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 § 102
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 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 22-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jing et al. (Jing et al., Applied Surface Science 276 (2013) 37– 42; hereafter Jing).
Claim 22: Jing discloses a method for prevention of condensation or frost formation on a surface (title & abstract), said method comprising:
providing a substrate with a modified surface that comprises a nanostructured surface modification and functionalization by hydrophobic chemistry (abstract & Table 1);
wherein the modified surface is cooled and exposed to air which comprises water vapor (see § 2. Experimental, pg 38), and
wherein a phase change from water vapor to either liquid water or frost is prevented or delayed on said modified surface in comparison to an identical surface that does not comprise the modified surface (see Fig. 1, pg 39).
Claim 23: Said prevention or delay of phase change comprises prevention or delay of condensation of said water vapor on said modified surface (see Fig. 1, pg 39).
Claim 24: Said surface comprises condensate of said water vapor and/or liquid water, and wherein said prevention or delay of said phase change comprises prevention or delay of solidification of said water condensate and/or liquid water on said modified surface to form frost or ice on said modified surface (see Fig. 1, pg 39).
Claim 25: Said prevention or delay of phase change comprises prevention or delay of solidification of said water vapor to form water frost or ice on said modified surface (see Fig. 1, pg 39).
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 26 is rejected under 35 U.S.C. 103 as being unpatentable over Jing as applied above, and further in view of Wang et al. (Want et al., In situ growth of hierarchical boehmite on 2024 aluminum alloy surface as superhydrophobic materials, RSC Adv., 2014, 4, 14708; hereafter Wang).
Claim 26: Jing teaches that the substrate is aluminum (§ 2. Experimental, pg 38, Jing).
Jing does not teach using an aluminum alloy as the substrate.
Wang is directed towards superhydrophobic surfaces (title) and teaches that aluminum alloy is a suitable substrate for producing superhydrophobic materials (title).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute an aluminum alloy for the aluminum of Jing because as taught by Wang, aluminum alloy is an art recognized alternative substrate for forming hydrophobic materials and thus would have predictably been suitable in the process of Jing. MPEP §2144.06.
Claims 27-40 are rejected under 35 U.S.C. 103 as being unpatentable over Jing as applied above, and further in view of Chen et al. (Chen et al., In Situ Microstructure Control of Oriented Layered Double Hydroxide Monolayer Films with Curved Hexagonal Crystals as Superhydrophobic Materials, Adv. Mater. 2006, 18, 3089–3093; hereafter Chen).
Claim 27: As discussed above, Jing discloses a method for prevention of condensation or frost formation on a surface by providing a substrate with a modified surface that comprises a nanostructured surface modification and functionalization by hydrophobic chemistry.
The substrate of Jing is a nanostructured material with a hydrophobic coating to provide a superhydrophobic material (see title & abstract).
Jing does not teach the forming the superhydrophobic surface as recited.
However, Chen, which is also directed towards a superhydrophobic material (title) formed by producing a nanostructured surface with a hydrophobic coating (see § Experimental, Chen) wherein the superhydrophobic material is formed by the method comprising:
immersing the substrate in an aqueous solution that comprises one or more dissolved metal salt(s) at a temperature from about 50 °C to about 90 °C, under conditions such that a nanostructured layer is deposited on the substrate, thereby producing a coated substrate,
wherein the aqueous solution comprises 2+ and/or 3+ ion(s) of one or more first metal(s),
wherein the 2+ and/or 3+ first metal ion(s) are derived from the one or more dissolved metal salt(s), and wherein the nanostructured layer comprises one or more of the 2+ and/or 3* first metal ion(s) from the aqueous solution, and
wherein the substrate comprises one or more second metal(s) with 2+ and/or 3+ primary oxidation state, wherein the first metal(s) and the second metal(s) are different, and wherein the nanostructured layer comprises one or more 2+ and/or 3+ ion(s) of the second metal(s) from the substrate (see Experimental, Chen);
separating the coated substrate comprising the nanostructured layer from the solution (see Experimental, Chen);
treating the coated substrate to stabilize the nanostructured layer and/or to prepare the nanostructured layer for subsequent processing (by rinsing and drying; see Experimental, Chen); and
depositing one or more top coats onto the treated nanostructured layer, thereby improving the hydrophobicity, and wherein the top coat comprises a material with an alky chain (see Experimental, Chen).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the superhydrophobic nanostructured surface of Chen for the superhydrophobic nanostructured surface of Jing in the process of Jing because they are art recognized alternative superhydrophobic nanostructured surfaces and would have predictably produced the same results in the frosting and defrosting experiments of Jing.
Claim 28: The nanostructured layer provides an increased surface area for deposition of one or more additional material in comparison with a substrate that does not comprise the nanostructured layer (see multi-scale roughness is created by forming the nanostructured surface; Fig. 4, Chen).
Claim 29: The claim is rendered obvious by the combination because the combination increases the surface area as recited in claim 28 and the claims do no require the deposition of the claimed materials. See MPEP §2111.04.
Claim 30: The PAO layer acts as an adhesive layer (Experimental, Chen).
Claim 31: The aqueous solution comprises nickel nitrate and ammonium nitrate (see Experimental, Chen).
Claim 32: The substrate is Al3+ (see Experimental, Chen).
Claim 33: The first metal is Ni2+ (see Experimental, Chen).
Claim 34: The nanostructured material comprises anionic and cationic components, wherein the method further comprises one or more process steps to replace or exchange the anionic and/or cationic components (the process forms a LDH film which reads on the recited limitation; see Experimental, Chen).
Claim 35: Wherein the anionic and/or cationic components are replaced with inorganic atoms and different anions (the process is an LDH formation process comprising the reaction of the materials in the Experimental section which reads on the limitations; Chen).
Claim 36: The aqueous solution comprises ammonia (see Experimental, Chen).
Claim 37: The metal salt is a nitrate (see Experimental, Chen).
Claim 38: The solutions are formed by mixing (see Experimental, Chen).
If however, the mixing step does not necessarily read on mixing during step a) it would have been obvious to perform the mixing during step a) because any order of steps is prima facie obvious unless there is a showing of unexpected results. See MPEP §2144.04(IV)(C).
Claim 39: The LDH films are rinsed and dried at room temperature (see Experimental, Chen).
Chen does not teach the drying time or the claimed drying temperature.
However, drying temperature and time are result effective variables based on the degree of dryness and rate of drying and it is prima facie obvious to optimize result effective variables.
Claim 40: a multilayer LDH of Ni2+ and Al3+ are formed (see abstract and Experimental, Chen).
Claims 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Jing in view of Chen as applied above, and further in view of Liu et al. (Liu et al., J. Phys. Chem. B 2006, 110, 21865-21872; hereafter Liu).
Claims 41 & 42: The combination does not teach that the step (c) converts the metal hydroxide to a metal oxide (as recited in claim 41) or that the aqueous solution comprises Zn2+ and the substrate comprises aluminum.
However, Liu, which is also directed towards nanostructured LDH layers (title) discloses forming a LDH nanostructured surface by reacting Zn2+ species in an aqueous solution with an aluminum substrate followed by oxidizing the final hydroxide layer to a metal oxide (see abstract & pg 21866, Liu).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the LDH nanostructured substrate of Liu for the combination LDH nanostructured Al substrate because they are art recognized LDH nanostructured Al substrates and the structured substrate of Liu would have predictably produced the same desired coated substrate of the combination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 22-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,592,246 (hereafter ‘246) in view of Jing.
Claims 22-42: Claims 1-14 of ‘246 teach the claimed method of forming a superhydrophobic surface.
As discussed above, Jing teaches antifrost tests/properties of superhydrophobic surface.
It would have been obvious to one of ordinary skill in the art at the time of filing to practice the tests and observe the results of the tests of Jing discussed above on the superhydrophobic surfaces of ‘246 because they are art recognized tests for superhydrophobic surfaces and would have produced the same desired results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759
