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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/13/26 has been entered.
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.
Claim 16 is 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 16: Claim 16 depends from claim 1 which recites that the mixture comprises isopropanol (i.e. isopropyl alcohol) whereas claim 16 recites that the mixture further comprises an organic additive which can be isopropyl alcohol and thus renders the claim indefinite because it is unclear if applicant intends to arbitrarily split the isopropanol into two separate constituents or if applicant intended a mixture of isopropanol and another alcohol.
For the purpose of examination, if the mixture comprises isopropanol, it will be considered to read on both the solvent and the organic additive in claims 1 & 16.
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 1-14 & 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson (US PG Pub 2012/0024312; hereafter ‘312) in view of Valdes et al. (US PG Pub 2003/0203980; hereafter ‘980).
Claim 1: ‘312 is directed towards a method of coating a surface to repel dust (title), the method comprising:
preparing a mixture of a titania sol, colloidal silica, and isopropanol (see ¶s 6-9 & 27) wherein the concentration of titania is dependent on the desired properties and the concentration of silica is dependent on the desired properties (see ¶s 40-42 & 57);
applying the solution as a coating to the surface (¶ 43); and
adhering the coating to the surface (¶ 43),
wherein the coating repels dust from the surface by gravitational removal without ultraviolet irradiation when the surface is tilted (see claim 12; removing dust particles by tilting without exposing to UV light – applicant is advised that claim 12 teaches removing the dust by a list of alternatives and thus also teaches the negative of “without exposure to UV light” as instantly claimed by gravitational force during tilting.
Though ‘312 is silent concerning the concentrations of silica and titania to obtain the desired results, it does teach that desired results are proportionate to the concentrations of silica and titania. Thus, concentrations of silica and titania are result-effective variables based on results desired and it is obvious to optimize the concentrations of silica and titania to obtain the desired results.
"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." See MPEP 2144.05(II)(B).
‘312 does not teach how the solution is prepared by filtering a mixture of a titanium dioxide sol, colloidal silica, and a solvent into a solution.
However, ‘980, which is directed towards a process of producing a silica-titania sols and coatings of said sols (title & ¶ 50) teaches when preparing said sols, the mixture is prepared and then filtered to remove undissolved particles from the sol (¶ 23).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘980 when preparing the sol of ‘312 and filtering a mixture of a titanium dioxide sol, colloidal silica, and a solvent into a solution because it is an art recognized step during the preparation of a titania-silica sol for use as a coating to control agglomeration and would have predictably improved the process of ‘312.
It would have been obvious to one of ordinary skill in the art at the time of filing to perform the steps of preparing the coating solution in any order because selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP §2144.04(IV))(C).
Claim 2: The coating is formed by dip coating (¶ 42, ‘312).
Claim 3: The coating is operable to repel dust in a vacuum (¶ 21, ‘312).
Claim 4: The coating is operable to repel dust in air (¶ 21, ‘312).
Claim 5: The coating is operable for application to a surface in a vacuum (¶ 42).
Claim 6: Adhering the coating to the surface comprises heating the coating on the surface (¶ 31, ‘312).
Claim 7: The coating is operable to reflect at least one of IR or UV radiation (titania is operable to reflect at least IR).
Claim 8: The coating is operable to prevent surface discoloration (the coating has a thickness and thus inherently prevents discoloration to some extent).
Claim 9: The coating is operable to prevent friction between the surface and another surface (the coating is a barrier and thus prevents friction by its mere presence).
Claim 10: The coating is operable to prevent bacteria from adhering to the surface (¶ 54 & 56).
Claim 11: The coating is operable to protect the surface from physical abrasion (the coating has a thickness and thus acts as a barrier).
Claim 13: The mixture includes magnesium fluoride (a metal salt; ¶ 23).
Claim 14: The mixture can further comprise zirconia (¶ 6).
Claim 16: The mixture can comprise isopropyl alcohol (¶ 27).
Alternatively, claim 16 depends from claim 13 and claim 16 is contingent on the selection made in claim 13 which is met as discussed above by a metal oxide.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.
Therefore, it is apparent that the combination renders obvious the claim.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over ‘312) in view of ‘980 as applied above and further in view of Lovetinska-Slamborova et al. (US PG Pub 2015/0064279; hereafter ‘279).
Claim 15: ‘312 teaches the use of titania for the photo-catalytic effect as an antibacterial as discussed above.
‘312 does not teach adding a coper, silver, or chromium salt to the coating.
However, ‘279, which is directed towards antibacterial layers (title) teaches that the addition of copper, silver, or chromium salts with titania increases the antibacterial effects of a coating (¶s 9 & 10).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘279 and add copper, silver, or chromium salts to the coating solution because the salts are art recognized to improve the antibacterial effect of a coating when combined with titania and thus would have predictably improved the coating of ‘312.
Response to Arguments
Applicant's arguments filed 12/18/25 have been fully considered but they are not persuasive.
In regards to applicant’s argument that ‘312 does not teach dust removal without UV; the Office does not find this argument convincing because as noted above, ‘312 recites dust removal by tilting without the use of UV and thus teaches removal by gravitational force without UV when the surface is tilted because a list of alternatives teaches exclusion of the alternatives.
In regards to applicant’s argument that ‘312 does not recognize using titania concentrations as low as claimed; applicant is advised that ‘312 teaches that the concentrations are result effective variables based on the desired results and teaches that UV exposure is not the only means for dust removal and thus renders obvious the claimed values unless there is a showing of criticality of the concentration and no showing of criticality has been show. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759