DETAILED ACTION
This is an Office action based on application number 18/542,104 filed 15 December 2023, which is a divisional application of application number 16/952,850 (now US Patent No. 11,857,998) filed 19 November 2020, which claims priority to provisional application number 62/939,372 filed 22 November 2019. Claims 21-29 are pending. Claims 1-20 are canceled.
Amendments to the claims, filed 15 December 2023, have been entered into the above-identified application.
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 .
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 21-28 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.
Claim 21 recites the limitation “said partially cured coating layer” in lines 8, 9, 11, 12, 14, and 15. There is insufficient antecedent basis for the limitation in the claim. Instead, the claim first recites, generically “a coating layer” in line 3.
For the purpose of compact prosecution, the “said partially cured coating layer” and “a coating layer” are construed to be the same layer.
Claims 22-28 do not remedy the deficiency of the parent claim and are rejected under the same rationale.
Claim 24 recites the limitation “wherein said polymer” in line 1. There is insufficient antecedent basis for the limitation in the claim and in independent claim 21.
For the purpose of compact prosecution, “said polymer” is construed to refer to a polymer that composes the coating layer of claim 21. Such a construction is in line with Applicant’s original disclosure (see Specification at page 2, lines 30-31).
Claim 25 recites the limitation “wherein said adhesive” in line 1. There is insufficient antecedent basis for the limitation in the claim and in independent claim 21.
For the purpose of compact prosecution, “said adhesive” is construed to refer to an adhesive that composes the coating layer of claim 21. Such a construction is in line with Applicant’s original disclosure (see Specification at page 2, lines 30-31).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21-22, 24, and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bovero et al. (US Patent Application Publication No. US 2019/0010335 A1) (Bovero) in view of Kajiwara et al. (US Patent Application Publication No. US 2004/0150082 A1) (Kajiwara).
Regarding instant claim 21:
Bovero discloses a method of fabricating a hydrophobic coating on a surface of a solid substrate, wherein said method includes depositing a deformable layer, forcibly embedding a plurality of particles within the deformable layer, and solidifying the deformable layer including the plurality of particles so as to be integral with the surface of the solid substrate (paragraph [0005]).
Bovero further discloses that said deformable layer is an epoxy resin (paragraph [0009]).
Said “deformable layer” is construed to meet the claimed coating layer.
Bovero further discloses that the purpose of the particles is to impart surface roughness to the deformable layer and impart hydrophobic properties (paragraph [0024]). Therefore, said particles meet the claimed “hydrophobic particles”.
Bovero further disclosed that the adhesion of the particles is selected such that a portion of the particles penetrate to a threshold depth within the deformable layer, wherein said threshold depth is at least one-quarter of the average diameter of the particles in order to provide a complex morphology with particles distributed throughout the dept of the deformable layer (paragraph [0025]). This disclosure is construed to encompass at least parameters (a)-(d) recited by the claim.
Bovero further discloses that the size distribution of the particles is unimodal (paragraph [0024]), which is construed to meet the claimed “substantially uniform distributed” particles.
Bovero does not explicitly disclose that the coating layer is partially cured.
However, Kajiwara discloses metal particles buried into a resin film wherein a part of the particle is exposed at the surface of the resin film. Kajiwara discloses that said resin film is selected from the group inclusive of epoxy resins, wherein the resin is semi-cured (paragraph [0152]).
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, having the teachings of the prior art before him or her, to use the semi-cured epoxy resin taught by Kajiwara as the deformable layer of Bovero. The motivation for doing so would have been such a semi-cured resin is art-recognized as a resin capable of producing the desired particle resin construction (i.e., wherein at least a portion of the particle is exposed at the surface).
Therefore, it would have been obvious to combine Kajiwara with Bovero to obtain the invention as specified by the instant claim.
Regarding instant claim 22:
Bovero further discloses that the particles are composed of silica (paragraph [0008]), which is construed to encompass an embodiment wherein all the particles are composed of silica (i.e., said hydrophobic particles are of the same material).
Regarding instant claim 24:
Bovero further discloses that the deformable layer is an epoxy resin (paragraph [0009]).
Regarding instant claim 27:
Bovero further discloses that each of the plurality of particles has a size in the range of 1 nm to 50 μm (paragraph [0006]), which overlaps the ranges recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 28:
Bovero further discloses that each of the plurality of particles has a size in the range of 1 nm to 50 μm (paragraph [0006]).
Bovero further disclosed that the adhesion of the particles is selected such that a portion of the particles penetrate to a threshold depth within the deformable layer, wherein said threshold depth is at least one-quarter of the average diameter of the particles in order to provide a complex morphology with particles distributed throughout the dept of the deformable layer (paragraph [0025]).
Given the particle size and the amount to which the particles are partially embedded into the deformable layer, one of ordinary skill in the art would readily conclude that the structure of Bovero would form peak-valley differences that overlap and/or include the ranges recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 29:
Bovero discloses a method of fabricating a hydrophobic coating on a surface of a solid substrate as cited above.
Those limitations recited by the instant claim are considered “intended use” limitations of the claimed coating and substrate. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In the instant case, the generical substrate comprising the hydrophobic coating of Bovero is construed capable of performing the intended use of at the claimed limitations absent evidence to the contrary.
Claims 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Bovero in view of Kajiwara as applied to claim 21 above, and further in view of Nambu et al. (US Patent Application Publication No. US 2006/0140891 A1) (Nambu).
Regarding instant claims 23 and 26:
Bovero in view of Kajiwara discloses the composition comprising hydrophobic silica particles as cited above.
Bovero in view of Kajiwara does not disclose a composition comprising hydrophobic particles of different materials. Bovero in view of Kajiwara does not disclose that the hydrpohbic particles includes PTFE, polypropylene, polyethylene, polyolefin, PDMS, or FEP.
However, Nambu discloses that examples of hydrophobic particles include polyethylene particles and silica particles subjected to hydrophobation treatment such as silicone treatment (e.g., treatment with dimethyl polysiloxane).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to replace the generic silica particles of Bovero with the dimethyl polysiloxane treated polyethylene and silica particles of Nambu. The motivation for doing so would have been that one of ordinary skill in the art would recognize that those particles chemically treated to be hydrophobic would enhance the hydrophobic nature provided by the physical/size attributes provided by said particles.
Therefore, it would have been obvious to combine Nambu with Bovero in view of Kajiwara to obtain the invention as specified by the instant claims.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Bovero in view of Kajiwara as applied to claim 21 above, and further in view of Simpson et al. (US Patent Application Publication No. US 2009/0076430 A1) (Simpson).
Regarding instant claim 25:
Bovero in view of Kajiwara discloses a hydrophobic coating comprising a deformable layer as cited in the rejection of claim 1, above.
Bovero does not explicitly disclose that the deformable layer is an adhesive that includes a foamed acrylic or cyanoacrylate.
However, Simpson discloses a material having a first surface and a plurality of superhydrophobic particles attached to the first surface (paragraph [0005]).
Simpson further discloses that binders for adhering superhydrophobic/hydrophobic particles to the first surface are inclusive of cyanoacrylates and polycyanoacrylates (paragraph [0029]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use a semi-cured cyanoacrylate to form the deformable layer of Bovero. The motivation for doing so would have been that the prior art establishes that cyanoacrylates are known binders for adhering hydrophobic/superhydrophobic particles to a surface. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Simpson with Bovero in view of Kajiwara to obtain the invention as specified by the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 10/23/2025
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788