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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/09/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 18, “and (iii) and” should read “and (iii)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 6, 9-12, 19-20, 25, 65-67, and 69-74 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, lines 16-17, recites “…in which stretched state (i) voids are present between the nanoparticles of the three-dimensional array of nanoparticles and the polysiloxane”, but there is not support in the present disclosure for this limitation. While paragraphs 0019, 0021, 0024, 0154, 0158, 0159 provide support to recite that voids are present between specific nanoparticles, i.e. silica, and specific polysiloxane, i.e. polydimethylsiloxane, there is no support to broadly recite the cited phrase.
Claim 1, lines 17-18, recites “(ii) ligaments form within the polysiloxane, and (iii) the ligaments confine the nanoparticles”, but there is not support in the present disclosure for this limitation. While paragraph 0150 of the published application pointed to by applicant specifically discloses polydimethylsiloxane nanoscale ligaments confining silica nanoparticles, there appears to be no support to broadly recite the cited phrase.
Claims 4, 6, 9-12, 19-20, 25, 65-67, and 69-74 are rejected as dependent on rejected Claim 1.
Claim 73 recites “the nanoparticles are free of surface coating”, but there is not support in the present disclosure for this limitation. The cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453. The insertion of the above phrase positively excludes a surface coating on the nanoparticles, however, there is no support in the present specification for such exclusion. While there is support to recite that silica nanoparticles are free from surface functionalization with hydrophobic groups (para 0049 of the present specification), there is no support for the recited phrase.
Claim 74 is rejected as dependent on rejected Claim 73.
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.
Claim 9 is 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.
Claim 9 recites “the nanoparticles of the three-dimensional array of nanoparticles are silica particles, polystyrene particles, poly(methyl methacrylate) particles, or a combination thereof”, while Claim 1, on which Claim 9 depends, recites “the nanoparticles comprise silica particles, polystyrene particles, poly(methyl methacrylate) particles, or a combination thereof” (emphasis added). It is unclear how “nanoparticles are” in Claim 9 further limits “nanoparticles comprise” in Claim 1. Examiner suggests canceling Claim 9, or amending Claim 9 to recite “nanoparticles consist of”. For purposes of examination, “nanoparticles are” is interpreted as “nanoparticles comprise”.
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.
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.
Claims 1, 6, 9-11, 19-20, 25, 66-67, and 69-72 are rejected under 35 U.S.C. 103 as being unpatentable over Guschl et al. (US 2015/0054425 A1) in view of the evidence of Azom (“Silica - Silicon Dioxide (SiO2)”, see reference filed 12/08/2021), MIT (Material Property Database, “Material: PDMS (polydimethylsiloxane)”), Ledestar (“What Is The Wavelength Of Light Emitted By LED?”), and Haga et al. (JP 2008/145506 A, see translation filed 03/22/2023).
Regarding Claims 1, 6, 9, and 71, Guschl discloses a nanocomposite comprising nanoparticles coupled with a polymer matrix (Abstract). In the nanocomposite, the nanoparticles are distributed within the polymer matrix (para 0026) (i.e. the nanoparticles are distributed in three dimensions throughout the polymer matrix, forming a three-dimensional array of nanoparticles embedded in the polymer matrix).
The polymer matrix is a silicone matrix formed from polysiloxane such as polydimethylsiloxane (PMDS) (para 0059). The nanoparticles may comprise silica (para 0037).
The nanoparticles have an index of refraction of about 1.8 to about 2.9, and the difference between the index of refraction of the nanoparticles to the index of refraction of the polymer matrix is about 0.3 or more (para 0047). Therefore, the difference may be about 10% (0.3/2.9).
According to the evidence of Azom, silica has a Young’s modulus ranging from 66.3 to 74.8 GPa. According to the evidence of MIT, PDMS has a Young’s modulus of 360-870 KPa. Therefore, the Young’s modulus of the silica nanoparticles differs from the Young’s modulus of the PDMS polymer matrix by at least one order of magnitude.
The nanocomposite may be visible light transparent, absorbing 20% or less of light (i.e. transmitting 80% or more) (paras 0073-0074).
Guschl discloses examples wherein the nanocomposite has a thickness of 1 mm (para 0097).
Guschl discloses it is desirable to select nanoparticles that increase the elastic modulus of the composite (para 0102).
In light of the overlap between the claimed composite film and that disclosed by Guschl, it would have been obvious to one of ordinary skill in the art to produce a composite film that is both disclosed by Guschl and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Guschl does not specifically disclose the nanocomposite is stretched or convertible between a stretched and unstretched state. However, since Guschl discloses the nanocomposite comprising materials as claimed, including PDMS polymer matrix and silica nanoparticles, which are the same polysiloxane and nanoparticles used in the present examples (present specification, paras 00144-00146), the nanocomposite would necessarily be convertible between an unstretched state and a stretched state. The stretched state of the composite film would necessarily give rise to the formation of voids between the nanoparticles and the polydimethylsiloxane and ligaments within the polysiloxane, which would confine the nanoparticles as claimed, and the nanocomposite would necessarily transmit less light when in the stretched state than when in the unstretched state.
Regarding Claims 10-11, 70, and 72, Guschl discloses all the limitations of the present invention according to Claims 1 and 71 above. Guschl further discloses incorporating multi-functional coupling agents to the surface of the nanoparticles, the multi-functional coupling agents having chemical functional groups and ligands to promote dispersion of the nanoparticles into polymer matrix, specifically disclosing methyl-based siloxane ligands would work best with methylsiloxane polymers, due to chemical similarity (paras 0051-0052) (i.e. the silica nanoparticles may be functionalized with coupling agent having methyl-based ligands, which correspond to the hydrophobic group comprising alkyl moiety as claimed).
Regarding Claim 19, Guschl discloses all the limitations of the present invention according to Claim 1 above. Guschl further discloses the nanocomposite may be at least 90% transparent corresponding to the wavelength(s) of LED light (para 0074). According to the evidence of Ledestar, LED light may include ultraviolet, visible, and infrared light, having wavelengths of 200-1000+ nm (Table, pg 4).
Regarding Claims 20, and 66-67, Guschl discloses all the limitations of the present invention according to Claim 1 above. Guschl further discloses the nanoparticles have an average particle size of about 0.001-750 nm (para 0048).
Regarding Claim 25, Guschl discloses all the limitations of the present invention according to Claim 1 above. Guschl further discloses the nanoparticles may further comprise zinc oxide (para 0047). According to the evidence of Haga, zinc oxide has piezoelectric properties (Overview, pg 2; Claim 1, pg 5).
Regarding Claim 69, Guschl discloses all the limitations of the present invention according to Claim 1 above. Guschl further discloses the nanoparticles have an average particle size of about 0.001 to about 750 nm (about 0.75 microns) (para 0048). “About 0.75 microns” reads on the present limitation of “about 1 micron”.
Alternatively, the only deficiency of Guschl is that Guschl discloses particle size of about 0.75 microns, while the present claims require about 1 micron.
It is apparent, however, that the instantly claimed particle size and that taught by Guschl are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the particle size disclosed by Guschl and the particle size disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the particle size disclosed in the present claims is but an obvious variant of the particle size disclosed in Guschl, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Guschl as applied to claim 1 above, and further in view of Manca et al. (US 2010/0040867 A1).
Regarding Claim 12, Guschl discloses all the limitations of the present invention according to Claim 1 above. Guschl does not disclose the nanocomposite comprises a first and second surface wherein the nanoparticles are concentrated closer to the first surface as claimed.
Manca discloses a double layer coating having a first layer comprising polydimethylsiloxane resin and a second layer comprising hydrophobic microparticles, in which the microparticles of the second layer are at least partially incorporated into the first layer (paras 0016-0017). The microparticles may be silica having a diameter of 5 -100 nm (para 0020). The second layer is formed from a dispersion comprising the microparticles and a quantity of the same resin used in the first layer (para 0026). The two layers are cured together, so that the double layer coating is considered a single continuous layer of resin with the microparticles incorporated to its surface (para 0028). This configuration creates a textured surface more favorable to light transmission by reducing reflectance (para 0036).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date oof the present invention to modify Guschl to incorporate the teachings of Manca and produce the nanocomposite of Guschl from a first layer comprising the PDMS polymer matrix and a second layer comprising the PDMS polymer matrix and the nanoparticles, so that the two layers form a nanocomposite with the nanoparticles concentrated at one surface of the nanocomposite. Doing so would produce a textures surface that reduces reflectance and is more favorable to light transmission.
Claims 1, 4, 6, 9, 12, 19-20, 25, 65-67, 69, 71, and 73-74 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (US 2017/0297058) in view of the evidence of Ledestar (“What Is The Wavelength Of Light Emitted By LED?”) and Haga et al. (JP 2008/145506 A, see translation filed 03/22/2023).
Regarding Claims 1, 6, 9, 20, 65-67, 69, and 71, Jiang discloses a composite light regulating film (para 0004) comprising particles such as silica and matrix such as polydimethylsiloxane (para 0005). The particles are embedded into the matrix (para 0035) (i.e. the nanoparticles are distributed in three dimensions throughout the polymer matrix, forming a three-dimensional array of nanoparticles embedded in the polymer matrix). The silica particles have a size of 5-500 nm or 500 nm- 10 microns (para 0034) (i.e. silica nanoparticles).
The silica has a refractive index of ~1.42 while polydimethylsiloxane has a refractive index of ~1.4 (para 0063) (i.e. there is a difference of about 1.4%).
The silica has a Young’s modulus of ~ 76 GPa while polydimethylsiloxane has a Young’s modulus of about ~ 1MPa (para 0063) (i.e. there is a greater than one order of magnitude difference).
Jiang discloses the composite film may be configured to have a transparency of 0%-100%, wherein mechanical force, such as tensile force (i.e. stretching), applied to the film reversibly changes the film from transparent to opaque (paras 0042, 0044, 0047-0048) (i.e. the unstretched film may have a transparency of up to 100% (i.e. transmits at least 90% of a light), and transmits less when stretched.
The composite film has a thickness of 10 nm to 10 mm (para 0039).
In light of the overlap between the claimed composite film and that disclosed by Jiang, it would have been obvious to one of ordinary skill in the art to produce a composite film that is both disclosed by Jiang and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Given that Jiang discloses a composite film identical to that presently claimed, comprising polydimethylsiloxane polymer matrix and silica nanoparticles, which are the same polysiloxane and nanoparticles used in the present examples (present specification, paras 00144-00146), the stretched state of the composite film would inherently give rise to the formation of voids between the nanoparticles and the polydimethylsiloxane. Further, the film would inherently have ligaments within the polysiloxane that confine the nanoparticles as claimed.
Regarding Claim 4, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang does not disclose that the polydimethylsiloxane is crosslinked (i.e. the polydimethylsiloxane has 0 mol% crosslinking).
Regarding Claim 12, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang further discloses the particles may be disposed onto the elastomer matrix so that a portion of the particles are embedded within the polymer matrix and a portion remain at the top surface of the composite film (para 0036).
Regarding Claim 19, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang further discloses the composite may be configured to transmit and scatter both visible and NIR light (paras 0037, 0062). According to the evidence of Ledestar, visible and infrared light have wavelengths of 380-1000+ nm (Table, pg 4).
Regarding Claim 25, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang further discloses the particles may further comprise zinc oxide (para 0005). According to the evidence of Haga, zinc oxide has piezoelectric properties (Overview, pg 2; Claim 1, pg 5).
Regarding Claim 73, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang does not disclose or require a surface coating on the particles. Therefore it would be obvious to produce the composite film wherein the particles are free of surface coating.
Regarding Claim 74, Jiang discloses all the limitations of the present invention according to Claim 1 above. Jiang further discloses the particles may be silica nanoparticles (para 0034).
Response to Arguments
The rejections of record over Guschl in view of Fudoji are withdrawn. New grounds of rejection are set forth above.
Applicant's arguments filed 03/09/2026 have been fully considered but they are not persuasive.
Regarding the rejection over Jiang, Applicant argues that the “particle layer” of Jiang does not read on “a three-dimensional array of nanoparticles” as claimed.
However, Jiang discloses the particles may be disposed onto the elastomer matrix so that a portion of the particles are embedded within the polymer matrix and a portion remain at the top surface of the composite film (para 0036). Since the polymer matrix is a three-dimensional structure, and the particles are disposed on the polymer matrix and embedded to varying depths, the particles would necessarily form a three-dimensional array as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/ Examiner, Art Unit 1787
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