DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a Continuation of application No. 17 /325,987, filed on May 20, 2021, now Pat. No. 11,820,914, which is a continuation of application No. 16/540,609, filed on Aug. 14, 2019, now Pat. No. 11,046,853, which is a continuation of application No. 16/185,613, filed on Nov. 9, 2018, now Pat. No. 10,428,222, which is a continuation of application No. PCT/US2018/020724, filed on Mar. 2, 2018.
Acknowledgment is made of Provisional application No. 62/466,008, filed on Mar.
2, 2017.
Claims 27-31, 152-160, 166-171 are pending.
Election/Restrictions
Applicant’s election of Species II in the reply filed on 7/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). While Applicant indicates the elected species include claims 27-31, 152-160 and 170-171, claims 27-31 do not include the elected species, since Species I requires hydrophilic particles and species II requires a liquid immiscible with a contacting phase, an interfacial modifier at least partially disposed in the liquid, the interfacial modifier creating a boundary region between the liquid and contacting phase, and a boundary region having different properties from the liquid and contacting phase, all of which are not present in Species I.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 152-160, 170-171 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. US 11,820,914. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 152-160, 170-171: While US 914 claim 1 further limits the boundary region phase being separate and distinct from the contacting phase and the liquid, claim 1 arrives at claim 1 of the present invention in an anticipatory type manner.
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 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 152-155, 157-160, 166-171 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada et al. (US 2017/0130155).
Regarding claim 152: Okada is directed to an article, comprising:
A base material [substrate] (1)
A liquid disposed on the base material substrate (5) ([0074])
A contacting phase (e.g. mayonnaise or ketchup), the contacting phase immiscible with the liquid ([0024] Okada) and
A boundary region at an interface between the liquid and the contacting phase (see Fig. 3A Fig 3B), the boundary region including an interfacial modifier (7) formulated to modify the rheology of the boundary region when in contact with the contacting phase. Specifically, solid particles (7) are added to the liquid (5) and hence would be expected to modify the rheology of the boundary region when in contact with the contacting phase. Further, a boundary region is located between the liquid and the contacting phase, since particles (7) are located in the lubricating layer (3) between liquid (5) and the contacting phase. See Fig. 3A 3B.
The liquid remains a liquid phase during use of the article ([0074]).
Regarding claim 153: The article comprises a plurality of solid features (7) defining a plurality of regions therebetween and a liquid (5) disposed between the plurality of regions the plurality of solid features containing the liquid in the plurality of regions at equilibrium. Specifically, see Fig. 3A 3B.
Regarding claim 154: A mobile excess layer of liquid is disposed above the plurality of particles. Specifically, see Fig. 3A 3B.
Regarding claim 155: A plurality of solid features are coupled to the substrate. As shown in Fig. 3A particles (7) are in contact with the base material (1).
Regarding claims 157-158: An additive is disposed in the liquid to modify the rheology of the liquid. Specifically, solid particles (7) would be expected by one skilled in the art to increase the rheology of the liquid (5).
Regarding claim 159: The boundary region has a higher yield stress than the contacting phase. Specifically, the yield stress is defined as the applied stress that must exceeded in order to make a structured fluid flow. Given the surface of Okada is a non-stick surface, it is reasonable to conclude the applied stress to the water flow on the surface of the non-stick surface is less than the applied stress that must be exceeded to make the hydrophobic material applied to the surface flow. In other words, a greater force is required to remove the lubricating layer (3) from the substrate base material (1) than water from the non-stick surface.
Regarding claim 160: A liquid is hydrophobic and the contacting phase is hydrophilic. Specifically, the contacting phase is water, and the liquid includes hydrophobic oils such as liquid paraffin or olive oil ([0074]), which is well known in the art to be hydrophobic.
A partition coefficient of the interfacial modifier is not mentioned. However, the coating olefin wax, rice wax, carnauba wax ([0077]) which is the same as the interfacial modifier of the present invention.
Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963).
Hence, the interfacial modifier having a partition coefficient of less than 1 is an inherent property.
Regarding claim 170: Okada is directed to an article comprising:
A substrate
A liquid disposed on the substrate, the liquid being immiscible with a contacting phase. Specifically, a contacting phase of water is immiscible with the coating since it repels water on the surface. An interfacial modifier particles creates a boundary region between the liquid and the contacting phase. Specifically, see Fig. 3A 3B wherein particles form a boundary region on the surface and are partially disposed therein.
The boundary region has a higher yield stress than the contacting phase. Specifically, the yield stress is defined as the applied stress that must exceeded in order to make a structured fluid flow. Given the surface of Okada is a non-stick surface, it is reasonable to conclude the applied stress to the water flow on the surface of the non-stick surface is less than the applied stress that must be exceeded to make the hydrophobic material applied to the surface flow. In other words, a greater force is required to remove the coating from the substrate than water from the non-stick surface.
The liquid remains a liquid phase during use of the article ([0074]).
Regarding claim 171: Okada is directed to an article comprising:
A substrate
A hydrophobic liquid disposed on the substrate, the liquid being immiscible with a contacting phase. Specifically, a contacting phase of water is immiscible with the coating since it repels water on the surface.
The contacting phase is hydrophilic. Specifically, water is hydrophilic and immiscible with the liquid.
An interfacial modifier of particles creates a boundary region between the liquid and the contacting phase. Specifically, see Fig. 53A 3B wherein particles form a boundary region on the surface of the latex and are partially disposed therein.
The boundary region has different properties from the liquid and contacting phase. Specifically, the boundary region is formed from solid particles, while the liquid and the contacting phase of water is also a liquid.
A partition coefficient of the interfacial modifier is not mentioned. However, the coating olefin wax, rice wax, carnauba wax ([0077]) which is the same as the interfacial modifier of the present invention.
Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963).
Hence, the interfacial modifier having a partition coefficient of less than 1 is an inherent property.
The boundary region has a lubricity greater than a lubricity of the liquid. Specifically, the water contact angle is greater than 90° ([0006]) and is by definition hydrophobic, and therefore it can be concluded the boundary region has a lubricity greater than a lubricity of the liquid.
The liquid remains a liquid phase during use of the article ([0074]).
Claims 152-155, 157-160, 166-171 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nyuu et al. (US 2018/0162580).
Regarding claim 152, 166, 169, 170-171: Nyuu is directed to an article comprising:
a substrate of a base material ([0034])
a liquid disposed on the substrate. Specifically, a gel like coating is on the surface of a base material.
a contacting phase, the contacting phase immiscible with the liquid. Specifically, the contacting phase include mayonnaise, ketchup, etc. ([0080] Nyuu).
A boundary region at an interface between the liquid and the contacting phase, the boundary region including an interfacial modifier formulated to modify the rheology of the boundary region when in contact with the contacting phase. Specifically, fine solid particles are dispersed in an oily liquid and are thixotropic ([0024], [0029] [0073] Nyuu).
The liquid remains a liquid phase during use of the article.
Properties of viscosity, rheology, yield stress, and lubricity are considered inherent.
Claim Rejections - 35 USC § 103
Claim 156 is rejected under 35 U.S.C. 103 as being unpatentable over Okada or Nyuu as applied to claim 153 above, and further in view of Das et al. (US 2018/0117828).
Regarding claim 156: Neither Okada nor Nyuu doesn’t mention solid features formed in the substrate.
Das is directed to surface modification of polymeric materials to make the surface non-stick. The polymer surface comprises solid features of micropillars into the substrate (equivalent to solid features formed in the substrate). One skilled in the art would have been motivated to have embossing the surfaces of Larimer to produce a surface having micropillars to increase adherence of particles by utilizing in combination an adhesive layer and micropillars ([0029] Das). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have embossing the surfaces of Okada or Nyuu to produce a surface having micropillars in Larimer.
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Smith et al. (US 8,940,361) cited in IDS filed 10/17/2022 is directed to a lubricating surface for food packaging comprising solid features and a liquid impregnated surface.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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