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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/6/26 has been entered.
Response to Amendment
Amendments to the claims, filed on 2/6/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 21-34, 36, 37, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Rothman (US 2014/0339172 A1) in view of Aizenberg et al (US 2017/0015835 A1).
Regarding claims 21-25 and 28, Rothman teaches a mining apparatus for collecting mineral particles in a slurry that has a substrate (e.g., impeller) comprising polymer-coated material having a functional group or a synthetic material that has hydrophobic molecules to render the collection area hydrophobic (i.e., a mining apparatus for separating and recovering minerals of interest from an aqueous slurry forming part of a mining operation, comprising mineral collection media having a substrate arranged to contact an aqueous slurry and a polymeric coating disposed on the substrate, the aqueous slurry containing minerals and unwanted materials, the polymeric coating comprising a compliant and tacky surface and further comprising a chemical to render the compliant and tacky surface hydrophobic so as to attract the hydrophobic or hydrophobized mineral particles) (abstract). Rothman further teaches the polymer may comprise polyurethane, polyisoprene, or polydimethylsiloxane, be reacted with cationic functionality and/or treated with fluoroalkylsilane (i.e., fluorinated additive and/or fluorinated functionalities) or a siloxane derivative (abstract, para 23-25)
Rothman fails to teach the surface having a micro-scale surface roughness structure with a scale range between 1 nanometer to 10 micrometer. However, Rothman teaches its embodiments can be used in non-mining applications, such as water-pollution control and water purification (para 119, 121, 137).
Aizenberg teaches slippery surfaces that may be used for filtration of minerals in water wherein the slippery surface is heat-resistant, shear-resistant, and self-repairing; wherein the slippery surface comprises a roughened surface; wherein the roughened surface can be selected from fluorosilanized polymers and Liquid B (i.e., chemical) can be selected from perfluoropolyether; wherein the roughened surface/Liquid B combinations are teflon/perfluoropolyether; roughened silicone elastomer and liquid polydimethylsiloxane, as well as roughened polypropylene and liquid polydimethylsiloxane or perfluoropolyether (para 336-339). Aizenberg further teaches it surfaces may be hydrophobic and have a micro-scale roughness with topological features or raised structures of a few nanometers to hundreds of nanometers in size which lies within the range of the instant claims (para 126, 152).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the micro-scale roughened hydrophobic surfaces of Aizenberg with the hydrophobic surface of the mining apparatus of Rothman as a matter of design choice suggested by the prior art at the time of invention. Further motivation is given by the mining apparatus of Rothman being modified to be a hydrophobic surface that is heat-resistant, shear-resistant, and self-repairing.
Regarding claims 26 and 27, it would have been obvious to one of ordinary skill in the art to adjust the thickness of the polymer coating so as to be thick enough to properly provide the roughened surface as well as have the necessary physical attributes (impact and tear strength, abrasion and wear resistance, etc…) required for said surface.
Rothman as modified by Aizenberg suggests the polymer coating and treatment composition and structure of that of the instant claims and therein the compliant and tacky surface of that of the instant claims, so the surface is deemed to have a tacky scale as measured by loop track against polished stainless steel using PSTC-16 Method A with loop tack in a range of 5 to 600 grams-force.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Regarding claims 29 and 34, Aizenberg teaches the roughened surface may comprise particles and further comprise silica or PTFE, which would have suggested or otherwise rendered obvious to the skilled artisan the micro-scale surface roughness structures comprises hydrophobic particles having a particle size in said scale range wherein the particles are made of silica or PTFE (para 14, 150).
Regarding claims 30-33, the limitations of the instant claims are product by process limitations and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in the instant claims and the product of Rothman as modified by Aizenberg. However, Aizenberg suggests the raised structures can be produced by any known method; and comprise raised posts of a variety of cross-sections, including, but not limited to, circles, ellipses, or polygons (such as triangles, squares, pentagons, hexagons, octagons, and the like), forming cylindrical, pyramidal, conical or prismatic columns (para 154-155).
Regarding claims 36 and 39, Rothman teaches the apparatus may take the form of a filter, a conveyor belt, an impeller, or honeycomb and mesh structures (i.e., substrates) or a glass panel (i.e., solid structure made of glass) (abstract, para 117, 124).
Regarding claim 37, the use of “can” renders the limitations of the instant claim optional and therefore need not be taught by the prior art of record.
Regarding claim 40, the limitations of the instant claim appear to be future use limitations that do not add structure to the mining apparatus of claim 21.
Claims 35 and 38 rejected under 35 U.S.C. 103 as being unpatentable over Rothman and Aizenberg as applied to claim 1 above, and further in view of Chang et al (US 6,103,645 A).
Rothman as modified by Aizenberg suggests the mining apparatus of claim 21.
Rothman as modified by Aizenberg fails to suggest the substrate comprises an open-cell foam made from a material selected from the group consisting of silicone, polyurethane, polychloroprene, polyisocyanurate, polystyrene, polyolefin, polyvinylchloride, epoxy, latex, fluoropolymer, phenolic, EPDM, and nitrile; and wherein the substrate comprises a three-dimensional open cellular structure made of plastic. However, Rothman teaches its embodiments can be used in non-mining applications, such as water-pollution control and water purification (para 119, 121, 137); and, Aizenberg suggests is surfaces may be used in filters and manufactured with or used with metallic substrates such as open-cell metallic foam (i.e., open-cell foam) (para 181, 336-337).
Chang teaches filters for water filtration that may comprise an open-cell foam substrate (i.e., three-dimensional cellular structure; wherein the foam may comprise vinyl chloride (i.e., polyvinyl chloride or a plastic) (col 1, lines 49-55, col 3, lines 9-25, col 4, lines 17-24); wherein the foams possess high porosities, low densities, small pore size, and uniform properties especially suitable for use as a filter material (col 8, lines 64-66).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the open-cell foam substrate of Chang with the hydrophobic surface of the apparatus of Rothman as modified by Aizenberg as a matter of design choice suggested by the prior art at the time of invention. Further motivation is given by the mining apparatus of as modified by Aizenberg being modified to have a foam substrate that possesses high porosities, low densities, small pore size, and uniform properties.
Claims 41 and 42 rejected under 35 U.S.C. 103 as being unpatentable over Rothman and Aizenberg as applied to claim 1 above, and further in view of Parkin et al (US 2018/0318877 A1).
Regarding claim 41, Rothman as modified by Aizenberg suggests the mining apparatus of claim 21.
Rothman as modified by Aizenberg fails to suggest wherein the hydrophobicity of the polymer coating and the micro-scale surface roughness structure is configured to provide the polymeric coating with a contact angle Θc defined by Young's equation above 150° and enhanced hydrophobicity, the contact angle 9c being as an angle measured through a liquid water droplet on a flat surface made of the polymeric coating being measured. where a liquid-vapor (ΥLG) interface meets the flat surface of the polymeric coating being measured.
Parkin teaches an article at least partially covered with a coating defining a slippery surface, the coating comprising a layer of a composite particulate material bound to said article and a substantially immobilised lubricant at least partially covering and penetrating into said layer of composite particulate material, wherein the composite particulate material comprises a carrier particle at least partially coated with a hydrophobic material; wherein the slippery surface is technically equivalent to slippery liquid infused porous surfaces (SLIPS) (para 2, 7, 8). Parkin further teaches it coatings are more durable and robust than existing SLIPS, e.g., the coatings maintain at least some of their properties, even after being exposed to relatively harsh conditions, such as high temperatures, impacts and abrasions (para 89).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the slippery surfaces of Parkin with the SLIPS surfaces of Rothman as modified by Aizenberg, since it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I). This combination comes with the additional motivation of a SLIPS that is more durable and robust.
Regarding the limitation “wherein the hydrophobicity of the polymer coating and the micro-scale surface roughness structure is configured to provide the polymeric coating with a contact angle Θc defined by Young's equation above 150° and enhanced hydrophobicity, the contact angle 9c being as an angle measured through a liquid water droplet on a flat surface made of the polymeric coating being measured. where a liquid-vapor (ΥLG) interface meets the flat surface of the polymeric coating being measured;” Parkin teaches water contacting a superhydrophobic surface will form droplets that have contact angles of at least 150 degrees; and water and oily liquids contacting the slippery surface defined by its coatings may form droplets which have a contact angle of from about 50 to about 150 degrees (para 57-58) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention contact angles slightly greater than 150 degrees. This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Parkin, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Furthermore, Parkin teaches prior to the application of the lubricant, the layer of composite particulate material can have a contact angle of between about 150 and about 180 degrees; so the final contact angle of the coating is dependent upon the lubricant. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the composition of the lubricant to optimize the final contact angle of the coating; therein arriving at a coating wherein the hydrophobicity of the polymer coating and the micro-scale surface roughness structure is configured to provide the polymeric coating with a contact angle ϴc above 150° and enhanced hydrophobicity.
Regarding claim 42, Aizenberg teaches the roughened surface may comprise particles and further comprise silica or PTFE (para 14, 150), which would have suggested or otherwise rendered obvious to the skilled artisan the micro-scale surface roughness structures comprises hydrophobic particles having a particle size in said scale range. In addition, Parkin teaches its coating comprises particles (para 9-15) which would have suggested or otherwise rendered obvious to the skilled artisan the micro-scale surface roughness structures comprises hydrophobic particles having a particle size in said scale range.
Response to Arguments
Applicant's arguments filed 2/6/26 have been fully considered but they are not persuasive.
Applicant contends that using Aizenberg’s roughened microsurface with or without its lubricating fluid would likely result in a repelling surface, which is contrary to the whole thrust of the claimed invention. This is not persuasive.
Aizenberg teaches that that a liquid may be selected that attracts contaminants (para 308). The Applicant is reminded when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named (MPEP § 2131.02 II).
Furthermore, Rothman suggests the use of a hydrophobic surface (abstract); and Aizenberg is relied upon for teaching surfaces may be hydrophobic and have a micro-scale roughness with topological features or raised structures of a few nanometers to hundreds of nanometers in size which lies within the range of the instant claims (para 126, 152).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the micro-scale roughened hydrophobic surfaces of Aizenberg with the hydrophobic surface of the mining apparatus of Rothman as a matter of design choice suggested by the prior art at the time of invention. The topological features or raised structures of Aizenberg re simply adding to the hydrophobic surface as taught by Rothman.
In response to applicant's arguments against the references individually, 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).
Regarding claim 41, Rothman as modified by Aizenberg suggests the mining apparatus of claim 21.
Rothman as modified by Aizenberg fails to suggest wherein the hydrophobicity of the polymer coating and the micro-scale surface roughness structure is configured to provide the polymeric coating with a contact angle Θc defined by Young's equation above 150° and enhanced hydrophobicity, the contact angle 9c being as an angle measured through a liquid water droplet on a flat surface made of the polymeric coating being measured. where a liquid-vapor (ΥLG) interface meets the flat surface of the polymeric coating being measured.
Parkin teaches an article at least partially covered with a coating defining a slippery surface, the coating comprising a layer of a composite particulate material bound to said article and a substantially immobilised lubricant at least partially covering and penetrating into said layer of composite particulate material, wherein the composite particulate material comprises a carrier particle at least partially coated with a hydrophobic material; wherein the slippery surface is technically equivalent to slippery liquid infused porous surfaces (SLIPS) (para 2, 7, 8). Parkin further teaches it coatings are more durable and robust than existing SLIPS, e.g., the coatings maintain at least some of their properties, even after being exposed to relatively harsh conditions, such as high temperatures, impacts and abrasions (para 89).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the slippery surfaces of Parkin with the SLIPS surfaces of Rothman as modified by Aizenberg, since it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I). This combination comes with the additional motivation of a SLIPS that is more durable and robust.
Regarding the limitation “wherein the hydrophobicity of the polymer coating and the micro-scale surface roughness structure is configured to provide the polymeric coating with a contact angle Θc defined by Young's equation above 150° and enhanced hydrophobicity, the contact angle 9c being as an angle measured through a liquid water droplet on a flat surface made of the polymeric coating being measured. where a liquid-vapor (ΥLG) interface meets the flat surface of the polymeric coating being measured;” Parkin teaches water contacting a superhydrophobic surface will form droplets that have contact angles of at least 150 degrees; and water and oily liquids contacting the slippery surface defined by its coatings may form droplets which have a contact angle of from about 50 to about 150 degrees (para 57-58) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention contact angles slightly greater than 150 degrees. This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Parkin, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Furthermore, Parkin teaches prior to the application of the lubricant, the layer of composite particulate material can have a contact angle of between about 150 and about 180 degrees; so the final contact angle of the coating is dependent upon the lubricant. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the composition of the lubricant to optimize the final contact angle of the coating; therein arriving at a coating wherein the hydrophobicity of the polymer coating and the micro-scale surface roughness structure is configured to provide the polymeric coating with a contact angle ϴc above 150° and enhanced hydrophobicity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783