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 § 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 1-6 are rejected under 35 U.S.C. 103 as being obvious in view of by Zhou et al. (WO2020/137992).
Regarding claims 1-2 and 5, Zhou teaches the formation of a water/oil repellant layer over an “underlayer” by employing a surface treatment agent that reads upon the fluoro-containing ether compound including a fluoro-polyether chain and a reactive silyl group as claimed (see fluorine containing compound having reactive silyl groups section) and an oxide of lithium (see Underlayer section). Zhou fails to teach wherein the two compositions are combined into one. However, changing the order of the steps of the operation of Zhou from performing the steps of depositing the coatings successively to depositing them simultaneously would be considered a mere change in the order of the steps of Zhou wherein the Court has long held that in the absence of the new and unexpected outcome arising from the provision of the steps of Zhou in the new order, any order of performing the process steps is a prima facie case of obviousness. See In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
Regarding claim 3, the teachings of Zhou are as shown above. Zhou likely teaches embodiments wherein the amount of metal present reads upon the claims range but fails to provide the teachings in terms of percentage mass as claimed. Zhou largely uses the phrase “mass percent concentration” which excludes the mass of oxygen. However, Zhou teaches that the metal compound presence affects the reactivity of the reactions taking place on the surface of the underlayer as relates to the overlying water/oil repellant layer (see Base material with water and oil repellant layer section). Therefore, in the absence of criticality of the specific mass percentage range of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of the metallic element provided in the composition of Zhou in order to control the reactivity of the layers of Zhou as guided by Zhou. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 4, Zhou further teaches wherein the water/oil repellant layer comprises a “liquid medium” (see First embodiment section).
Regarding claim 6, the water/oil repellant layer of Zhou is stated as being applied “by either a dry coating method or a wet coating method” (see First embodiment section).
Response to Arguments
New art was not provided in the current Office Action but nonetheless the applicants’ are generally moot as they are largely drawn to claim limitations newly provided herein and rejected under U.S.C. 103(a) instead of 35 U.S.C. 102(a)(2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717