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 .
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/GB2023/051413, filed 05/30/2023 and published as WO 2023/233137 A1 on 12/07/2023. The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of GB 2207983.4, filed 05/30/2022.
Information Disclosure Statement
The Primary Examiner has considered the IDS filed 09/18/2025.
Drawings
The drawings filed 12/01/2024 are acceptable. See MPEP § 608.02(b)(I).
Response to Amendment
Applicant’s preliminary amendment, filed 12/01/2024, is noted with appreciation.
Claims 1-12 remain pending.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 5 is objected to because it lacks a period. Each claim being with a capital letter and ends with a period. MPEP § 608.01(m). Appropriate correction is required.
Claim 10 is objected to because a conjunction or disjunction should be used to round-out the list of polymeric binders. Appropriate correction is required.
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 1-12 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
Because claim 1 recites “a hierarchical structure” twice, the second recitation using the indefinite article “a” makes it unclear whether the second instance is referring back to the first instance, or to another hierarchical structure entirely. Consequently, one of ordinary skill in the art would be unable to determine the metes and bounds of the claim.
Claims 2-12
Claims 2-12 are similarly rejected by virtue of their incorporation of this indefinite subject matter.
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.
Claim(s) 1, 3-4, 7, 9-10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 113429867 A (“CN 867”).
Claim 1
CN 867 teaches a method for preparing a superhydrophobic [0002] coating, comprising:
sequentially applying first, second, and third layers of micro-nano particle-containing formulations, each including a polymeric binder (“adhesive agent”) to the surface of a substrate [0014],
wherein the particle size of the second micro-nano particles (B) is 5 μm < B < 100 µm (5,000 nm < B < 10,000 nm) and the particle size of the third micro-nano particles (C) is C < 5 µm (C < 5,000 nm) [0016].
Here, claim 1 uses the open transition phrase “comprising,” MPEP § 2111.03(II), so the Primary Examiner interprets CN 867’s second formulation as reading on the claimed “first formulation” and CN 867’s third formulation as reading on the claimed “second formulation.” 5,000 nm < B < 100 µm overlaps the claimed range of 500 nm – 1,000 µm; and C < 5,000 nm fully encompasses the claimed range of 1 nm – 450 nm. In the case where a claimed range overlaps or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists. MPEP § 2144.05(I).
CN 867 does not specify that the particle sizes (B, C) are specifically the median particle diameter (D50). On the other hand, CN 867 makes no suggestion that this number cannot be represented by D50, nor does it describe any way in which this particle size is determined by the artisan. It is the Primary Examiner’s position that D50 is a common and conventional means for describing the particle size distribution in a sample and 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 a particle size according to any suitable means of particle size determination, including by median particle size, D50.
Finally, the multi-layer superhydrophobic structure of CN 867 satisfies the claimed “hierarchical structure” because applicant defines “hierarchical structure” as “a multi-tiered structure.” Spec. at 3:6.
Claim 3
As noted above, CN 867’s second formulation reads on the claimed “first formulation” and CN 867’s third formulation reads on the claimed “second formulation.” 5,000 nm < B < 100 µm fully encompasses and shares an endpoint with the claimed range of 1 µm – 100 µm; and C < 5,000 nm fully encompasses the claimed range of 1 nm – 100 nm. In the case where a claimed range overlaps or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists. MPEP § 2144.05(I).
Claims 4 & 7
CN 867 teaches that the micro-nano particles in the third formulation can be hydrophobically modified with a low surface energy compound, e.g., long-chain alkyl amines, which read on the claimed “functional group containing a C1-C25 alkyl chain.”1 [0042].
Claim 9
CN 867 teaches that the micro-nano particle-containing formulations are sequentially sprayed onto the substrate surface [0037-0038].
Claim 10
CN 867 teaches that the polymeric binder (“adhesive agent”) can be one or more of PDMS, polyurethane, silicone rubber, and epoxy resin [0023], but is not limited to these [0047].
Claim 12
CN 867 teaches an initial contact angle > 160° and, after wear-resistance testing, a contact angle = 153° [0039].
Claim(s) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 113429867 A (“CN 867”), as applied to claim 1 above, further in view of CN 111560214 A (“CN 214”).
The teaching of CN 867 is detailed above, including that the polymeric binder (“adhesive agent”) can be, any or all of the coating formulations, e.g., polyurethane.
CN 867 does not explicitly teach that any of the formulations contain a cure accelerator (e.g., a catalyst). See Spec. at 4:19-5:8.
CN 214 teaches a process for forming a multilayer superhydrophobic coating on a surface wherein a polyurethane binder-containing formulation and micron-sized particles is applied to a substrate [0017-0026]. For the polyurethane binder in particular, CN 214 teaches that the formulation further includes a catalyst “to promote reaction between the hydroxyl groups and isocyanate groups to crate carbamate groups” [0033].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of CN 867 so as to utilize a catalyst to promote formation and curing of the polyurethane as doing so is known in the art of polyurethane binder-based, particle-containing superhydrophobic coatings. Doing so advantageously reduces the overall coating time.
Moreover, curing accelerators such as catalysts are well-known in the polymer art and it would have been obvious to one of ordinary skill in the art to utilize any suitable cure accelerator for any polymeric binder in order reduce the overall coating time. See also Applicant’s disclosure that “[t]he selection of an appropriate polymeric binder and cure accelerator combination would be within the remit of a skilled person.” Spec. at 4:20-21.
Claim(s) 5, 6, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 113429867 A (“CN 867”), as applied to claims 4 and 7 above, further in view of Poverenov et al. Formation of contact active antimicrobial surfaces by grafting of quaternary ammonium compounds. Colloids and Surfaces B: Biointerfaces 169 (2018) 195-205.
The teaching of CN 867 is detailed above, including that the micro-nano particles in the third formulation can be hydrophobically modified with a low surface energy compound, e.g., long-chain alkyl amines [0042].
CN 867 does not specifically teach that the functionalization results in an anti-viral, anti-bacterial, or anti-microbial properties. Moreover, CN 867 does not teach that the C1-C25 alkyl chain contains a quaternary ammonium group (QAC).
Poverenov et al. teach that C1-C25 alkyl chain-containing QACs [Table 1] can be used to modify nanoparticles to introduce antimicrobial activity due to the presence of QAC [§ 2.1.1.3].
Claim 6 & 8
It would have been obvious to one of ordinary skill in the art to modify the process of CN 867 so as to modify the particles of CN 867’s third formulation (corresponding to the claimed second formulation) with C1-C25 alkyl chain-containing QACs in order to advantageously not only impart superhydrophobicity to the surface, resulting in not only a physically antimicrobial surface (high contact angle) but also a biochemically antimicrobial surface.
Claim 5
Neither CN 867 nor Poverenov et al. teach that the particles of CN 867’s second formulation (corresponding to the claimed first formulation) are modified in any way. Nevertheless, it is clear that functionalization of lower layers with a C1-C25 alkyl such as a long-chain alkyl amine would provide improved superhydrophobicity of the overall coating and/or provide continued superhydrophobicity should the outer layer be stripped away. Consequently, it would have been obvious to one of ordinary skill in the art to modify the particles of CN 867’s second formulation (corresponding to the claimed first formulation) in this way.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2010/0311572 A1; US 2011/0094417 A1; WO 2014/0497309 A1; US 2021/0125748 A1; and US 2021/0139717 A1 are representative of the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
20 February 2026
1 See, for example, Nguyen et al. Anaerobic degradation of long-chain alkylamines by a denitrifying Pseudomonal stutzeri. FEMS Microbiol. Ecol. 66 (2008) 136-142 (“Long-chain alkylamines . . . are common amines containing alkyl chains of 10-22 carbons attached to a nitrogen atom.”)