat curing can occur for a period of 5 minutes to 24 hours. See [0104]. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). It is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
Regarding claim 7, The Examiner respectfully submits that although the prior art combination does not disclose the claimed surface energy, the claimed surface energy is deemed to naturally flow from the structure in the prior art combination, since the prior art teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 8, US’121 discloses an oleophobic surface coating comprising organo silane and a perfluorinated material applied to enamelized carbon steel, and stainless steel. See [0055], [0058-0060], and [0121-0123].
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
The applicant argues that the interior material according to embodiments of this disclosure includes surprising results of contaminants falling off without adhering to or accumulating on inner walls, reduction of contamination to a level of 40%-50% when compared with an enamel coated surface, reduced labor intensity during a cleaning, and energy-efficient cleaning. In particular, the reduction of contamination to a level of 40%-50% is not disclosed or taught in the cited reference.
The Examiner respectfully submits that the applicant must compare the instant application with the closest art. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356. US’121 discloses ovens and articles comprising an oleophobic surface coating on one or more surfaces for heat resistance and easy to clean performance. The oleophobic surface coating comprising organofunctional silane and a perfluorinated material applied to enamelized carbon steel., stainless steel. See abstract, [0055], [0058-0060], and [0121-0123]. Further more any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant argues that the present application discloses the unexpected or surprising results for the interior material having the content ration of the silicon-containing compound and the fluorine- containing compound ranging from 2:1 to 1:0.25 in TABLES 1-3 of the as-filed application.
The Examiner respectfully submits that to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range. In re Hill 284 F.2d 955, 128 USPQ 197 (CCPA 1960). US’121 discloses ovens and articles comprising an oleophobic surface coating on one or more surfaces for heat resistance and easy to clean performance. The oleophobic surface coating comprising organofunctional silane and a perfluorinated material applied to enamelized carbon steel., stainless steel. See abstract, [0055], [0058-0060], and [0121-0123]. Further more any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). There is no ratio outside the claimed ratio is 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 SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731
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