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 .
Preliminary Amendment
The preliminary amendment filed on September 18, 2023 has been entered. Claims 1-3, 5, 6, 8, 11, 15, 17, 19, 20, 22, 25, 27, 29, 32, and 37-39 are pending.
Election/Restrictions
Applicant’s election without traverse of Group II (claims 19, 20, 22, 25, 27, 29, and 32) in the reply filed on March 01, 2026 is acknowledged. Claims 1-3, 5, 6, 8, 11, 15, 17, and 37-39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Objections
Claims 22 and 32 are objected to because of the following informalities.
In claim 22, line 13, the acronym PDMS should be spelled out.
In claim 32, line 4, after the term “100%” the terms “or a” should be inserted.
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.
Claims 22 and 29 are 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.
Regarding claim 22, the Markush group in lines 10 and 11 is improper. Specifically, the use of the terms “comprising” (line 10) and “or” (line 11) are improper. See MPEP 2117 and MPEP 2173.05(h). Additionally, in claim 22, PDMS is stated to be an optional component (line 13); however, there is a claimed ratio of PDMS to non-fluorinated nanoparticles (lines 13 and 14), which infers that PDMS is not an optional component. Thus, the claim is unclear as to whether a PDMS silicone polymer is required in this claim.
Regarding claim 29, the phrase “compared to a control” is indefinite because the control is not defined. Thus, the metes and bounds of this claim are not clearly set forth. Note that the specification only defines this phrase with exemplary language, i.e., “e.g.” (see [0198]).
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.
Claims 19, 22, 25, 27, 29, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guan et al. (ACS Applied Polymer Materials).
Regarding claim 19, Guan discloses an article comprising a substrate having a coating containing a plurality of microstructures. The microstructures are non-fluorinated nanoparticles in contact with a silicone-based polymer. The nanoparticles are chemically modified metal oxide nanoparticles. See Figure 2 and page D, Fabrication and Mechanism of Super-Hydrophobic-Oleophilic PDMS-PBA Foams section.
Regarding claim 22, Guan discloses that the modified nanoparticle includes a substituent included in the Markush group (Figure 2a) and a PDMS silicone polymer. Guan discloses examples, i.e., S3 and S4 , wherein the ratio of PDMS to non-fluorinated nanoparticles is within the claimed range (Table 1).
Regarding claim 25, Guan discloses particles having one of the shapes of the claimed Markush group, i.e., a hollow sphere and quasi-sphere (Figures 1 and 2).
Regarding claim 27, Guan discloses that the substrate can be a polymeric foam, i.e., PBA foam (Figure 2).
Regarding claim 29, Guan discloses that the coating forms a superhydrophobic surface on the substrate due to the synergistic effect between the PBA, silica nanoparticles, and PDMS (pg E, Hydrophobicity and Self-Cleaning Properties section). It is well known in the art that superhydrophobic surfaces inherently exhibit anti-microbial properties.
Regarding claim 32, Guan discloses that the coating has a water contact angle of 160ᵒ (page H, Conclusions section).
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Guan et al. (ACS Applied Polymer Materials).
Guan does not specifically disclose that the coating layer has a substantially uniform thickness, although Figure 2 seems to imply that the coating layer is substantially uniform. However, it would have been obvious to one of ordinary skill in the art to have provided a coating layer having a substantially uniform thickness to the substrate of Guan, motivated by the desire to obtain a coated article having the same properties, such as superhydrophobic properties, across the entire substrate surface.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781