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 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 8-10 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.
Claims 8-9 recites that “the spherical pore … has an average particle size...” (emphasis added). It is unclear to the examiner what is meant by a pore having a particle size. It is known in the art that the structural dimension of the pore does not equate to particle size, but rather a pore size, or more broadly average diameter or average size.
Claim 10 recites “a porosity in a range of 40% to 70%”. This renders the claim indefinite as there are no units associated with “%”.
Claim Rejections - 35 USC § 102
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.
Claims 1, 8-9, 11-12, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hebrink et al. (WO 2020/240447). The Examiner notes that US 2022/0221235 is the English language equivalent of WO 2020/240447 and all citations will refer to US 2022/0221235.
Regarding claim 1, Hebrink discloses a laminate comprising a porous base layer having a spherical pore [0038], and a coating layer located on one surface of the porous base layer and having a repeated pattern (All Figs).
Regarding the limitation spherical pore “derived from an inorganic particle for forming a pore”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). As set forth above, Hebrink discloses a spherical pore.
Regarding claims 8-9, Hebrink discloses that the spherical pore has an average size of 100-3000 nm [0039].
Regarding claims 11-12, please see (Abstract, [0038], [0055],0139-0141, 0174]. Additionally, it is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claims 15-16, please see [0001, 0003].
Claim Rejections - 35 USC § 103
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.
Claims 2-7, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hebrink et al. (WO 2020/240447). The Examiner notes that US 2022/0221235 is the English language equivalent of WO 2020/240447 and all citations will refer to US 2022/0221235.
Regarding claims 2-7, Hebrink the porous base layer comprising various suitable materials as claimed ([0043-0048, 0050-0054], [0056-0058]). Although Hebrink fails to explicitly disclose an embodiment or example requiring the specific material as claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pick the instant claimed elements as a mere combing prior art elements according to known methods to obtain predictable results i.e. porous base layer ( see MPEP 2143 I and 2144.06 I).
It has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992)
Regarding claim 10, Hebrink discloses the porous base layer has a porosity of 10-90 vol.% [0040]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 13, Hebrink discloses the porous base layer has an average thickness of 10-500 microns [0039]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding claim 14, Hebrink discloses that the coating layer comprises fluoropolymers [0063], wherein the porous base layer can also comprise of fluoropolymers as well [0043, 0045]. Thereby, it would have been obvious to choose any material of the coating layer and the porous base layer to be the same based on the desired radiative cooling properties and that choosing materials to be the same would have rendered the claimed relationship between the layers obvious in the absence of showing criticality.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights