RESPONSE TO AMENDMENT
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 .
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 § 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).
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).
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).
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.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 12/18/2025 regarding the rejections made of record in the office action mailed on 10/21/2025 have been carefully considered but are deemed unpersuasive.
Applicant argues that the disclosure in Kolbe et al. does not meet the limitation of “at a ratio of solid-state particles” overlaps with the presently claimed range as set for the in the claim rejections above.
The limitation “a ratio of solid-state particles” does not limit the type of particle quantity of particles being measured. In other words, “a ratio” may refer to the particle count, particles quantity by mass or particle quantity by volume. The Examiner therefore does not agree with Applicant’s narrower interpretation of the limitation that the range of 1.5:1 to 1:1.5 refers to the relative ratio by particle count as presently being argued and the arguments are not commensurate in scope with the breadth of the claim limitations. Given that Kolbe et al. explicitly discloses controlling the thickness of the coating layer (formed by the nanoparticles), 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.
Applicant further argues that the relative claimed sizes and ratios of particles shown evidence of criticality with respect to the formation of wear resistant coatings. (Applicant’s arguments pages 5-7). Applicant therefore argues that the claimed invention is patentable over the cited prior art.
In order to traverse a rejection under 35 U.S.C. §103 based on allegations of unexpected results, the evidence provided must be of probative value, commensurate in scope with the claims and show that the results are unexpected. MPEP 716.02. The evidence must further be weighed against the evidence supporting a prima facie case obviousness. Id. When making allegations of unexpected results, the Applicant bears the burden to demonstrate whether the differences between the prior art and claimed invention differ to such an extent that the difference is unexpected. (MPEP 716.02 and 716.02(b)). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance”. (MPEP 716.02(b), citing Ex Parte Gelles, 22 USPQ2d 1318, 1318, Bd. Pat. App. & Inter. 1992). It should be noted that mere allegation of improved properties alone is no sufficient to serve as the basis of unexpected results if they do not show a significance equal to or greater than the expected properties. (see MPEP 716.02(c) I). Furthermore, the unexpected results relied upon by the Applicant for patentability must be commensurate in scope with the claims which the evidence is offered to support. MPEP 716.02(d).
In the present instance, the evidence provided to demonstrate criticality of the claimed ranges is much narrower in scope that the claimed invention and therefore the evidence is not commensurate in scope with the claims. The evidence provided on page 7 in the reply relies upon a mixture of silica sol and silicon carbide particles. The claims do not particularly limit the type of solid-state particles used and therefore are significantly broader in scope. Furthermore, only example 4 shows improved results as presently argued but only tests a relative ratio of 1:1 and with only a limited amount of particle sizes. In order to demonstrate the criticality of a claimed range, Applicants should compare a sufficient amount of tests both inside and outside the claimed range. MPEP 716.02(d) I-II. Applicant’s evidence is therefore insufficient and not commensurate in scope with the claims to support such a conclusion.
The claims therefore remain unpatentable over the cited prior art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 02/17/2026