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(s) Status
Claims 1-20 are pending as amended 07/03/2024.
Priority
This application is the 35 U.S.C. § 371 National Stage Entry of PCT/JP2023/002857, filed 01/30/2023 and published as WO 2023/145932 A1.
The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of foreign application JP 2022-012495, filed 01/31/2022.
Information Disclosure Statement
The IDS filed 07/03/2024 has been fully considered by the Primary Examiner.
Drawings
The drawings filed 07/03/2024 are acceptable. See MPEP § 608.02(b)(I).
Specification
The lengthy specification (109 pages) has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The title of the invention is not descriptive due to its excessive length and generic nature. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: COMPOSITION FOR FORMING LUBRICATING SURFACE ON A SUBSTRATE, PROCESS FOR MAKING AND USING IT, AND KIT CONTAINING IT.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Claim Objections
Claims 3, 5, 6, and 19 are objected to because of the following informalities:
Claim 3
Claim 3 should read - - said lubricating liquid [[may]] ranges from 0.001 g/mL to 0.1 g/mL inclusive - -.
Claim 5
Claim 5 should read - - wherein [[a]] the content of said binder resin relative to the total amount of said solvent and said lubricating liquid ranges from 0.0006 g/mL to 0.03 g/mL inclusive - -.
Claim 6
Claim 6 should read - - wherein [[a]] the volume ratio of said lubricating liquid relative to the total amount of said solvent and said lubricating liquid ranges from 0.6 to 0.92 inclusive - -.
Claim 19
Claim 19 should read - - The lubricating [[kid]] kit according to claim 18 - -.
Appropriate correction is required.
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 10-11, 13-14, and 18 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.
Claim 10
The term “heavy” in claim 10 is a relative term which renders the claim indefinite. The term “heavy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. How heavy must the oil be to fall within the scope of the claim. Conversely, how light may the oil be to fall within the scope of the claim. Moreover, with respect to what standard or benchmark is the determination of “heavy” made? See Liberty Ammunition, Inc. v. United States, 835 F.3d 1388, 1395 (Fed. Cir. 2016) (the term of degree “reduced area of contact” entails comparing an “area of contact” that was “reduced” relative to a baseline area of contact). See also MPEP § 2173.02.
Claim 11
The term “ordinary temperature and pressure” is indefinite because what is ordinary in one circumstance may not be ordinary in another. What circumstances apply and when are not clear. Consequently, the metes and bounds of the claim are impossible to determine. For the purposes of this Office action, the Primary Examiner interprets “ordinary” as “ambient” or “room” temperature and pressure.
Claim 13
The term “room temperature-cured type silicone resin” is indefinite because it unclear what the metes and bounds of “type” are. How closely must the resin resemble a RT-cured silicone resin to be included within the scope of the claim? In the alternative, how far and in what way may the resin depart from a RT-cured silicone resin and still be included within the scope of the claim?
Claim 14
In claim 14, at line 4, it is unclear which liquid “said liquid” is referring back to: the liquid of interest or the lubricating liquid. Consequently, the metes and bounds of the claim are impossible to determine. For the purposes of this Office action, the Primary Examiner interprets “said liquid” as “said liquid of interest.”
Claim 18
In claim 18, “the article” lacks antecedent basis.
Allowable Subject Matter
Claims 1-9, 12, 15-17, and 19-20 are allowed.
Claims 10-11, 13-14, and 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The invention is a composition capable of forming a slippery liquid-infused porous surface in a single step. CN 110734671 A is the closest prior art and provides a method for constructing liquid-injected super-lubricating coatings in one step based on a ternary system, combining three existing necessary preparation steps into one, which can shorten the preparation cycle. By introducing a third component that is compatible with both the lubricant and the polymer (i.e., binder), the compatibility problem between non-polar lubricants and various polymers is avoided [0008]. Specifically, a low surface energy non-polar polymer (i.e., binder), a chemically inert non-polar lubricating oil (i.e., lubricating fluid), and a diluent miscible with the polymer and lubricating oil (i.e., solvent) are added to a reacting vessel and mixed to form a ternary system. The mixture is then heated and stirred until completely dissolved to obtain a homogeneous transparent solution [0010]. The homogeneous transparent solution is coated onto a substrate and allowed to cool to obtain a SLIPS-type surface coating [0012].
CN 110734671 A differs from the instant invention in that it neither teaches nor suggests particle, that the lubricating liquid has a contact angle (θ) = 0° upon dropwise addition onto a substrate made of the same material as the particles as measured in the atmosphere, and θ = 0° upon dropwise addition onto the substrate made of the same material as said particles as measured in the liquid of interest.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
24 July 2026
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