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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 27 January 2026 is acknowledged.
Claims 6-15, 17, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 27 January 2026.
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.
Claims 1, 2, 4, 5, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nagano et al. (US 2020/0088432) in view of Singh et al. (US 2021/0031315).
Nagano is directed to a heat exchanger having a surface comprising a plurality of protrusions and a water-repellent coating (paragraphs 0009-0011). The heat exchanger comprises a fin including a substrate with protrusion on its surface (paragraph 0131). The substrate may be made of aluminum (paragraph 0133). The protrusions may be made of aluminum, an aluminum alloy, or silicon (paragraph 0135). A water-repellent coating is applied over the surface of both the substrate and the protrusions as a monomolecular film (paragraph 0149 and Figure 11E). The water-repellent coating may be formed from a silane coupling agent having perfluoropolyether groups (paragraph 0152).
The substrate of Nagano corresponds to the base layer of the claims; the protrusions correspond to the projections of the claims; the water-repellent coating on the substrate corresponds to the first water-repellent member of the claims; the water-repellent coating on the protrusions corresponds to the second water-repellent member of the claims.
Nagano does not teach the presence of a foundation material on which the base layer is formed.
Singh is directed to a finned tube for an condenser of a heat exchanger (paragraph 0013). The fins may be formed from a three-layer composite of aluminum (paragraph 0142).
It would have been obvious to form the fin of Nagano from the three-layer composite of Singh since courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (see MPEP 2144.07), and Singh teaches that such a composite is suitable for use as a fin for a heat exchanger. The layer of the composite lying beneath the surface layer corresponds to the foundation material of the claims.
Regarding the limitation in claim 1 directed to the relative difference in covalent binding index between the base layer and the projections, this limitation is taken to be met since it only applies if the base layer is denoted by the oxide AO and the projections are denoted by the oxide BO.
The limitations of claims 2 and 16 are taken to be met since these claims, while further limiting the oxides AO and BO, do not require the base layer and projections to be AO and BO, respectively.
Regarding claim 4, since the water-repellent coating form a monomolecular layer conforming to the shape of the surface with protrusions (e.g., see Figure 11A), one of ordinary skill in the art would expect the difference in height between the first and second water-repellent members to be substantially equal to the height of the projections.
Regarding claim 5, Nagano teaches that the silane of the water-repellent coating has a bonding strength to the substrate and protrusions that is higher than the bonding strength between molecules of the water-repellent coating material (paragraph 0150). Therefore, while sliding an elastic member over the surface would be expected to remove surplus water-repellent coating material, one of ordinary skill in the art would not expect it to remove coating bonded to the surface such that the coating on the substrate and protrusions would be expected to wear at substantially the same rate.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nagano et al. (US 2020/0088432) in view of Singh et al. (US 2021/0031315), as applied to claim 1 above, and further in view of Yamaguchi et al. (US 2003/0139620)
Nagano taken in view of Singh et al. suggest all the limitations of claim 3, as set forth above, except for the structure of the perfluoropolyether silane of the water-repellent layer.
Yamaguchi is directed to a perfluoropolyether silane surface treating agent having improved properties, such as water repellency (paragraph 0001). The silane is of the general structure (paragraph 0029):
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wherein Rf may be (paragraph 0031):
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It would have been obvious to one of ordinary skill in the art to use the compound of Yamaguchi as the perfluoropolyether silane of Nagano since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (see MPEP 2144.07), and Yamaguchi teaches that such a silane is suitable for use as surface treatment agent designed to impart water repellency.
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 1-5 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 7 of U.S. Patent No. 12,257,841.
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitation directed to the relative difference in covalent binding index between the base layer and the projections applies only if the base layer is denoted by the oxide AO and the projections are denoted by the oxide BO.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787