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):
(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, 4, and 8 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.
Claim 1, as amended, recites a correlation among the metal superhydrophobic surface, the acoustic response and the droplet bounce behavior” for surfaces with different microstructure forms (a cone column, a convex hull, a microparticle, and multi-level composite) and different distances between microstructures. However, the specification’s only working example (see paragraphs [0042] – [0050]) demonstrates the correlation solely for varying structure spacing under one specific set of initial conditions (droplet height 40 mm, diameter 2.05 mm, Weber number ~25.2). The disclosed formula (see paragraph [0046] has a method that comprises two steps. In these steps, it is required to obtain dynamic contact characteristics and acoustic properties of the solid-liquid interface of the metal with different surface information and then obtaining a correlation among the various surfaces, the acoustic response, and the droplet bounce behavior, and the acoustic properties and modifying a micro-nano structure by combining a coupled bionic concept according to the correlation.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there are a ton of terms in the method as claims of which many of them are never disclosed what they are. Acoustic properties, dynamic contact characteristics, and bionic concept are all used yet are not defined, so the breadth of the claims is somewhat unclear as these terms could mean lots of different things (Wands Factor A). What are the acoustic properties? What are the contact characteristics and is there a difference between and dynamic ones? If so, what makes them dynamic as opposed to non-dynamic ones. Very important is that there is a modification done by combining a coupled bionic concept according to the correlation, yet there is no disclosure of the bionic concept and what it is and the correlation is only described by a single formula, which has three correction constants (N, A, and B) which are undefined, and the correlation is not disclosed with respect to the claimed various surfaces, the acoustic response, and the droplet bounce behavior, and the acoustic properties and there is no disclosed connection between the correction constants and any of these values that can be found. With the specification as written, the claims as presented would not enable one of ordinary skill in the art to make and/or use the invention as claimed. There is simply not enough direction given by the inventor to perform the method (Wands Factor F). Further, the lone working example in the specification (see paragraphs [0042] – [0050]) does not enable one of ordinary skill in the art to make or use the invention for any situation except the one claimed (Wands Factor G). Therefore, there is a huge amount of experimentation required in order to even begin to understand how the various claimed shapes (a cone column, a convex hull, a microparticle, and multi-level composite) can be tested as there are no examples specific to any one of them claimed (Wands factor H). Therefore, claim 1 lacks enablement. Since claim 1 lacks enablement, then claims 4 and 8, which depend from claim 1, lack enablement as well.
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.
Claims 1, 4, and 8 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 1 recites the limitation "the solid-liquid interface" in line 5 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the droplet bounce process" in line 6 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the acoustic response" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the droplet bounce behavior" in line 8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Since claim 1 suffers from limitations that lack antecedent basis, then claims 4 and 8, which depend from claim 1, lack antecedent basis as well.
Response to Arguments
Applicant's arguments filed 22 July 2026 have been fully considered but they are not persuasive. The Applicant, in an attempt to answer the questions and Wands Factor arguments has stated that the Applicant has explained certain features and then provides documents for reference to further support the argument. However, with everything that the Applicant claims that the Applicant has explained, there is not one time any section of the specification as filed is referenced. There is even mention of things explained which are not even in the specification. For example, the Applicant argues that the Applicant explains that the acoustic characteristics include maximum amplitude, characteristic frequency, and response intensity of the corresponding characteristic frequency. However, the specification as filed mentions a peak amplitude, not a maximum amplitude and the acoustic response and the corresponding intensity are not disclosed as acoustic characteristics and is only mentioned one time in the specification with reference to dynamic contact characteristics and acoustic properties. Therefore, what the Applicant states is explained is not explained or found in the specification as filed at all. There is no reference to the specification as filed to where said explanation could be found or referenced. A further example is that the Applicant states that the concept of coupled bionic is explained. Imitating is not found in the specification as filed, thus the Applicant doesn’t explain the concept as argued. Further, the Applicant goes and cites 5 additional documents and references said documents to explain the invention. First, those documents are not cited in a filed IDS. Second, those documents are not cited or referenced to in the specification as filed. Third, all of the cited documents do not belong to the Applicant and are thus not the invention or not novel ideas or concepts that belong to the Applicant. Therefore, the Applicant has not provided any arguments that would overcome the previous rejections as given and the previous rejections are being maintained.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RODNEY T. FRANK
Examiner
Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855
August 29, 2026
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