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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/4/26 has been entered. Claims 1-2, 4, 7, and 10-14 are pending examination, claims 16-17 have been withdrawn and claims 3, 5-6, 8-9, 15, and 18-35 have been canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4, 7, and 10-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. By amendment, claim 1 now recites “introducing…a non-aryl-containing siloxane monomer…”; this is considered a negative limitation. "Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion.” MPEP 2173.05(i). While [0041] of applicant’s original disclosure has explicitly stated: “raw materials do not contain fluoride”, there is no such equivalent teaching with respect to particularly avoiding “aryl-containing” materials.
Claim 1 additionally now recites: “the water contact angle of the super-hydrophobic film layer remains greater than 140o at 168 hours during both a high temperature / high humidity test and a salt spray test.” The closest support for such a limitation appears derived from Fig 4, Fig 6, and embodiment one [0086-95]). First, the claim terms “high temperature / high humidity test” and “a salt spray test” are presently not bound to any particular conditions (relative humidity, temperature, pressure, salt chemistry, salt concentration, etc) whereas the specification only appears to test at “85° C, 85%RH” and “5% NaCl solution, 35° C., 1 Kg/cm2”. Not only are these specific testing conditions the only ones selected to achieve the resulting property, but so too are a particular substrate (glass sheet), pretreatment conditions (see [0090]), a singular coating chemistry (HMDS monomer at a flow rate of 200 uL/min, argon gas at a flow rate of 100 sccm), deposition conditions (a vacuum degree at 6 Pa, a bias voltage of 600 V, an ICP power at 800 W, and the coating duration time was 300 s). The present claim scope is however open to any non-fluorinated and non-aryl containing siloxane monomer, any inert gas, at spans of flow rates, over spans of chamber conditions, on any substrate, at a variety of pretreatment conditions. By Applicant’s own admission (pg 7 of 2/4/26 remarks): “It should be noted that it is widely known to one of ordinary skill in the art that PECVD is a complex process, and a variety of plasmas are generated from reaction raw material and deposit to form the film layer during the PECVD process. Different process parameters and different reaction raw materials generate different chemical species and plasmas, and different chemical species and plasmas deposit under different kinetics in different PECVD process with different parameters, leading to distinct properties of the formed film layer.” Thus there is no adequate basis for reasonably concluding that an essentially infinite number and variety of compositions / materials / conditions and their particular combinations, encompassed by the claim, all necessarily achieve the same resulting post-tested contact angle as the one unique combination tested, thus it would require undue experimentation to obtain particular compositions / materials / conditions and their particular combinations to practice the claimed invention.
The other dependent claims do not cure the defects of the claims from which they depend.
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 1-2, 4, 7, and 10-14 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.
Claim 1 recites the limitation "during both a high temperature / high humidity test and a salt spray test". The terms “high temperature”, “high humidity”, and “salt spray” are relative terms which render the claim indefinite. There is no associated conditions for temperature (> room temp, 50C, 100C, 200C etc?) , relative humidity (> 30%, 50%, 70%, 90%, etc?), salt chemistry (any particular cation / anion pair, in any particular solvent, etc?), salt concentration (> 1%, 5%. 25%, 50%, etc?), pressure (>1g/cm2, 10, 100, etc?), setup (particular chamber, nozzle structure, relative orientation of surface to apparatus, etc?), etc, to conduct such tests therefore the present claim scope is indefinite. For purposes of examination the limitation will be interpreted as at least inclusive of any such combination of testing conditions.
The other dependent claims do not cure the defects of the claims from which they depend.
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.
Claim(s) 1-2, 4, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capron et al (US 2008/0199657; hereafter Capron) in view of Lee et al (US 6,051,321; hereafter Lee) and Omori et al (US 5,087,959; hereafter Omori).
Claim 1: Capron teaches a method for preparing a super-hydrophobic film layer (see, for example, abstract, claims, [0001-0003]), comprising:
introducing a a non-fluorinated and non-aryl-containing siloxane monomer serving as a reaction raw material into a PECVD coating device to form a super-hydrophobic film layer on a surface of a substrate by a plasma enhanced chemical vapor deposition (see, for example, abstract, [0035] [0052-0053], such as dimethyltetrasiloxane,).
Capron further teaches wherein a water contact angle of the super-hydrophobic film layer is greater than 150° (see, for example, [0003]).
Capron further teaches wherein at least one of the materials constituting the product may be heat-sensitive, undergoing deformation or change in nature during high temperature rise, therefore Capron teaches its method does not require heating at such temperatures, allowing for producing a product from any type of substrate, whether heat-sensitive or not, further teaching an exemplary substrate as PMMA with a deformation limit temperature of about 110oC (see, for example, [0028], [0060]). Although such a teaching is not explicitly performing the processing at room temperature, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated forming the super-hydrophobic film layer at room temperature since there is explicitly teaching that production can be achieved from “any type of substrate”, suggesting that substrates with deformation temperatures around room temperature are included, and since exemplary materials with a limit temperature of about 110oC would additionally suggest that processing would have be at temperatures below 110oC in order to avoid deformation, thus overlapping the claimed range: in the case where the 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, 191USPQ 90 (CCPA 1976).
Capron teaches the method above, but does not explicitly teach an ICP source as the plasma source. Lee teaches a method PECVD applying high hydrophobic layers from siloxane precursors (See, for example, abstract, col 2 lines 18-58, claim 35). Lee further teaches a variety of known and compatible plasma sources for performing such PECVD, and further teaches wherein ICP sources predictably function to achieve high density plasma (See, for example, Fig 4-9, Col 19 lines 40-68). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an ICP source as a plasma source since it performs predictably in PECVD deposition of high hydrophobic siloxane based films, and further at higher plasma density.
Capron in view of Lee teaches the method above, and Capron and Lee both further teach applying a bias voltage to a chamber of the PECVD coating device and placement of the substrate in the chamber (see, for example, Fig 6-10, col 15 lines 40-52, and col 20 lines 37-49 of Lee, and [0044], [0046], [0048], [0052] of Capron).
Capron in view of Lee teach the method above wherein Lee had taught an ICP source (see above). Capron further teaches formation of the super-hydrophobic film layer on the surface of the substrate placed in the chamber by introducing a vapor of a siloxane monomer and an inert gas (helium), wherein a flow rate of the inert (helium) gas is 500 ml/min (500 sccm) (see, for example, [0041-0043], [0052]. And Lee further teaches suitable ICP plasma source power as from about 100W to 4000W, with a pumped vacuum of 0.01 mTorr to 10mTorr ( 0.00133 to 1.333 Pascal) (see, for example, col 19 lines 40-col 20 line 1). And additionally teaches wherein the plasma variables used to control the physical and chemical nature of the deposited polymer film include: excitation power in Watts (W), flow rate (F) of the monomer(s), deposition pressure (P), substrate bias (V.sub.s), the flow rates of the feed gas and/or monomer(s); wherein all of these factors have effects on the types and properties of the deposited film (see, for example, col 15 lines 40-51). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a flow rate of siloxane monomer and inert gas, a bias voltage, a power, and a vacuum degree within the claimed ranges since in the case where the 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, 191USPQ 90 (CCPA 1976) and “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Capron further teaches introducing an inert gas (argon or helium) and turning on a plasma discharge to bombard the surface of the substrate with plasma before forming the super-hydrophobic film layer (See, for example, [0048]) .
Capron in view of Lee teaches the method above, wherein Lee had taught an ICP source (see above). Capron further teaches wherein all processes are conducted within the same PECVD chamber (See, for example, [0035]); therefore with respect to the combination with Lee, the plasma bombardment would similarly be conducted using the ICP power source as described in the rejection of claim 1 above. Capron further teaches application of inert (argon or helium) gas for the plasma and conducting under vacuum (see, for example, [0048]. And Lee further teaches suitable ICP plasma source power as from about 100W to 4000W, with a pumped vacuum of 0.01 mTorr to 10mTorr ( 0.00133 to 1.333 Pascal) (see, for example, col 19 lines 40-col 20 line 1). Lee additionally teaches excitation power in Watts (W), chamber pressure (P), substrate bias (V.sub.s), the flow rates of the gas; are all known variables influencing the resulting film (see, for example, col 15 lines 40-51). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a bias voltage, a power, and chamber vacuum degree within the claimed ranges for the plasma bombardment since in the case where the 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, 191USPQ 90 (CCPA 1976) and “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Capron in view of Lee do not explicitly teach wherein prior to bombardment / prior to introduction of the inert gas for bombardment, pumping the chamber of the PECVD to a vacuum degree of not greater than 1x10-1 Pa wherein the substrate is placed in the chamber. Omori teaches a method of plasma cleaning and subsequent vacuum deposition of silicon containing films (See, for example, abstract, col 4 line 60 – col 5 line 60). Omori further teaches wherein upon insertion of the sample into the sealed processing chamber it should be pumped down to 1x10-7 Torr and held for ~10 minutes to effective remove any residual contaminants like water vapor and oxygen that would be detrimental to subsequently conducted processing (See, for example, 45-60). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated pumping the chamber of the PECVD to a vacuum degree of 1x10-7 Torr upon sample insertion and prior to subsequent processing since such a treatment would predictably remove any residual contaminants that would be detrimental to further processing.
The remaining limitation of “the water contact angle of the super-hydrophobic film layer remains greater than 140o at 168 hours during both a high temperature / high humidity test and a salt spray test does not require that such testing actually is performed, but rather appears intended to define a particular material property that results from the claimed process. As the prior art have obviated the claimed materials and method that form the claimed super-hydrophobic film layer, such a layer would inherently possess the same resulting properties as those achieved by Applicant. 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). Additionally / alternatively, as the particular conditions of high temperature / high humidity test and a salt spray test are not provided, the examiner further asserts that the water contact angle of the super-hydrophobic film layer of the prior art would remain greater than 140o at 168 hours during both such test when each test is conducted under conditions that would allow such properties to be achieved.
Claim 2: Capron further teaches that alternative method cause loss in transparency due to excessive roughness (See, for example, [0011]). Capron further teaches wherein its inventive method overcomes this deficiency and preserves transparency of the substrate (see, for example, [0016], [0025], [0029], [0034] [0062]). Capron is silent as to a quantification in a difference in light transmission, but for sake of argument that if the teaching of preservation of the original transparency would not already anticipate the claimed range, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a change by no more than 1 % since minimization of any difference would align with the intended purpose of light transmission preservation and since “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 4: Capron further teaches in a process of forming the super-hydrophobic film layer, introducing an inert gas (helium) as an auxiliary gas (See, for example, [0052]).
Claim 10: Capron further teaches wherein the siloxane monomer is a hydrocarbon siloxane compound, and a methyl dangling bond is formed on the surface of the substrate during a reaction process to reduce a surface energy of the surface of the substrate (See, for example, [0052), wherein the siloxane compound is dimethyltetrasiloxane, thus there is dangling methyl groups).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capron in view of Lee and Omori as applied to claim 1 above, and further in view of Zhou.
Claim 7: Capron in view of Lee and Omori teaches the method of claim 1 above, but they do not explicitly teach wherein the substrate is placed on a rotary frame so as to be movable during a coating process. Zhou teaches a method directed to a PECVD chamber and the application of coatings comprising siloxane and silicon containing precursor gases (see, for example, abstract, [0005], [0025]). Zhou further teaches placing the substrate in a PECVD chamber onto a rotary frame to improve deposition uniformity (see, for example, [0021]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated placing the substrate on a rotary frame since it would predictably improve deposition uniformity.
Claim(s) 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Capron in view of Lee and Omori as applied to claim 1 above, and further in view of Han et al (US 2015/0240363; hereafter Han).
Claims 10-14: Capron in view of Lee and Omori teach the method of claim 1 above, wherein Capron has taught application of PECVD siloxane superhydrophobic films, but does not explicitly teach one of the species of claims 11-14. Han similarly teaches a method for preparing a PECVD super-hydrophobic film layer from siloxanes (see, for example, abstract, figures, [0049], [0052], [0060]). Han further teaches wherein suitable precursors for forming such layers include a siloxane monomer / hydrocarbon siloxane compound, further a member selected from the group consisting of hexamethyldisilane (HMDS), trimethylsilane (TMS), tetraethylorthosilicate (TEOS), hexamethyldisiloxane (HMDSO), octamethylcyclotetrasiloxane (OMCTS), and combinations thereof (See, for example, [0052], [0057]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a member selected from the group consisting of hexamethyldisilane (HMDS), trimethylsilane (TMS), tetraethylorthosilicate (TEOS), hexamethyldisiloxane (HMDSO), octamethylcyclotetrasiloxane (OMCTS), and combinations thereof, as the siloxane since such siloxanes perform predictable as siloxane precursors for PECVD super-hydrophobic siloxane films.
Response to Arguments
As the previous 35 USC 103 rejections over Han in view of Lee did not adequately teach the content of previous claims 8-9, Applicant’s amendments incorporating such content into claim 1, filed 2/4/26, has been fully considered and are persuasive. Therefore this rejection has been withdrawn.
In response to applicant's arguments (pg 6-8) against the references individually (“Lee discloses... fluorinated aromatic precursors,” “the reaction raw material…layer…and process for forming the film layer in current claim 1 are different than in Lee”, “Lee fails to teach such hydrophobic stability of the super-hydrophobic film layer…”), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is over a combination of references, not Lee alone. Lee is only relied upon a secondary reference, wherein teachings in each primary reference (Capron) have been relied upon for addressing the argued deficient teachings (See the rejections above wherein Capron have addressed limitations of super-hydrophobic film and non-fluorinated precursors), and as the combination has obviated the steps and materials to forming the super-hydrophobic film, the same resulting properties of the film would inherently exist and / or requisite testing conditions could be implemented to achieve such resulting properties.
With respect to Applicant’s arguments that its film layer exhibits unexpected results. The examiner notes that as presently claimed, claim 1 is however open to any non-fluorinated and non-aryl containing siloxane monomer, any inert gas, at spans of flow rates, over spans of chamber conditions, on any substrate, at a variety of ranged pretreatment conditions. Further, the claim terms “high temperature / high humidity test” and “a salt spray test” are presently not bound to any particular conditions (relative humidity, temperature, pressure, salt chemistry, salt concentration, etc). There appears only data from a singular embodiment tested (from Fig 4, Fig 6, “embodiment one” [0086-95]) that achieves the requisite properties. This embodiment, unlike the claims, is drawn to singular testing conditions: “85° C, 85%RH” and “5% NaCl solution, 35° C., 1 Kg/cm2” and singular materials and various system conditions: substrate (glass sheet), pretreatment conditions (see [0090]), a singular coating chemistry (HMDS monomer at a flow rate of 200 uL/min, argon gas at a flow rate of 100 sccm), deposition conditions (a vacuum degree at 6 Pa, a bias voltage of 600 V, an ICP power at 800 W, and the coating duration time was 300 s). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). In light data from only a single embodiment being provided, Applicant has not established unexpected results over the various claimed ranges / conditions. Further, by Applicant’s own admission (pg 7 of 2/4/26 remarks): “It should be noted that it is widely known to one of ordinary skill in the art that PECVD is a complex process, and a variety of plasmas are generated from reaction raw material and deposit to form the film layer during the PECVD process. Different process parameters and different reaction raw materials generate different chemical species and plasmas, and different chemical species and plasmas deposit under different kinetics in different PECVD process with different parameters, leading to distinct properties of the formed film layer.” Thus, there is no adequate basis for reasonably concluding that an essentially infinite number and variety of compositions / materials / conditions and their particular combinations encompassed by the claim would all necessarily achieve the argued unexpected results as the one unique combination tested. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712