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 21-31 are pending. Claims 1-20 are canceled.
Amendments to the claims, filed 28 April 2026, 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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
The prior art rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 27-30 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).
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]).
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 depth of the deformable layer (paragraph [0025]).
The portion of particles penetrated to a threshold depth is construed to include those claimed particles partially embedded into the coating layer (a) and those particles entirely embedded into the coating layer apart from the outer layer (d).
The disclosure of “at least a portion” is construed to include a remaining amount that is not penetrated to a threshold depth (e.g., meeting those particles (b) fixedly in contact with the top surface of the coating layer without being embedded).
FIG. 3B of Bovero, reproduced below further illustrates those particles fixedly in contact with the outer layers of (a) without being in contact with the coating layer to meet the claimed particles (c).
PNG
media_image1.png
311
785
media_image1.png
Greyscale
As to the claimed particles (d), Bovero teaches that a hierarchical morphology gives the coatings a significant advantage in that the coating can retain hydrophobicity and surface roughness even after a certain amount of corrosion and surface wear because as the exposed layers of the particles on the surface are worn away, the particles embedded beneath are in turn exposed to the surface to provide a commensurate level of surface roughness and hydrophobicity to the coating (paragraph [0028]). Therefore, one of ordinary skill in the art would be motivated to build up a coating of particles so as to include those particles (d) that are fixedly disposed in contact with those particles (b) without being in contact with said coating layer.
The claimed term “substantially uniform distributed” is broad. As the particle layer of Bovero does not explicitly require any discontinuities, the particles in the layer are construed to have a substantially uniform distribution.
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 claims 24 and 30:
Bovero further discloses that the deformable layer is an epoxy resin (paragraph [0009]). Said “epoxy resin” is construed to be a polymer material.
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 generic 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 or further structurally requirements recited by the claims.
Claims 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Bovero in view of Nambu et al. (US Patent Application Publication No. US 2006/0140891 A1) (Nambu).
Regarding instant claims 23 and 26:
Bovero discloses the composition comprising hydrophobic silica particles as cited above.
Bovero does not disclose a composition comprising hydrophobic particles of different materials, wherein said hydrophobic particles include 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 to obtain the invention as specified by the instant claims.
Claims 25 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Bovero in view of Simpson et al. (US Patent Application Publication No. US 2009/0076430 A1) (Simpson).
Regarding instant claims 25 and 31:
Bovero 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 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 to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
In response to Applicant’s arguments that the prior art does not disclose or suggest the added claim amendments, the grounds of rejection are altered to address the newly added limitations
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
First, Applicant traverses the combination of Kajiwara with Bovero as addressing fundamentally different technical problems.
Applicant’s argument is moot as the amended grounds of rejection do not rely upon the disclosure of the Kajiwara reference.
Applicant further traverses the reliance on Bovero’s disclosure of “1 nm to 50 μm” to obviate the claimed ranges. Specifically, Applicant alleges that the disclosure does not obviate the claimed range because Applicant’s specification demonstrates criticality and the broad ranges do not teach the selection of optimized subranges.
Applicant’s arguments are unpersuasive.
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP §716.02(b).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d).
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See §716.02(d)(II).
In the instant case, Applicant has not provided evidence commensurate in scope with the claimed invention. Instead, Applicant has only provided broad conclusory statements with regard to the general particle size.
Applicant further traverses the reliance on Bovero to teach the claimed peak-valley difference. Applicant alleges that the Examiner’s conclusion is unsupported by evidence, that the peak-valley difference depends on many variables, and that the claimed ranges represent optimized surface morphology.
Applicant’s arguments are unpersuasive. As cited in the rejections above, Bovero discloses a portion of particles penetrated to a threshold depth (e.g., inclusive of those embedded at least one-quarter of the average diameter with the remainder of the particle above the surface). Bovero is further construed to include a portion of particles not embedded into the surface. Therefore, given the average particle sizes disclosed, the peak-valley difference between those particles partially embedded and those that are not is construed to overlap or include the ranges recited by the claims.
Applicant’s arguments alleging optimized surface morphology are tantamount to arguments of criticality.
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." See MPEP §716.02(b).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP §716.02(d).
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See §716.02(d)(II).
In the instant case, Applicant has not provided evidence commensurate in scope with the claimed invention. Instead, Applicant has only provided broad conclusory statements with regard to the general particle size and peak-valley difference.
Applicant further traverses the Examiner’s position that the limitations of claim 29 are intended use limitations. Applicant argues that the limitations define the claimed substrates, the cited prior art does not disclose the claimed substrates, and that the coating composition must be tailored to the substrate.
Applicant’s argument is unpersuasive. Claim 29 merely recites the use of substrates (e.g., as a wing component, turbine blade, a cooling or heating system blade component, etc.) without further compositional and structural limitations that are required by those substrates to perform the intended use. Therefore, as the prior art discloses a generic substrate, said generic substrates are usable in the intended use of the claims. Arguments that the substrate are not tailored to the intended use of the substrate are unpersuasive because such an interpretation would require importation of limitations not recited by the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 07/17/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
Prosecution Insights