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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I, claims 1-8, drawn to sol-gel particles, classified in C01B33/142.
Group II, claims 9-17, drawn to a method for producing sol-gel particles, classified in B01J/20/00.
Group III, claims 18-20, drawn to a system for producing sol-gel particles, classified in B05D2518/12.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case process as claimed can be used to make another and materially different product such as aluminum- or titanium-based porous colloidal networks.
Inventions I and III are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another and materially different apparatus (MPEP § 806.05(g)). In this case the product as claimed can be made by another and materially different apparatus such as in a stirred vessel or a hydrothermal reactor.
Inventions II and III are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the different inventions are related to producing sol-gel particles (invention II) and dispensing sol-gel precursor solution (invention III). However the process of invention II prepares sol-gel particles, while the apparatus of invention III discloses dispensing a sol-gel precursor solution. The process of invention II has a different effect from the apparatus of invention III, as the process of invention II produces sol-gel particles, while the apparatus of invention III is dispensing a sol-gel precursor solution to a print surface.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144.
If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other inventions.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Katherine Hamer (801-532-1922; 2939-16693) on 3 February 2025 a provisional election was made without traverse to prosecute the invention of group II, claims 9-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8 and 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-11, 13-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zitnan et al. (Int. J. of Appl. Glass. Sci. 2021, 13, 135-142).
Regarding claim 9, Zitnan teaches a process of preparing sol-gel nanoparticles that are deposited on surfaces (Abstract; Pg. 135, Introduction).
Zitnan teaches the sol-gel is prepared from tetraethyl orthosilicate, solvents of ethanol and water, nitric acid, and aluminum nitrate that are mixed (Pg. 136, 2.1 Sol-gel synthesis of aluminosilicate). Tetraethyl orthosilicate is a sol-gel precursor and outlined as such in the instant specification in [0033]). Water and ethanol are solvents and are outlined as such in the instant specification in at least [0032]. Aluminum is a dopant and is outlined as such in the instant specification in at least [0038]-[0039].
Zitnan teaches the prepared sol-gel is used as an ink to coat substrates (Pg. 136, 2.2 Printer Modification; Figure 3). A print surface is interpreted to include a surface from at least [0043] of the instant specification and accordingly depositing the sol-gel ink of Zitnan onto a substrate is equivalent to the instantly claimed “print surface.”
Zitnan teaches the ink formulation was adjusted to control evaporation of the solvents in the ink during and after deposition (Pg. 137, 3.1 Design of the ink). Zitnan teaches that the prepared sol-gel used for printing is a homogenous mixture with a high homogeneity of aluminum-silicon bonding and that after the ink was deposited on the surface the sol was allowed to dry (Pg. 136, left col.; Pg. 3.2 Printing performance; Pg. 138, 3.3 Sintering of printed structures). Zitnan teaching the ink evaporates during and after deposition would result in loss of “at least a portion of the solvent” and meet the limitation required by the claim.
Zitnan teaches the deposited sol-gel can be delaminated from the substrate (i.e. removed from the substrate) (Pg. 139, left and right col.).
Regarding claim 10, Zitnan teaches the sol-gel is prepared from tetraethyl orthosilicate, solvents of ethanol and water, nitric acid, and aluminum nitrate that are mixed (Pg. 136, 2.1 Sol-gel synthesis of aluminosilicate). Tetraethyl orthosilicate is a sol-gel precursor and outlined as such in the instant specification in [0033]). Water and ethanol are solvents and are outlined as such in the instant specification in at least [0032]. Aluminum is a dopant and is outlined as such in the instant specification in at least [0038]-[0039].
Regarding claim 11, Zitnan teaches the sol-gel is printed on the surface as droplets (Pg. 138, 3.2 Printing Performance).
Regarding claim 13, Zitnan teaches the droplets can be dropped on the substrate to form a stable line that is continuous (Pg. 138, 3.2 Printing Performance; Figure 3 (C); Figure 5 (B)).
Regarding claim 14, Zitnan teaches the droplets can be dispensed as droplets in a line that undergo evaporation to provide isolated drops (Pg. 138, 3.2 Printing Performance; Figure 3 (A))
Regarding claim 16, Zitnan teaches the sol-gel ink solution is prepared by a batch process in that an ink sol-gel sample is prepared from the synthesis (Pg. 136, 2.1 Sol-gel Synthesis of aluminosilicate).
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zitnan et al. (Int. J. of Appl. Glass. Sci. 2021, 13, 135-142) in view of Taurino et al. (J. Col. and Int. Sci. 2008, 325, 149-156).
Regarding claim 12, Zitnan anticipates the method of claim 9 and the claim further requires dispensing the sol-gel “onto a hydrophobic print surface” to which Zitnan is silent.
Taurino teaches the preparation of organic-inorganic hybrid coatings prepared with sol-gel particles (Abstract; Pg. 150, left and right col.). Taurino teaches the sol-gel is deposited onto a hydrophobic surface, where the hydrophobic surface is glass treated with a fluorinated perfluoropolyether oligomer that provides the hydrophobic surface (Pg. 150, left col.; Pg. 153, 3.3; Table 3).
Advantageously, providing a hydrophobic layer to deposit the sol-gel on leads to improved wetting properties and allows for droplet formation on the surface without the droplets penetrating into the grooves of a rough surface (Pg. 149-150, 1. Introduction; Pg. 153, 3.3. Surface wettability-contact angle measurements).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a hydrophobic surface to deposit the sol-gel onto in the method of Zitnan in order to improve wetting properties and allow for droplet formation to occur without droplets penetrating grooves in the surface, as taught by Taurino.
Regarding claim 15, Zitnan anticipates the method of claim 9 and the claim further requires removing at least a portion of the at least one solvent “comprises forming sol-gel particles exhibiting a contact angle with the print surface of from about 120 degrees to about 160 degrees” to which Zitnan is silent.
Taurino teaches depositing a sol-gel onto a hydrophobic surface and measuring the contact angle of the droplets formed, where the contact angle of the sol-gel deposited on the hydrophobic surface display contact angles in the ranges of 155-157° and 151-155° (Table 3; Pg. 153, 3.3. Surface wettability-contact angle measurements; Pg. 151, 2.3. Characterization). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Taurino (contact angles in the ranges of 155-157° and 151-155°) overlaps with the claimed range (contact angle of about 120 degrees to about 160 degrees). Therefore, the range in Taurino renders obvious the claimed range.
Advantageously, sol-gel particles displaying contact angles within the taught range display superhydrophobic behavior with low contact angle hysteresis and no pinning effects being detected (Pg. 155, 5. Conclusion). Achieving a low contact angle hysteresis provides for suspended drops on a surface to roll off without perturbation, making them useful in water-repellant and self-cleaning coatings and materials (Pg. 149, Introduction).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a contact angle between 151-157 ° in the method of Zitnan in order to provide a superhydrophobic coating displaying low contact angle hysteresis that is useful in water repellant and self-cleaning applications, as taught by Taurino.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Zitnan et al. (Int. J. of Appl. Glass. Sci. 2021, 13, 135-142).
Regarding claim 17, Zitnan anticipates the method of claim 9 and the claim further requires the sol-gel particles are prepared in by a “continuous process” where Zitnan teaches a batchwise process.
While Ztinan does not explicitly describe a continuous process, claimed continuous processes have been held as obvious in light of a batch process taught in the prior art. Accordingly, the batchwise process of preparing sol-gel particles of Zitnan would render the claimed continuous process obvious. See MPEP 2144.04.V.E.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Xiao et al. (US20220009124A1); Xiao teaches a method of preparing a sol-gel that is deposited in droplets in a line (Abstract; Example 16, [0547]-[0558]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JORDAN W TAYLOR/Examiner, Art Unit 1738