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 .
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.
Election/Restrictions
Applicant's election without traverse of electing Group I (claims 1-9) in the reply filed on February 18, 2026 is acknowledged.
Claims 10-23 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a canceled invention. Election was made without traverse in the reply filed on February 18, 2026.
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.
Claim 7 is 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 pre-AIA the applicant regards as the invention.
Regarding claim 7, the term "substantially” is a relative term which render the claims indefinite. The term " substantially " is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeon et al. (US 2020/0326457 A1).
Regarding claim 1, Jeon teaches a coating (Abstract, [0011]), comprising: a self-assembled monolayer (SAM) of an organic molecule such as a polar head group and a hydrophobic tail group, the polar head group being configured to covalently attach to an underlying metal or ceramic surface ([0055], [0059], [0071], [0072], [0092], Fig. 1). However, it is the position of the examiner that disclosure the properties of disintegrate, are inherent, given that the coating material and coating substrates disclosed by Jeon et al. and the present application having same coating process and material such as a self-assembled monolayer (SAM) of an organic molecule such as perfluoropolyether (PFPE) and covalently bonded to the ceramic surface ([0026], [0039], [0043] in current specification; [0059], [0071] in Jeon). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claim 3, Jeon teaches wherein the SAM is transparent to visible light ([0059]).
Regarding claim 4, Jeon teaches wherein the organic molecule comprises perfluoropolyether reads on a primary tail group with a chain length of at least 15 carbons ([0059], as admitted by current specification [0039], [0049]); and triethoxy(1H,1H,2H,2H-perfluoro-1-octyl)silane (POTS) reads on a secondary tail group having a chain length in a range from 5 to 15 carbons ([0070], as admitted by current specification [0055]).
Regarding claim 5, Jeon teaches wherein the SAM may be triethoxy(1H,1H,2H,2H-perfluoro-1-octyl)silane (POTS) reads on wherein the hydrophobic tail group comprises a linear or branched hydrocarbon having at least 8 carbons ([0070], as admitted by current specification [0055]).
Regarding claim 6, Jeon teaches wherein the head group is trichlorosilane for example ([0071]).
Regarding claim 7, Jeon teaches a coating, However, it is the position of the examiner that disclosure the properties of degradation, are inherent, given that the coating material and coating substrates disclosed by Jeon et al. and the present application having same coating process and material such as a self-assembled monolayer (SAM) of an organic molecule such as perfluoropolyether (PFPE) and covalently bonded to the ceramic surface ([0026], [0039], [0043] in current specification; [0059], [0071] in Jeon). A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claim 8, Jeon teaches wherein the organic molecule comprises perfluoropolyether ([0059]).
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 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (US 2020/0326457 A1) as applied to claims 1 and 3-8.
Regarding claim 2, Jeon teaches a coating comprising SAM as disclosed above. Jeon does not explicitly teach wherein the SAM has a thickness of less than 10 nm. Although Jeon does not explicitly teach the claimed shape & configuration, modifying the apparatus of Jeon in the present application to have the shape & configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way. Where the configuration of the claimed subject matter is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant is not patent eligible subject matter. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 9, Jeon teaches wherein the organic molecule comprises perfluoropolyether ([0059], as admitted by current Application [0043] PFPE has a molecular weight in a range from about 2000 to about 7000, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) see MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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