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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/09/2025 has been entered.
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.
Claims 34, 36 - 42, 46, 49- 52, 56, and 58 - 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20110312080 to Hatton et al., further in view of US8974993 to Richards-Johnson et al.
Regarding Claims 34, 53, 56 and 58, Hatton et al. disclose a structure suitable for photonic applications ([0070]) comprising: a first component; and a matrix component, wherein said matrix component comprises a metal salt ([0008, 0015, 0053, and 0062]). Thus, metal oxide matrix component surrounding the first component. Hatton et al. disclose the first component is a colloidal particle ([0008 and 0053]). Hatton et al. disclose the colloidal particle comprises a polymeric colloid, for example PMMAs ([0021,0053, and 0059]). Please note that metal salt is read on the claimed ionic species. It is reasonable to expect that the metal salt disclosed as a soluble matrix precursor in Hatton et al. is considered the recited ionic species [ 0015, 0060, 0062]. Hatton et al. disclose that the photonic structure is glass-like and the formation of highly-ordered structures for certain applications, such as optical/photonics ([0036], [0070] and [0072]). Please note that highly-ordered is not totally ordered. It includes some low degree disorder.
Hatton et al. are silent about the specific metal salt as Applicants set forth in the claims.
Richards-Johnson et al. disclose that it is known in the art to utilize transition metal salts such as cobalt, nickel such as nickel sulfate, and manganese salts such as magnesium sulfate, to aggregate polyester colloids capable of emitting photonic energy for forming toner particles (col. 9, lines 30-46, and col. 10, lines 27-53).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify Hatton et al. with the teaching of Richards-Johnson et al., for the purpose of aggregating the colloidal particles in the photonic structure to emitting photonic energy.
The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted). It has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
The intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Claim 36, Hatton et al. disclose the first component is a colloidal particle ([0008 and 0053]).
Regarding Claim 37, Hatton et al. disclose the colloidal particle comprises a polymeric colloid, a ceramic colloid, a metallic colloid, a biopolymer colloid, or a supramolecular self-assembled colloid ([0021, 0053, and 0059]).
Regarding Claims 38 - 39, Hatton et al. disclose the colloidal particle comprises a polymeric colloid, for example PMMAs ([0021,0053, and 0059]).
Regarding Claims 40 - 42, the Examiner respectfully submits that Hatton et al. disclose the using of the metal salt for the photonic application, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hatton et al., since where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable concentration range of ionic species included to form the photonic structure involves only routine skill in the art, for the purpose of utilizing the photonic structure for a desired application ([0015, 0036, 0062, and 0070). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding Claim 46, Hatton et al. disclose the photonic structure of claim 34, wherein said photonic structure is crack free ([0009] and [0036]).
Regarding Claims 49 -50, Hatton et al. disclose the photonic structure metal comprises a silicon oxide, an aluminum oxide, and a titanium oxide et al ([0015], [0061], and [0062]).
Regarding Claim 51 -52, Hatton et al. disclose the photonic structure comprises a hydrolysable compound such as TEOS ([0059]).
Regarding Claims 59 - 63, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Hatton et al. disclose the use of the structure in Paragraphs ([0034, 0036 and 0082-0086]).
Claim 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20110312080 to Hatton et al. and US8974993 to Richards-Johnson et al, as applied to claim 34 above, and further in view of US7373073 to Kamp et al.
Regarding Claim 35, Hatton and Richards-Johnson et al. disclose the photonic structure of claim 34. Hatton et al. are silent about the first component being a gas.
Kamp et al. teach that it is known in the art to infiltrate a photonic crystal with a gas to cause a change the photonic band structure, and a shift in the fundamental stop-band (col. 1, lines 59-62).
Thus, it would have been obvious to one of ordinary skill in the art before the effective to filing date of the instant application to use the gas as Applicants set forth in the claim 35, motivated by the fact that it is known in the art to infiltrate a photonic crystal with a gas to cause a change the photonic band structure, and a shift in the fundamental stop-band (col. 1, lines 59-62).
Claims 47 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20110312080 to Hatton et al. and US8974993 to Richards-Johnson et al as applied to claim 34 above, and further in view of US8936683 to Marshal et al.
Regarding Claim 47, Hatton and Richards-Johnson et al. disclose the photonic structure of claim 34. Hatton et al. are silent about the photonic structure being spectrally modified, color saturated, iridescent, or exhibits controllable angle-dependent optical properties.
Marshall et al. teaches that it is known in the art that a photonic crystal is a microstructured material with wavelength and angle dependent optical properties, and band gap position and gap width may be easily modified to yield desired photonic properties by varying crystal parameters (col.1, lines 3-27).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify Hatton et al. with the teaching of Marshall, for the purpose of forming a desired photonic crystal microstructure (Marshall et al. col. 1, lines 13-27).
Regarding Claim 48, modified Hatton et al. disclose the photonic structure of claim 47. Hatton et al. are silent that the photonic structure exhibits controllable angle-dependent optical properties comprise spectral shifts, color travel, sparkle, hue, glare, gloss, or luster. Marshall teaches that it is known in the art that a photonic crystal is a microstructured material with wavelength and angle dependent optical properties, and band gap position and gap width may be easily modified to yield desired photonic properties by varying crystal parameters (see col. 1, lines 3-27).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify Hatton et al. with the teaching of Marshall et al., since where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable spectral shifts, color travel, sparkle, hue, glare, gloss, or luster of the photonic structure involves only routine skill in the art for the purpose of forming a desired photonic crystal microstructure (Marshall et al., col. 1, lines 13-27).
Response to Arguments
Applicant's arguments filed 01/09/2025 have been fully considered but they are not persuasive.
The Applicant argues that Richards-Johnson uses metal salts as aggregating agents and the instant application directed to "dispersed or solubilized ionic species incorporated into the metal oxide matrix component”.
The Examiner respectfully submits that Richards-Johnson discloses that utilize transition metal salts such as cobalt, nickel such as nickel sulfate, and manganese salts such as magnesium sulfate, to aggregate polyester colloids capable of emitting photonic energy for forming toner particles (col. 9, lines 30-46, and col. 10, lines 27-53). Furthermore, Hatton et al. disclose a structure suitable for photonic applications ([0070]) comprising: a first component; and a matrix component, wherein said matrix component comprises a metal salt ([0008, 0015, 0053, and 0062]). Since the teaching of the Richards-Johnson disclose transition metal salt can aggregate colloids to emitting photonic energy and Hatton et al. disclose a structure suitable for photonic applications by using a metal salt, it is obvious to one of the ordinary skill in the art to use the salt disclosed by Richards-Johnson in the Hatton et al. structure to obtain photonic energy.In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant argues that Richards-Johnson does not provide motivation to modify its teachings or the teachings of Hatton.
The Examiner respectfully submits that Richards-Johnson discloses that utilize transition metal salts such as cobalt, nickel such as nickel sulfate, and manganese salts such as magnesium sulfate, to aggregate polyester colloids capable of emitting photonic energy for forming toner particles (col. 9, lines 30-46, and col. 10, lines 27-53).
The Applicant argues that Richards-Johnson does not teach or suggest the photonic structure of claim 34.
The Examiner respectfully submits that Hatton et al. disclose a structure suitable for photonic applications ([0070]) comprising: a first component; and a matrix component, wherein said matrix component comprises a metal salt ([0008, 0015, 0053, and 0062]). Since the teaching of the Richards-Johnson disclose transition metal salt can aggregate colloids to emitting photonic energy and Hatton et al. disclose a structure suitable for photonic applications by using a metal salt, it is obvious to one of the ordinary skill in the art to use the salt disclosed by Richards-Johnson in the Hatton et al. structure to obtain photonic energy.In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant argues that Richards-Johnson provides no motivation to modify its teachings or the teachings of Hatton to arrive at the claimed solution of "controlling the optical properties and structural stability of photonic structures" or via the claimed photonic structure comprising "a metal oxide matrix component surrounding the first component; wherein said metal oxide matrix component comprises dispersed or solubilized ionic species incorporated into the metal oxide matrix component such that the photonic structure is a glass-like photonic structure."
The Examiner respectfully submits that the difference in objectives does not defeat the case for obviousness. See MPEP 2144. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See MPEP 2144. Hatton et al. disclose a structure suitable for photonic applications ([0070]) comprising: a first component; and a matrix component, wherein said matrix component comprises a metal salt ([0008, 0015, 0053, and 0062]). Since the teaching of the Richards-Johnson disclose transition metal salt can aggregate colloids to emitting photonic energy and Hatton et al. disclose a structure suitable for photonic applications by using a metal salt, it is obvious to one of the ordinary skill in the art to use the salt disclosed by Richards-Johnson in the Hatton et al. structure to obtain photonic energy. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant argues that a person of ordinary skill in the art would not have had any reasonable expectation of success, based on the teachings of Richards-Johnson, because Richards- Johnson do not address "controlling the optical properties and structural stability of photonic structures" via the claimed photonic structure comprising "a metal oxide matrix component surrounding the first component; wherein said metal oxide matrix component comprises dispersed or solubilized ionic species incorporated into the metal oxide matrix component such that the photonic structure is a glass-like photonic structure."
The Examiner respectfully submits that the difference in objectives does not defeat the case for obviousness. See MPEP 2144. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See MPEP 2144. Hatton et al. disclose a structure suitable for photonic applications ([0070]) comprising: a first component; and a matrix component, wherein said matrix component comprises a metal salt ([0008, 0015, 0053, and 0062]). Since the teaching of the Richards-Johnson disclose transition metal salt can aggregate colloids to emitting photonic energy and Hatton et al. disclose a structure suitable for photonic applications by using a metal salt, it is obvious to one of the ordinary skill in the art to use the salt disclosed by Richards-Johnson in the Hatton et al. structure to obtain photonic energy. In response to Applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant argues the unexpected result of “glass-like photonic structure" addressed the problem of "controlling the optical properties and structural stability of photonic structures."
The Examiner respectfully submits that Hatton et al. disclose a structure suitable for photonic applications ([0070]) comprising: a first component; and a matrix component, wherein said matrix component comprises a metal salt ([0008, 0015, 0053, and 0062]). Thus, metal oxide matrix component surrounding the first component. Hatton et al. disclose the first component is a colloidal particle ([0008 and 0053]). Hatton et al. disclose the colloidal particle comprises a polymeric colloid, for example PMMAs ([0021,0053, and 0059]). Please note that metal salt is read on the claimed ionic species. It is reasonable to expect that the metal salt disclosed as a soluble matrix precursor in Hatton et al. is considered the recited ionic species [ 0015, 0060, 0062]. Hatton et al. disclose that the photonic structure is glass-like and the formation of highly-ordered structures for certain applications, such as optical/photonics ([0036], [0070] and [0072]). Please note that highly-ordered is not totally ordered. It includes some low degree disorder. The Examiner respectfully submits that the Applicant must compare the instant application with the closest art, Hatton et al. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356. Further more any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The rejection of claims 36-42, 46, 49-53, 56, and 58-65 is maintained because no further argument is presented.
The rejection of claim 35 is maintained because no further argument is presented.
The rejection of claims 47 and 48 is maintained because no further argument is presented.
Conclusion
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731