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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/3/2026 has been entered.
Response to Amendment
Applicants’ amendment to claims, filed 2/3/2026, have been fully considered and reviewed by the examiner. Claims 9-28 are pending.
Response to Arguments
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive as they are directed to newly added claim requirements specifically addressed hereinafter.
Applicant’s argue that the prior art discloses adhesive bonding and therefore does not disclose the chemically bonding as claimed. The examiner disagrees and notes that the term “chemically” bonded to the substrate encompasses all that is taught by the prior art reference. CN 675 discloses the silane coupling agent forms a covalent bond and provides a better wear resistance and thus meets the requirement of chemically bonded as claimed. Additionally, this requirement is necessarily present in the disclosure of CN 675 based on the broadest reasonable interpretation of chemically bonded, specifically, the coating is applied to and cured to the substrate and thus will meet the requirement of “chemically” bonded absent some specific recitation as to the scope of this requirement. The applicant’s argument that the prior art discloses an adhesive material is not persuasive as the claims themselves do not foreclose the presence of the adhesive, merely some undefined chemical bonding exists between the coating and the substrate. CN 675 discloses using a silane coupling agent, which would include covalent bonds and thus meets the chemically bonded requirement as broadly drafted (see page 3, second paragraph “hydrophobic silane coupling agent having one or more groups to the micro-nano dual roughness structure formed covalent bonds, but also containing at least one hydrophobic group by a covalent bond between the hydrophobic silane coupling agent and micro-nano dual roughness structure is connected adding the rough structure in solution with stability in the coating, thus imparting super hydrophobic coating a better adhesion”).
While the examiner notes that CN 675 would include some chemical bonding, even if CN 675 is limited to only adhesive bonding (which the examiner does not agree, see e.g. applicant’s own claims which require polymer base, which is defined as PU, see CN 675 discloses the binder is a polyurethane, page 2 “polyurethane resin”) the metes and bounds of the term chemically bonded is not defined by the specification to encompass any more than taught by CN 675, since adhesive bonding could reasonably be within the scope of or be considered a chemical bonding mechanism.
See also Gelest, cited herein, as a disclosure of the silane coupling mechanism and thus disclose the bonding occurs using these components.
Applicant’s arguments related to hydrolysis is noted, but not persuasive as evidenced by JP 358. Applicant’s arguments that there is no reference to a solvent mixture comprising xylene and alcohol for hydrolyzing an organosilane is noted, but not persuasive in view of JP 358, cited hereinafter. Applicant’s argument that increasing the process time by adding xylene is noted, but not supported by factual evidence. Additionally, even in the event that there is increase of process time, one would still expect predictable results in using the combination of xylene and butanol as evidenced by JP 358.
Applicant’s arguments with respect to Claim 16 and 19 are noted, but not persuasive based on the explicit language of the claims. Specifically, thermally curing, as defined by the claims themselves, see claim 11, requires thermally curing at ambient and therefore the prior art will necessarily be subject to the ambient temperature for the claimed time period (see e.g. applications at page 1). In other words, by its application and use, the superhydrophobic coating will be at an ambient temperature for a period of time claimed and thus makes obvious this claimed range and temperature.
All other applicant arguments are deemed unpersuasive and moot as directed to newly added claim requirements or unsupported by factual evidence.
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 (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 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(s) 9-14, 15-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 10798675, hereinafter CN 675 taken collectively with JP H10237358A, hereinafter JP 358.
Please Note - machine translation page numbers used for citations are examples and guidance and the applicant is advised to review the entirety of the disclosure as the examiner relies on the entirety of disclosure of the cited references.
Claim 9: CN 675 discloses a superhydrophobic coating over a substrate comprising mixing an organosilane in a solvent mixture “one or more” volatile solvents, such as alcohols, wherein the organosilane is dodecyltrimethoxysilane (meets the requirements of R1 – dodecyl and R2- methyl as claimed).
The superhydrophobic coating of CN 675 can reasonably be considered hydrophobic-icephobic as claimed due to the surface contact angles generated by its application (see e.g. examples, where “icephobic” would necessarily follow from the presence of a superhydrophobic coating).
CN 675 discloses mixing a polymer base (binder material), a hardener (accelerators), and the hydrolyzed organosilane mixture to form a hydrophobic-icephobic composition (step (3) on bottom of page 2 of translation);
applying the hydrophobic-icephobic composition to the coated substrate (step 4, top of page 3 of the translation “the mixture solution is applied to the surface of the substrate”);
and curing the hydrophobic-icephobic composition to form the hydrophobic-icephobic coating, (step 4, top of page 3 of the translation “cured to form a superhydrophobic coating”)
wherein the hydrophobic-icephobic coating is chemically bonded to the substrate. CN 675 discloses the silane coupling agent forms a covalent bond and provides a better wear resistance and thus meets the requirement of chemically bonded as claimed. Additionally, this requirement is necessarily present in the disclosure of CN 675 based on the broadest reasonable interpretation of chemically bonded, specifically, the coating is applied to and cured to the substrate and thus will meet the requirement of “chemically” bonded absent some specific recitation as to the scope of this requirement.
As for the weight ratio as claimed, CN 675 discloses the mass fraction of the organosilane is 0.1 to 10% and thus overlaps the claimed range and makes obvious the weight ratio as claimed. At the very least, the amount of organosilane is a result effective variable,
As for the requirement of xylene and alcohol solvent. CN 675 discloses a combination of known solvents, including alcohols; however, fails to explicitly disclose xylene and alcohol as claimed. However, JP 358, also in the art of forming a organosilane coating onto various materials discloses a combination of known solvents includes xylene and butanol (”As the diluting solvent used in the hydrolysis polycondensation reaction of the hydrolyzable mixture, mentioned above as the dispersion solvent of colloidal silica, methanol, ethanol, isopropanol, n- butanol, lower aliphatic alcohols such as isobutanol; ethylene glycol, ethylene glycol monobutyl ether, ethylene glycol derivatives such as ethylene glycol acetate monoethyl ether; diethylene glycol, diethylene glycol derivatives such as diethylene glycol monobutyl ether; there may be mentioned, and diacetone alcohol, one selected from the group consisting or it may be used two or more. In combination with these hydrophilic organic solvent, toluene, xylene, ethyl acetate, butyl acetate, methyl ethyl ketone, methyl isobutyl ketone, can be also exemplified as methyl ethyl ketoxime.”) Additionally, JP 358 discloses hydrolysis by using xylene and butanol and adding the organosilane to this mixture stirring for multiple hours to initiate a hydrolysis reaction, discloses using a mixed solvent of these two materials “xylene · n- butanol mixed solvent” (B-1 of the preparation conditions stating, “xylene · n- butanol mixed solvent . . . was charged with . . . trimethoxy silane, a partial hydrolysis over about 5 hours with stirring 65 ° C”). a and therefore using xylene and alcohol would have led to predictable results as CN 675 discloses a combination of known solvents and JP 358 discloses a combination of known solvents includes xylene and butanol to mix with a organosilane, such as a trimethoxysilane, and silica, similar to that of CN 675.
As for the requirement of organic coated substrate; CN 675 generally discloses the superhydrophobic coating is applied to various substrates, including metal, wood (organic), plastic (organic) for various purposes including e.g. aviation, navigation; however, fails to disclose the application to an organic coated substrate. However, JP 358 in the art of coating substrates with fouling resistance, including silane coupling agent modified silica, and discloses the coating can be applied to various substrate including metal, and discloses that the substrate can include an undercoat/intermediate layer, such as a base coating including various resin/organic materials, including primer coatings, etc. (pages 13-14) and therefore taking the references collectively, it would have been obvious to have modified CN 675 to apply the superhydrophobic coating to the organic base coated metal substrate as such is taught by JP 3358 as CN 675 generally discloses applying to various substrate and JP 358 discloses that such substrates are known to include a prior deposited organic coating.
Each of CN 675 and JP 358 discloses mixing the organosilane with the alcohol solvent and such will result in the claimed hydrolyzed silane, see JP 358 related to hydrolysis in organic solvent mixture.
Claim 10: CN 675 discloses dodecyltrimethoxysilane (meets the requirements of R1 – dodecyl, 12 carbons)
Claim 11: CN 675 discloses composition is thermally cured at a temperature from an ambient temperature to about 80° C (see example 1).
Claim 12: JP 358 discloses solvents including xylene and butanol and combinations thereof as noted and made obvious for the reasons set forth above. JP 358 discloses n-butyl alcohol (“Examples of such an organic solvent, is not particularly limited, for example, methanol, ethanol, isopropanol, n- butanol”, h
Claim 13: CN 675 discloses the binder (polymer base) is a polyurethane (page 2 “polyurethane resin”).
Claim 14: JP 358 discloses an epoxy primer and thus using such would have been obvious to one of ordinary skill in the art at the time of the invention. (“The primer layer is not particularly limited, for example, nylon resin, alkyd resin, epoxy resin, acrylic resin”)
Claim 15: CN 675 discloses various coating techniques including brushing, rolling, dipping, spraying (step 4, page 3).
Claim 16 and 19: Claim 11 requires thermally curing at ambient and therefore the prior art will necessarily be subject to the ambient temperature for the claimed time period (see e.g. applications at page 1). In other words, by its application and use, the superhydrophobic coating will be at an ambient temperature for a period of time claimed and thus makes obvious this claimed range.
Claim 17: CN 675 discloses coating; however, fails to explicitly disclose a coating thickness. However, JP 358, also in the art of providing a coating onto a substrate discloses a coating amount is not limited (“The thickness of the coating cured coating . . . is not particularly limited”). The coating thickness is a result effective variable, directly affecting the coating properties, i.e. too thin and will not have desired coverage and too thick will be detrimental to the coating and product, and therefore determination of the optimum thickness to convey the desired coating properties will be obvious to one of ordinary skill in the art.
Claim 18: CN 675 discloses silica nanoparticles present within the composition 0.1 to 10wt% of the mixture (page 2); however, fails to disclose the amount of silica in the hydrophobic-icephobic composition. However, this component is taught by CN 675 to provide a specific result, i.e. provide a microscale roughness to the coating, and therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to have determined the optimum amount of nanoparticle silica in the superhydrophobic composition to reap the benefits of providing the coating with a degree of roughness necessary to provide the desired superhydrophobic properties.
Claim 20: CN 675 and JP 358 each individually discloses using two or more solvents; however, neither reference discloses the volume ratio of the materials. However, the mixture of CN 675 and JP 358 would necessarily have a volume ratio and the amount of each solvent would have a direct effect on the properties of the coating composition, dilution and thus the determination of the volume ratio of the solvents would have been obvious to one of ordinary skill in the art to reap the benefits of the mixture.
Claim 21 and 22: CN 675 discloses a water contact angle within the range as claimed (see e.g. example 1, static contact angle is 158o) and a sliding angle within the range as claimed (see e.g. example 1, roll angle is 5o). The remaining examples also disclose the values within the range as claimed. As such the claimed ranges are taught or made obvious by the prior art. As for the requirement of ASTM D 7334, the claims do not actively disclosure performing this test, and therefore the properties of the claims are a direct result of the steps taken and thus this is a mere recognition of latent properties and the prior art will necessarily have these same results unless the applicant is performing other process steps or other method steps that are not specifically claimed nor disclosed as required.
Claim 23: CN 674 and JP 358 each discloses methanol, ethanol, propanol, etc.
Claim 24: JP 358 makes obvious this requirement for the reasons set forth in claims 12 above, see specific discussion with respect to n-butyl alcohol.
Claim 25: CN 675 discloses a water contact angle within the range as claimed (see e.g. example 1, static contact angle is 158o) and a sliding angle within the range as claimed (see e.g. example 1, roll angle is 5o). The remaining examples also disclose the values within the range as claimed. As such the claimed ranges are taught or made obvious by the prior art. As for the requirement of ASTM D 7334, the claims do not actively disclosure performing this test, and therefore the properties of the claims are a direct result of the steps taken and thus this is a mere recognition of latent properties and the prior art will necessarily have these same results unless the applicant is performing other process steps or other method steps that are not specifically claimed nor disclosed as required.
Claim 26: Stirring time would be recognized as a result effective variable, directly affecting the degree of mixing and process efficiency and it would have been obvious to have determined the optimum mixing through routine experimentation, including multiple hours (2) as claimed to obtain a completely mixed material. JP 358 discloses stirring for multiple hours and therefore predictable results would follow.
Claim(s) 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 675 taken collectively with JP 358 and further with CN 102782208, hereinafter CN 208.
While the examiner maintains the position as set forth above, the examiner cites here CN 208, also in the art of forming a hydrophobic coating on a substrate by applying a silane and discloses that the applied coating in the mixed solvent can be cured at temperatures for a period of time or cured/solidified at ambient temperature for 24 hours (0044) and therefore using the known solidifying method would have been obvious as predictable.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 675 taken collectively with JP 358 and further with JP 2013053305, hereinafter JP 305.
CN 675 with JP 358 discloses coating; however, fails to explicitly disclose the claimed coating thickness. However, JP 305, also in the art of providing a coating onto a substrate discloses a coating amount of 10 to 50 microns (page 13, stating “the coating amount . . . an amount of about 10 to 50µm as a cured film thickness). Therefore, taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to one of ordinary skill in the art to have modified CN 675 to use the thickness of JP 305 as such is taught as a well-known thickness for coating. The claimed thickness is encompassed by the prior art thickness and thus makes obvious this claim.
Claim(s) 21-22 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 675 taken collectively with JP 358 and further with US Patent Application Publication 20100221407, hereinafter USPP 407.
While the examiner maintains the position as set forth above, the examiner notes that CN 675 explicitly measures the contact angle and USPP 407 discloses that the contact measurement of the fluid on a surface using ASTM D 7334 is a standard practice for contact angle measurement for coatings and therefore taking the level of one of ordinary skill in the art at the time of the invention, it would have been obvious to use the known contact measurement technique, including ASTM D 7334 as claimed. as such would have provided predictable results.
Claim(s) 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 675 taken collectively with JP 358 and further with Silane Coupling Agent, Connecting Across Boundaries, Gelest, 2014, hereinafter Gelest.
CN 675 taken collectively with JP 358 each individually disclose the utilization of silane coupling agents for the adhesion of a coating to a substrate and discloses organic substrate (CN 675) and substrate, such as metal, plastics, etc. and discloses that the substrate can include an undercoat/intermediate layer, such as a base coating including various resin/organic materials (pages 13-14); however, fails to disclose the curing mechanism for the silane coupling agent. However, Gelest discloses the using silane coupling agents to provide bond between substrate and coating materials, including polymers (such as that as taught by CN 675) and discloses the silane coupling agent goes through hydrolysis, and thereafter a condensation reaction, hydrogen bonding and bond formation (see page 3), including hydroxyl groups on the surface of the substrate. Gelest discloses including performing treatment of the organic materials to increase the hydroxyl surface functionality to the surface to provide linkage sites (page 10). Gelest provides guidance as to the curing of the film by condensation of the hydrolyzed silane coupling agent and chemical bonding to the substrate surface and the silanol heads of neighboring silanes bonding together to form polyorganosiloxane as claimed and such also bonding to the OH groups of the substrate (mechanism at page 3, see “how does a silane modify a surface”). Therefore, taking the references collectively, it would have been obvious to have modified CN 675 with JP 358 to include the OH groups on the substrate surface (and increase them by treatment if necessary) to achieve the desired utilization of the silane coupling agent, that is achieve a durable bond with the substrate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718