Application No. 10/490,647
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`Docket No.: HOK—0228
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`This is a full and timely response to the Office Action mailed February 7, 2006,
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`submitted concurrently with a one month Extension of Time to extend the due date for response
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`to June 7, 2006.
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`By this Amendment, claims 11-13 have been added to further protect specifically
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`embodiments of the present invention. Support for the new claims can be found variously
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`throughout the specification and the original claims, see for example, page 14, lines 19—30, of the
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`specification. Thus, claims 1-13 are pending in this application.
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`In View of this Amendment, Applicant believes that all pending claims are in
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`condition for allowance. Reexamination and reconsideration in light of the above amendments
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`and the following remarks are respectfully requested.
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`Objection to the Claims
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`The objection to claim 9 has been rendered moot in View of the Applicant’s
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`amendment to the claim.
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`Rejections under 35 U.S.C. §102 and §103
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`Claims 1—4, 7, 8 and 10’are rejected under 35 U.S.C. §102(b) as allegedly being
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`anticipated by JP 10-287846 as evidenced by Deguchi (US. Patent 6,063,830). Further, claims
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`5, 6 and 9 are rejected under 35 U.S.C. §103(a) as allegedly being obvious over JP 10-287846 in
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`view of Isozaki (U.8. Patent 4,904,504). Applicant respectfully traverses these rejections.
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`To constitute anticipation of the claimed invention, the cited reference must disclose
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`each and every limitation of the claims. Further, to establish a prima facie case of obviousness,
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`the cited reference (or references when combined) must teach or suggest the invention as a
`whole, including all the limitations of the claims. Here, in this case, none of the cited references
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`teach or suggest the claim limitations “wherein a contact angle ofwater on saidfilm is in a
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`range of5 t0 30‘3 and an average surface roughness ofsaidfilm is 5 nm or less”.
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`JP 10—287846 discloses a functional inorganic paint having excellent antifouling
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`property and weather resistance, which is characterized by comprising a 4—functional silicone
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`resin containing a hydrolyzed condensate of a 4-functional hydrolytic organosilane, and a curing
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`accelerator. In addition, as indicated by the Examiner, JP 10-287846 teaches the use of colloidal
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`silica as a filler. However, based on Applicant’s review of the cited references, Applicant
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`Application No. 10/490,647
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`Docket No.: HOK-0228
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`believes that the cited references fail to specifically teach or suggest an antifouling film
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`simultaneously comprising the two claimed conditions, i.e., “wherein a contact angle of water
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`on saidfilm is in a range of5 to 30°, and an average surface roughness ofsaidfilm is 5 nm or
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`less”.
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`The Examiner has argued in the Office Action that the contact angle of water of the
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`silicone resin material primarily depends on the amount of the colloidal silica, and since JP 10-
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`287846’s silicone resin material contains colloidal silica in an amount reading on the present
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`invention, the silicone resin materials of both JP 10—287846 and the present invention should
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`have the same contact angle of water. The Examiner supports his position by citing page 2, last
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`paragraph of Applicant’s specification.
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`Applicant disagrees with the Examiner’s position that the last paragraph of page 2 of
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`the present specification supports such an argument. The cited paragraph only provides that
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`since hydrophilicity of the film is maintained by the colloidal silica, it is easy to stably keep the
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`contact angle of water in the-above range over an extended time period.
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`Applicant also disagress with the Examiner’s position that since the particle size of
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`the colloidal silica used in JP 10-287846 is the same as that of the present application, the
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`silicone resins of both JP 10-287846 and the present invention should have the same surface
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`roughness. The Examiner has based his position on the belief that it is well known that surface
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`roughness primarily depends on the particle size of the colloidal silica. Applicant submits that
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`although the surface roughness of the silicone resin can be influenced to some extent by the
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`particle size of colloidal silica, the surface roughness of the silicone resin is also influenced by
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`other parameters. In other words, even when using colloidal silica having the same particle sizes,
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`the surface roughness of the silicone resins are not necessarily the same. For example, if
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`colloidal silica having an average grain size of 10 to 20 nm is used, one skilled in the art still
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`must control the molecular weight and/or the composition of the silicone resin in order to place
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`the surface roughness within the claimed range.
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`Under US. case law, in relying upon the theory of inherency, the Examiner must
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`provide a basis in fact and/or technical reasoning to reasonably support the determination that
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`the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.
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`In other words, the extrinsic evidence must make clear that the missing descriptive matter is
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`necessarily present in the thing described in the reference, and that it would be so recognized by
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`persons of ordinary skill. Here, in this case, since the surface roughness of the silicone resin is
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`Application No. 10/490,647
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`Docket No.: HOK-0228
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`not only influenced by particle size but also by other parameters such as molecular weight and
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`the composition of the silicone resin, the Examiner cannot support the position that the cited
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`references inherently teaches an antifouling film having average surface roughness of 5 nm or
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`less.
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`It should also be noted that the cited references do not discuss the problems caused
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`when the contact angle is less than 5° or more than 30". As described on page 5 of the present
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`specification, when the contact angle is less than 5°, drops of water spread to the film surface
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`even when a relatively small amount of water adheres to the film. Since the drops of water are
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`not eliminated, relatively large scale-like contaminations are lefi on the film surface (see FIG. 2.
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`of the present application). On the other hand, if the drops of water are eliminated by run off,
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`contaminations are left along the flow of water on the film surface (see FIG. 3). Since, in this
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`case, the contaminants are localized at the peripheries, the difference in the amounts of
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`contaminants between the interior and the periphery of the respective drop of water is recognized
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`as a contrast of contamination.
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`Furthermore, when the contact angle of water is more than 30°, a layer of water is not
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`formed on the film surface even when a relatively large amount of water adheres to the film. As
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`a result, since the contaminants adhered to the film surface are not eliminated, they pool on the
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`film surface to form contaminations.
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`Still further, the cited references also do not teach the problems caused when the
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`surface roughness is more than 5 nm. As described on page 5, last paragraph, of the present
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`specification, when the average surface roughness of the film exceeds 5 nm, contaminants easily
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`adhered to the film surface since when a layer of water forms on the film surface, contaminants
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`are caught by the bumpy surface of the film making them hard to eliminate from the film
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`surface.
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`Hence, Applicant believes that the cited reference, either alone or in combination,
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`fails to teach or suggest the antifouling film of the present invention having the claimed average
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`surface roughness and the claimed contact angle of water. The cited references also do not teach
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`or suggest the superior properties and advantages obtain by such characteristics. As the
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`Examiner already knows, a showing of superior and unexpected properties can rebut a prima
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`facie case of obviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963).
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`Thus, for these reasons, withdrawal of this rejection is respectfully requested.
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`Application No. 10/490,647
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`Docket No.: HOK-0228
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`With regard to new claims 11—13, Applicant believes that these new claims are novel
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`and unobvious over the teachings and suggestion of the cited references since the cited
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`references do not teach or suggest the specifically claimed organic zirconium or the superior
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`effects obtained thereform. As described on page 14, line 19, to page 15, line 2, of the present
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`specification, the strength of the antifouling film of the present invention can be further
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`improved by using the claimed organic zirconium.
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`11
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`Application No. 10/490,647
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`Docket No.: HOK-0228
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`CONCLUSION
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`For the foregoing reasons, all the claims now pending in the present application are
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`believed to be clearly patentable over the outstanding rejections. Accordingly, favorable
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`reconsideration of the claims in light of the above remarks is courteously solicited. If the
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`Examiner has any comments or suggestions that could place this application in even better form,
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`the Examiner is requested to telephone the undersigned attorney at the below-listed number.
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`Dated: June 6, 2006
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`Respectfially sun,
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`David T. Nikai o 0
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`Registration No.: 22,663
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`Lee Cheng
`Registration No.: 40,949
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`RADER, FISHMAN & GRAUER PLLC
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`1233 20th Street, NW.
`Suite 501
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`Washington, DC 20036
`(202) 955-3750
`Attorneys for Applicant
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`‘Betition foran needed extension of tiine.
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`Should additional fees be necessary in connection with the filing of this paper, or if a petition..
`for extension of time is required for timelyacceptance of same, the Commissioner18 hereby
`authorizedto charge Deposit AccountNo. 180013 forany such fees; and applicant(s) herebyV
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