RESPONSE TO AMENDMENT
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/21/2026 has been entered.
Claims 1-16 are pending in the application. Amendments to the claims filed on 04/09/2026 have been entered in the above-identified application.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 9 and 13 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 9, “a composition” is unclear because it is not clear if this refers to the same composition as in claim 1 or a separate composition containing component A).
Regarding claim 13, the limitation “the amount of component B)” is unclear because it is not clear if the term refers to the sum of B1 and B2 or B1 or B2, individually. Claims 1 and 13 do not explicitly define B) in the composition of claim 1.
Claim Rejections - 35 USC § 103
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (U.S. App. Pub. No. 2011/0219969).
Regarding claim 1, Kolbe et al. discloses a method for producing a structure surface including a coating composition having therein microparticles having on the surface thereof adsorbed nanoparticles. (Abstract). The coating composition of Kolbe et al. therefore a sol-gel precursor (par. [0046]), solid-state microparticles (par. [0037]-[0039]) and solid-state nanoparticles (Abstract, par. [0017] and. [0035]).
With respect to the size of the solid-state particles, Kolbe et al. discloses that the microparticles have a size ranging from 1 to 50 micrometers before being comminuted to a size of 1 to 5 micrometers. (par. [0037] and [0039]). Similarly, Kolbe et al. refers to the adsorbed particles on the surface of the microparticles as “nanoparticles” (Abstract) which one of ordinary skill in the art would understand to be referring to particles having diameters of 1 micron or less. While neither of these sizes are described as referring to the “Sauter diameter” of the particles as claimed, the ranges taught by Kolbe et al. fully encompass the presently claimed ranges. Therefore, the “Sauter diameter” of the particles disclosed in Kolbe et al. would be expected to substantially overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to the relative content of microparticles to nanoparticles, Kolbe et al. does not explicitly teach the relative amounts thereof. However, Kolbe et al. does disclose that the thickness of the adsorption layer formed by the nanoparticles can be adjusted to lie in the range of 0.5 to 5 micrometers (par. [0035]) and that this is generally the same dimension as the size of the microparticles after comminution. (par. [0039]), implying that the relative content thereof would be in the range of 1:1 or more. Alternatively, it would have been obvious to one of ordinary skill in the art to optimize the relative amounts of the particles based on selection of thickness, which Kolbe et al. discloses affects the wear and presence of structural elevations (par. [0035]), and the relative size of the particles. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
With respect to the limitation “numerical ratio”, the term is being interpreted consistent with the broadest reasonable interpretation, consistent with MPEP 2111.01. The plain meaning of the term “numerical ratio” refers to a comparison of two numbers by dividing one with the other. The teaching in Kolbe et al. of a relative content of 1:1 or more would therefore meet the limitation of a “numerical ratio” as claimed.
Regarding claims 2-8, the sol-gel precursor material includes materials as disclosed in par. [0046] which includes hydrolysable semi-metal alkoxides including B, Al, Si, Ti and meeting the structural formula in claim 7. In particular, TEOS is preferably used which is a silica sol precursor material combined with organosilanes having a functional group with a mono, bi or tri alkoxy group bonded to Si. (par. [0046] and [0049]).
Regarding claim 9, the content of the sol-gel precursor material is disclosed to be in the range of 5-40% for the tetraortho-type sol-gel precursor and 30-70% for the functional silane containing precursor (par. [0046]), both overlapping with the presently claimed range.
Regarding claim 10, the solid-state particles disclosed would have a Mohs hardness of 7 or more. (par. [0046] and [0049]).
Regarding claims 11-12, the solid-state particles include quarts, corundum, silicon carbide, diamond or mixtures thereof. (par. [0049]).
Regarding claim 13, Kolbe et al. discloses that the content of the microparticles is in the range of 20-70% by weight (par. [0046]), overlapping with the presently claimed range.
Regarding claims 14-16, the coating composition of Kolbe et al. is designed for use on a printing machine cylinder preferably stainless steel (i.e. a metal surface). (par. [0032])
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (U.S. App. Pub. No. 2011/0219969) in view of Woo et al. (KR 2011-0001005).
Regarding claim 1, Kolbe et al. discloses a method for producing a structure surface including a coating composition having therein microparticles having on the surface thereof adsorbed nanoparticles. (Abstract). The coating composition of Kolbe et al. therefore a sol-gel precursor (par. [0046]), solid-state microparticles (par. [0037]-[0039]) and solid-state nanoparticles (Abstract, par. [0017] and. [0035]). The coating composition is designed to be applied to printing cylinders for improved wear/anti-adhesion properties. (par. [0032]).
With respect to the size of the solid-state particles, Kolbe et al. discloses that the microparticles have a size ranging from 1 to 50 micrometers before being comminuted to a size of 1 to 5 micrometers. (par. [0037] and [0039]). Similarly, Kolbe et al. refers to the adsorbed particles on the surface of the microparticles as “nanoparticles” (Abstract) which one of ordinary skill in the art would understand to be referring to particles having diameters of 1 micron or less.
Furthermore, Woo et al. discloses the inclusion of nanoparticles in a printing cylinder coating surface region for imparting oleophobic/hydrophobic properties to the coating by introducing a lotus petal effect to the coating surface. (Abstract, page 4, first full paragraph and page 5, last 4 paragraphs). The particles are described as having high hardness such as Al2O3 or TiO2 (page 5, last 4 paragraphs) and having diameters of 10-50 nm (page 6, 7th full paragraph).
It would have been obvious to one of ordinary skill in the art to include nanosized ceramic hard particles in the coating composition of Kolbe et al. which lies on the surface of the coating layer.
One of ordinary skill in the art would have found it obvious to include nanosized ceramic hard particles in coating composition surface in Kolbe et al. to generate nano-sized irregularities to produce hydrophobic and oleophobic properties to the coating, enhancing the effectiveness and durability thereof.
While neither Kolbe nor Woo et al. discloses that the sizes are described as referring to the “Sauter diameter” of the particles as claimed, the ranges taught in both references fully encompass the presently claimed ranges. Therefore, the “Sauter diameter” of the particles disclosed in Kolbe et al. and those in Woo et al. would be expected to substantially overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to the relative content of microparticles and nanoparticles, Woo et al. does not disclose the amount of nanoparticles needed to produce the hydrophobic or oleophobic effect. However, it would have been obvious to one of ordinary skill in the art to optimize the amount of nanoparticles used to produce the effect without compromising the other physical or mechanical properties of the coating composition. One of ordinary skill in the art would therefore have found it obvious to determine the optimal relative amounts of microparticles and nanoparticles in the coating composition resulting from the combined teachings of Kolbe and Woo et al.. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
With respect to the limitation “numerical ratio”, the term is being interpreted consistent with the broadest reasonable interpretation, consistent with MPEP 2111.01. The plain meaning of the term “numerical ratio” refers to a comparison of two numbers by dividing one with the other. The teaching in Kolbe et al. of a relative content of 1:1 or more would therefore meet the limitation of a “numerical ratio” as claimed.
Regarding claims 2-8, the sol-gel precursor material includes materials as disclosed in par. [0046] which includes hydrolysable semi-metal alkoxides including B, Al, Si, Ti and meeting the structural formula in claim 7. In particular, TEOS is preferably used which is a silica sol precursor material combined with organosilanes having a functional group with a mono, bi or tri alkoxy group bonded to Si. (par. [0046] and [0049]).
Regarding claim 9, the content of the sol-gel precursor material is disclosed to be in the range of 5-40% for the tetraortho-type sol-gel precursor and 30-70% for the functional silane containing precursor (par. [0046]), both overlapping with the presently claimed range.
Regarding claim 10, the solid-state particles disclosed would have a Mohs hardness of 7 or more. (par. [0046] and [0049]).
Regarding claims 11-12, the solid-state particles of Kolbe et al. include quarts, corundum, silicon carbide, diamond or mixtures thereof. (par. [0049]). It would have been obvious to one of ordinary skill in the art to select nanoparticles for the surface coating material of the same type of particle due to the high Mohr’s hardness disclosed in Kolbe et al. of these ceramic materials, which would therefore have enhanced durability.
Regarding claim 13, Kolbe et al. discloses that the content of the microparticles is in the range of 20-70% by weight (par. [0046]), overlapping with the presently claimed range.
Regarding claims 14-16, the coating composition of Kolbe et al. is designed for use on a printing machine cylinder preferably stainless steel (i.e. a metal surface). (par. [0032])
Claims 1-10 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kumiko et al. (JP 2008-273991).
Citations to Kumiko et al. refer to the machine translation document included with this office action.
Regarding claim 1, Kumiko et al. discloses a coating composition for application to glass for preventing adhesion to press molds wherein the composition includes a curable silicon compound (i.e. a sol-gel precursor) (Abstract), a refractory filler and a heat-resistant pigment. (page 2, 3rd paragraph, page 4, 3-5th paragraphs). The size of the refractory filler is in the range of 0.1 to 10 microns (page 10, first full paragraph) and contained in amounts of 0.01 to 60% by mass (page 9, 2nd to last paragraph) and the heat-resistant pigment has a median diameter of 0.02 to 2.5 micrometers and included in amounts of 10-50% by weight. (page 4, 4th-5th paragraphs). The curable silicon compounds is a hydrolysable sol-gel precursor material. (page 6, last 3 paragraphs).
With respect to the size of the solid-state particles, while neither of these sizes are described as referring to the “Sauter diameter” of the particles as claimed, the ranges taught by Kumiko et al. fully encompass the presently claimed ranges. Therefore, the “Sauter diameter” of the particles disclosed in Kumiko et al. would be expected to substantially overlap with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to the relative amounts of the refractory filler and heat-resistant pigment, the contents relative to the overall composition would result in an overlap with the claimed range in the relative amount thereof since the ranges taught in the prior art overlap over significant parts of the disclosed ranges (i.e. ratios of 1:1 or more).
With respect to the limitation “numerical ratio”, the term is being interpreted consistent with the broadest reasonable interpretation, consistent with MPEP 2111.01. The plain meaning of the term “numerical ratio” refers to a comparison of two numbers by dividing one with the other. The teaching in Kumiko et al. of a relative content of 1:1 or more would therefore meet the limitation of a “numerical ratio” as claimed.
Regarding claims 2-8, the curable silicon compounds is a hydrolysable sol-gel precursor material. (page 6, last 3 paragraphs). Examples of compounds meeting the formula of claim 7 include vinyltrimethoxysilane or vinyltriethoxysilane and are disclosed in page 7, last full paragraph.
Regarding claim 9, the curable silicon compound is included in an amount ranging from 10-70% by mass (page 9, 2nd full paragraph), overlapping with the presently claimed range.
Regarding claim 10, the refractory filler may include alpha-alumina (i.e. corundum) or quartz (page 9, last paragraph) and the heat resistant pigment includes chromium composite metal oxides (page 9, 4th paragraph) which would be expected to have a Mohs hardness of approximately 8.5 based on the Mohs hardness of chromium being 8.5.
Regarding claim 13, the content of the refractory filler material is in the range of 0.01 to 60% by mass (page 9, 2nd to last paragraph), overlapping with the presently claimed range.
Regarding claims 14-16, the coating composition is designed to be applied to a glass substrate for a press mold (Abstract) and would therefore be capable of performing the intended use of being applied to a cylinder cover for a sheet-transporting cylinder, as claimed.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nomi et al. (U.S. App. Pub. No. 2025/0215300) in view Takeshima (JP 2002-371184).
Regarding claim 1, Nomi et al. teaches a thermally conductive filler composition including coarse in organic particle, medium inorganic particle and small inorganic particles. (Abstract). The filler composition is included within a resin composition. (par. [0051]-[0053]). The medium inorganic particles have an average particle diameter in the range of 1-10 micrometers (par. [0009]) and the small particles have an average particle diameter of 0.1 to 10 micrometers (par. [0010]). Both the medium and small particles may be spherical (par. [0033] and [0035]) and therefore the Sauter diameter of a spherical particle would be substantially the same as their average diameter since a Sauter diameter is define as the diameter of a hypothetical sphere having the same volume-to-surface ratio. Therefore, Nomi et al. teaches medium and small size particles which would have Sauter diameters which overlap with the presently claimed ranges of solid-state particles P1 and solid-state particles P2. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With respect to the numerical ratio of the solid-state particles, the term is being interpreted consistent with the broadest reasonable interpretation, consistent with MPEP 2111.01. The plain meaning of the term “numerical ratio” refers to a comparison of two numbers by dividing one with the other. Nomi et al. teaches in Fig. 4 a number-based frequency of approximately 1:1 to 1:1.5 for the numerical ratios of small and medium particles (first two peaks), which overlaps with the presently claimed ranges. Together with the teachings in Nomi et al. that the placement of the 2nd peak can lie in the range of 1-2 micrometers based on the broad range of 1-10 micrometers for the medium size particles, the relative content of small and medium particles in Nomi et al. would overlap with the presently claimed “numerical ratio” as claimed.
Nomi et al. fails to teach the present of at least one sol-gel precursor component as presently claimed.
Takeshima et al. teaches a heat conductive silicone composition including oxide-based particles (Abstract) wherein the resin material is made from a plurality of sol-gel precursor materials such as organosiloxane materials having alkoxide containing functional groups for use as thixotropy-imparting agents for preventing sedimentation of the particle material added to the resin. (pages 4-5). Takeshima et al. further teaches that the silicone resin material is formed from the hydrolysis/condensation of sol-gel precursors as disclosed in page 4-5 and Example 1: dimethylvinylsiloxy-group containing dimethylpolysiloxane and dimethylsiloxane / methylhydrogensiloxane copolymer, which would also meet the limitation of a sol-gel precursors as claimed.
It would have been obvious to include organosiloxane based precursors (i.e. sol-gel precursors) of the type disclosed in Takeshima et al. in the thermally conductive resin composition taught in Nomi et al. Furthermore, it would have been obvious to one of ordinary skill in the art to use the sol-gel precursors disclosed in Takeshima et al. for a silicone resin heat conductive composition in Nomi et al.
One of ordinary skill in the art would have found it obvious to include organosiloxane based precursors in the thermally conductive resin composition of Nomi et al. as thixotropic agents for adjusting the viscosity of the resin material, allowing for preventing unwanted sedimentation of the thermally conductive filler material in the resin. One of ordinary skill in the art would have found it obvious to use the silicone resin composition of Takeshima et al. as the heat conductive resin material of Nomi et al., which contains sol-gel precursors, in view of the improved properties of the resin composition s disclosed in the secondary reference.
Regarding claims 2-8, the thixotropic agents disclosed in Takeshima et al. are hydrolysable/condensable silicon oxide containing organic compounds which meets the limitation of claim 7 where the compound includes at least one silicon-bonded alkoxy group as well alkyl, alkenyl, halogenated group and functional organic groups such as glycidoxy, methacryloxyl, amino groups, trimethoxy or dimethoxy groups. (page 4). Therefore, the formula of claim 7 would be satisfied where a = 1 to 3, R2 is an alkyl (saturated) or alkenyl (unsaturated) groups and R1 can be methyl (i.e. 1 carbon atom saturated carbon radical).
Furthermore, the dimethylvinylsiloxy group-blocked dimethylpolysiloxane disclosed in Example 1 would meet the limitations of the structure of claim 7 where a is 2, R2 is vinyl and R1 is methyl.
Regarding claim 9, the content of the silicone resin containing sol-gel precursor may be provided in an amount of 50 parts by weight with respect to the resin composition. (Example 1).
Regarding claims 10-12, the medium and small particles disclosed in Nomi et al. include silicon carbide particles (par. [0034] and [0036]) and would have a Mohs hardness of 7.
Regarding claim 13, the content of the small particles is 15-30 mass %. (par. [0028]).
Regarding claim 14, Nomi in view of Takeshima et al. teaches applying a thermal conductive composition onto an IC substrate (i.e. a metal substrate). (see Takeshima et al., par. [0001]).
Regarding claims 15-16, the coating composition would therefore be capable of performing the intended use of being applied to a cylinder cover for a sheet-transporting cylinder, as claimed.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 04/09/2026 regarding the prior art rejections made of record in the previous office action have been carefully considered but are deemed unpersuasive.
Applicant argues that that the limitation “numerical ratio” defines over the prior art cited in the previous office action. The Examiner disagrees. The limitation “numerical ratio”, the term is being interpreted consistent with the broadest reasonable interpretation, consistent with MPEP 2111.01. The plain meaning of the term “numerical ratio” refers to a comparison of two numbers by dividing one with the other. Applicant appears to be interpreting the term to refer to the counted particles present by number relative to the counted particles present by number for B1 and B2. However, this interpretation is significantly narrower that the broadest reasonable interpretation. The weight values and ratios thereof as disclosed in the cited prior art references meet the limitation of “numerical ratio” as presently claimed due to the fact that they are number ratios.
With respect to Kolbe et al. in particular, Applicant argues that the ratio of the small and large particles would be outside of the presently claimed range. However, these arguments are not found persuasive based on Kolbe et al.’s suggestion that Kolbe et al. does disclose that the thickness of the adsorption layer formed by the nanoparticles can be adjusted to lie in the range of 0.5 to 5 micrometers (par. [0035]) implying that the relative content thereof would be in the range of 1:1 or more. Furthermore, Kolbe et al. discloses affects the wear and presence of structural elevations (par. [0035]) and the relative size of the particles affects the material properties of the composition and therefore recognize a result effective nature of the size and relative amounts of the particles. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
Applicant further argues criticality of the presently claimed ranges with respect to particle diameters and relative amounts. (Applicant’s response filed 04/09/2026, pages 11-12). Arguments used to rebut a prima facie case of obviousness may include secondary considerations such as evidenced that the claimed invention yields unexpectedly improved properties. MPEP 2145. Evidence pertaining to secondary considerations must be taken account however it does not necessarily control the obviousness conclusion. Id. In order for the evidence to be of probative value, secondary considerations must be related to the claimed invention and supported by actual proof. MPEP 716.01(b) and (c). The evidence provided Table on page 3 refers to specific surface roughness values for compositions but is not commensurate in scope with the limitations of the independent claim. For example, the coating includes a modified silica sol with a specific amount by weight of the claimed particles and the claimed particles are disclosed in the silicon carbide. None of these specific parameters are claimed and therefore the evidence is not commensurate in scope. Therefore, the claims remain unpatentable over the cited prior art.
In addition, newly cited references Nomi et al. (U.S. App. Pub. No. 2025/0215300) in view Takeshima (JP 2002-371184) further render the claims unpatentable.
Conclusion
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 08/20/2026
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