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 the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As assessed by the Wands Factors and the evidence as a whole, the claims are not enabled. See MPEP 2164.01(a).
Wands Factors include (A)-(H): (A) The breadth of the claims: The claims relate to any coated substrate for which the coating contains Si, C, and H, which, upon ultrasonic agitation for at least 20 minutes in solution of caustic soda, achieves certain contact angle performance criteria; the coatings could encompass any of paragraph 30 plus many others such polysiloxanes or other polymeric structures that include Si, C, and H or other inorganic compositions that include Si, C, and H; (B) The nature of the invention: The inventive coatings lead to improved hydrophobicity; (C) The state of the prior art: The reviewed prior art inherently teaches a subset of these claimed coatings meeting the claimed compositions and performance criteria insofar as these prior art coatings are made similarly and thus would be expected to have similar properties as addressed below; however, no prior art was identified that teaches the breadth of what is claimed in terms of Si, C, and H and meeting the claimed performance criteria; included in what is not taught or expected is that agitation for all time periods longer than 20 minutes or any solution of any caustic salt or at any temperature would achieve the claimed performance criteria; (D) The level of one of ordinary skill: One of ordinary skill in the art can readily produce coatings that comprise Si, C, and H but would not have expectation that claimed performance criteria would be generally obtained for the breadth of claimed compositions or obtained under any circumstance other than those specifically outlined in the Specification for a subset of the breadth of claimed coating compositions; (E) The level of predictability in the art: There is predictability in the art in terms of producing coatings in terms of elemental composition, but not in terms of achieving performance criteria for coatings beyond those taught or for conditions beyond those taught; furthermore, there is no basis for expecting coatings such as those of paragraph 30 of the Specification would achieve performance criteria alone or as modified by teachings in the Specification; (F) The amount of direction provided by the inventor: The Specification provides specific direction for making subset of claimed coatings for specific agitation times, caustic salt species and concentrations, and treatment temperatures; however, this direction does not extend to the breadth of coatings of paragraph 30 of the Specification and there is no apparent guidance as to how to modify the provided direction so as to be applied to these other coating systems; (G) The existence of working examples: Working examples are provided but they only detail materials to be used and not the specific conditions that were used in fabrication, and the examples only correlate with subset of coatings mentioned in (F) (DMS followed by ethylene), but not beyond those; FTIR spectra of effective coatings are demonstrated, but such spectra would not be expected to be obtainable for full breadth of Si, C, and H coatings and no direction on how reactants were treated to obtain these spectra is apparently provided; AND (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The quantity of experimentation is vast and undue because there is no basis to expect that films comprising Si, C, and H generally (note, also, that other elements are not precluded) can achieve claimed performance criteria and can achieve it after being subjected to conditions beyond those shown, e.g., for times longer than 20 minutes, as opposed to for 20 minutes, for caustic salt not being NaOH or KOH and at concentrations not specified by Claim 5, for example, and for temperatures other than at ca. 79oC, and not at 79oC or more, as in Claim 2. Based on all of these factors the claims are not enabled.
The following is a quotation of 35 U.S.C. 112(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.
Claims 1-20 are 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.
Regarding Claims 1 and 20, it is unclear how the claimed contact angle is to be measured. Contact angle is condition dependent, and it is unclear what conditions the claim requires for ascertaining inclusion or exclusion from claim scope.
Regarding Claim 6, it is unclear what the system being claimed would be that “provides a control of an operation” and how the article of Claim 1 relates in a technical sense. It is unclear whether the limitation is a method of use of the system which does not specify a step. See MPEP 2173.05(q).
Regarding Claims 7-18, it is unclear what the system being claimed would be that “produces” and how the article of Claim 1 relates in a technical sense. It is unclear whether the limitation is a method of use of the system which does not specify a step. See MPEP 2173.05(q).
Regarding Claim 19, it is unclear whether this claim includes a step to be performed rendering it indefinite, and it is unclear, if there is a step being claimed, what exactly is to be done and achieved. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 102/103
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.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Smith USPA 2019/0032201. Smith teaches treating a substrate surface with DMS followed by functionalizing with ethylene (Example 6). The layer contains Si, C, and H (Figure 3). Smith does not teach claimed contact angle performance, but does teach initial contact angle (Example 6). The claimed performance would be expected to be inherently present or substantially present. Smith teaches exact steps applicant teaches for forming layer meeting claimed performance in the same level of detail. See Specification (paragraph 38). Thus, absent evidence to the contrary the claimed performance is reasonably presumed. The above discussion applies to Claims 1-4, 19, and 20. Regarding the systems claims, the coatings in Smith are taught as being appropriate for variety of metal surfaces and glass (paragraph 52; Ex. 6). Thus, the exemplified coupons can be considered as suitable for any of these systems since there is no technical requirement for the coupon or implied coupon material that is required. Alternatively, the presence of the claimed article upon being manufactured in a CVD chamber can meet the claimed requirements since such chamber can be part of any of the claimed systems.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784 26 June 2026
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