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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 recites that the nanoparticles have a size between 0.05 µm and 5 µm. However, a nanoparticle is typically understood to mean a particle with a size less than 1 µm. A size range that goes as high as 5 µm is broader than the range of up to 1 µm implied by the term “nanoparticle” in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Valpey et al. (US 2004/0127393).
Claims 1 and 11: Valpey teaches a method for preparing a nanoparticle-based ink (Abst.), comprising the steps of: mixing and dispersing a first dispersant (¶ 0047) in water (i.e. claimed solvent) (¶ 0047) along with nanoparticles of PTFE (i.e. claimed fluoropolymer nanoparticles) (¶ 0044) and a modifier (¶ 0033). While Valpey does not teach the claimed order of mixing components, it has been held that the selection of any order of mixing ingredients is prima facie obvious. MPEP § 2144.04(IV)(C). This is further supported by applicant’s disclosure at [0070] of the specification which teaches that each of the mixing steps can be performed simultaneously without any detrimental effect on the process. Thus, it would have been obvious to one of ordinary skill at the time of filing to have first mixed the dispersant and solvent, then added the nanoparticles, then added the modifier with the predictable expectation of success.
Claims 2 and 12: Valpey further teaches adding aluminum oxide ceramic nanoparticles (¶ 0044) to the mixture which includes the dispersant, solvent and modifier (i.e. claimed second dispersant, second solvent and second modifier). While Valpey does not teach the claimed order of mixing components, it has been held that the selection of any order of mixing ingredients is prima facie obvious. MPEP § 2144.04(IV)(C). This is further supported by applicant’s disclosure at [0070] of the specification which teaches that each of the mixing steps can be performed simultaneously without any detrimental effect on the process. Thus, it would have been obvious to one of ordinary skill at the time of filing to have first mixed the dispersant and solvent, then added the nanoparticles, then added the modifier and then mixed the second dispersion with the first with the predictable expectation of success.
Claim 3: Valpey teaches that the first dispersant is polyester (i.e. claimed hydrocarbon-based compound) (¶ 0048).
Claims 5-6: Valpey teaches that the amount of each component can be adjusted to achieve the desired composition (¶¶ 0042, 0047). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a weight ratio of dispersant to solvent of 1:5-1:500 and a weight ratio of first solvent to first modifier of 1:0.5 to 1:9 depending on the desired chemistry of the composition with the predictable expectation of success.
Claim 7: Valpey teaches that the nanoparticles are present in a weight amount of 0.001-10 weight percent of the composition (¶ 0045) and that the dispersant is present at 0.5-10 weight percent (¶ 0047). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a weight ratio of 1:0.5-1:40 with the predictable expectation of success.
Claim 8: Valpey teaches fluoropolymer particle diameters of 4-80 nm (¶ 0043). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected sizes of 50-80 nm with the predictable expectation of success.
Claim 9: Valpey is silent regarding a ratio between the different types of nanoparticles, but explains that the nanoparticles are selected for size and roughness among other features (¶¶ 0016-0018, e.g.). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a mixing ratio between 1:1 and 1:30 depending on the desired features in the composition.
Claim 10: Valpey teaches that the solvent is water, as discussed above. The office takes official notice that deionized water is a commonly selected form of water as a solvent.
Claims 13-14, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Valpey in light of Dadheech et al. (US 2019/0337013).
Claim 13: Valpey teaches that the nanoparticle dispersion is applied via any suitable means to form a self-cleaning surface (¶ 0051), but fails to expressly teach inkjet printing. Dadheech teaches forming a self-cleaning surface (Abst.) from a liquid dispersion of PTFE (¶ 0004-0006) and explains that suitable means for depositing the dispersion include ink jet printing the dispersion and heating the deposited film to cure it (¶¶ 0004-0006, 0039). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, because Valpey teaches that any suitable deposition process can be used and because Dadheech teaches that inkjet printing followed by curing is a suitable means for depositing the film, it would have been obvious to one of ordinary skill at the time of filing to have selected inkjet printing and heating in Valpey with the predictable expectation of success.
Claim 14: Valpey is silent regarding a ratio between the different types of nanoparticles, but explains that the nanoparticles are selected for size and roughness among other features (¶¶ 0016-0018, e.g.). 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a mixing ratio between 1:1 and 1:30 depending on the desired features in the composition.
Claim 18: Dadheech fails to teach the specific time and temperature for curing. However, one of ordinary skill in the art would have readily understood that the curing conditions can be adjusted based on the material selected, the amount of energy to be used and how quickly the curing needs to occur. 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a curing temperature of 180-420˚C and a duration of 1-12 hours with the predictable expectation of success.
Claim 19: Valpey fails to discuss the dielectric constant of the film. However, Valpey teaches the same materials deposited via the same process as those which applicant discloses will yield the claimed properties. Therefore, these properties are considered inherent in Valpey.
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Valpey and Dadheech in light of Akiyama et al. (US 2014/0340854).
Claims 15 and 17: Valpey, as modified by Dadheech, fails to teach adjusting the air content in the film. Akiyama teaches a process of ink jet deposition to form a layer and explains that the process can control the density of droplets (i.e. claimed spacing between droplets and claimed controlling the air content) in order to control the layer thickness (¶ 0044). Thus, it would have been obvious to one of ordinary skill at the time of filing to have adjusted the density of droplets in Valpey, as modified by Dadheech, in order to have controlled the thickness of the film.
Allowable Subject Matter
Claims 4 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712