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 1-8 in the reply filed on 4 March 2026 is acknowledged.
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4 March 2026.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeong (Jeong, Chanyoung. "A study on functional hydrophobic stainless steel 316L using single-step anodization and a self-assembled monolayer coating to improve corrosion resistance." Coatings 12.3 (2022): 395 published 16 March 2022).
As to claims 1 and 4-6, Jeong discloses A method for forming a corrosion resistant oxide film on a stainless steel surface, the method comprising:
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 sur face, 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).
As to claim 3, Jeong further discloses wherein the anodization treatment electrolyte in the step 2 is a mixture of NH4F, water, and ethylene glycol (pg. 3 Section 2 “A solution containing ethylene glycol (C2H6O2; Junsei Chemical Co., Ltd., Tokyo City, Japan), 0.1 M of distillate, and 0.1 M of ammonium fluoride (NH4F; Junsei Chemical Co., Ltd., Tokyo City, Japan) was used as the electrolyte”).
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 1-8 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 (as required by instant claim 2 [0064]) in an electrolyte of a mixture of NH4F, water, and ethylene glycol (pg. 3 Section 2 “A solution containing ethylene glycol ([0065] as required by instant claim 3).
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).”
Conclusion
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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/LOUIS J RUFO/ Primary Examiner, Art Unit 1795
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