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 1–3 and 10–17, in the reply filed on 11/11/2025 is acknowledged.
Claims 4–9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/11/2025.
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.
Claim 17 is 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 Claim 17 is indefinite as it depends from a withdrawn claim.
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) 1–3, 10, 11, and 15–17 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (US 2021/0206999 A1) in view of Schwartz (US 2009/0028792 A1).
Ueno teaches the formation of superhydrophobic coatings comprising metal compound nanoparticles and hydrophobic polymers dispersed in an organic solvent (e.g., toluene) that provide a damage tolerant superhydrophobic capability, wherein the metal compounds include rare earth metal (e.g., lanthanum) phosphate salt. Ueno abstract, ¶¶ 28, 31, 50. A hydrophobic polymer that may be used in the coating includes polystyrene. Id. ¶ 17. The coating may be used in a variety of different processes in applying the coating to untreated surfaces, such as airplane wings and helicopter blades, to create water resistant materials. Id. ¶¶ 2, 53.
Ueno fails to teach the use of an organic phosphonic acid along with a phosphate salt of a lanthanide element.
Schwartz teaches a composite material comprising a phosphate salt of a lanthanide host particle coated with an organic phosphonic acid layer. Schwartz abstract, ¶¶ 7–10. The organic phosphonic acid coating is selected from linear or branched alkyl or aryl phosphonic acids, wherein the alkyl phosphonic acid preferably contains from two to about 20 carbon atoms. Id. ¶¶ 12, 14, 65. The coating serves to stabilize the particles for dispersion in solvents. Id. ¶ 3. The host particles may be used in printing inks, wherein the particles are dispersed within organic solvents such as methanol, ethanol, etc. Id. ¶¶ 21, 46, 58.
It would have been obvious to one of ordinary skill in the art to have modified the lanthanum phosphate salt particles of Ueno with the organic phosphonic acid coating of Schwartz motivated by the desire to make the particles easier to disperse. See Schwartz ¶¶ 3, 16. The relative weights of the host particle of Schwartz and its coating layer is a result-effective variable affecting the degree to which the particle’s hydrophilicity (or hydrophobicity) is modified to improve dispersibility. See id. ¶ 16. Consequently, absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed ratio range, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Claim 11 is rejected as the polystyrene polymer may be present along with the Ueno particles as the claimed weight ratio. See Ueno ¶ 11.
As set forth above, the coating of Ueno is applied to the surface of airplane wings or helicopter blades. Claim 15 is rejected as one of ordinary skill in the art would have obviously recognized that that airplane wings or helicopter blades of Ueno are made out of wood, plastic, metal, cloth, and/or paper because those materials have been used extensively throughout the history of aviation to make wings and blades. The R-groups used in the organic phosphonic acid layer may be substituted with functional groups depending on the extent to which the coating is intended to increase or decrease hydrophilicity. Schwartz ¶ 16. Ueno teaches that fluorine, a halogen, is used to make compositions hydrophobic. Ueno ¶¶ 41, 46–47. As such, it would have been obvious to the ordinarily skilled artisan to have substituted at least one of the aryl groups in the organic phosphonic acid layer with fluorine to make the coating more hydrophobic motivated by the desire to make the superhydrophobic coating more hydrophobic.
Claim(s) 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno and Schwartz as applied to claim 10 above, and further in view of Feldmann (US 2011/0198538 A1).
Ueno and Schwartz fail to teach that the use of a coloring agent and a fluorescent additive.
Feldmann teaches the use of organic fluorescent dye, wherein the dye is used to coat paper, polymer, or metal substrates to make them more easily visible. Feldmann abstract, ¶¶ 4, 47–48.
It would have been obvious to one of ordinary skill in the art to have modified the coating of Ueno with the organic fluorescent dye of Feldmann to make the coated surface more visible.
The relative weights of the fluorescent additive and the Ueno coating is a result-effective variable affecting the degree to which the coating fluoresces. See Feldmann ¶¶ 3–5. Consequently, absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed ratio range, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Claim Objections
Claim 13 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D MATZEK whose telephone number is (571)272-5732. The examiner can normally be reached M-F 9:30-6.
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/MATTHEW D MATZEK/Primary Examiner, Art Unit 1786