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 .
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12286519 Yuan et al. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the patented claims differ somewhat in scope, they overlap to the extent that one practicing the patented claimed invention would practice the instantly claimed invention and vice versa.
It is noted that the instant claims are directed to the precursor and application thereof and the patented claims are directed to the wear-resistant super-hydrophobic composite material and application thereof. The patented claims use the instantly claimed superhydrophobic composite precursor to make their composite material. The precursor therein would direct the ordinary skilled artisan to make the precursor of the instant claims 1-6 and to make and apply the precursor by the methods of the instant claims 7-10. It is known to heat things to cure them because heating is known to accelerate chemical reactions from undergraduate chemistry courses. The ordinary skilled artisan therefore would have known to heat the compositions of the patented claims to cure them faster which meets the heating of the instant claim 10.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1-10 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. The instant claim 1 recites “the gel comprises an epoxy resin, the amino-terminated hyperbranched polysiloxane, or the gel comprises an epoxy resin, the amino-terminated hyperbranched polysiloxane, and an additive;”. It is unclear if the gel is required to contain 1) an epoxy resin or the amino-terminated hyperbranched polysiloxane or the mixture of the epoxy resin, amino-terminated hyperbranched polysiloxane, and an additive or 2) a mixture of an epoxy resin and the amino-terminated hyperbranched polysiloxane or the mixture of the epoxy resin, amino-terminated hyperbranched polysiloxane, and an additive due to the grammar of the claim. This lack of clarity is present in all of the claims due to their dependency from claim 1. The scope of the claims is therefore not clear.
The lack of clarity is not present in claim 8 which clearly requires the combination of ingredients recited therein.
For examination purposes, both interpretations will be taken as reading on the claims.
B. It is unclear if the requirements of the instant claim 4 are alternatives or if all of them is required because the claim does not recite “and” or “or” prior to the last member of the group, e.g. “the solvent”. The scope of the claim is therefore not clear.
For examination purposes, both interpretations will be taken as reading on the claims.
C. It is not clear what is required by the instant claim 6. The instant claim 6 recites a Markush group of epoxy resins followed by “a viscosity of diglycidyl ether end-capped polydimethylsiloxane is 50-10000 mPa•s/25℃, a density is 1.05-1.10/25℃; an amine value of the amino-terminated hyperbranched polysiloxane is 0.5-0.65 mol/100g”. It is not clear if these particulars are required by the epoxy resins of claim 6 or something else because the claim language is not clear in this regard. There is no antecedent basis for the claimed diglycidyl ether end-capped polydimethylsiloxane. It is not clear what is required to have the claimed density. It is not clear if these are alternatives which may be chosen or if all of these particulars are required by the claim. The lack of clarity stems from the unclear grammar of the claim.
For examination purposes, all of the above discussed interpretations will be taken as reading on the instant claim 6.
D. It is not clear what is required by the instant claim 8. It is unclear if both gels are required to be mixed and included in the invention of claim 7 or if only one gel needs to be mixed because there is no language between the two gels and mixing steps indicating if they are both required or if only one of the options needs to be chosen. The scope of the claims is therefore not clear.
For examination purposes, all of the above discussed interpretations will be taken as reading on the instant claim 8.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 105802446 Ma et al., the machine English translation provided by the examiner being referenced below unless otherwise noted, in view of US Pat. Application Publication No. 2009/0269560 Dhinojwala et al. and US Pat. Application Publication No. 2002/0161113 Dvornic et al.
Regarding claims 1, 2, 4, and 7-10:
Ma discloses a wear-resistant superhydrophobic composite material comprising a substrate and a coating made from a cured precursor composition comprising nanoparticles, including carbon nanotubes, silica, and a silane coupling agent. See Ma, the abstract, page 2, lines 6-9, 9-18 and 24-25, page 3, lines 22-23, and page 4, lines 3-23, noting the silica/carbon nanotube composite material of line 7 and the epoxy resin layer of line 14. See Ma, page 5, lines 1-21, particularly lines 14-21. See Ma, page 6, lines 1-21, particularly noting lines 1-3, more particularly noting the silane coupling agent. See Ma, page 7, lines 1-23, particularly lines 7-16, more particularly noting the treatment of the carbon nanotubes with tetraethyl orthosilicate and gamma-methacryloxypropyltrimethoxysilane. See Ma, page 7, lines 17-18, noting the epoxy resin coating on the PVC substrate, which falls within the scope of the instantly claimed gel. See Ma, page 7, lines 20-22, which forms the silica/carbon nanotube coupling agent layer though the carbon nanotubes are not described as being aligned bundles. See Ma, page 8, line 3 to page 12, line 9. See Ma, page 13, lines 1-23. Ma’s composites are described as wear-resistant super-hydrophobic coating materials at page 2, lines 24-25. They are to be coated onto substrates and comprise two layers, which makes them the instantly claimed precursor materials. Epoxies crosslink which makes them “gels”.
The processes of Ma’s examples give the instant claim 2 limitations minus the aligned carbon nanotube bundles. The ammonia water of Ma’s examples is the alkali of the instant claim 2.
The methods of Ma give the particulars of the instant claims 7, 9, and 10.
Ma does not disclose the instantly claimed aligned carbon nanotube bundles. Ma does not disclose the instantly claimed amino-terminated hyperbranched polysiloxane.
Dhinojwala discloses carbon nanostructure composite systems for use as self-cleaning coatings which contain vertically aligned carbon nanotube structures for giving self-cleaning properties. See Dhinojwala, the abstract and paragraphs [0006], [0009]-[0012], [0040]-[0049], and [0059]-[0063], and the claims, particularly noting the nanotubes of Dhinojwala’s claim 30. Particularly note the aligned carbon nanostructures of paragraph [0011], which are clearly bundles considering the thickness of the structures compared to the thickness of the 1-40 nm structures which are integrated to make the thicker structures. Note also the bundles of Dhinojwala’s claims 26 and 27.
It is clear from Dhinojwala, paragraph [0049] and Figs. 4E-F that dimensions 18 and 19 may be from 5-1000 microns.
The lengths of the exposed nanostructures of Dhinojwala’s claim 29 necessitates that the carbon nanostructures of Dhinojwala are necessarily at least 10 to about 1000 microns long.
Dhinojwala thereby encompasses the dimensions of the instant claim 4
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use aligned carbon nanotube bundles of Dhinojwala, including those having the dimensions of the instant claim 4, in the composite material precursors of Ma, which are discussed above, in place of Ma’s carbon nanoparticles because they are encompassed by Ma’s broad recitation of carbon nanotube powder and they would have been expected to give the properties they give to the composites of Dhinojwala to the composites of Ma, including the superhydrophobicity that they contribute to the composites of Dhinojwala. This makes the instant claims 1, 2, 4, 7, 9, and 10 obvious.
Dvornic, paragraph [0027], discloses using amine terminated hyperbranched polysiloxane to form a hydrophobic surface. Dvornic, paragraph [0027] shows the amine terminated hyperbranched polymers to react with epoxy groups.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the amino-terminated hyperbranched polysiloxane of the instant claim 1 in the precursors to the composite materials of Ma because Ma desires to make super-hydrophobic materials, Dvornic teaches amine terminated hyperbranched polysiloxane to form a hydrophobic surface and to react with epoxy, and the hydrophobicity expected from the amino-terminated hyperbranched polysiloxane of Dvornic would have been expected to be contributed to the composites of Ma and the amino functions thereof would have been expected to react with epoxy groups of Ma so as to covalently lock these hydrophobes into the cured composites of Ma. This makes the instant claims 1 and 8 obvious.
Regarding claims 3 and 5:
Ma discloses the combinations of ingredients of the instant claims 3 and 5 but does not specify the amounts thereof of the instant claims 3 and 5. The broad recitations of Ma, such as their claim 1, do not limit the amounts of the ingredients which fall within the scope of the instant claims 3 and 5 and thereby encompass all amounts of such ingredients, including the amounts of the instant claims 3 and 5.
The amounts of ingredients of Ma materially affect the properties of the precursors and final composites of Ma. These ingredient amounts are therefore result effective variables. It is within the ability of the ordinary skilled artisan in this art to change the ingredient amounts within the broad disclosure of Ma, which does not limit the ingredient amounts, and obtain precursors and composites thereof with desired properties, including desired wear resistance and super-hydrophobicity, by using only routine optimization of the result effective ingredient amounts of Ma, as is evidenced by Ma’s lack of limits on ingredient amounts in their broad disclosures. See MPEP 2144.05, paragraphs II., A. and B.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the amounts of ingredients of the instant claims 3 and 5 in the compositions of Ma because the amounts of these ingredients are encompassed by the broad disclosures of Ma which do not limit these ingredient amounts and the choice of the instantly claimed amounts would have been expected to give only predictable properties, including predictable degrees of wear resistance and super-hydrophobicity, to the highly skilled ordinary skilled artisans in this art, with the desired and expected results requiring at most routine experimentation.
8. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over CN 105802446 Ma et al., the machine English translation provided by the examiner being referenced below unless otherwise noted, in view of US Pat. Application Publication No. 2009/0269560 Dhinojwala et al. and US Pat. Application Publication No. 2002/0161113 Dvornic et al., as applied to claims 1-5 and 7-10 in paragraph 7 above, further in view of US Pat. Application Publication No. 2013/0062577 Lin et al.
The entire discussion of paragraph 7 above is repeated here.
Regarding claim 6:
It is taken that the properties recited at the end of claim 6 are optional choices because they appear to be part of the claimed Markush group. They are therefore taken to not be required by the instant claim 6. The epoxy resin recitation of Ma’s examples encompasses the epoxy resins of the instant claim 6 but Ma does not disclose these particular epoxy resins.
Lin, paragraph [0057], exemplifies amine cured epoxy resin containing carbon nanotubes for giving tough and stable structure superhydrophobic films which use bisphenol A diglycidyl ether epoxy resins.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to the bisphenol A epoxy resin of the instant claim 6 as the epoxy resin of Ma because such epoxy resins are known for use in superhydrophobic film forming compositions, as taught by Lin, and would have been expected to have the tough and stable structure taught by Lin.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762