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 .
Election/Restrictions
Claim 40 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 April 6, 2026.
Accordingly, the requirement is made FINAL.
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 1-4, 6-7, 10-11, 19-22, 24, 26, 32, 34-36 and 39 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.
Regarding claim 1, the term “superhydrophobic” is a relative term which renders the claim indefinite. The term “superhydrophobic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purpose of examination, any hydrophobic surface is considered to read on the claimed limitation. However, Applicant should clarify what is intended, without adding new matter.
Regarding claim 2, while claim 1 is directed to producing a superhydrophobic surface on an article by laser depositing hydrophobic materials on a least one surface of the article, claim 2 (and the other claims) only discloses forming the hydrophobic material on a first surface of a target substrate, thus, it is unclear if how does the process in claim 2 is related to claim 1’s articles. For purpose of examination, the first surface of the target substrate is interpreted as the at least one surface of the article and the target substrate is interpreted as the article. However, Applicant should clarify what is intended, without adding new matter.
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, 3-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma (Hybrid superhydrophilic-superhydrophobic micro/nanostructures fabricated by femtosecond laser-induced forward transfer for sub-femtomolar Raman detection).
Regarding claim 1, Ma teaches a method of forming a superhydrophobic surface on a substrate (abstract, page 2, figure 1). Ma teaches polydimethylsiloxane (PDMS) (hydrophobic material) was sputtering onto the surface of silicon substrate (at least one surface article) though femtosecond laser induced forward transfer (FLIFT), wherein the PDMS is the donor substrate (page 2 to page 3, materials and methods; figure 1) (laser depositing hydrophobic materials on at least one surface of the article).
Regarding claim 3, Ma teaches the hydrophobic material is PDMS (polysiloxane) (page 2 to page 3, materials and methods; figure 1).
Regarding claim 4, Ma teaches the hydrophobic material is PDMS (dialkylpolysiloxane) (page 2 to page 3, materials and methods; figure 1).
Regarding claim 6, Ma teaches the hydrophobic material is PDMS (page 2 to page 3, materials and methods; figure 1).
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, 21-22, 24, 26, 36 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (Hybrid superhydrophilic-superhydrophobic micro/nanostructures fabricated by femtosecond laser-induced forward transfer for sub-femtomolar Raman detection) as applied to claims 1, 3-4 and 6 above, and further in view of Thomas (Experimental investigations of laser-induced forward transfer process of organic thin films).
Regarding claim 2, Ma teaches the PDMS is a donor substrate (a first substrate of the hydrophobic material having a first surface and a second surface), and positioning the second surface of the first substrate in proximity to a first surface of the silicon substrate (target substrate), and applying a femtosecond laser beam (depositing laser) to the first surface of the first substrate, wherein the PDMS (hydrophobic material) on the second surface of the first substrate are sputtered (converted to hydrophobic particles) and deposited on the first surface of the target substrate (page 2, right column second paragraph; page 2-3 Materials and methods, figure 1). Thus, Ma teaches all limitations of this claim, except the first substate is a glass substrate with the hydrophobic material applied as a coating on the second surface. However, Thomas teaches a method of laser-induced forward transfer process (LIFT, same process as Ma) of organic thin films (abstract) and discloses the organic compounds such as polymers can be spin coated on adequate substate that are transparent to different laser wavelengths for the deposition on a target substrate (page 1207). Thomas teaches the polymers can have different absorption level from different wavelengths resulting in different level of ablation of the polymers and deposition effects of the polymers on the target substrate (page 1208-page 1210, results and discussion 3.1 influence of absorption properties of the PEDOT). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to spin coat the polymer (hydrophobic material) on the first glass substrate as suggested by Thomas in the method of Ma because Thomas teaches it is possible to deposit the polymer spin coated on a glass substrate in LIFT and the glass substrate is transparent to different laser wavelengths which is adaptable for different wavelength setting in LIFT to achieve different ablation levels and deposition effects of the polymer (page 1207 and page 1208-1210 3.1 Influence of the absorption properties of the PEDOT).
Regarding claim 21, Thomas teaches the first glass substate is borosilicate (page 1207).
Regarding claim 22, Ma teaches the distance between the PDMS donor substate and the target substate has a gap of 20µm (page 2 to page 3, materials and methods; figure 1), which is inside of the claimed range.
Regarding claim 24, Thomas teaches the different wavelengths from ultraviolet to infrared radiation are used as deposition laser (abstract) and the polymers can have different absorption level from different wavelengths resulting in different level of ablation of the polymers and deposition effects of the polymers on the target substrate (page 1208-page 1210, results and discussion 3.1 influence of absorption properties of the PEDOT). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the wavelength of the laser in the process to yield the desired level of ablation of the polymers and deposition effects of the polymers on the target substrate. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 26, Ma teaches the depositing layer is applied to the donor substrate at the rate of 1000Hz and translating speed of 1000µs/ms (page 2 to page 3, materials and methods; figure 1), which is inside or touches the claimed range.
When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 36, Ma teaches the thickness of the PDMS coating is 1µm (page 4, left column), which is inside the claimed range.
Regarding claim 39, Ma teaches the substate is silicon. Thomas teaches the substrate can be silicon or BK7 (glass) (page 1207). Therefore, it would have been obvious to one of ordinary skill in the art to substitute glass for silicon as a target substrate in a LIFT method as disclosed by Ma.
Claims 7, 20 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (Hybrid superhydrophilic-superhydrophobic micro/nanostructures fabricated by femtosecond laser-induced forward transfer for sub-femtomolar Raman detection) in view of Thomas (Experimental investigations of laser-induced forward transfer process of organic thin films) as applied to claims 1-4, 6, 21-22, 24, 26, 36 and 39 above, and further in view of Lee (US20210309526).
Regarding claim 7, Ma in view of Thomas teaches all limitations of this claim, except the hydrophobic material further comprises a curing agent. However, Lee teaches a method of forming polymer film and discloses PDMS can be made by mixing with a curing agent in 10:1 ratio and poring the mixture on a substrate (paragraph 0053), which is inside of the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the curing agent in the PDMS for coating on the first substrate as suggested by Lee in the method of Ma in view of Thomas because Lee teaches composition allows the PDMS to be coated on a substrate (paragraph 0053).
Regarding claim 20, Lee teaches to cure the mixture on the substrate by baking at 80ºC (paragraph 0053).
Regarding claims 34-35, Ma teaches the superhydrophobic coating is heated to a temperate of 110ºC (page 5 right column), which is the curing temperature of the PDMS particles in the instant invention. Thus, Ma teaches the PDMS particles is cured for at least in a certain level. In alternative, Lee teaches PDMS is curing at 80ºC (paragraph 0053), thus, it would be obvious to further cure the sputtered PDMS particles at 80ºC on the target substrate after deposition.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ma (Hybrid superhydrophilic-superhydrophobic micro/nanostructures fabricated by femtosecond laser-induced forward transfer for sub-femtomolar Raman detection) in view of Thomas (Experimental investigations of laser-induced forward transfer process of organic thin films) as applied to claims 1-4, 6, 21-22, 24, 26, 36 and 39 above, and further in view of Barbier (US20140110263).
Regarding claim 10, Ma in view of Thomas teaches all limitations of this claim except microtexturizing the first surface of the target substrate. However, Barbier teaches a method of producing a superhydrophobic surface by anodizing a surface of the substate to form hydrophobic microstructure before forming hydrophobic polymer on the surface (abstract, paragraphs 0010, 0046, 0067). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use microtexturized the first surface of the target substrate before applying the hydrophobic coating on the target substrate as suggested by Barbier in the method of Ma in view of Thomas because Barbier teaches such texture renders the surface hydrophobic (paragraph 0010) which enhance the hydrophobicity of the surface when combine with the hydrophobic polymer (paragraphs 0008, 0010 and 0067).
Claims 11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (Hybrid superhydrophilic-superhydrophobic micro/nanostructures fabricated by femtosecond laser-induced forward transfer for sub-femtomolar Raman detection) in view of Thomas (Experimental investigations of laser-induced forward transfer process of organic thin films) and Barbier (US20140110263) as applied to claims 1-4, 6, 10 21-22, 24, 26, 36 and 39 above, and further in view of Gupta (US20130020297).
Regarding claim 11, Ma in view of Thomas and Barbier teaches all limitations of this claim, except the microtextured surface is subjected to a pulsed laser to produce the microtextured surface. However, Gupta teaches to microtexture the surface by laser texturing to render it hydrophobic (paragraphs 0072, 0129), wherein the surface is silicon (paragraph 0086) (same material as Ma’s target substrate). Gupta the laser is pulsed laser 0011), wherein the pulsed laser has a wavelength of 200nm to 2000nm (paragraph 0031), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pulsed laser to form the microstructure on the surface of the target substrate as suggested by Gupta in the method of Ma in view of Thomas and Barbier because Gupta teaches such method allows forming of nanopikes atop the pillar structure (paragraph 0012) and irradiating a portion of the surface with short laser pulses and translating at least one of the surface and a laser beam to allow short laser pulses to impart another portion of the surface (paragraphs 0011-0017).
Regarding claim 19, Ma in view of Thomas and Barbier teaches all limitations of this claim, except the first surface is treated with high energy discharge treatment. However, Gupta further teaches the energy source for the laser can be plasma beam (paragraph 0091), thus Gupta teaches the first surface of the target substate is treated with high-energy discharge treatment comprising a plasma treatment.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Ma (Hybrid superhydrophilic-superhydrophobic micro/nanostructures fabricated by femtosecond laser-induced forward transfer for sub-femtomolar Raman detection) in view of Thomas (Experimental investigations of laser-induced forward transfer process of organic thin films) as applied to claims 1-4, 6, 21-22, 24, 26, 36 and 39 above, and further in view of Roger (US20170210117).
Regarding claim 32, Ma in view of Thomas does not explicitly teaches to blow an inert gas on the coating of the hydrophobic material during step c. However, Roger teaches a transfer printing method using laser (LIFT) (abstract, paragraphs 0004 and 0010). Roger teaches to blow an inert gas on the coating (hydrophobic material in Ma in view of Thomas) during the coating (paragraphs 0011 and 0015). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use blow an inert gas to the hydrophobic material during the deposition as suggested by Roger, in the method of Ma in view of Thomas because Roger teaches the gas actuate the ink to release from the donor substrate (paragraphs 0012 and 0014), which facilitate the transfer process.
Conclusion
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/NGA LEUNG V LAW/Examiner, Art Unit 1717
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