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 .
DETAILED ACTION
Claims 1-7, 9-18 are pending in this application. Amended claims 1, 4, 6, 9, 13; canceled claim 8; and newly added claims 17-18 are noted.
The amendment dated 08/11/2026 has been entered and carefully considered. The examiner appreciates the amendments to the claims. In view of said amendments, a portion of the 112 rejection has been withdrawn.
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 1-3, 5-7, 9, 11-18 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.
In claim 1 line 4, from which claims 2-3, 5-7, 9, 11-16 depend, the phrase “or is semiconducting” is deemed confusing. It is not clear how a conductive metal containing film can comprise a semiconductor.
In claim 17, from which claim 18 depends, the phrase “forming the hydrophobic coating comprises depositing a plasma polymerized fluorocarbon layer” is deemed confusing as independent claim 1, from which claim 17 depends, requires the hydrophobic coating to comprise phosphonic acid. It is not clear whether the hydrophobic coating is to be phosphonic acid or a fluorocarbon. The same issue applies to claim 18.
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.
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.
Independent claim 1
Claims 1-2, 5-7, 9, 12, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556).
Afzali-Ardakani teaches metal surface protection (title) in which a metal substrate is protected by a polymer film which self-assembles on a metal oxide positioned on a surface of the metal substrate (abstract). Specifically, a metal substrate 104 consists of a metal oxide surface 106 and one or more polymer films 102 (0023-0024 and Figure 1). The metal oxide film can be titanium oxide (0024) and the polymer film can include phosphonic acid groups (0028).
However, the reference fails to teach a hydrophobic film.
Nealey teaches a method for forming a copolymer film (title) in which surfaces are capped by hydrophobic molecules such as tetradecyl phosphonic acid (0096). It would have been obvious to utilize a hydrophobic phosphonic layer in Afzali-Ardakani with the expectation of success because Nealey teaches of using hydrophobic molecules such as phosphonic acid.
With respect to the newly added limitation of a semiconductor and is crystalline with non-oxygen terminated facets, it is noted that the limitation also include a metal containing film comprises a metal capable of forming a native oxide and is amorphous. Afzali-Ardakani teaches titanium oxide (0024) in which titanium forms native oxide and the titanium oxide is amorphous.
With respect to the newly added hydrophobic conductive coating comprising phosphonic acid, it is noted that Nealey teaches a hydrophobic phosphonic layer (0096), which is conductive.
Regarding claim 2, Afzali-Ardakani teaches self-assembled monolayer (0020).
Regarding claim 5, Afzali-Ardakani teaches a metal substrate (0001), which are conductive.
Regarding claim 6, Afzali-Ardakani teaches a silicon substrate (0024).
Regarding claim 7, Afzali-Ardakani teaches a silicon oxide substrate (0024), which is an insulator.
Regarding claim 9, Afzali-Ardakani teaches aluminum oxide (0024), which is suggestive of sapphire.
Regarding claim 12, Afzali-Ardakani teaches titanium oxide (0024).
Regarding claim 14, Afzali-Ardakani teaches heating (0038).
Regarding claim 15, Afzali-Ardakani teaches a heating temperature of 100-140oC (0038).
Regarding claim 16, Afzali-Ardakani teaches a flat substrate (Figure 1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556) and further in view of Dolog et al. (2019/0153805). The combination of Afzali-Ardakani/Nealey fails to teach the appropriate phosphonic acid.
Dolog teaches an elastomer surface having a highly fluorinated group such as (3,3,4,4,5,5,6,6,7,7,8,8,9,9,10,10,11,11,12,12,12-heneicosafluorododecyl)phosphonic acid (0021). To utilize the phosphonic acid of Dolog in the combination would have been obvious in the absence of a showing of criticality with the claimed phosphonic acid.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556) and further in view of Jacques et al. (2018/0186123). The combination of Afzali-Ardakani/Nealey fails to teach the appropriate deposition method.
Jacques teaches forming a coated film structure (title) by depositing a polymer film using CVD, PVD, or ALD (0043). To utilize PVD in the combination would have been obvious with the expectation of success because Jacques teaches of forming a polymer film by PVD.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556) and further in view of Haider et al (The Journal of Physical Chemistry C article). The combination of Afzali-Ardakani/Nealey fails to teach a plasma polymerized fluorocarbon layer.
Haider teaches an atomic layer deposition method of depositing a plasma polymerized fluorocarbon layer (title) on metal oxide materials including HfO2 (abstract). Specifically, the fluorocarbon layer was deposited by plasma polymerization using C4F8 gas on metal oxide films on top of Si samples (p.26394 col.2 Film Growth). It would have been obvious to deposit a plasma polymerized fluorocarbon layer in the combination with the expectation of success because Haider teaches of depositing a plasma polymerized fluorocarbon layer.
Independent claim 4
Claims 4, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Haider et al (The Journal of Physical Chemistry C article) in view of Johannsen et al. (2002/0181725).
Haider teaches an atomic layer deposition method of depositing a plasma polymerized fluorocarbon layer (title) on metal oxide materials including HfO2 (abstract). Specifically, the fluorocarbon layer was deposited by plasma polymerization using C4F8 gas on metal oxide films on top of Si samples (p.26394 col.2 Film Growth). The thickness can be 32 nm (p.26395 col.1 Results and Discussion). However, the reference fails to teach a hydrophobic film.
Johannsen teaches a method of providing a hydrophobic layer (title) in which a plasma polymerized fluorocarbon film is hydrophobic (0004). It would have been obvious to utilize a hydrophobic plasma polymerized fluorocarbon film in Haider with the expectation of success because Johannsen teaches of using a hydrophobic plasma polymerized fluorocarbon film.
With respect to the newly added limitation of 20 nm, to vary thickness would have been obvious in the absence of a showing of criticality.
Regarding claim 10, Haider teaches C4F8 (p.26394 col.2).
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the 112 rejection can be overcome.
Response to Arguments
Applicant's arguments filed 08/11/2026 have been fully considered but they are not persuasive.
Applicant argues that none of the references teaches forming a hydrophobic coating on a metal containing film disposed on a surface and that said coating comprises phosphonic acid (p.5 paragraph 6).
The examiner disagrees. Afzali-Ardakani teaches a metal substrate 104 protected by a metal oxide surface 106 and polymer films 102 (0023-0024 and Figure 1). The polymer film can include phosphonic acid groups (0028) which Nealey teaches are hydrophobic (0096).
Applicant next argues that the metal containing film is crystalline with non-oxygen terminated facets (p.6 last paragraph).
The examiner agrees in part. While the examiner does not take issue with what the claim says, the examiner questions whether the claimed limitation is actually required as argued by the applicant. Independent claim 1 requires the metal containing film comprises a) metal or b) semiconductor, wherein the metal is x) crystalline or y) amorphous. Afzali-Ardakani teaches titanium oxide (0024) which meets a) and y). As the claim is presently written, the metal containing film need not have facets if the metal film is amorphous.
Applicant argues that Haider does not teach the appropriate thickness (pp.7-8).
The examiner agrees in part. The examiner concurs that Haider teaches a thickness of 32 nm, which is outside the newly claimed range. Varying thickness is well known as confirmed by Afzali-Ardakani (0024-0028). However, there appears to be no criticality associated with the claimed thinner range.
Applicant’s arguments have been considered but are not deemed persuasive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
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/BRET P CHEN/Primary Examiner, Art Unit 1718 09/04/2026
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