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 Amendments and Arguments
Applicant’s amendments and arguments, filed August 8, 2025, with respect to the objection to claim 10 have been fully considered and are persuasive. Applicant has corrected the informality. Accordingly, the objection is withdrawn.
Applicant’s amendments and arguments, filed August 8, 2025, have been fully considered but are not persuasive. Applicant has amended claim 1 to recite wherein the heat exchanger composition comprises an aqueous dispersion having a water-repellent resin containing spherical particles with an average particle size of more than 4 µm and 50 µm or less. Applicant argues that, since the previously mailed Office Action contends that Tsuda teaches a heat exchanger coating composition including particles with a particle diameter of up to 4 µm, which does not read on the claimed range. The Examiner acknowledges that the preferred examples of Tsuda as well as the preferred range for the particle diameter of the inorganic finely divided particles of Tsuda do not exceed 4 µm in diameter. However, Tsuda also teaches a Comparative Example having a particle diameter of 8 µm (Table 2, Example 17, col. 5, ln. 50-68). While Tsuda teaches that such a particle diameter exhibits less water repellency than examples of the inorganic finely divided particles having a particle diameter of less than 4 µm, the Examiner contends that the disclosure of Tsuda only discourages particle sizes over 4 µm (e.g., 8 µm) because they are less optimal in terms of the degree of water repellency. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use (see MPEP 2123 I and II). Therefore, a person having ordinary skill in the art when considering the disclosure of Tsuda would recognize that adjusting the particle of diameter of inorganic finely divided particles above 4 µm, at least up to 8 µm, would predictably yield coatings that are hydrophobic, albeit to a lesser degree than the coatings preferred by Tsuda.
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 1, 2, 5, 6, 8-11, 13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (US 5,181,558, hereinafter referred to as “Tsuda”) in view of Sato et al. (JP2011083689, English translation provided for citations, hereinafter referred to as “Sato”).
As to Claim 1: Tsuda teaches a heat exchanger having a coated film formed thereon (i.e., a heat exchanger coating composition used for a heat exchanger) comprising a solution containing a silicone coating film type resin (i.e., a water-repellent resin) and inorganic finely divided particles (Abstract). Tsuda further teaches various exemplary compositions comprising finely divided particles with particle diameters within the claimed range (e.g., Table 2, Example 17, 8 µm particle diameter). While Tsuda teaches that such a particle diameter exhibits less water repellency than examples of the inorganic finely divided particles having a particle diameter of less than 4 µm, the Examiner contends that the disclosure of Tsuda only discourages particle sizes over 4 µm (e.g., 8 µm) because they are less optimal in terms of the degree of water repellency. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use (see MPEP 2123 I and II). Therefore, a person having ordinary skill in the art when considering the disclosure of Tsuda would recognize that adjusting the particle of diameter of inorganic finely divided particles above 4 µm, at least up to 8 µm, would predictably yield coatings that are hydrophobic, albeit to a lesser degree than the coatings preferred by Tsuda. Tsuda further teaches that the finely divided particles are “dispersed” and positioned “on the surface of the coated film” such that said finely divided particles form projections from coatings formed from a solution containing a resin compound (column 12, lines 4-17), which reads on the claimed distributed in a state of being coated on the water-repellent resin.
Tsuda does not explicitly teach that the inorganic finely divided particles are spherical and does not explicitly teach that the solution containing a silicone coating film type resin (i.e., a water-repellent resin) and inorganic finely divided particles is an aqueous dispersion.
Sato teaches a related water-repellent coating comprising an organic resin containing fine particles ([0006]) wherein said fine particles are spherical (see pg. 17, Fig. 1). Sato further teaches that the coating is provided as a water-based paint using water as a solvent for the organic resin and fine particles ([0055]) (i.e., an aqueous dispersion). Tsuda and Sato are considered analogous art because they are directed towards the same field of endeavor, namely, hydrophobic coating compositions comprising dispersed particles. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize spherical finely divided particles and to use an aqueous medium to disperse the components of the coating composition of Tsuda and the motivation would have been that Sato teaches that water-based paint using water as a solvent for the organic resin and spherical fine particles ([0055]) (i.e., an aqueous dispersion) are recognized within the art as suitable for water-repellent coating compositions.
Tsuda further teaches exemplary compositions having a water repellency contact angle of, e.g., 100 degrees, (Table 1, Comparative Example 3), however, the contact angle measurements of Tsuda appear to be measured with respect to “irregular portions” formed on the surface of the resin (see Fig. 3 and col. 5, lines 60-68), and therefore may differ with the claimed contact angle measured “at an endpoint of water when water forms on the water-repellent resin.” Furthermore, it is noted that the instantly claimed “contact angle between the water-repellent resin and water” is construed to refer to a contact angle of the previously recited “water-repellent resin containing spherical particles,” (emphasis added) rather than the contact angle of the water-repellent resin without the presence of spherical particles.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Para. [0013] of the instant specification discloses that the contact angle depends on the type of resin. Tsuda teaches that the resin is a silicone coating film (Abstract). The instant specification para. [0024] teaches that the water-repellent resin may be a silicone resin. Therefore, the claimed effects and physical properties, i.e. contact angle between the water-repellent resin (inclusive of the recited spherical particles) and water at an endpoint of water, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 2: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda further teaches that the finely divided particles may be inorganic (Abstract).
As to Claims 5 and 6: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda further teaches exemplary compositions comprising poly(methyl-methacrylate) particles (Table 1, Comparative Examples 3-6).
As to Claim 8: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda further teaches that the coated film comprises a silicone coating film type resin (i.e., a water-repellent resin) (Abstract).
As to Claim 9: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda further teaches that the finely divided particles are “dispersed” and positioned “on the surface of the coated film” such that said finely divided particles form projections from coatings formed from a solution containing a resin compound, wherein the spaces between said projections (i.e., construed as equivalent to the claimed “distance between tops”) may be 0.2 µm or more (column 12, lines 4-17), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Tsuda suggests, that the overlapping portion is a known range for spacing between projections/tops of dispersed particles within a hydrophobic coating such that the spacing does not allow for trapping of water droplets, preventing evaporation (column 11, lines 49-58).
As to Claims 10 and 11: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda teaches that the inorganic finely divided particles may be present in an amount of 10 to 40 wt% of the solids content of the solution (column 2, lines 5-11) and further teaches exemplary compositions comprising inorganic silica in an amount of 40 wt% (Table 1, Example 2), which is within the claimed range. Tsuda further teaches that the composition is applied as a solution and subsequently dried (column 2, lines 44-49) (i.e., only solids remaining). The solids present in the exemplary composition described in Table 1, Example 2 appears to only require a base resin and additive finely divided particles, which would therefore read on the claimed amounts of spherical particles relative to a total mass of the coating composition (i.e., the dried composition of Tsuda) and relative to the water-repellent resin (i.e., the base resin of Tsuda).
As to Claim 13: Tsuda and Sato teach the coating compositions of claim 2 (supra).
Tsuda teaches that the inorganic finely divided particles may be present in an amount of 10 to 40 wt% of the solids content of the solution (column 2, lines 5-11) and further teaches exemplary compositions comprising inorganic silica in an amount of 40 wt% (Table 1, Example 2), which is within the claimed range. Tsuda further teaches that the composition is applied as a solution and subsequently dried (column 2, lines 44-49) (i.e., only solids remaining). The solids present in the exemplary composition described in Table 1, Example 2 appears to only require a base resin and additive finely divided particles, which would therefore read on the claimed amounts of spherical particles relative to the water-repellent resin (i.e., the base resin of Tsuda).
As to Claim 15: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda further teaches exemplary compositions and measured contact angles however, the contact angle measurements of Tsuda appear to be measured with respect to “irregular portions” formed on the surface of the resin (see Fig. 3 and col. 5, lines 60-68), and therefore may differ with the claimed contact angle measured “at an endpoint of water when water forms on the water-repellent resin.” Furthermore, it is noted that the instantly claimed “contact angle between the water-repellent resin and water” is construed to refer to a contact angle of the previously recited “water-repellent resin containing spherical particles,” (emphasis added) rather than the contact angle of the water-repellent resin without the presence of spherical particles.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Para. [0013] of the instant specification discloses that the contact angle depends on the type of resin. Tsuda teaches that the resin is a silicone coating film (Abstract). The instant specification para. [0024] teaches that the water-repellent resin may be a silicone resin. Therefore, the claimed effects and physical properties, i.e. contact angle between the water-repellent resin (inclusive of the recited spherical particles) and water at an endpoint of water, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 16: Tsuda and Sato teach the coating compositions of claim 1 (supra).
Tsuda further teaches exemplary compositions comprising a base resin that is an ethylene tetra-fluoride resin (Table 1, Comparative Example 10) and also teaches that various fluororesin are known within the art as suitable for use as base resins for water-repellent coating compositions for condensing water (column 1, lines 43-51). While Tsuda teaches that the comparative examples comprising the fluororesin exhibit less water repellency than exemplary composition comprising a silicone resin, the Examiner contends that the disclosure of Tsuda only discourages the use of fluororesins (e.g., ethylene tetra-fluoride resins) because they are less optimal in terms of the degree of water repellency. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use (see MPEP 2123 I and II). Therefore, a person having ordinary skill in the art when considering the disclosure of Tsuda would recognize that using a fluororesin as a base resin would predictably yield coatings that are hydrophobic, albeit to a lesser degree than the coatings preferred by Tsuda.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (US 5,181,558, hereinafter referred to as “Tsuda”) in view of Sato et al. (JP2011083689, English translation provided for citations, hereinafter referred to as “Sato”) and further in view of Ikuhiro et al. (JP6180698, English translation provided for citations, hereinafter referred to as “Ikuhiro”).
As to Claim 3: Tsuda and Sato teach the coating composition of claim 2 (see above).
Tsuda teaches that the finely divided particles may be inorganic (Abstract) and further teaches that particles may be inorganic silica (column 6, lines 11-15), but does not disclose fused silica or fused alumina.
Shimada teaches a related water repellent coating ([0001]) comprising silica microparticles and a hydrophobic resin ([0003]), wherein said coating is suitable for coating heat exchangers ([0026]). Shimada further teaches that the microparticles may be fused silica particles or fused alumina particles ([0007]). Tsuda, Sato, and Shimada are considered analogous art because they are directed towards the same field of endeavor, namely, hydrophobic coating compositions for coating metal surfaces. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize a fused silica particle, such as that taught by Shimada, as the silica particle within the coating composition of Tsuda and the motivation would have been that Tsuda and Shimada provide evidence that both silica and fused silica particles are known particle additives within the art of hydrophobic coatings. Substituting equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06 II).
Claims 4 and 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (US 5,181,558, hereinafter referred to as “Tsuda”) in view of Sato et al. (JP2011083689, English translation provided for citations, hereinafter referred to as “Sato”) and further in view of Sato et al. (JP 2011196585, English translation provided for citations, hereinafter referred to as “Sato ‘585”).
As to Claim 4: Tsuda and Sato teach the coating composition of claim 1 (see above).
Tsuda is silent towards wherein the inorganic finely divided particles are metal particles.
Sato ‘585 teaches a related invention directed towards a heat exchanger and a water-repellent layer (i.e., a coating) including a structure comprising a fluororesin (i.e., a water-repellent resin) ([0006]) and metal particles coating said fluororesin ([0021]). Sato ‘585 further teaches that inorganic particles including silicone oxide/silica may be used as an alternative to the metal particles ([0038]-[0039]). Tsuda, Sato, and Sato ‘585 are considered analogous art because they are directed towards the same field of endeavor, namely, water-repellent coating compositions for coating metal articles. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize metal particles, such as those taught by Sato ‘585, as an alternative to the silica inorganic finely divided particles of Tsuda, and the motivation would have been that Sato ‘585 both silicon oxide and metal particles are known dispersed particle additives to water-repellent resins within the hydrophobic coating art. Substituting equivalents known for the same purpose is prima facie obvious (see MPEP 2144.06 II).
As to Claim 14: Tsuda, Sato, and Sato ‘585 teach the composition of claim 4 (supra).
Tsuda further teaches exemplary compositions comprising amounts of silicon dioxide particles up to 80 wt% of the solids in the composition (Table 2, Comparative Examples 15-19), which is within the claimed range. The solids present in the exemplary composition described in Table 1, Example 2 appears to only require a base resin and additive finely divided particles, which would therefore read on the claimed amounts of spherical particles relative to the water-repellent resin (i.e., the base resin of Tsuda). While Tsuda only teaches these amounts as comparative examples, Tsuda is prior art for all it teaches for the purposes of determining obviousness under 35 U.S.C. 103 (see MPEP 2158). In this case, comparative examples 15-19 of Tsuda enable coating compositions having an amount of dispersed inorganic particles in an amount within the claimed range.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuda et al. (US 5,181,558, hereinafter referred to as “Tsuda”) in view of Sato et al. (JP2011083689, English translation provided for citations, hereinafter referred to as “Sato”) and further in view of Shimada et al. (JP H06264001, English translation provided for citations, hereinafter referred to as “Shimada”).
As to Claim 12: Tsuda and Sato teach the coating composition of claim 1 (see above).
Tsuda is silent towards a thickener that increases viscosity.
Shimada teaches a surface treatment agent which imparts hydrophilicity to the surface of a metal material which is suitable for coating aluminum products such as heat exchanger fins ([0001]). Shimada further teaches that the surface treatment agent of the invention may comprise a thickener, such as carboxymethyl cellulose (i.e., a thickener according to the instant specification para. [0030]), in order to adjust the viscosity to an appropriate level depending on the application form ([0014]). Shimada further teaches an exemplary composition comprising 0.15% by weight of carboxymethyl cellulose ([0023]), which is within the claimed range. Tsuda, Sato, and Shimada are considered analogous art because they are directed towards the same field of endeavor, namely, coating compositions comprising dispersed particles for coating metal surfaces. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a thickener within the composition of Tsuda in an amount within the claimed range, e.g., 0.15 wt%, such as that taught by Shimada, and the motivation would have been that Shimada teaches that doing so can allowing for tuning of the viscosity of the composition ([0014]), thereby improving handleability of the composition and facilitating coating processes using the composition.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767