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 .
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 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.
Claims 1, 2, 4-6, 8-11, 13, 16, 18, 20-22, 24-26, 28, 29 are pending.
Election/Restrictions
Applicant’s election, without traverse, of 1, 2, 4-6, 8-11, 13, 16, 18 in the reply filed on 07/16/25 is acknowledged.
Claim(s) 20-22, 24-26, 28, 29 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/16/25.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5, 6, 13, 16, 18 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Hierarchical Structures, with Submillimeter Patterns, Micrometer Wrinkles, and Nanoscale Decorations, Suppress Biofouling and Enable Rapid Droplet Digitization (hereinafter Hierarch).
The Hierarch reference is prior art because it includes inventors that are not amongst the present inventors and was available to the public on the received date of August 10, 2020 (see publication history in the upper right portion of page 2) (See MPEP 2128.02(II)).
Hierarch discloses an article comprising a material having a surface (as in claim 18) formed by heat shrinking a polystyrene substrate (as in claim 2) provided with a polysiloxane layer having a filament/rod shaped structure/nanoscale feature (i.e., the fluoroalkyl chain on the silane monomer that forms the polysiloxane portion of the material) (as in claims 5-6) that has microscale and nanoscale features as claimed and a hierarchical structure as claimed as well as superhydrophobic properties (thus antifouling for water based foulants as in claim 13 and repellent to water based liquids comprising biospecies as in claim 16) by heating shrinking the substrate after the siloxane coating has been applied (see title, abstract, second paragraph of section 2.1 and reagents section of conclusion).
Claim(s) 1, 2, 5, 6, 13, 16, 18 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Flexible Hierarchical Wraps Repel Drug-Resistant Gram-Negative and Positive Bacteria (hereinafter Flexible).
Flexible discloses an article comprising a material having a surface (as in claim 18) formed by heat shrinking a polystyrene substrate (as in claim 2) provided with a polysiloxane layer having a filament/rod shaped structure/nanoscale feature (i.e., the fluoroalkyl chain on the silane monomer that forms the polysiloxane portion of the material) (as in claims 5-6) that has microscale and nanoscale features as claimed and a hierarchical structure as claimed as well as superhydrophobic properties (thus antifouling for water based foulants as in claim 13 and repellent to water based liquids comprising biospecies as in claim 16) by heating shrinking the substrate after the siloxane coating has been applied (see title, abstract, FIG. 1, page 456-457, 461).
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hierarchical Structures, with Submillimeter Patterns, Micrometer Wrinkles, and Nanoscale Decorations, Suppress Biofouling and Enable Rapid Droplet Digitization (hereinafter Hierarch) as applied to claim 1 in view of McLane et al. (U.S. 2016/0158969).
Regarding claim 4, Hierarch discloses all of the above subject matter but does not explicitly disclose that the polymer substrate is bidirectionally strained prior to heat shrinking. However, Hierarch discloses that the micro/nano/hierarchical structure is formed on the planar surface via the heat shrinking and the heat shrinking occurs in the direction(s) that the polymer substrate is stretched/strained/oriented. Thus, because the micro/nano/hierarchical structure is disclosed as being desirable in the substrate of Hierarch and because the structure is applied to a 2-dimensional surface, it would have been obvious to have used a bidirectionally strained substrate (as opposed to a substrate strained in only one direction) so that the micro/nano/hierarchical structure would be provided in both dimension of the 2-dimensional structure/surface.
Additionally, although this is already obvious as explained above, McLane is also directed to superhydrophobic surfaces created via heat shrinking a polymer substrate to form micro and nano scale features and teaches that the substrate may be shrunk in 2 directions to provide the desired shrinking and resulting micro and nano scale features (see abstract, [0060]-[0064]) which would require that the substrate is pre-strained in those directions to provide 2 directions of shrinking. Thus, it would have been obvious to have used a 2 directional heat shrinking/strained polymer substrate for the material of Hierarch because McLane teaches that 2 directions of shrinking provides the desired micro and nano scale features.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hierarchical Structures, with Submillimeter Patterns, Micrometer Wrinkles, and Nanoscale Decorations, Suppress Biofouling and Enable Rapid Droplet Digitization (hereinafter Hierarch) as applied to claim 1 in view of Polysiloxane Nanofilaments Infused with Silicone Oil Prevent Bacterial Adhesion and Suppress Thrombosis on Intranasal Splints (hereinafter Polysiloxane).
The Polysiloxane reference is prior art because it includes inventors that are not amongst the present inventors and was available to the public on the received date of October 15, 2020 (see publication history in the bottom right portion of page 1) (See MPEP 2128.02(II)).
Regarding claim 8-11, Hierarch discloses all of the above subject matter but does not disclose using a non-fluorinated polysiloxane to form the superhydrophobic surface. However, Polysiloxane is also directed to superhydrophobic surfaces based on filament/rod shaped nanoscale features (i.e., alkyl chains on a silane monomer compared to the fluoroalkyl chain on the silane monomer in the primary reference) and teaches that a fluorine free and highly stable coating may be achieved by using propyltrichlorosilane (as in claims 8-10) on a plasma treated substrate followed by an optional silicone oil lubricant to provide superhydrophobicity and prevent bacterial adhesion for medical devices (see abstract, FIG. 1, pages 542-543). Thus, it would have been obvious to have used the alkyl chain silane monomers and optional silicone lubricant applied onto a plasma treated substrate instead of the fluorosilane coating of Hierarch because Polysiloxane teaches that such materials are able to provide superhydrophobicity and prevent bacterial adhesion for medical devices and also avoid the use of fluorine materials and also provide nanoscale chains as desired by Hierarch. As taught by Hierarch, the silane coating (i.e., the alkylsilane coating from Polysiloxane) would be applied before shrinking the substrate. The resulting material would inherently have the properties of claim 11 because it includes the same silane materials, substrate materials, surface activation via plasma, and heat shrinking steps as in the present application, which aspects are shown in the present application as resulting in the claimed properties.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flexible Hierarchical Wraps Repel Drug-Resistant Gram-Negative and Positive Bacteria (hereinafter Flexible), as applied to claim 1, in view of McLane et al. (U.S. 2016/0158969).
Regarding claim 4, Flexible discloses all of the above subject matter but does not explicitly disclose that the polymer substrate is bidirectionally strained prior to heat shrinking. However, Flexible discloses that the micro/nano/hierarchical structure is formed on the planar surface via the heat shrinking and the heat shrinking occurs in the direction(s) that the polymer substrate is stretched/strained/oriented. Thus, because the micro/nano/hierarchical structure is disclosed as being desirable in the substrate of Flexible and because the structure is applied to a 2-dimensional surface, it would have been obvious to have used a bidirectionally strained substrate (as opposed to a substrate strained in only one direction) so that the micro/nano/hierarchical structure would be provided in both dimension of the 2-dimensional structure/surface.
Additionally, although this is already obvious as explained above, McLane is also directed to superhydrophobic surfaces created via heat shrinking a polymer substrate to form micro and nano scale features and teaches that the substrate may be shrunk in 2 directions to provide the desired shrinking and resulting micro and nano scale features (see abstract, [0060]-[0064]) which would require that the substrate is pre-strained in those directions to provide 2 directions of shrinking. Thus, it would have been obvious to have used a 2 directional heat shrinking/strained polymer substrate for the material of Flexible because McLane teaches that 2 directions of shrinking provides the desired micro and nano scale features.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flexible Hierarchical Wraps Repel Drug-Resistant Gram-Negative and Positive Bacteria (hereinafter Flexible) as applied to claim 1 in view of Polysiloxane Nanofilaments Infused with Silicone Oil Prevent Bacterial Adhesion and Suppress Thrombosis on Intranasal Splints (hereinafter Polysiloxane).
The Polysiloxane reference is prior art because it includes inventors that are not amongst the present inventors and was available to the public on the received date of October 15, 2020 (see publication history in the bottom right portion of page 1) (See MPEP 2128.02(II)).
Regarding claim 8-11, Flexible discloses all of the above subject matter but does not disclose using a non-fluorinated polysiloxane to form the superhydrophobic surface. However, Polysiloxane is also directed to superhydrophobic surfaces based on filament/rod shaped nanoscale features (i.e., alkyl chains on a silane monomer compared to the fluoroalkyl chain on the silane monomer in the primary reference) and teaches that a fluorine free and highly stable coating may be achieved by using propyltrichlorosilane (as in claims 8-10) on a plasma treated substrate followed by an optional silicone oil lubricant to provide superhydrophobicity and prevent bacterial adhesion for medical devices (see abstract, FIG. 1, pages 542-543). Thus, it would have been obvious to have used the alkyl chain silane monomers and optional silicone lubricant applied onto a plasma treated substrate instead of the fluorosilane coating of Flexible because Polysiloxane teaches that such materials are able to provide superhydrophobicity and prevent bacterial adhesion for medical devices and also avoid the use of fluorine materials and also provide nanoscale chains as desired by Flexible. As taught by Flexible, the silane coating (i.e., the alkylsilane coating from Polysiloxane) would be applied before shrinking the substrate. The resulting material would inherently have the properties of claim 11 because it includes the same silane materials, substrate materials, surface activation via plasma, and heat shrinking steps as in the present application, which aspects are shown in the present application as resulting in the claimed properties.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787