Application No. 10/490,647
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`Docket No: HOK-0228
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`REMARKS
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`This is a filll and timely response to the Office Action mailed May 01, 2008.
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`By this Amendment, claims 1 and 14 have been amended to more particularly define the
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`present invention by incorporating the limitations of claims 9 and 12. Thus, in view of the
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`amendments to claims 1 and 14, claims 9, 11-13 and 17-19 have been canceled without prejudice or
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`disclaimer to their underlying subject matter. Thus, claims 1, 2, 4, 10, 14 and 20 are currently
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`pending in this application. Support for the claim amendments can be readily found variously
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`throughout the specification and the original claims.
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`In view of these amendments, Applicant believes that all pending claims are in condition
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`for allowance. Reexamination and reconsideration in light of the above amendments and the
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`following remarks is respectfillly requested.
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`Rejections under 35 U.S.C. §102 and §103
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`Claims 1, 2, 4, 9-14, and 17-20 are rejected under 35 U.S.C. §102(b) as allegedly being
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`anticipated by or, in the alternative, under 35 U.S.C. §103(a) as allegedly being obvious over JP 10-
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`287846 as evidenced by Deguchi (US. Patent No. 6,063,830). Further, claims 1, 2, 4, 9-14, and 17-
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`20 are rejected under 35 U.S.C. §103(a) as allegedly being unpatentable over JP 10-287846 in view
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`of Mizutani (US. Patent No. 6,013,724). Applicant respectfully traverses these rejections.
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`To constitute anticipation of the claimed invention under US. practice, the prior art
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`reference must literally or inherently teach each and every limitation of the claims. Further, to
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`establish a primafacie case of obviousness, the cited reference(s) must teach or suggest the
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`invention as a whole, including all the limitations of the claims. Here, in this case, none of the cited
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`references, either alone or in combination, teach or suggest all of the limitations of the claims with
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`particular emphasis on the limitations “wherein said compositionfurther contains an organic
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`zirconium fld an optical semiconductor material”, “wherein said organic zirconium being at least
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`one ofZr(OCfig)§(C£11202) and Zr(OCfi9)g(C§Hfl2)(CgHgng’, “wherein said composition
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`contains 0. I to 10 parts by weight of the organic zirconium in terms ofZrO2 with respect to 100
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`parts by weight of the entire solid contents ofsaid composition”, and “wherein a compounding ratio
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`by weight of the optical semiconductor material to a total weight of the solid content in the terms of
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`Application No. 10/490,647
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`Docket No: HOK-0228
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`condensate of the silicone resin and silica as the solid content of the colloidal silica is 0. 01 or more
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`and less than 0.4.”
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`More specifically, Applicant believes that the cited references, either alone or in
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`combination, do not teach or suggest the superior features and advantages possessed by the
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`invention of the present claims. The antifouling film coated article of the present invention has a
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`film of a silicone resin material on a substrate, wherein the contact angle of water on the film is in a
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`range of 5 to 30°, and an average surface roughness of said film is 5 nm or less. Thus, in the present
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`invention, the excellent antifouling property is achieved regardless of the amount of water adhered
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`to the film surface. Such features and advantages of the present invention cannot be obtained
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`without the limitations required by the claims.
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`The superior features of the present invention reside in the use of a specific organic
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`zirconium (i.e. Zr(OC4H9)3(C5H702) and Zr(OC4H9)2(C5H702)(C6H903)) as defined in the above
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`amended claims in combination with a specifically claimed amount of the optical semiconductor
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`material (i.e. “wherein a compounding ratio by weight of the optical semiconductor material to a
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`total weight of the solid content in the terms of condensate of the silicone resin and silica as the
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`solid content of the colloidal silica is 0. 01 or more and less than 0.4.”). The incorporation of the
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`specifically claimed organic zirconium is found to give a film strength substantially equal to that of
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`a film formed at 300°C even when the film is formed at a relatively low temperature of 100°C.
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`Further, the optical semiconductor material incorporated in a ratio of 0.01 to 0.4 relative to the solid
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`content in terms of condensate of the silicone resin assures a 5° to 30° contact angle of water on the
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`film. Applicant respectfiilly requests that the Examiner reviews page 14, line 19, to page 15, line 25,
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`and the Examples of the specification.
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`Such superior features and advantages of the present invention are obtained by the use of
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`the specifically claimed organic zirconium in combination of the specifically claimed amount of the
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`optical semiconductor material. None of the cited references teach or suggest the claimed
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`combination and amounts for the purpose of improving the film strength and the contact angle of
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`water. Accordingly, Applicant believes that the claimed invention is clearly patentable over the
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`teachings and suggestions of the cited references. As the Examiner already knows, presence of a
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`Application No. 10/490,647
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`Docket No: HOK-0228
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`property not possessed by the prior art is evidence of nonobViousness. In re Papesch, 315 F.2d 381,
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`137 USPQ 43 (CCPA 1963).
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`Thus, for these reasons, withdrawal of the present rejections is respectfully requested.
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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 Examiner
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`has any comments or suggestions that could place this application in even better form, the Examiner
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`is requested to telephone the undersigned attorney at the below-listed number.
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`Dated: July 31, 2008
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`Respectfully submitted,
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`By:
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`Lee Cheng
`Registration No: 40,949
`CHENG LAW GROUP PLLC
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`1100 17th Street, NW.
`Suite 503
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`Washington, DC 20036
`(202) 530-1280
`Attorneys for Applicant
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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 timely acceptance of same, the
`Commissioner is hereby authorized to charge Deposit Account No. 50-4422 for any
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`such fees; and applicant(s) hereby petition for any needed extension of time.
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