DETAILED ACTION
This is in response to communication received on 8/25/25.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 11/26/24 and 3/24/25.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Aizenberg et al. US Patent Number 9,121,307 hereinafter AIZENBERG in view of Muisener et al. US 2007/0141114 hereinafter MUISENER on claim 1 is maintained. The rejection is repeated below for convenience.
As for claim 1, AIZENBERG teaches "The present disclosure describes a strategy to create self-healing, slippery liquid-infused porous surfaces (SLIPS). Roughened ( e.g., porous) surf aces can be utilized to lock in place a lubricating fluid" (abstract, lines 1-4) and "In certain embodiments, the roughened surface is a hierarchical surface containing surface features on multiple length scales" (column 15, lines 39-41 ), i.e. a method of fabricating a material having a surface with hierarchical structures.
AIZENBERG teaches "After cooling, the negative PDMS mold can be peeled off and used for fabricating the final replica by pouring the desired material (e.g. UV-curable epoxy resin) into the negative mold. After solidifying the material, the negative mold can be 65 peeled off, leaving the replica of the original pattern" (paragraph 16, lines 60-65), i.e. a) depositing a moldable polymer onto a mold ... b) solidifying the moldable polymer onto the mold to provide a solidified polymer, c) removing the solidified polymer from the mold to expose at least a surface of the solidified polymer with hierarchical structures.
AIZENBERG further teaches "In certain embodiments, the roughened surface is a hierarchical surface containing surface features on multiple length scales. By way of example, the surface can have a first topological feature having dimensions on the microscale and a second topological feature on the nanoscale. The first topological feature supports the second smaller topological feature. AIZENBERG is silent on how the solidification takes place" (column 15, lines 39-45) "In certain embodiments, the roughened surface may be formed over any desired shapes" (column 15, lines 29-30), i.e. wherein when the mold is used to produce the hierarchal features, the mold comprising microscale wrinkles and nanoscale features.
AIZENBERG is specifically silent on solidifying the resin by curing.
MUISENER teaches "The present invention relates to an article having at least one surface, wherein said surf ace is at least partially coated with a ultra high hydrophobic film having a surface roughness such that the film exhibits a static water contact angle at least equal to 115°, preferably 120°, even better 125°, and wherein said film is a nanostructured film" (abstract, lines 1-6).
MUISENER teaches "According to the invention, a nanostructured film with multiple length scales of roughness can also be obtained by using an article already provided with nanopatterns, which have been formed by molding, transfer molded or embossing" (paragraph 114, lines 1-5) and "Creation of nanostructures by direct molding transfer or embossing is well known in the art and is described for example in WO2004/002706 or EP0400672. In one embodiment, nanostructure transfer is performed by coating at least part of the surface of an article with a layer of resin, which is then cured in contact with a mold piece bearing a nanostructure. The resin may be a silicone or acrylic resin, but is not limited to" (paragraph 116).
It would have been obvious to one of ordinary skill in the art before the effective filing date to use curing as the means of solidifying the polymers of AIZENBERG to produce a cured polymer because MUISENER teaches that it was well known in the art to use curing as part of molding nanostructures from polymers.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Aizenberg et al. US Patent Number 9,121,307 hereinafter AIZENBERG and Muisener et al. US 2007/0141114 hereinafter MUISENER as applied to claim 1 above, and further in view of Gabardo et al. US PGPub 2019/0154622 hereinafter GABARDO on claims 3-5, 8-9, 11, 14, 16, 18 and 25 is maintained. The rejection is repeated below for convenience.
As for claim 2, AIZENBERG teaches "Then, the surface of the replica can be chemically functionalized with low surf ace energy coating such as (tridecafluoro-1, 1,2, 2-tetrahydrooctyl)-trichlorosilane or other reagents having appropriate reactive end groups and straight or branched hydrocarbon or fluorocarbon chains or their combinations" (column 16, line 65 - column 17, line 3), i.e. coating at least a portion of the ... surface with a lubricant-tethering molecule to obtain at least one lubricant- tethering molecular layer on at least a portion of the ... surface of the cured polymer.
AIZENBERG is silent on activating at least the surface of the cured polymer by oxidation.
MUISENER teaches "The surface of the article onto which the inventive film will be deposited may optionally be subjected to a pre-treatment step intended to improve adhesion, for example a high-frequency discharge plasma treatment, a glow discharge plasma treatment, a corona treatment, an electron beam treatment, an ion beam treatment, an acid or base treatment" (paragraph 143).
GABARDO teaches "heating the modified substrate to a temperature sufficient to cause contraction of the polymer substrate and to result in micro- and/or nano-texturing in the conductive film" (abstract, lines 7-10).
GABARDO teaches "The shrinkable polymer substrate is first prepared ... The substrate may be cleaned using ethanol and di-ionized water. The surface of the substrate is then activated to permit subsequent modification. Activation may be achieved by treatment with air plasma for surface activation and modification to include reactive groups (such as hydroxyl groups) to which a linker entity may subsequently be attached" (paragraph 32, lines 3-8), i.e. wherein activating at least the surface of the cured polymer by oxidation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include activating at least the surface of the cured polymer by oxidation in the process of AIZENBERG and MUISENER because GABARDO teaches that such a process allows for the forming of reactive groups that permit subsequent modification/deposition.
As for claim 3, AIZENBERG teaches "Surface coating can be achieved by methods well known in the art, including plasma assisted chemical vapor deposition, chemical functionalization, solution deposition, layer deposition, vapor deposition, mechanical, and electro-chemical methods ... surfaces containing hydroxyl groups (i.e., -OH) can be functionalized with various commercially available fluorosilanes ( e.g., tridecafluoro-1, 1,2,2-tetrahydrooctyltrichlorosilane, " ( column 31, lines 26-30), i.e. wherein the coating of the surface with the lubricant-tethering molecule comprises chemical vapor deposition of the lubricant tethering molecule onto the surface.
As for claim 4, AIZENBERG teaches "Then, the surface of the replica can be chemically functionalized with low surf ace energy coating such as (tridecafluoro-1, 1,2, 2-tetrahydrooctyl)-trichlorosilane or other reagents having appropriate reactive end groups and straight or branched hydrocarbon or fluorocarbon chains or their combinations" (column 16, line 65- column 17, line 3), i.e. wherein the lubricant-tethering molecule comprises a fluorosilane.
As for claim 5, Examiner notes that the scope of this claim is very broad. There is no limitation present that requires that polysiloxane be used as the lubricant-tethering molecule. As such, the scope of the claim only requires that a polysiloxane that if formed using on or more compounds of Formula II exist as an option, which it is the position of the Examiner that the existence of such materials are inherent to AIZENBERG.
As for claim 8, AIZENBERG teaches "The present disclosure describes a strategy to create self-healing, slippery liquid-infused porous surfaces (SLIPS). Roughened ( e.g., porous) surfaces can be utilized to lock in place a lubricating fluid, referred to herein as Liquid B" (abstract, lines 1-4) and "the article includes a solid surface 100 having surface features 110 that provide a certain roughness (i.e., roughened surface) with Liquid B 120 applied thereon. Liquid B wets the roughened surface, filling the hills, valleys, and/or pores of the roughened surface, and forming an ultra-smooth surface 130 over the roughened surface. Due to the ultra-smooth surface resulting from wetting the roughened surface with Liquid B" (column 11, lines 60-67), i.e. wherein further comprising depositing a lubricating layer on at least one lubricant-tethering molecule layer after the coating.
As for claim 9, AIZENBERG teaches "In addition, long-chain perfluorinated carboxylic acids (e.g., perfluorooctadecanoic acid and other homologues), fluorinated phosphonic and sulfonic acids, fluorinated silanes, and combinations thereof can be used as Liquid B" ( column 26, lines 10-15), i.e. wherein the lubricating layer comprising... fluorinated organic liquid.
As for claim 11, AIZENBERG is silent on activating at least the surface of the cured polymer by oxidation.
MUISENER teaches "The surface of the article onto which the inventive film will be deposited may optionally be subjected to a pre-treatment step intended to improve adhesion, for example a high-frequency discharge plasma treatment, a glow discharge plasma treatment, a corona treatment, an electron beam treatment, an ion beam treatment, an acid or base treatment" (paragraph 143).
GABARDO teaches "heating the modified substrate to a temperature sufficient to cause contraction of the polymer substrate and to result in micro- and/or nano-texturing in the conductive film" (abstract, lines 7-10).
GABARDO teaches "The shrinkable polymer substrate is first prepared ... The substrate may be cleaned using ethanol and di-ionized water. The surface of the substrate is then activated to permit subsequent modification. Activation may be achieved by treatment with air plasma for surface activation and modification to include reactive groups (such as hydroxyl groups) to which a linker entity may subsequently be attached" (paragraph 32, lines 3-8), i.e. wherein activating at least the surface of the cured polymer by oxidation and further wherein the activating of at least the surface of the cured polymer comprises plasma treatment.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include activating at least the surface of the cured polymer by oxidation wherein the activating of at least the surface of the cured polymer comprises plasma treatment in the process of AIZENBERG and MUISENER because GABARDO teaches that such a process allows for the forming of reactive groups that permit subsequent modification/deposition.
As for claim 14, AIZENBERG teaches "After cooling, the negative PDMS mold can be peeled off and used for fabricating the final replica by pouring the desired material (e.g. UV-curable epoxy resin) into the negative mold. After solidifying the material, the negative mold can be 65 peeled off, leaving the replica of the original pattern" (paragraph 16, lines 60-65), i.e. wherein the moldable polymer is an elastomeric polymer.
As for claim 16, AIZENBERG teaches "a perfluorinated liquid as Liquid Band a nanostructured surface made out of polymer (for example, epoxy resin, silicone, and Teflon) that 20 is chemically functionalized with end-functional group of -CF 3 or other similar fluorocarbon groups can be utilized as the roughened surface." (column 31, lines 18-22), i.e. wherein the elastomeric polymer comprises a silicone elastomer.
As for claim 18, AIZENBERG teaches "roughened surface can be made from materials that are functional properties such ... elastic/non-elastic" (column 15, lines 21- 25), i.e. wherein the material is flexible.
AIZENBERG teaches "In certain embodiments, the roughened surface and Liquid B can be selected as to promote enhanced transparency at desired wavelengths. For example, the roughened surface and Liquid B can be selected to have similar refractive indices so that the combination of roughened surface and Liquid B forms a transparent Material in wavelengths, such as visible, infrared, or even UV wavelengths" (column 30, lines 2-8), i.e. wherein the material is transparent.
AIZENBERG teaches "Then, Liquid B that can repel contaminants, such as blood, cells, tissues and the like can be selected" (column 46, lines 49-40), i.e. wherein the material exhibits repellency to biological fluids.
As for claim 23, AIZENBERG teaches "Then, Liquid B that can repel contaminants, such as blood, cells, tissues and the like can be selected" (column 46, lines 49-40), i.e. wherein the material exhibits repellency to blood.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Aizenberg et al. US Patent Number 9,121,307 hereinafter AIZENBERG, Muisener et al. US 2007/0141114 hereinafter MUISENER and Gabardo et al. US PG Pub 2019/0154622 hereinafter GABARDO as applied to claim 1 and 2 above as evidenced by The Hydrolysis of Chlorine and Its Variation with Temperature by Connick et al. on claim 6 is maintained. The rejection is repeated below for convenience.
As for claim 6, AIZENBERG teaches "Then, the surface of the replica can be chemically functionalized with low surf ace energy coating such as (tridecafluoro-1, 1,2, 2-tetrahydrooctyl)-trichlorosilane or other reagents having appropriate reactive end groups and straight or branched hydrocarbon or fluorocarbon chains or their combinations" (column 16, line 65- column 17, line 3), wherein R1, R2, R3 are hydrolysable groups made of chlorine, wherein X is C2alkylene, and n is 5.
The hydrolysable nature of chlorine is evidenced by The Hydrolysis of Chloring and its Variation with Temperature (abstract).
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Aizenberg et al. US Patent Number 9,121,307 hereinafter AIZENBERG, Muisener et al. US 2007/0141114 hereinafter MUISENER and Gabardo et al. US PG Pub 2019/0154622 hereinafter GABARDO as applied to claim 1 and 2 above further in view of Lee et al. US PGPub 2021/0170667 hereinafter LEE on claim 13 is maintained. The rejection is repeated below for convenience.
As for claim 13, AIZENBERG, MUISENER and GABARDO are silent on further comprising subjecting the mold with the deposited moldable polymer to vacuum after the depositing.
LEE teaches "The present invention relates to a method for preparing a plurality of imprints on an inner surface of a polymeric substrate" (abstract, lines 1-3) and "Micro- or nano-structures or -patterns or -imprints on the inner luminal surface of polymeric materials have attracted growing research interests as they may be used as an alternative to coatings, which are usually applied on tubings to achieve additional functionalities" (paragraph 3, lines 1-5).
LEE further teaches "Upon subjecting the above assembly to the vacuum, the shape and/or size of the internal mold may be distorted due to its elasticity of the internal mold. As the pressure of the air inside the internal mold is reduced relative to the atmospheric pressure, the hollow internal mold is distorted in the above assembly. The distortion or collapse of the internal mold may "demold" the internal mold from the inner wall of the cured polymeric substrate and this will allow the removal of the internal mold" (paragraph 62).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include further comprising subjecting the mold with the deposited moldable polymer to vacuum after the depositing in the process of AIZENBERG, MUISENER, and GARBADO because LEE teaches that such a step allows for the mold to be demolded from the cured polymer substrate.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Aizenberg et al. US Patent Number 9,121,307 hereinafter AIZENBERG, Muisener et al. US 2007/0141114 hereinafter MUISENER and Gabardo et al. US PG Pub 2019/0154622 hereinafter GABARDO as applied to claim 1 and 2 above as evidenced by Thermal expansion and the glass transition by Lunkenheimer et al. on claim 25 is maintained. The rejection is repeated below for convenience.
As for claim 25, AIZENBERG teaches "In certain embodiments, the roughened surface can be formed over or applied to a variety of planar or non-planar surface (see FIGS. 7 A and 7B)" (column 21, lines 64-65), and "the substrate comprises a polymer, metal, sapphire, glass, carbon in different form, or ceramic" (column 2, lines 20-22), i.e. when the substrate is glass wherein the material is not heat shrinkable, as evidenced by Thermal Expansion and the glass transition which establishes the glass expands when heated ( see abstract).
Response to Arguments
Applicant's arguments filed 8/25/25 have been fully considered but they are not persuasive.
Applicant’s arguments are summarized and addressed below:
a) Applicant argues that AIZENBERG fails to disclose the feature "a mold comprising microscale wrinkles and nanoscale features". Applicant then goes on to allege that becomes Aizenberg references Pokroy that it is limited to only creating the pattern taught by Pokroy--raised nanoposts.
Examiner notes that Applicant’s interpretation requires ignoring that AIZENBERG specifically teaches that "the roughened surface may be formed over any desired shapes" (column 15, lines 29-30) and that the features developed by their method can be more microscale and nanoscale (column 15, lines 39-45). AIZENBERG explicitly states that its features can take any desired shape, this includes wrinkles, and that those features can be both microscale and nanoscale.
Applicant's arguments cannot be considered persuasive as it would require ignoring AIZENBERG's explicitly stated broader teachings in favor of reading in a teaching from prior art reference by AIZENBERG as a potential example embodiment. Disclosed examples and preferred embodiments do not constitute a teachings away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
b) Applicant argues that MUISENER explicitly excludes microscale features.
Examiner notes that the term 'microscale' is not as limiting as Applicant is interpreting. Clearly from their example the Applicant has a position that microscale is limited to a specific range of values but not reflected in the specification within the definition or as used in the term in the art. The term microscale is used in the art to describe features that can be measured in micrometers. A nanoparticle of 0.9 micrometers is microscale and falls within MUISENER's range. A nanoparticle with a diameter of 0.9 micrometers can be measured with a micrometer ruler, the same way 0.9 inches can be measured with a ruler in inches.
Applicant's argument is not persuasive because they are not germane with the scope of the claim.
c) Applicant argues that the skilled person would not consider combining the teachings of AIZENBERG and MUIZENER because they are directed to different areas.
Examiner notes that art does not need to be identical in order to be relevant to each other. AIZENBER and MUISENER may achieve their roughness through different means but they are both drawn to the art of forming hydrophobic surfaces using surface structures. (See Aizenberg, Column 1, lines 45-46; see MUISENER abstract, lines 1-4). They both belong to the art of forming superhydrophobic surfaces and one of ordinary skill in the art would be more than capable of recognizing that their teachings are relevant to each other based on principals and knowledge within the art, even if they are not identical in method of forming specific aspects of their invention.
Applicant's arguments are not persuasive as they require ignoring the plain teachings of the art, read in limitations that do not appear in the claim or the specification, and do not fully consider the state of the art or the skill of the ordinary artisan.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717