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 .
Status of Amendment
The amendment filed on 15 July 2026 fails to place the application in condition for allowance.
Claims 1 and 6-17 are currently pending.
Claims 1 and 6-8 are currently under examination.
Claims 9-17 are currently withdrawn.
Status of Rejections
The rejection of claims 1 and 3-6 under 35 U.S.C. 102(a)(1) over Jeong is herein withdrawn due to Applicant’s Amendment filed 15 July 2026.
The rejection of claims 1 and 6-8 under 35 U.S.C. 103(a) are herein maintained.
Claim Rejections - 35 USC § 103
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 1 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (US 2023/0183879 A1) in view of Jeong.
As to claims 1-6, Choi discloses a method for forming a corrosion resistant oxide film on a stainless steel surface (Title), the method comprising:
performing anodization treatment at an applied voltage to form an anodized film on the stainless steel surface (step 2) ([0065]); on stainless steel SUS 304 ( [0064]) in an electrolyte of a mixture of NH4F, water, and ethylene glycol (pg. 3 Section 2 “A solution containing ethylene glycol ([0065]).
performing plasma treatment to remove organic residues and make the surface of the anodized film hydrophilic (step 3) ([0066] “Before the PTFE coating, O2 plasma (Harrick plasma) treatment was conducted for 15 min to remove organic residues on the surface.”); and
coating it with a hydrophobic coating agent capable of performing self-assembled monolayer (SAM) coating (Step 4). ([0066] and [0062] using specific FDTS).
Choi fails to explicitly disclose the washing and drying of step 1 conditions of the anodization as instantly claimed
Jeong discloses washing and drying the stainless steel surface (step 1) (pg. 3 Section 2 “Stainless steel (SUS 316L) was cut into 3 cm × 3 cm × 0.05 cm squares to be used in the tests, and its chemical composition is shown in Table 1 [32]. To clean the surface, the test sample was submerged in an ultrasonic cleaner, first with ethanol and then with acetone, for 10 min in each, before drying.”);
performing anodization treatment at an applied voltage of 65 to 75 V for 2.5 to 3.5 hours to form an anodized film on the stainless steel surface (step 2) (pg. 3 Section 2 “The anodization voltage was increased from 30 V to 50, 70, and 90 V, and each voltage was applied to the test sample for a total of 3 h.” thus the test at 70 V for 3 hours reads in the instant limitations of instant claim 1, 4, and 5 as falling within the instantly claimed range);
performing plasma treatment to remove organic residues and make the surface of the anodized film hydrophilic (step 3) (pg. 3 Section 2 “Next, as a precoating process, the surface of the test sample was treated with oxygen plasma to remove any remaining organic residue”); and
coating it with a hydrophobic coating agent capable of performing self-assembled monolayer (SAM) coating (Step 4). (pg. 3 section 2 “The piece was then coated with a self-assembled monolayer by using FDTS” which reads on instant claim 6).
Choi discloses the methos of forming hydrophobic layers on SUS 304 whereas Jeong discloses a similar process in forming hydrophobic layers on SUS 316.
Thus, the prior art discloses a basis process of forming the hydrophobic layers on SUS 304 and a comparable process identical to the instant claims to form hydrophobic layers on SUS 316.
It would have been obvious to one of ordinary skill in the art at the time the invention as filed to have washed and dried the stainless steel substrate as disclosed Jeong on the stainless steel in Choi in order to clean it before treatment in the anodization step (Jeong Section 2 “To clean the surface…”).
It would have been obvious to one of ordinary skill in the art at the time the invention as filed to have applied the testing protocol method of Jeong to form the hydrophobic and corrosion resistant layer in Choi because at 70 V for 3 hours with the FDTS coating leads to larger pores and thus a super hydrophobic effect due to the solid fraction of the surface decreasing (Jeong Conclusions).
As to claims 7 and 8, Choi, as modified by Jeong, perform the same process as instantly claimed on an identical substrate of SUS 304 as claimed and disclosed. Thus, the resultant properties are deemed to be an inherent properties of the as formed coating on the SUS 304 of Choi when the process of Jeong is applied in accordance with MPEP 2112.01 “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).” And MPEP 2112 II “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference.” Furthermore, a showing of inherency is proper when applied to a combination of prior art elements. See MPEP 2112 IV “"[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original).”
Response to Arguments
Applicant's arguments filed 15 July 2026 have been fully considered but they are not persuasive.
Applicant presents arguments towards the combination presented as compared to the instant disclosures. It is first noted that the term “super-hydrophobic” as used in the claims is not afforded any special definition or value within the instant specification. In other words, the broadest reasonable interpretation does not limit the specific value of a contact angle to delineate between “general hydrophobic” and “super-hydrophobic”.
First, it is noted the process performed in Jeong is the same process as instantly claimed with idealized process conditions of 70 V and 3 hours as evidenced by Applicant on pg. 8. The different between Jeong and the instant application is the specific type of stainless steel used, SUS316 vs SUS 304. Choi discloses an identical process as well at voltages around the instant claims 60 and 80V but not an explicit example between 69 and 71 V. Thus, since both Choi and Jeong discloses performing similar processes with the goal to form hydrophilic coatings on stainless steel, the use of Jeong’s method on a different stainless steel material is maintained to be prima facie obvious. Jeong’s method was recognized for increasing the resulting super hydrophobicity after processing (see Conclusions). Jeong equates this effect to air trapped within the pores. Choi also recognizes that the basis of hydrophobicity arises from air trapped in the pores ([0073]). Thus, one of ordinary skill in the art would expect the process of Jeong to result in a super hydrophobic coating when applied to the substrate in Choi.
The criticality of the voltage and treatment time was already displayed in Jeong (See Table 4).
It is therefore maintained to have been prima facie obvious to have used the method of Jeong on different types of stainless steel to produce super-hydrophobic coatings on different types of stainless steel substrates. The result of an increase in the contact angle as a result of forming super-hydrophobic coatings would have been then nature expected result of using a recognized process seeing to increase the contact angles, as disclosed by Jeong.
No further arguments presented.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795
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