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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1, 4, 6-12 and 23 in the reply filed on 11/07/2025 is acknowledged.
Claims 14, 17, 19, 21, 24-28 and 33 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/07/2025.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code, specifically, see specification at page 20 lines 26-28, page 21 lines 3-5 and page 22 line 25.
Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claim 8 is objected to because of the following informalities: claim 8 is missing a period “.” at the end of the recitation. Appropriate correction is required.
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 4 and 6-8 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “pH is between 1 and 10”, and the claim also recites “preferably between 2 and 9, more preferably between 2.5 and 9 and most between preferably 3 and 7” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner is treating claim as requiring “pH is between 1 and 10”.
Examiner suggests amending the claim to either: i) remove the additional preferential limitation; ii) amend the claim so as to incorporate the narrower preferential as desired; or iii) some other clarifying amendment so as to remove the ambiguity as set forth above.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “sizes in the range 1-500nm”, and the claim also recites “preferably 1-100 nm, more preferably 1-50 nm, and most preferably 2-30 nm” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner is treating claim as requiring “sizes in the range 1-500nm”.
Examiner suggests amending the claim to either: i) remove the additional preferential limitation; ii) amend the claim so as to incorporate the narrower preferential as desired; or iii) some other clarifying amendment so as to remove the ambiguity as set forth above.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “between 0.1 and 20% by weight”, and the claim also recites “preferably 0.2 – 10% by weight and most preferably between 0.4 and 5% by weight” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner is treating claim as requiring “between 0.1 and 20% by weight”.
Examiner suggests amending the claim to either: i) remove the additional preferential limitation; ii) amend the claim so as to incorporate the narrower preferential as desired; or iii) some other clarifying amendment so as to remove the ambiguity as set forth above.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “from 0.1g/sqm to 20g/sqm”, and the claim also recites “preferably 9.3g/sqm to 10g/sqm and most preferably 0.5g/sqm to 5g.sqm” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner is treating claim as requiring “from 0.1g/sqm to 20g/sqm”.
Examiner suggests amending the claim to either: i) remove the additional preferential limitation; ii) amend the claim so as to incorporate the narrower preferential as desired; or iii) some other clarifying amendment so as to remove the ambiguity as set forth above.
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.
Claims 1, 8-12 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Danzer et al. (WO 2010/000476 A1) (“Danzer” hereinafter); as evidenced by Grosbois (US 5,389,298) (“Grosbois” hereinafter) with respect to claim 1.
Regarding claim 1, Danzer teaches a method of increasing water repellency of an organic porous substrate (see Danzer at page 24, lines 9-10 teaching a process for producing a composite, the composite comprising a porous material and metal oxide-comprising particles, see Danzer at page 5 lines 5-11 teaching an improved porous material such as… wood… a method of preparing such improved materials… in particular… water… of the porous material, i.e. hydrophobicity and oliophobicity, should be improved, and see Danzer at page 7 lines 24-26 teaching the term “enhanced physical resistance” comprises enhanced repelling properties against… water… said physical resistance is an enhanced… hydrophobicity), said method comprising
applying a dispersion of cerium oxide nanoparticles in a liquid carrier onto a surface of the substrate (see Danzer at page 24 lines 13-16 teaching (i) soaking said porous material with a composition a metal-oxide precursor and water to generate said metal oxide-comprising particles in situ… the metal oxide-comprising particles are nanoparticles, see Danzer at page 24 lines 27-28 teaching preferred metals of the metal oxide-comprising particles are metals selected from the group consisting of… cerium, see Danzer at page 25 lines 5-8 teaching the metal oxide-precursor is a… metal hydroxide… cerium, see Danzer at page 27 lines 13-18 teaching the term “soaking” as used in the present disclosure, in its broadest meaning also encompasses the covering/impregnating of surfaces… soaking can be achieved by processes that are known in the art… such processes comprise spraying the composition (i) onto the porous material, see Danzer at page 6 lines 15-16 teaching referring to a wooden surface as one embodiment of the porous material). Water is taken to meet the claimed liquid carrier; soaking is taken to meet the claimed applying and porous material is taken to meet the claimed a surface of the substrate. Cerium oxide and water is taken to meet the claimed dispersion of cerium oxide nanoparticles in a liquid carrier, as evidenced by Grosbois (see Grosbois at C1 L31-33 evidencing aqueous colloidal dispersions of a cerium (IV) compound can be directly obtained by dispersing in water a cerium (IV) compound),
wherein said liquid carrier is selected to evaporate substantially entirely at room temperature following application to the substrate surface (see Danzer at page 27 lines 23-24 teaching soaking is performed by applying the composition of (i) from the vapor phase to the porous material, see Danzer at page 9 lines 19-22 teaching the solution is then turned into an aerosol and dried by a spray-drying system… rapid vaporization of the solvent and rapid precipitation of the solute keeps the composition identical to that of the starting solution, see Danzer at page 15 lines 30-31 teaching the soaked wood sheet can be dried in order to obtain a dry sheet which can be sold or which can be further processed, see Danzer at page 34 line 17 teaching volatile compounds may be… water), which is taken to meet the claimed recitations based on specification at page 7 lines 14-15 disclosing an aqueous dispersion of nano cerium oxide particles relates to a dispersion in water of nano cerium oxide particles alone, see specification at page 7 line 31 to page 8 line 2 disclosing when an aqueous dispersion of nano cerium oxide is applied to a solid non-porous substrate surface, the liquid carrier (e.g. water or other suitable carrier described above) evaporates substantially entirely, leaving behind discrete nano cerium oxide particles on the substrate surface, and see specification at page 8 lines 18-22 disclosing liquid carrier evaporates substantially entirely, typically at room temperature… “evaporates substantially entirely” generally means that at least 95% of the liquid carrier evaporates within 24 hours or less at room (or ambient) temperature. Alternatively, since the method and the liquid carrier (or water) as taught by Danzer and the claimed method and the liquid carrier (or water) in claim 1 employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., wherein said liquid carrier… evaporate substantially entirely at room temperature following application to the substrate surface) would have naturally flowed following the teaching of Danzer (see MPEP 2112.01).
Regarding claim 8, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein dried application weight of nanoparticles is from 0.1g/sqm to 20g/sqm (see 112 rejection, see Danzer at page 12 lines 24-26 teaching the quantity of said nanoparticles being present on the front and the back surfaces and throughout the thickness of said wood sheet… is from 0.5 g nanoparticles/m2 wood sheet to 20 g nanoparticles/m2 wood sheet), which is within the claimed ranges.
Regarding claim 9, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein said porous organic substrate comprises one of… wood (see Danzer at page 17 lines 24-29 teaching the disclosure also pertains to a wood product, the wood product comprising a wood sheet… and a substrate… substrates may be selected from the group consisting of… wood).
Regarding claim 10, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches said method comprising applying the dispersion of inorganic nanoparticles directly onto the surface of the substrate, and wherein said applying includes treatment by… brushing (see Danzer at page 27 lines 23-24 teaching soaking is performed by applying the composition of (i) from the vapor phase to the porous material, the application by means of a… brush, see Danzer at page 6 lines 15-16 teaching referring to a wooden surface as one embodiment of the porous material).
Regarding claim 11, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein said dispersion contains only cerium oxide nanoparticles and the liquid carrier (see Danzer at page 24 lines 13-15 teaching (i) soaking said porous material with a composition a metal-oxide precursor and water to generate said metal oxide-comprising particles in situ, see Danzer at page 24 lines 27-28 teaching preferred metals of the metal oxide-comprising particles are metals selected from the group consisting of… cerium).
Regarding claim 12, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein said dispersion contains only cerium oxide nanoparticles… fungicides and the liquid carrier (see Danzer at page 24 lines 13-15 teaching (i) soaking said porous material with a composition a metal-oxide precursor and water to generate said metal oxide-comprising particles in situ, see Danzer at page 24 lines 27-28 teaching preferred metals of the metal oxide-comprising particles are metals selected from the group consisting of… cerium, see Danzer at page 12 lines 20-21 teaching the nanoparticles employed… may also comprise bioactive or microbial/fungal agents).
Regarding claim 23, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein evaporating substantially entirely at room temperature following application of the dispersion to a surface of said substrate comprises evaporation of at least 95% of said liquid carrier within 24 hours following application to the substrate (see Danzer at page 27 lines 23-24 teaching soaking is performed by applying the composition of (i) from the vapor phase to the porous material, see Danzer at page 9 lines 19-22 teaching the solution is then turned into an aerosol and dried by a spray-drying system… rapid vaporization of the solvent and rapid precipitation of the solute keeps the composition identical to that of the starting solution, see Danzer at page 15 lines 30-31 teaching the soaked wood sheet can be dried in order to obtain a dry sheet which can be sold or which can be further processed, see Danzer at page 34 line 17 teaching volatile compounds may be… water), which is taken to meet the claimed recitations based on specification at page 7 lines 14-15 disclosing an aqueous dispersion of nano cerium oxide particles relates to a dispersion in water of nano cerium oxide particles alone, see specification at page 7 line 31 to page 8 line 2 disclosing when an aqueous dispersion of nano cerium oxide is applied to a solid non-porous substrate surface, the liquid carrier (e.g. water or other suitable carrier described above) evaporates substantially entirely, leaving behind discrete nano cerium oxide particles on the substrate surface, and see specification at page 8 lines 18-22 disclosing liquid carrier evaporates substantially entirely, typically at room temperature… “evaporates substantially entirely” generally means that at least 95% of the liquid carrier evaporates within 24 hours or less at room (or ambient) temperature).
Alternatively, since the method and liquid carrier (or water) as taught by Danzer and the claimed method and liquid carrier (or water) in claim 1 employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., wherein evaporating substantially entirely at room temperature following application of the dispersion to a surface of said substrate comprises evaporation of at least 95% of said liquid carrier within 24 hours following application to the substrate) would have naturally flowed following the teaching of Danzer (see MPEP 2112.01).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Danzer; as evidenced by Grosbois with respect to claim 4.
Regarding claim 4, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein the liquid carrier is an aqueous carrier whose pH is between 1 and 10 (see 112 rejection, see Danzer at page 24 lines 13-15 teaching (i) soaking said porous material with a composition a metal-oxide precursor and water to generate said metal oxide-comprising particles in situ, see Danzer at page 24 lines 27-28 teaching preferred metals of the metal oxide-comprising particles are metals selected from the group consisting of… cerium, see Danzer at page 25 lines 5-8 teaching the metal oxide-precursor is a… metal hydroxide… cerium), which is taken to meet the claimed limitations as evidenced by Grosbois (see Grosbois at C1 L19-21 evidencing colloidal dispersion of cerium (IV) compound in an aqueous medium is also designated a “sol”, see Grosbois at C1 L45-46 evidencing the resulting sol is stable and has a pH ranging from 1 to 2.5) (see MPEP 2144.05(I)).
Regarding claim 6, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein the nanoparticles have sizes in the range 1-500 nm (see 112 rejection, see Danzer at page 24 lines 17-19 teaching the metal oxide-comprising particles are nanoparticles… have at least one dimension less than 500 nm) (see MPEP 2144.05(I)).
Regarding claim 7, Danzer teaches the limitations as applied to claim 1 above, and Danzer further teaches wherein the solids content of the nanoparticles in the dispersion is between 0.1 and 20% by weight (see 112 rejection, see Danzer at page 13 lines 14-15 teaching the nanoparticles are dispersed in the base fluid in a concentration less than 20% by weight) (see MPEP 2144.05(I)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731