DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19, in the reply filed on 5/29/2026 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 12 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 12 contains the trademark/trade name Gentoo® polymer. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982).
The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe certain low surface-energy polymer as Gentoo® polymer, accordingly, the identification/description is indefinite. For purpose of examination, the examiner considers prior art teaching of any low surface-energy polymer that otherwise meets the claimed limitations as to reads on the claimed material of claim 12.
Appropriate clarification and correction are required.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1 and 7-8 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Haghdoost et al. (US 2019/0078226; “Haghdoost”).
Regarding claim 1, Haghdoost teaches an article (para [0014], [0053], [0067], [0069]) comprising
- a solid-infused surface, the solid- infused surface comprising:
- a. a substrate comprising a roughened surface having multi-scale surface roughness (para [0014], the multi-scale surface feature/roughness) and a plurality of substrate asperities (para [0014] and see Fig. 2B, Fig 2C, the plurality of substrate asperities 300/301/302/303, meeting the claimed limitations); and
- b. a low surface-energy polymer (para [0020] [0053], the coating layer 400, Fig. 2C, and see claim 17 of Haghdoost) coating a portion of the roughened surface forming the solid-infused surface having a fraction of the plurality of substrate asperities exposed on the solid-infused surface (para [0014] para [0053], [0067], [0069] the coating layer 400 coating a portion (i.e., not the entire surface) of the roughened surface of the substrate, as seen in Fig. 2C, and the plurality of substrate asperities are not entirely covered/coated with the coating layer 40, and thus, meeting the claimed limitations of forming the solid-infused surface having a fraction of the plurality of substrate asperities exposed on the solid-infused surface).
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Regarding claims 7-8, Haghdoost teaches the suitable material for the substrate includes a copper, metal, metal alloy, metallic compound, or combinations thereof (para [0013], [0015], see claims 5-6 of Haghdoost), meeting the claimed material limitations.
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.
Claim(s) 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over Haghdoost as applied to claim 1 above.
The limitations of claim 1 are taught by Haghdoost as discussed above.
Regarding claim 2, Haghdoost does not specifically teach the maximum peak to valley height as instantly claimed.
Haghdoost teaches the peak to valley height is a result effective variable and can be controlled to provide the substrate with desired level of roughness, and in that, Haghdoost teaches its substrate comprising a roughened surface having multi-scale surface roughness having valleys with various height (para [0053], Fig. 2C, para [0014], the multi-scale surface feature/roughness having valleys with various height).
Absent a showing of criticality with respect to the maximum peak to valley height (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the maximum peak to valley height through routine experimentation in order to achieve the desired properties (i.e., desired level of roughness) of the substrate surface of the article once produced, which would have arrived at a workable maximum peak to valley height if measured in the same manner as instantly claimed, that falls within the broad range as instantly claimed, i.e., about 5 µm to about 25 µm. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 3, Haghdoost does not specifically teach the average roughness of the roughened surface, as instantly claimed.
Haghdoost teaches the average roughness can be controlled to provide the substrate with desired level of roughness, and in that, Haghdoost teaches its substrate comprising a roughened surface having multi-scale surface roughness having valleys with various height (para [0053], Fig. 2C, para [0014], the multi-scale surface feature/roughness having valleys with various height).
Absent a showing of criticality with respect to the average roughness (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the average roughness through routine experimentation in order to achieve the desired properties (i.e., desired level of roughness) of the substrate surface of the article once produced, which would have arrived at a workable average roughness that falls within the broad range as instantly claimed, i.e., about 2 µm to about 12 µm. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 4, Haghdoost does not specifically teach the root mean square roughness of the roughened surface, as instantly claimed.
Haghdoost teaches the surface roughness can be controlled to provide the substrate with desired level of roughness, and in that, Haghdoost teaches its substrate comprising a roughened surface having multi-scale surface roughness having valleys with various height (para [0053], Fig. 2C, para [0014], the multi-scale surface feature/roughness having valleys with various height).
Absent a showing of criticality with respect to the root mean square roughness (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the root mean square roughness through routine experimentation in order to achieve the desired properties (i.e., desired level of roughness) of the substrate surface of the article once produced, which would have arrived at a workable root mean square roughness that falls within the broad range as instantly claimed, i.e., about 2 µm to about 12 µm. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 5, Haghdoost does not specifically teach the roughened surface has a specific fractal dimension, as instantly claimed.
Haghdoost teaches the surface roughness can be controlled to provide the substrate with desired level of roughness, and in that, Haghdoost teaches its substrate comprising a roughened surface having multi-scale surface roughness having valleys with various height (para [0053], Fig. 2C, para [0014], the multi-scale surface feature/roughness having valleys with various height).
Absent a showing of criticality with respect to the fractal dimension (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the fractal dimension through routine experimentation in order to achieve the desired properties (i.e., desired level of roughness) of the substrate surface of the article once produced, which would have arrived at a workable fractal dimension that falls within the broad range as instantly claimed, i.e., about 1.5 to about 2.5. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 6, Haghdoost does not specifically teach the ratio of a solid area fraction of the exposed substrate asperities on the solid-infused surface, as instantly claimed. But Haghdoost teaches the inclusion of low surface-energy polymer (para [0020] [0053], the coating layer 400, Fig. 2C, and see claim 17 of Haghdoost) coating a portion of the roughened surface forming the solid-infused surface having a fraction of the plurality of substrate asperities exposed on the solid-infused surface (para [0014] para [0053], [0067], [0069] as seen in Fig. 2C). Haghdoost teaches this covering layer binds the porous structures and detached structures of the coating together into a unified structure (para [0053]).
Absent a showing of criticality with respect to the ratio of a solid area fraction of the exposed substrate asperities on the solid-infused surface (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the ratio of a solid area fraction of the exposed substrate asperities on the solid-infused surface through routine experimentation in order to achieve the desired properties (i.e., surface properties) of the substrate surface of the article once produced, which would have arrived at a workable ratio of a solid area fraction of the exposed substrate asperities on the solid-infused surface that falls within the broad range as instantly claimed, i.e., about 0.02 to about 0.20. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Claim(s) 9-19 are rejected under 35 U.S.C. 103 as being unpatentable over Haghdoost as applied to claim 1 above in view of Paxson et al. (US 2017/0043373; “Paxson”).
The limitations of claim 1 are taught by Haghdoost as discussed above.
Regarding claim 9, Haghdoost teaches the suitable material for the substrate includes a copper, metal, metal alloy, metallic compound, or combinations thereof (para [0013], [0015]). Haghdoost does not specifically teach the specific substrate material such as steel, brass, and/or bronze as instantly claimed.
In the same field of surface modification to alter surface-fluid interaction for industrial applications, Paxson teaches an article having a metal substrate and a low surface- energy polymer coating (para [0015] [0091]). Paxson teaches that copper, steel, brass, and/or bronze are all among the suitable alternative suitable substrate material (para [0014] [0045]).
It would have been obvious to one of ordinary skill in the art to modify the article of Haghdoost in view the teachings of Paxson, to select and include suitable substrate material as taught by Paxon, such as steel as taught by Paxon (para [0014] [0045]), because Paxson teaches that copper and steel are all among the suitable alternative suitable substrate material (para [0014] [0045]), which would have predictably arrived at a satisfactory article that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable material for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 10, Haghdoost teaches the inclusion of low surface-energy polymer coating (para [0053], the coating layer 400, Fig. 2C). Haghdoost does not specifically teach the low surface-energy polymer has the specific water contact angle of about 94° to about 140°, as instantly claimed.
In the same field of surface modification to alter surface-fluid interaction for industrial applications, Paxson teaches an article having a metal substrate and a low surface- energy polymer coating (para [0015] [0091]). Paxson teaches that copper, steel, brass, and/or bronze are all among the suitable alternative suitable substrate material (para [0014] [0045]). Paxson further teaches the suitable low surface-energy polymers include polyethylene (PE), polytetrafluoroethylene (PTFE), polyester, polyurethane (para [0014]).
It would have been obvious to one of ordinary skill in the art to modify the article of Haghdoost in view the teachings of Paxson, to select and include suitable low surface-energy polymer coating material as taught by Paxon, such as polyethylene (PE), polytetrafluoroethylene (PTFE), polyester, and/or polyurethane as taught by Paxon (para [0014]), because Paxson teaches that polyethylene (PE), polyester, polytetrafluoroethylene(PTFE), and/or polyurethane are among the suitable surface-energy polymer coating materials for metal substrate (para [0014]), which would have predictably arrived at a satisfactory article that is the same as instantly claimed, having the same substrate and the same low surface-energy polymer coating as that of the instant application (see instant claim 11). Because the low surface-energy polymer of modified Haghdoost and the instantly claimed low surface-energy polymer are identical or substantially identical in composition, one would expect that the low surface-energy polymer of modified Haghdoost would possess the same or similar properties as the instantly claimed low surface-energy polymer, such that having the same or similar water contact angle as instantly claimed, i.e., about 94° to about 140°. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01.
Regarding claims 11-12, Haghdoost teaches the inclusion of low surface-energy polymer coating (para [0053], the coating layer 400, Fig. 2C). Haghdoost does not specifically teach the specific low surface-energy polymer as instantly claimed.
In the same field of surface modification to alter surface-fluid interaction for industrial applications, Paxson teaches an article having a metal substrate and a low surface- energy polymer coating (para [0015] [0091]). Paxson teaches that copper, steel, brass, and/or bronze are all among the suitable alternative suitable substrate material (para [0014] [0045]). Paxson further teaches the suitable low surface- energy polymers include polyethylene (PE), polytetrafluoroethylene (PTFE), polyester, polyurethane (para [0014]).
It would have been obvious to one of ordinary skill in the art to modify the article of Haghdoost in view the teachings of Paxson, to select and include suitable low surface-energy polymer coating material as taught by Paxon, such as polyethylene (PE), polytetrafluoroethylene (PTFE), polyester, and/or polyurethane as taught by Paxon (para [0014]), because Paxson teaches that polyethylene (PE), polyester, polytetrafluoroethylene(PTFE), and/or polyurethane are among the suitable surface-energy polymer coating materials for metal substrate (para [0014]), which would have predictably arrived at a satisfactory article that is the same as instantly claimed, in claims 11-12. See 35 U.S.C. 112(b) rejection of claim 12 made of record in this Office Action. One of ordinary skill would have understood how to modify and choose suitable material for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claims 13-14, Haghdoost teaches an article (para [0014], [0053], [0067], [0069]) comprising a solid-infused surface comprising a substrate comprising a roughened surface having multi-scale surface roughness (para [0014], the multi-scale surface feature/roughness) and a plurality of substrate asperities (para [0014] and see Fig. 2B, Fig 2C, the plurality of substrate asperities 300/301/302/303); and a low surface-energy polymer (para [0020] [0053], the coating layer 400, Fig. 2C, and see claim 17 of Haghdoost) coating a portion of the roughened surface forming the solid-infused surface having a fraction of the plurality of substrate asperities exposed on the solid-infused surface (para [0014] para [0053], [0067], [0069]). Modified Haghdoost, as discussed above, teaches an article having the substrate of the same material and the low surface-energy polymer coating of the same material as that of the instant application
Because modified Haghdoost teaches an article having the substrate of the same material and having the low surface-energy polymer coating of the same material as that of the instant application, one would expect that the solid-infused surface of the modified article of Haghdoost would possess the same or similar properties as the instantly claimed the solid-infused surface, such that, i.e., having the same or similar asymptotic fouling resistance reduction rate as instantly claimed (in claim 13, i.e., the solid-infused surface has an asymptotic fouling resistance that is reduced by at least 10% when compared to the asymptotic fouling resistance of a smooth untreated surface of an otherwise same substrate when measured under otherwise same conditions); and having the same or similar rate of reduction in a foulant accumulation as instantly claimed (in claim 14, i.e., the solid-infused surface exhibits a reduction in a foulant accumulation of at least 30% when compared to a foulant accumulation for a smooth untreated surface of an otherwise same substrate when measured under otherwise same conditions). "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01.
Regarding claim 15, Haghdoost teaches its low surface-energy polymer coating is anti-fouling and suitable for various anti-fouling applications that provides fouling resistance and reduces foulant accumulation of various foulants (para [0055], [0069], see claim 17 and 29 of Haghdoost).
It would have been obvious to one of ordinary skill in the art to modify the article of Haghdoost, to apply the article against selected foulant such as sulfates, nitrates, phosphates, calcium, lime, and/or a combination thereof, depending on the intended end applications of the article, which would have predictably arrived at a satisfactory article that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claims 16-19, Haghdoost teaches an article with the inclusion of low surface-energy polymer coating (para [0053], the coating layer 400, Fig. 2C). Haghdoost does not specifically teach an article in the manner as instantly claimed in claims 16-19.
In the same field of surface modification to alter surface-fluid interaction for industrial applications, Paxson teaches an article having a metal substrate and a low surface- energy polymer coating (para [0015] [0091]). Paxson teaches that copper, steel, brass, and/or bronze are all among the suitable alternative suitable substrate material (para [0014] [0045]). Paxson further teaches the suitable low surface- energy polymers include polyethylene (PE), polytetrafluoroethylene (PTFE), polyester, polyurethane (para [0014]). Paxson teaches its application is suitable for making various articles and components such as, pipe, pipeline, conduit, solar panel, and cookware (para [0041] [0139]), meeting the claimed limitations of claims 16-19.
It would have been obvious to one of ordinary skill in the art to modify the article of Haghdoost in view the teachings of Paxson, to make suitable articles as desired depending on the intended end applications, such as to make pipe, pipeline, conduit, solar panel, and/or cookware, as taught by Paxon (para [0041] [0139]), which would have predictably arrived at a satisfactory article that is the same as instantly claimed, in claims 16-19. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782
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