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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/049,638
`
`10/22/2020
`
`Shin OKUMURA
`
`HOKU11PUSO01
`
`5847
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`BOWMAN, MARY ELLEN
`
`2875
`
`03/16/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-9 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 10/22/2020 is/are: a)[¥) accepted or b)(. objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 10/22/20.6/14/21,8/31/21.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220311
`
`Application No.
`Applicant(s)
`17/049,638
`OKUMURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MARY-ELLEN BOWMAN
`2875
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10/22/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/049,638
`Art Unit: 2875
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
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`Priority
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 10/22/2020, 6/14/2021,8/31/2021 are
`
`in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis
`
`being considered by the examiner.
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
`
`A patent fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 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 ofthe claimed invention to a person having ordinary skillinthe art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the mannerin which the invention
`was made.
`
`Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al., US
`
`8048218 (hereinafter Nakamura).
`
`Regarding claims 1 and 3, Nakamura teachesan antifouling coating containing a resin
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`component and a filler, the resin including a fluorine containing copolymer, including a fluorine segment
`
`and an acrylic segment containing no fluorine or silicone, the silicon containing polymer including a
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`silicon containing segment and an acrylic segment containing no fluorine or silicon (col 7, line 39-45).
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`Further, although Nakamurafails to teach thespecific range of mean particle size, Nakamura does teach
`
`

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`Application/Control Number: 17/049,638
`Art Unit: 2875
`
`Page 3
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`an overlapping range. Therefore, it would have been obvious for one of ordinary skill in the art, lacking
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`any unexpected results or criticality, to optimize the particle size in view of the teaching of Nakamura.
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`Regarding claim 2, Nakamura teaches an eiectrical conductivity imparting component (C}
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`expressing electrical conductivity inthe antifouling coating film (col 4, Ines 27-36),
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`Regarding claim 4, Nakamura teachesthe filler {8} includes at leastone substance selected from
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`the group consisting of silica and titania {abstract},
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`Regarding claim5, Nakamura teaches the Hectrical conductivity imparting component (C}
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`contains at leastone substance selected fram the graup consisting of electrically conductive inorganic
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`particles, electrically conductive resins, and hydrolyzable silicon compounds {col 4, lines 27-36},
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`Regarding claim 6, Nakamura teaches the invention as explained above. Further,it is the
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`position of the examiner that it would have been obvious for one of ordinary skill inthe art at the time
`
`of filing to provide the claimed amountoffiller based on routine experimentation and optimization for
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`intended use.
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`Regarding clams 7-9, Nakamura further teachesa light fixture comprising a light source anda
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`substrate and an optical member comprising the antifouling compound (col 20, lines 35-40).
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to MARY-ELLEN BOWMAN whosetelephone number is (571)270-5383. The examiner
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`can normally be reached Monday-Thursday; 7:00 am-5:00 pm.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www. uspto. gov/interviewpractice.
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`

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`Application/Control Number: 17/049,638
`Art Unit: 2875
`
`Page 4
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`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Diane Lee can be reached on (571) 272-2399. The fax phone number for the organization wherethis
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`application or proceedingis assigned is 571-273-8300.
`
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`
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`
`571-272-1000.
`
`MARY ELLEN BOWMAN
`
`Examiner
`
`Art Unit 2875
`
`/MARY ELLEN BOWMAN/
`Primary Examiner, Art Unit 2875
`
`