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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding Claim 1, the limitation “at least one particle of pores” in ll. 2 is indefinite, in context, since it cannot be discerned what specifically contains the pores. Are the pores part of a separate and distinct element, the binder, ceramic particles or polymer particles? For Examination purposes and in accordance with the specification and drawings, “at least one particle of pores” will be interpreted as – pores are contained within the layer --.
Regarding Claim 1, the limitation “a second reinforcement layer formed on the first reinforcement layer or the radiative cooling layer” in ll. 11 is indefinite, in context, since it cannot be discerned how the second reinforcement layer is situated on the radiative cooling layer, wherein the first reinforcement layer is previously claimed to be situated on the radiative cooling layer. For Examination purposes and in accordance with the specification and drawings, “a second reinforcement layer formed on the first reinforcement layer or the radiative cooling layer” will be interpreted as – a second reinforcement layer formed on the first reinforcement layer --.
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 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 of this title, 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (EP3954741A) in view of Mandal (US PG Pub. 2021/0078038A1) and in further view of Tao et al. (“Construction of colorful super-omniphobic emitters for high-efficiency passive radiative cooling”, Composite Communications 2021), hereinafter referred to as Lee, Mandal and Tao, respectively.
Regarding Claim 1, Lee discloses a radiative cooling device, comprising:
a radiative cooling layer (120) formed of a first mixture prepared by mixing (see product by process analysis below) ceramic particles (122, “the metal oxide may include at least one of titanium dioxide (TiO2 ), zirconium oxide (ZrO2), alumina (Al2 O3 ), zinc oxide (ZnO), silicon oxide (SiO2 ), and silicon nitride (Si3 N4),” (¶679)) and polymer particles (“When the polymer matrix 121 and the fine particles 122 including a polymer have different refractive indexes” (¶677)) with a binder (“a binder mechanically connecting the surfaces of the nano or microparticles in a solvent” (¶45) shown in figure 42A, wherein the polymer matrix (121) binds the particles), formed on a substrate (110), configured to absorb and emit long-wavelength infrared rays in a range of 8 μm to 13 μm based on the first mixture to achieve radiative cooling emissivity (“arbitrarily adjusting sizes (particle sizes) and compositions of various types of nano or microparticles having high bandgap energy and partially high emissivity for long-wavelength infrared rays in a range of 8 µm to 13 µm as a wavelength range of the sky window so as to have high absorptivity (emissivity) in the entire region of the wavelength range of the sky window” (¶164)), and configured to scatter and reflect incident sunlight in a range of 0.3 μm to 2.5 μm to achieve radiative cooling reflectivity (see ¶871);
a first reinforcement layer (130) formed on the radiative cooling layer (“The radiative cooling layer 130 may be formed on the reflective layer 120” (¶391)), formed of a second mixture of ceramic particles (“each of the first radiation layer and the second radiation layer may include at least one of fine particles made of an oxide or a nitride and a polymer…the fine particles may include at least one of silica (SiO2 ), zirconium oxide (ZrO2 ), alumina (Al2 O3 ), titanium dioxide (TiO2 ), and silicon nitride (Si3 N4 )” (¶70-72)) and a binder (“a binder mechanically connecting the surfaces of the nano or microparticles in a solvent” (¶45)), configured to prevent mass loss due to external exposure or friction based on the second mixture to increase the durability of the radiative cooling layer, configured to increase the radiative cooling emissivity, and configured to maintain the radiative cooling reflectivity (see intended use analysis below); and
a second reinforcement layer (“a radiative cooling device with hydrophobicity which further includes a polymeric protective layer to prevent the penetration of foreign substances such as moisture and air” (¶40)).
Lee fails to disclose at least one particle of pores.
Mandal, also drawn to a radiative cooling device having a polymer layer, teaches at least one particle of pores (“The pores that are left behind are good at both back-scattering sunlight and emitting thermal radiation back out to space. Some embodiments of this coating can reflect up to 98% of incoming sunlight, including infrared, visible, and ultraviolet wavelengths. This is more than typical white paint which only reflects about 80% of incoming visible light, while still absorbing building-heating IR and UV rays”, ¶44)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the radiative cooling layer of Lee being porous, as taught by Mandal, the motivation being that pores are known to be good “at both back-scattering sunlight and emitting thermal radiation back out to space”.
Lee fails to disclose a second reinforcement layer formed of at least one fluorosilane-based material, and configured to increase a contact angle for a liquid material in contact with a surface.
Tao, also drawn to a radiative cooling composite, teaches a reinforcement layer (“sprayed pigment layer”, see section 1) formed of at least one fluorosilane-based material (“The suspension of the sprayed pigments layer consists of 1H–1H–2H–2H- Perfluorooctyltriethoxysilane (PFOE) and hexafluoro-butyl acrylate (HFBA) grafted pigment particles and SiO2”, section 1) and configured to increase a contact angle for a liquid material in contact with a surface (“The as-prepared super-omniphobic colorful radiative cooling emitters all obtained wettability of water contact angles above 160° and oil contact angles above 150°”, abstract).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the radiative cooling composition of Lee having a second reinforcement layer formed of at least one fluorosilane-based material, and configured to increase a contact angle for a liquid material in contact with a surface porous, as taught by Tao, the motivation being to add a self-cleaning ability, maintain optical performance after abrasion or UV irradiation and allow for options in obtaining a desired aesthetic.
In product-by-process claims, as in Claim 1, “once a product appearing to be substantially identical is found and a 35 U.S.C. 103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference” MPEP 2113.
This rejection under 35 U.S.C. 103 is proper because the "[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). The combination of previous references meets the structural limitations put forth in Claim 1, wherein the final product existing after fabrication is compared to prior art for the purposes of patentability. The limitations regarding “a first mixture prepared by mixing” are drawn to methods of production and not the structural aspects of the instant invention.
Regarding limitations “configured to prevent mass loss due to external exposure or friction based on the second mixture to increase the durability of the radiative cooling layer, configured to increase the radiative cooling emissivity, and configured to maintain the radiative cooling reflectivity” recited in Claim 1, which are directed to the functionality of a radiative cooling layer, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.” Further, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim, as is the case here. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114.
Regarding Claim 2, a modified Lee further teaches the radiative cooling layer absorbs and emits the long-wavelength infrared rays, supplements absorption and emission of long-wavelength infrared rays of the binder to increase emissivity in the long-wavelength infrared ray range of 8 μm to 13 μm (see ¶187 and Table 1), and additionally scatters and reflects the incident sunlight based on a difference in refractive indices of the binder and the pores (see analysis below).
Regarding claim 2, Lee teaches absorption and emission of wavelengths based on the composition of the radiative cooling layer but does not explicitly discuss additionally scatters and reflects the incident sunlight based on a difference in refractive indices of the binder and the pores. However, the composition of the reference is substantially the same as that disclosed in the specification of the instant application (see the rejection of Claim 1 as to the structural makeup of the instant invention and the prior art), and so it follows that because the material of a modified Lee and the instant application appear to be the same, there is a reasonable basis to conclude that the material of a modified Lee would additionally scatter and reflect the incident sunlight based on a difference in refractive indices of the binder and the pores. Products of identical composition may not have mutually exclusive properties. See MPEP 2112.01 and In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Regarding Claim 3, a modified Lee further teaches the ceramic particles comprised in the first mixture comprise at least one of SiO2, TiO2, Al203, ZrO2, Si3N4, (“the fine particles may include at least one of silica (SiO2 ), zirconium oxide (ZrO2 ), alumina (Al2O3 ), titanium dioxide (TiO2 ), and silicon nitride (Si3 N4 )” (¶70-72)),
the polymer particles comprised in the first mixture comprise at least one of DiPentaerythritol HexaAcrylate (DPHA), PolyDiMethylSiloane (PDMS), Ethylene Tetra Fluoro Ethylene (ETFE), PUA, PolyVinyliDene Fluoride (PVDF), PolyEthylene Terephthalate (PET) and PolyCarbonate (PC) (“the polymer includes at least one polymer of polydimethyl siloxane (PDMS), polyurethane acrylate (PUA), polyvinylidene fluoride (PVDF), polyethylene terephthalate (PET), polyvinyl chloride (PVC), polyvinylidene fluoride (PVDF), dipentaerythritol hexaacrylate (DPHA), polymethyl methacrylate (PMMA), polybutyl methacrylate (PBMA), perfluoropolyether (PFPE), polycarbonate (PC), PTFE (Polytetrafluoroethylene), Spectralon, ETFE (Ethylene Tetra fluoro Ethylene), and polyethylene (PE)” ¶777), and
the binder comprised in the first mixture comprises at least one of DPHA, ETFE, PUA, PVDF, a polyurethane-based polymer (“The binder may include at least one binder material of dipentaerythritol hexaacrylate (DPHA), polytetrafluoroethylene (DPHA), poly urethane acrylate (PUA), ethylene tetra fluoro ethylene (ETFE), polyvinylidene fluoride (PVDF), acrylic polymers, polyester polymers, and polyurethane polymers” ¶51).
Regarding Claim 4, a modified Lee further teaches the ceramic particles comprised in the second mixture comprise at least one of TiO2, Al203, ZrO2, SiO2, CaCO3, CaCO4, BaSO4, Si3N4, MgHPO4, ZnO, AlN (“the inorganic layer constituting the radiative cooling layer 112 may be formed of at least one inorganic material of Al2O3, SiO2, BaSO4, LiF, CaSO4, ZnO, TiO2, ZrO2, CaF2, MgF2, HfO2, CaCO3, AlN, MgPHO4, and Si3N4”, ¶794), and the binder comprised in the second mixture comprises at least one of DPHA, ETFE, PUA, PVDF, a polyester-based polymer, a polyurethane-based polymer, an acrylic polymer (“The binder may include at least one binder material of dipentaerythritol hexaacrylate (DPHA), polytetrafluoroethylene (DPHA), poly urethane acrylate (PUA), ethylene tetra fluoro ethylene (ETFE), polyvinylidene fluoride (PVDF), acrylic polymers, polyester polymers, and polyurethane polymers” ¶51).
Regarding Claim 5, a modified Lee further teaches a thickness of the first reinforcement layer (130, “first radiation layer and the second radiation layer may have a thickness of 10 nm to 10 um”, ¶74) is formed in a ratio of 70% or less compared to a thickness of the radiative cooling layer (120, “The thickness of the paint coating layer may be 30 µm to 600 µm”, ¶55).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 (I)
Regarding Claim 6, a modified Lee further teaches the first reinforcement layer (130) is formed by applying a solution, prepared by mixing the second mixture with a solvent, in one coating method of spin coating, bar coating, spray coating, and dipping (“The coating method may include any one of spin coating, spray coating, ultra-spray coating, electrospinning coating, slot die coating, gravure coating, bar coating, roll coating, dip coating, shear coating, screen-printing, inkjet printing, and nozzle printing, without being limited thereto”, ¶498).
Additionally, a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the structural limitations of the claims, as is the case here. The presence of process limitations on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens 124 USPQ 656 (CCPA 1965).
Regarding Claim 7, a modified Lee further teaches the fluorosilane-based material comprises at least one of 1H,1H,2H,2H-(Perfluorooctyltriethoxysilane) (“The suspension of the sprayed pigments layer consists of 1H–1H–2H–2H- Perfluorooctyltriethoxysilane (PFOE) and hexafluoro-butyl acrylate (HFBA) grafted pigment particles and SiO2”, as taught by Tao in the rejection of Claim 1).
Regarding Claim 8, a modified Lee further teaches the second reinforcement layer is formed by applying a solution, prepared by dispersing the fluorosilane-based material (as taught by Tao in the rejection of Claim 1) in a solvent, in one coating method of spin coating, bar coating, spray coating, doctor blading, blade coating and dipping (see product by process analysis below).
In product-by-process claims, as in Claim 8, “once a product appearing to be substantially identical is found and a 35 U.S.C. 103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference” MPEP 2113.
This rejection under 35 U.S.C. 103 is proper because the "[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). The combination of previous references meets the structural limitations put forth in Claim 8, wherein the final product existing after fabrication is compared to prior art for the purposes of patentability. The limitations regarding “is formed by applying a solution, prepared by dispersing the fluorosilane-based material in a solvent, in one coating method of spin coating, bar coating, spray coating, doctor blading, blade coating and dipping” are drawn to methods of production and not the structural aspects of the instant invention.
Regarding Claim 9, a modified Lee further teaches the second reinforcement layer increases the contact angle from 90 degrees to 120 degrees or more, maintains the increased 120 degrees for a predetermined time, achieves hydrophobicity based on the increased 120 degrees (“The as-prepared super-omniphobic colorful radiative cooling emitters all obtained wettability of water contact angles above 160° and oil contact angles above 150°”, abstract of Tao), and maintains the achieved radiative cooling emissivity and the achieved radiative cooling.
In the absence of any indication that an intermediate product is being claimed, apparatus claims are interpreted to be directed to the final product and not some intermediate product (see MPEP 806), i.e. not directed to parts (in this case, a radiative cooling film that has a contact angle prior to the application of the second reinforcement layer, wherein the contact angle “increases…from 90 degrees to 120 degrees or more”) that may be left back on the factory floor when the final product (containing the super-omniphobic second reinforcement layer) is shipped out. To make the point clear, it is the final product (containing the radiative cooling film having the super-omniphobic second reinforcement layer) that is being examined here, not what could have occurred (i.e. the contact angle of the radiative cooling film prior to the application of the second reinforcement layer) in the remote past that cannot be seen in the final product.
Stated another way, as understood by the examiner, the would-be infringer's conduct is measured against the final product in an apparatus claim, not against the method by which the product was assembled. If applicant has a novel/non-obvious process of assembly, that invention belongs in a different statutory class.
Regarding Claim 10, a modified Lee further teaches the radiative cooling layer further comprises a color implementation layer for implementing a color according to a type of color paint formed thereon (as taught by Tao in the rejection of Claim 1, “The suspension of the sprayed pigments layer consists of 1H–1H–2H–2H- Perfluorooctyltriethoxysilane (PFOE) and hexafluoro-butyl acrylate (HFBA) grafted pigment particles and SiO2”, section 1, underlined for emphasis).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL ALVARE whose telephone number is (571)272-8611. The examiner can normally be reached Monday-Friday 0930-1800.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Len Tran can be reached at (571) 272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL ALVARE/Primary Examiner, Art Unit 3763
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