DETAILED ACTION
Election/Restrictions
Applicant’s election of group I, claims 1-16 in the reply filed on 8/4/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/4/26.
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 1-16 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for the lubricating layer to be formed of a hydrophobic inorganic cured layer, a fluorine-silane formed on the hydrophobic inorganic layer and a fluorine oil layer formed on the fluorine-silane cured layer and the anti-adhesion coating comprising cured polydialkylsiloxane and a silicone oil, does not reasonably provide enablement for any material that can form these layers to provide the desired properties as claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1-16 can be used as claimed and whether claims 1-16 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-16, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-16 read on any possible material for the two layers while the specification discloses the lubricating layer to be formed of a hydrophobic inorganic cured layer, a fluorine-silane formed on the hydrophobic inorganic layer and a fluorine oil layer formed on the fluorine-silane cured layer and the anti-adhesion coating comprising cured polydialkylsiloxane and a silicone oil. The examples show that only a three layered structure of this layer works while omitting layers fails
(b) There is no direction or guidance presented for other materials besides the specific layered structure shown in the examples as comparative example 3 as well as 1 and 2 show the importance of only these specific materials.
(c) There is an absence of working examples concerning any other material besides the materials of the lubricating layer to be formed of a hydrophobic inorganic cured layer, a fluorine-silane formed on the hydrophobic inorganic layer and a fluorine oil layer formed on the fluorine-silane cured layer and the anti-adhesion coating comprising cured polydialkylsiloxane and a silicone oil as it shows that they would not work.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-16 absent the having the layers be as followed; the lubricating layer to be formed of a hydrophobic inorganic cured layer, a fluorine-silane formed on the hydrophobic inorganic layer and a fluorine oil layer formed on the fluorine-silane cured layer and the anti-adhesion coating comprising cured polydialkylsiloxane and a silicone oil.
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 1-16 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.
As to claims 1-16, the claims are indefinite because it is unclear as to the metes and bounds of the lubricating layer and anti-adhesion layer. These layers according of lubricating and anti-adhesion are general terms and the claims do not distinguish them apart as the same material could read on both the lubricating and anti-adhesion layer. The specific does not provide any features besides the function of these layers of being lubricating and anti-adhesion and therefore it is unclear as to the composition/structure of this claim since a material that is lubricating can be also considered being anti-adhesive. From the examples it seems like a specific layer combination of required to function as intended. However for purposes of examination the claims will be treated as being met as if one layer is present that is capable of preforming the function of lubricating/anti-adhesion.
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, 2, 4-6, 15 and 16 are rejected under 35 U.S.C. 102a1 as being anticipated by Ryu (KR 20040083815 A (which has been machine translated).
As to claims, 1, 2, 4-6, 15 Ryu discloses an anti-adhesive coating provided on a substrate comprising a silicone resin, a silicone polyester leveling agent, a plastic filler, a precipitation preventer and a solvent. The coating comprises a polydialkylsiloxane and a silicone oil. Therefore, since the coating is formed on the surface and there is no difference between a lubricating layer and anti-adhesion layer one region will be considered the lubricating and the other region will be the anti-adhesion layer which can be formed around the first region since the coating will have slightly different hydrophobicity due to the slight imperfections in the homogenous of the coating. Further this is the same material that is used for the anti-adhesion layer and will inherently have a surface energy of between 20 to 40 mJ/m2.
Claims 1, 2 and 6 are rejected under 35 U.S.C. 102a1 as being anticipated by Hayashi et al (US Publication 20070232166).
As to claims 1, 2, and 6, Hayashi discloses a substrate that has a surface coating on the surface to provide water- and oil repellency and another coating that is a soil release agent. The water and oil repellent agent can comprise a silicone based monomer and fluorine containing monomer while the soil release agent can comprise a fluorine containing polymer as a main component. These materials will have different surface energies and surround each other.
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 7, 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ryu (KR 20040083815 A (which has been machine translated).
Rye anticipates claim 1 for the reasons noted above, however is silent to the specifics of the shape, thickness and silicone oil.
It would have been obvious to one of ordinary skill in the art to have formed the coating to have a convex or concave shape as the court held that the configuration of the claimed shape was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed coating was significant. See MPEP 2144.04.
It would have been obvious to one of ordinary skill in the art to have formed the coating any thickness including a thickness of .1 to 200 microns as one of ordinary skill in the art would know that a thicker coating provides more protection and is more expensive while a thinner layer is cheaper and less durable. See MPEP 2144.04
In the alternative it would have been obvious to form the silicone oil to have a viscosity of 1000 cSt or less as it’s the same material used for the same purpose and therefore one would know that a lower viscosity would allow for a be anti-adhesion property while a higher viscosity would allow for better adhesion.
Claims 3-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (US Publication 20070232166).
As to claims 3-5, Hayashi anticipates claim 1 for the reasons noted above, however is silent to the specifics of the thickness of the surface energy.
Hayashi discloses the water and oil repellent agent can comprise a silicone based monomer and fluorine containing monomer while the soil release agent can comprise a fluorine containing polymer as a main component. These materials are similar to the materials being used within the present invention and are providing the same purpose therefore it would have been obvious to one of ordinary skill in the art to have had the lubricating layer be less than 20 mJ/m2 and the anti-adhesion layer be between 20 and 40 mJ/m2 as one would know that the lower the surface energy the better it is at providing anti-adhesive properties and like oil and water repellency as well as dirt.
As to claim 7, Hayashi anticipates claim 1 for the reasons noted above, however it is silent to the specifics of the shape of the first region.
It would have been obvious to one of ordinary skill in the art to have formed the coating to have a convex or concave shape as the court held that the configuration of the claimed shape was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed coating was significant. See MPEP 2144.04.
As to claim 8, Hayashi anticipates claim 1 for the reasons noted above, however it is silent to the specifics of the thickness of the lubricating layer.
It would have been obvious to one of ordinary skill in the art to have formed the coating any thickness including a thickness of .1 to 200 microns as one of ordinary skill in the art would know that a thicker coating provides more protection and is more expensive while a thinner layer is cheaper and less durable. See MPEP 2144.04
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 5712721291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785
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