DETAILED ACTION
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 .
Status of Claims
Claims 1-4, 7, 27-30, and 32 are examined in this office action as claim 1 was amended, claim 6 is canceled and claim 32 is new in the reply dated 2/13/26.
Claim Interpretation
Claims 1-4 recites treating metallic material with hot water. The use of hot water is repeated numerous times throughout the claims. On page 8, lines 30-31, of the instant specification, hot water is clearly defined as water having a temperature higher than the freezing temperature of water. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). As the applicant has provided an explicit definition for the term, this definition will be used to interpret the claims below.
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.
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.
Claims 1-4, 7, 27-30, and 32 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim 1 covers where metal oxide nanostructures of Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb are configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water. The specification does not provide direction on how organic pollutants are photocatalytically degraded by the recited metal oxide nanostructures in combination with how the metal oxide nanostructures are configured to carry out this process. At the time of filing, the state of the art was such that metal oxide nanostructures are known and organic pollutants are a known category. However, organic pollutants encompass a practically innumerable number of chemicals and chemical combinations and applicant does not provide any guidance as to what organic pollutants or combinations thereof can be treated nor on how to configure the metal oxide nanostructures to carry out this degradation. Thus, the disclosed recitation of where metal oxide nanostructures are configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, of does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in the claims as innumerable different organic pollutants would have to be experimented with numerous different metal oxides with varying light exposure to achieve degradation. Claims 2-4, 6-7, 27-30, and 32 are also rejected as they depend from claim 1 and do not solve the above issue.
Claims 1-4, 7, 27-30 and 32 are 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 1 recites the limitation “wherein the metal oxide nanostructures are of a metal oxide semiconductor, configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water” in the last six lines of the claim. It is not clear what is meant by “degrade”. It is not clear what constitutes an organic pollutant being degraded. It is not clear whether this means that the pollutant is decomposed into its constituent parts, whether it is merely chemically changed in some way, or some other meaning. While applicant notes on pg. 2, lines 1- of the specification that the strong oxidizing agents produced by metal oxide semiconductors can degrade organic pollutant molecules into non-hazardous byproducts, this description merely uses relative terminology of non-hazardous to describe the process and thus it is unclear what is constituted by degrade. Claims 2-4, 6-7, 27-30, and 32 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7, and 32 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2014/0272291 A1 of Moon.
As to claim 1, the claim relates to a photocatalytic material comprising a water suspension containing a metallic material and metal oxide structures synthesized by a hot water process, so applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the hot water process applied to a metallic material does not impart any further structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. Further, while applicant has added a negative limitation where the hot water process does not involve any of plasma treatment, vacuum environment, acidic solutions, alkaline solutions, surfactants, reductants, and oxidation agents, these negative limitations do not impart any further structure beyond what is claimed.
Moon discloses forming aluminum oxide on the surface of aluminum using a process where aluminum comes into contact with water included in the reaction solution, oxidation takes place, and needle-shaped nano-protrusions are grown (Moon, paragraphs [0043]-[0044] and FIG. 1), meeting the claim limitation of a water suspension as the substrate and oxides are in the water, they are in a suspension meeting the claim limitations. Moon discloses an embodiment where the nano-protrusions have a needle shape, a height thereof may range from 10 nm to 100 nm (Moon, paragraph [0049]), meeting the limitation where the nanostructures are in a range of 10-500 nm and where the metallic material is Al. While “hot water process” does not impart any further structure to the claimed photocatalytic material, Moon nevertheless discloses a process that takes place in water at 70 to 90 degrees C (Moon, paragraph [0045]), meeting even that product-by-process limitation. While Moon discloses conducting a doping treatment before performing the hot water process (Moon, claim 2), applicant’s specification notes that plasma exposure can incorporate metal ions that speed up the fabrication process (Applicant’s specification, pg. 16, lines 21-24). Thus, the incorporation of a plasma treatment merely speeds up the process and does not change the structure, and the structure produced in Moon meets the claim limitations. Finally, as Moon discloses the same starting material of Al and discloses the same size of metal oxide nanostructures, they would exhibit the same properties of being a metal oxide semiconductor. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
In the alternative, while Moon does not explicitly state that this is a suspension nor a metal oxide semiconductor, as Moon discloses the same starting material of a aluminum metal substrate and applies the same method thereto of a hot water process, the same method applied to the same material would necessarily produce the same results of a water suspension of metallic material and metal oxide nanostructures where the metal oxide structures are semiconductors . “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Finally, it is not clear what is meant by “degrade”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring some change in the organic pollutants. The limitation “configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water” is merely a statement of an intended use for the metal oxide nanostructures and while intended use recitations and other types of functional language are not entirely disregarded, the intended use 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. Claims directed to a product must be distinguished from the prior art in terms of structure rather than function, see MPEP § 2111.02(II). In this case, this use of the metal oxide nanostructures for treating organic pollutants in water does not add anything to the structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. As Moon discloses this structure, Moon meets this limitation.
As to claim 2, as the claim relates to a material in a water suspension with metal oxide nanostructures where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm synthesized on a surface of a metallic material by a hot water process wherein the treated metallic material with the metal oxide nanostructures under the hot water process has a surface area to volume ratio that is higher than a pristine surface area to volume ratio of the metallic material, applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, as Moon discloses where the aluminum oxide nanoprotrusions exist on a aluminum substrate in a solution and an embodiment where the structures have height of 10 to 100 nm (Moon, paragraphs [0046] and [0049] and FIG. 1), this structure would necessarily have a surface area to volume ratio that is higher than a pristine surface area to volume ratio of the metallic material.
As to claim 3, as the claim relates to a material in a water suspension with metal oxide nanostructures where the metal in the metal oxide nanostructure is In, Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm synthesized on a surface of a metallic material by a hot water process wherein the hot water is a liquid phase of water, a gas phase of water, or a combination thereof, applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the phase of the water does not create a structural difference in the product as the water will oxidize the metal in either fluid form. Thus, as Moon discloses where the aluminum oxide nanoprotrusions exist on a aluminum substrate in a solution and an embodiment where the structures have height of 10 to 100 nm (Moon, paragraphs [0046] and [0049] and FIG. 1), Moon meets the claim limitations. Nevertheless, Moon discloses a process that takes place in water at 70 to 90 degrees C (Moon, paragraph [0045]), and thus is disclosing a liquid phase of water meeting the claim limitation.
As to claim 4, as the claim relates to a material in a water suspension with metal oxide nanostructures where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm formed on a surface of a metallic material synthesized by a hot water process where the metallic material is immersed in the hot water, or the hot water is applied in a steam at the metallic material. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). Thus, as Moon discloses where the aluminum oxide nanoprotrusions exist on a aluminum substrate in a solution and an embodiment where the structures have height of 10 to 100 nm (Moon, paragraphs [0046] and [0049] and FIG. 1), Moon meets the claim limitations. Nevertheless, Moon discloses a process that takes place in water at 70 to 90 degrees C (Moon, paragraph [0045]), and thus Moon is disclosing immersing a metallic material in a liquid phase of water meeting the claim limitation.
As to claim 7, Moon discloses forming aluminum oxide on the surface of aluminum using a process where aluminum comes into contact with water included in the reaction solution, oxidation takes place, and needle-shaped nano-protrusions are grown (Moon, paragraphs [0043]-[0044] and FIG. 1) and Moon discloses an example where an aluminum board having 99.9% purity was used (Moon, paragraph [0072]), meeting the claim limitation of where the metallic material is elemental metals, alloys, compounds or combinations thereof.
As to claim 32, while Moon does not explicitly disclose wherein the metal oxide nanostructures exhibit photocatalytic activity that degrades about 25% of an organic chemical dye in said polluted water within a 4-hour exposure to the light, as Moon discloses the same metal of Al with the same metal oxide nanostructures with the same size, they would exhibit the same properties. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Further, the manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim, see MPEP § 2114 (II).
Claims 1-4, 7, 27 and 32 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2005/0255629 A1 of Han.
As to claim 1, the claim relates to a photocatalytic material comprising a water suspension containing a metallic material and metal oxide structures synthesized by a hot water process, so applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I) In the instant case, the hot water process applied to a metallic material does not impart any further structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. Further, while applicant has added a negative limitation where the hot water process does not involve any of plasma treatment, vacuum environment, acidic solutions, alkaline solutions, surfactants, reductants, and oxidation agents, these negative limitations do not impart any further structure beyond what is claimed. Han discloses where zinc oxide is a typical wide-bandgap semiconductor (Han, paragraph [0005]), meeting the claim limitations of the oxide being a semiconductor.
Han discloses the oxidation of metal zinc and the growth of ZnO nanorod arrays where a aqueous formamide solution with 2-10% formamide content in water is used to immerse a piece of zinc foil (Han, paragraph [0053]). Han discloses where this process forms ZnO nanorods having a diameter in the range of 10 to 1000 nm (Han, paragraph [0014]). Han also discloses a specific example where this solution is kept at a constant temperature of 65 degrees C and this forms nanorods on the zinc substrate with diameters that range from 80 to 170 nm (Han, paragraphs [0053]-[0054]), meeting the claim limitation of a water suspension as an aqueous solution contains water and as the substrate and oxides are in this solution, they are in a suspension meeting the claim limitations. This also meets the claim limitation of metal oxide nanostructures grown on metallic surfaces of the metallic material where the nanostructures are in a range of 10-500 nm and where the metallic material is Zn. While “hot water process” does not impart any further structure to the claimed photocatalytic material, Han nevertheless discloses a process that takes place in water at 65 degrees C, meeting even that product-by-process limitation. While Han discloses conducting the hot water process in an aqueous formamide solution with 2-10% formamide content in water, applicant’s specification notes that chemically modified metallic surfaces can incorporate higher number of metal irons that can speed up the fabrication process (Applicant’s specification, pg. 16, lines 21-24). Thus, the incorporation of aqueous formamide solution with 2-10% formamide content merely speeds up the process and does not change the structure, and the structure produced in Han meets the claim limitations.
In the alternative, while Han does not explicitly state that this is a suspension, as Han discloses the same starting material of a zinc metal substrate and applies the same method thereto of a hot water process, the same method applied to the same material would necessarily produce the same results of a water suspension of metallic material and metal oxide nanostructures. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Finally, it is not clear what is meant by “degrade”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring some change in the organic pollutants. The limitation “configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water” is merely a statement of an intended use for the metal oxide nanostructures and while intended use recitations and other types of functional language are not entirely disregarded, the intended use 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. Claims directed to a product must be distinguished from the prior art in terms of structure rather than function, see MPEP § 2111.02(II). In this case, this use of the metal oxide nanostructures for treating organic pollutants in water does not add anything to the structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. As Han discloses this structure, Han meets this limitation.
As to claim 2, as the claim relates to a material in a water suspension with metal oxide nanostructures where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm synthesized on a surface of a metallic material by a hot water process wherein the treated metallic material with the metal oxide nanostructures under the hot water process has a surface area to volume ratio that is higher than a pristine surface area to volume ratio of the metallic material, applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, as Han discloses where ZnO nanowires exist on a zinc substrate and where the structures have a diameter 80 to 170 nm (Han, paragraphs [0053]-[0054] and Fig 7A), this structure would necessarily have a surface area to volume ratio that is higher than a pristine surface area to volume ratio of the metallic material.
As to claim 3, as the claim relates to a material in a water suspension with metal oxide nanostructures where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm synthesized on a surface of a metallic material by a hot water process wherein the hot water is a liquid phase of water, a gas phase of water, or a combination thereof, applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the phase of the water does not create a structural difference in the product as the water will oxidize the metal in either fluid form. Thus, as Han discloses where ZnO nanowires exist on a zinc substrate and where the structures have a diameter 80 to 170 nm (Han, paragraphs [0053]-[0054] and Fig 7A), Han meets the claim limitations. Nevertheless, Han also discloses an aqueous solution at 65 degrees C (Han, paragraph [0053]), and thus is disclosing a liquid phase of water meeting the claim limitation.
As to claim 4, as the claim relates to a material in a water suspension with metal oxide nanostructures where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm formed on a surface of a metallic material synthesized by a hot water process where the metallic material is immersed in the hot water, or the hot water is applied in a steam at the metallic material. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). Thus, as Han discloses where ZnO nanowires exist on a zinc substrate and where the structures have a diameter 80 to 170 nm (Han, paragraphs [0053]-[0054] and Fig 7A), Han meets the claim limitations. Nevertheless, Han also discloses an aqueous solution at 65 degrees C (Han, paragraph [0053]), and thus Han is disclosing immersing a metallic material in a liquid phase of water meeting the claim limitation.
As to claim 7, Han discloses where the metal can be any transition metal such as of Sc, Ti, V, Cr, Mn, Fe, Co, Ni, Cu, Zn, Y, Zr, Nb, Mo, Tc, Ru, Rh, Pd, Ag, Cd, Hf, Ta, W, Re, Os, Ir, Pt, Au or Hg (Han, paragraph [0013]). Han also discloses a specific example where ZnO nanowires exist on a zinc substrate and where the structures have a diameter 80 to 170 nm (Han, paragraphs [0053]-[0054]), meeting the claim limitation of where the metallic material is elemental metals, alloys, compounds or combinations thereof.
As to claim 27, Han also discloses a specific example where ZnO nanowires exist on a zinc substrate and where the structures have a diameter 80 to 170 nm (Han, paragraphs [0053]-[0054]), meeting the limitation where the metal oxide nanostructure is a nanowire with a diameter in the range of 10-500 nm.
As to claim 32, while Han does not explicitly disclose wherein the metal oxide nanostructures exhibit photocatalytic activity that degrades about 25% of an organic chemical dye in said polluted water within a 4-hour exposure to the light, as Han discloses the same metal of Zn with the same metal oxide nanostructures with the same size, they would exhibit the same properties. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Further, the manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim, see MPEP § 2114 (II).
Claims 1-4, 7, and 32 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over "Robust superamphiphobic nanoscale copper sheet surfaces produced by a simple and environmentally friendly technique." of Khedir as evidenced by Electrical Engineering Materials - 3.3 Electron Hole Pairs of Basak.
As to claim 1, the claim relates to a material with metal oxide structures on a surface of a metallic material synthesized by a hot water process, so applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the hot water process applied to a metallic material does not impart any further structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. Further, while applicant has added a negative limitation where the hot water process does not involve any of plasma treatment, vacuum environment, acidic solutions, alkaline solutions, surfactants, reductants, and oxidation agents, these negative limitations do not impart any further structure beyond what is claimed.
Khedir discloses nanoscale copper sheet surfaces produced by simple and environmentally friendly techniques (Khedir, title). Khedir discloses that Cu oxide nanostructures were obtained using this process (Khedir, pg. 893, section 2.2 Surface Morphology Analysis; see also pg. 894 Fig 1 a-d which shows the Cu oxide nanostructures on the Cu sheet at 4, 8, 12, and 16 hours of treatment). As Khedir discloses metal oxide nanostructures (CuO nanostructures) on a surface of a metallic material (Cu sheet) and, in addition, discloses the same method of forming the metal oxide nanostructures (hot water treatment at a temperature greater than the freezing temperature of water) Khedir anticipates the claimed product. As Khedir discloses the claimed elements of the structure, namely the metal oxide nanostructures on a surface of the metallic material, it is a photocatalytic material meeting the claim limitation. Basak teaches that Copper(I) oxide (Cu2O) and Copper(II) oxide (CuO) are semiconductors (Basak, pg. 54, Others), showing that Khedir meets the limitation where the metal oxide nanostructure is a semiconductor. Khedir discloses where after 4 hours, nanostructures of around 100nm and 200-300 nm were formed (Khedir, pg. 984, section 3.1, Fabrication of Copper Oxide Nanostructures), meeting the limitation where the nanostructures have at least one dimension in a range of 10 to 500 nm. As Khedir discloses where the copper sheet is in water, this meets the claim limitation of a water suspension containing a metallic material and metal oxide nanostructures grown on metallic surfaces of the metallic material.
In the alternative, Khedir also discloses the claimed method steps of taking Cu sheets, performing mechanical wet polishing to remove the native oxide layer and contaminants, and then immersing the Cu substrates in hot de-ionized water inside a beaker placed on a hot plate and the temperature of the de-ionized water is kept at 80 ±2°C (Khedir, pg. 983, section 2.1 Surface Roughening). Thus, a person of ordinary skill would also expect the product produced by this process to exhibit the same properties as the claimed product of a water suspension containing a metallic material and metal oxide nanostructures grown on metallic surfaces of the metallic material. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
The limitation “A photocatalytic material for degradation of organic pollutants in polluted water” (emphasis added) is a statement of intended use and does not result in a structural difference in the claimed device, see MPEP § 2111.02(II). As Khedir discloses the claimed elements of the structure, namely the metal oxide nanostructures on a surface of the metallic material, this structure would be capable of water treatment and therefore meets the claim limitation.
Finally, it is not clear what is meant by “degrade”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring some change in the organic pollutants. The limitation “configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water” is merely a statement of an intended use for the metal oxide nanostructures and while intended use recitations and other types of functional language are not entirely disregarded, the intended use 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. Claims directed to a product must be distinguished from the prior art in terms of structure rather than function, see MPEP § 2111.02(II). In this case, this use of the metal oxide nanostructures for treating organic pollutants in water does not add anything to the structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. As Khedir discloses this structure, Khedir meets this limitation.
As to claim 2, Khedir discloses where the ratio of real surface area to geometrical area increases with increasing hot water treatment time from 2.375 at 0 hours to 3 at 12 hours (Khedir, Fig 4f). As these samples all have the same thickness (0.5mm) (Khedir, pg. 983, section 2.1 Surface Roughening), this greater ratio would also apply for volume as these samples would also have the same volume as the volume would be the thickness times the geometrical area.
As to claim 3, as the claim relates to a material with metal oxide structures on a surface of a metallic material synthesized by a hot water process wherein the hot water is a liquid phase of water, a gas phase of water, or a combination thereof, applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the phase of the water does not create a structural difference in the product as the water will oxidize the metal in either fluid form, therefore as Khedir discloses that Cu oxide nanostructures were obtained using this process (Khedir, pg. 893, section 2.2 Surface Morphology Analysis; see also pg. 894 Fig 1 a-d which shows the Cu oxide nanostructures on the Cu sheet at 4, 8, 12, and 16 hours of treatment), Khedir meets the claim limitations.
Also, Khedir discloses immersing the Cu substrates in hot de-ionized water inside a beaker placed on a hot plate and the temperature of the de-ionized water is kept at 80 ±2°C (Khedir, pg. 983, section 2.1 Surface Roughening) and as the water is at 80°C, it would be in a liquid phase at standard pressure, meeting the claim limitations. Thus, a person of ordinary skill would also expect the product produced by this process to exhibit the same properties as the claimed product. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 4, as the claim relates to a material with metal oxide structures on a surface of a metallic material synthesized by a hot water process metallic material is immersed in the hot water, or the hot water is applied in a stream at the metallic material. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the manner in which the hot water is applied does not create a structural difference in the product, therefore as Khedir discloses that Cu oxide nanostructures were obtained using this process (Khedir, pg. 893, section 2.2 Surface Morphology Analysis; see also pg. 894 Fig 1 a-d which shows the Cu oxide nanostructures on the Cu sheet at 4, 8, 12, and 16 hours of treatment), Khedir meets the claim limitations.
Also, Khedir discloses immersing the Cu substrates in hot de-ionized water inside a beaker placed on a hot plate and the temperature of the de-ionized water is kept at 80 ±2°C (Khedir, pg. 983, section 2.1 Surface Roughening) meeting the claim limitation of immersing the metallic material in hot water. Thus, a person of ordinary skill would also expect the product produced by this process to exhibit the same properties as the claimed product. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claims 7, Khedir discloses taking Cu sheets, performing mechanical wet polishing to remove the native oxide layer and contaminants, and then immersing the Cu substrates in hot de-ionized water inside a beaker placed on a hot plate and the temperature of the de-ionized water is kept at 80 ±2°C (Khedir, pg. 983, section 2.1 Surface Roughening), thereby meeting the claim 7 limitation of where the metallic material comprises one or more metallic composition including elemental metals.
As to claim 32, while Khedir does not explicitly disclose wherein the metal oxide nanostructures exhibit photocatalytic activity that degrades about 25% of an organic chemical dye in said polluted water within a 4-hour exposure to the light, as Khedir discloses the same metal of Cu with the same metal oxide nanostructures with the same size, they would exhibit the same properties. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Further, the manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim, see MPEP § 2114 (II).
Claim Rejections - 35 USC § 103
Claims 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0272291 A1 of Moon.
As to claims 27-30, Moon discloses forming aluminum oxide on the surface of aluminum using a process where aluminum comes into contact with water included in the reaction solution, oxidation takes place, and needle-shaped nano-protrusions are grown (Moon, paragraphs [0043]-[0044] and FIG. 1), however Moon does not explicitly disclose where the metal oxide nanostructures comprise nanowire with diameters in the range of 10-500 nm, 10-100 nm, 20-70 nm, nor 300 nm.
Nevertheless, as Moon discloses the same starting material of a aluminum metal substrate and applies the same method thereto of a hot water process for a set period of time, the same method applied to the same material would necessarily produce the same results of a water suspension of metallic material and metal oxide nanostructures comprising nanowires with diameters in the range of 10-500 nm, 10-100 nm, 20-70 nm, and 300 nm. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0255629 A1 of Han.
As to claims 28-30, Han discloses where its process forms ZnO nanorods having a diameter in the range of 10 to 1000 nm (Han, paragraph [0014]) and a specific example where there are ZnO nanorods on the zinc substrate with diameters that range from 80 to 170 nm (Han, paragraphs [0053]-[0054]), overlapping the claimed ranges of 10-100 nm (claim 28), 20-70 nm (claim 29), and 300 nm (claim 30). As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed size of oxide nanowires over the prior art disclosure since the prior art teaches the metal oxides are functional materials having unique properties of near ultraviolet emission, optical transparency, electrical conductivity and piezoelectricity (Han, paragraph [0005]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Claims 1-4, 7, 27-30, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0272291 A1 of Moon in view of “Aluminum and Aluminum Alloys” of Davis.
As to claim 1, the claim relates to a photocatalytic material comprising a water suspension containing a metallic material and metal oxide structures synthesized by a hot water process, so applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the hot water process applied to a metallic material does not impart any further structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. Further, while applicant has added a negative limitation where the hot water process does not involve any of plasma treatment, vacuum environment, acidic solutions, alkaline solutions, surfactants, reductants, and oxidation agents, these negative limitations do not impart any further structure beyond what is claimed.
Moon discloses forming aluminum oxide on the surface of aluminum using a process where aluminum comes into contact with water included in the reaction solution, oxidation takes place, and needle-shaped nano-protrusions are grown (Moon, paragraphs [0043]-[0044] and FIG. 1), meeting the claim limitation of a water suspension as the substrate and oxides are in the water, they are in a suspension meeting the claim limitations. Moon discloses an embodiment where the nano-protrusions have a needle shape, a height thereof may range from 10 nm to 100 nm (Moon, paragraph [0049]), meeting the limitation where the nanostructures are in a range of 10-500 nm and where the metallic material is Al. While “hot water process” does not impart any further structure to the claimed photocatalytic material, Moon nevertheless discloses a process that takes place in water at 70 to 90 degrees C (Moon, paragraph [0045]), meeting even that product-by-process limitation. While Moon discloses conducting a doping treatment before performing the hot water process (Moon, claim 2), applicant’s specification notes that plasma exposure can incorporate metal ions that speed up the fabrication process (Applicant’s specification, pg. 16, lines 21-24). Thus, the incorporation of a plasma treatment merely speeds up the process and does not change the structure, and the structure produced in Moon meets the claim limitations. Finally, as Moon discloses the same starting material of Al and discloses the same size of metal oxide nanostructures, they would exhibit the same properties of being a metal oxide semiconductor. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
In the alternative, while Moon does not explicitly state that this is a suspension nor a metal oxide semiconductor, as Moon discloses the same starting material of a aluminum metal substrate and applies the same method thereto of a hot water process, the same method applied to the same material would necessarily produce the same results of a water suspension of metallic material and metal oxide nanostructures where the metal oxide structures are semiconductors . “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Finally, it is not clear what is meant by “degrade”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring some change in the organic pollutants. The limitation “configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water” is merely a statement of an intended use for the metal oxide nanostructures and while intended use recitations and other types of functional language are not entirely disregarded, the intended use 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. Claims directed to a product must be distinguished from the prior art in terms of structure rather than function, see MPEP § 2111.02(II). In this case, this use of the metal oxide nanostructures for treating organic pollutants in water does not add anything to the structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. As Moon discloses this structure, Moon meets this limitation.
However, Moon does not explicitly disclose where the metallic material comprises In, Nd, Sn, Mg, Bi, or Pb.
In the same field of endeavor, Davis teaches alloying elements for aluminum alloys (Davis, pg. 370, last paragraph). Davis teaches that adding small amounts (0.05 to 0.2%) of indium reduces room-temperature aging while increasing artificial aging (Davis, pg. 379, 1st full paragraph). Davis teaches that adding small amounts of tin (0.05%) greatly increases the response of aluminum copper alloys to artificial aging following solution heat treatment thereby increasing strength and improving corrosion resistance (Davis, pg. 384, last paragraph). Davis teaches that the addition of magnesium markedly increases the strength of aluminum without decreasing the ductility (Davis, pg. 380, 2nd paragraph). Davis teaches that additions of low-melting point elements such as bismuth, lead, tin, and cadmium make free-machining alloys that have a soft, low-melting phases that promotes chip breaking and helps to lubricate the cutting tool (Davis, pg. 371, last paragraph).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add indium, tin, magnesium, bismuth, and lead as taught by Davis to the aluminum disclosed in Moon, thereby increasing artificial aging (Davis, pg. 379, 1st full paragraph), increasing strength and improving corrosion resistance (Davis, pg. 384, last paragraph), increases the strength of aluminum without decreasing the ductility (Davis, pg. 380, 2nd paragraph), and make free-machining alloys that have a soft, low-melting phases that promotes chip breaking and helps to lubricate the cutting tool (Davis, pg. 371, last paragraph).
As to claims 2-4, 7, 27-30, and 32 as Moon in combination with Davis discloses the same starting material comprising Al, In, Sn, Mg, Bi, or Pb and applies the same hot water method from Moon, these claims are rejected for the same reasons stated above in the rejection over Moon alone as the same method applied to the same starting material would produce the same properties and the same chemical structure would also have the same claimed properties. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I). “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). .
Claims 1-4, 7, and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0272291 A1 of Moon in view of “Microstructure, texture and tensile properties of aluminum-2at% neodymium alloy as used in flat panel displays” of Sarkar.
As to claim 1, the claim relates to a photocatalytic material comprising a water suspension containing a metallic material and metal oxide structures synthesized by a hot water process, so applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the hot water process applied to a metallic material does not impart any further structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. Further, while applicant has added a negative limitation where the hot water process does not involve any of plasma treatment, vacuum environment, acidic solutions, alkaline solutions, surfactants, reductants, and oxidation agents, these negative limitations do not impart any further structure beyond what is claimed.
Moon discloses forming aluminum oxide on the surface of aluminum using a process where aluminum comes into contact with water included in the reaction solution, oxidation takes place, and needle-shaped nano-protrusions are grown (Moon, paragraphs [0043]-[0044] and FIG. 1), meeting the claim limitation of a water suspension as the substrate and oxides are in the water, they are in a suspension meeting the claim limitations. Moon discloses an embodiment where the nano-protrusions have a needle shape, a height thereof may range from 10 nm to 100 nm (Moon, paragraph [0049]), meeting the limitation where the nanostructures are in a range of 10-500 nm and where the metallic material is Al. While “hot water process” does not impart any further structure to the claimed photocatalytic material, Moon nevertheless discloses a process that takes place in water at 70 to 90 degrees C (Moon, paragraph [0045]), meeting even that product-by-process limitation. While Moon discloses conducting a doping treatment before performing the hot water process (Moon, claim 2), applicant’s specification notes that plasma exposure can incorporate metal ions that speed up the fabrication process (Applicant’s specification, pg. 16, lines 21-24). Thus, the incorporation of a plasma treatment merely speeds up the process and does not change the structure, and the structure produced in Moon meets the claim limitations. Finally, as Moon discloses the same starting material of Al and discloses the same size of metal oxide nanostructures, they would exhibit the same properties of being a metal oxide semiconductor. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
In the alternative, while Moon does not explicitly state that this is a suspension nor a metal oxide semiconductor, as Moon discloses the same starting material of a aluminum metal substrate and applies the same method thereto of a hot water process, the same method applied to the same material would necessarily produce the same results of a water suspension of metallic material and metal oxide nanostructures where the metal oxide structures are semiconductors . “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Finally, it is not clear what is meant by “degrade”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring some change in the organic pollutants. The limitation “configured such that when the said polluted water to which the water suspension is introduced is exposed to light with an energy equal to or greater than a band gap of the metal oxide semiconductor, the metal oxide nanostructures generate reactive oxygen species that react with the organic pollutants in said polluted water to photocatalytically degrade the organic pollutants in said polluted water” is merely a statement of an intended use for the metal oxide nanostructures and while intended use recitations and other types of functional language are not entirely disregarded, the intended use 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. Claims directed to a product must be distinguished from the prior art in terms of structure rather than function, see MPEP § 2111.02(II). In this case, this use of the metal oxide nanostructures for treating organic pollutants in water does not add anything to the structure beyond what is claimed, namely metal oxide nanostructures and metallic material in a water suspension where the metal in the metal oxide nanostructure is Ti, Zn, Cu, Al, Fe, Sn, Mg, Mo, Cd, Mn, Co, In, V, Bi, Ta, Nd, and/or Pb and where the nanostructures have a feature with a size in the range of 10-500 nm and where the metal oxide nanostructures are of a metal oxide semiconductor. As Moon discloses this structure, Moon meets this limitation.
However, Moon does not explicitly disclose where the metallic material comprises In, Nd, Sn, Mg, Bi, or Pb.
In the same field of endeavor, Sarkar teaches where aluminum is alloyed with 2 at% neodymium (Sarkar, pg. 720, section 2, first paragraph). Sarkar teaches that this addition prevents cracking in cold rolling with up to an 80% reduction in thickness (Sarkar, pg. 725, section 5, first paragraph, left column).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add neodymium as taught by Sarkar to the aluminum disclosed in Moon, thereby preventing cracking in cold rolling with up to an 80% reduction in thickness (Sarkar, pg. 725, section 5, first paragraph, left column).
As to claims 2-4, 7, and 27-30, as Moon in combination with Sarkar discloses the same starting material comprising Al or Nd and applies the same hot water method from Moon, these claims are rejected for the same reasons stated above in the rejection over Moon alone as the same method applied to the same starting material would produce the same properties and the same chemical structure would also have the same claimed properties. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I). “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). .
Claims 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over "Robust superamphiphobic nanoscale copper sheet surfaces produced by a simple and environmentally friendly technique." of Khedir as evidenced by Electrical Engineering Materials - 3.3 Electron Hole Pairs of Basak..
As to claims 27-30, Khedir discloses where after 4 hours, nanostructures of around 100nm and 200-300 nm were formed and after 12 hours nanostructures with a thickness of less than 10 nm, a width of 250-300nm and a vertical size of more than 500 nm are formed (Khedir, pg. 984, section 3.1, Fabrication of Copper Oxide Nanostructures). However, Khedir does not explicitly disclose where the metal oxide nanostructures comprise nanowire with diameters in the range of 10-500 nm, 10-100 nm, 20-70 nm, nor 300 nm.
Nevertheless, as Khedir discloses the same starting material of a copper metal substrate and applies the same method thereto of a hot water process for a set period of time, and Khedir discloses that different application times produce different shapes and sizes (Khedir, pg. 984, section 3.1, Fabrication of Copper Oxide Nanostructures and Fig. 1) it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply different amounts of hot water application time to the copper sheet, thereby producing metal oxide nanostructures of nanowires in the range of 10-500 nm, 10-100 nm, 20-70 nm, nor 300 nm and matching the disclosed method of forming these structures. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Response to Arguments
With respect to the 102/103 rejection over Moon, applicant argues that the instant claim limitations have been amended to exclude where plasma treatments are performed and as Moon requires a two-step process of applying plasma doping before hot water treatment, it cannot anticipate the claim limitations (Applicant’s remarks pg. 6, last 3 paragraphs).
However, this limitation is a negative product-by-process limitation and though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In this case, the issue is not whether Moon includes a plasma treatment or not, it is what structure is created by the application of a plasma treatment with relation to the claimed structure. As applicant themselves notes that plasma doping can speed up the process and does not disclose where this plasma treatment causes a difference in the structure of the metal oxides, this does not produce a structure that the distinct from the claimed structure.
Applicant also argues that Moon does not teach or suggest where these are of a semiconductor that are configured to degrade organic pollutants (Applicant’s remarks, pg. 7, 1st full paragraph). Applicant argues that Moon’s nanostructures sever only hydrophilic functions and no photocatalytic functionality is disclosed in Moon (Applicant’s remarks, pg. 7, 2nd full paragraph).
However, as noted in the rejection above, as Moon discloses the same structure as claimed, it would necessarily have the same properties of being of a semiconductor, see MPEP § 2112.01(II). Further, In response to applicant's argument that no photocatalytic functionality of the metal oxide nanostructures is disclosed in Moon, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Also, applicant has not shown what configuration of the structure is carried out to achieve this degradation of organic pollutants nor has any direction been given to make this structure beyond the basics of a hot-water process for some amount of time. As Moon (Han and Khedir) disclose a hot water process, they necessarily must produce the same structure as applicant has disclosed.
Applicant also argues that Moon is silent concerning a water suspension containing metal oxide nanostructures as the structures Moon discloses as being on the surface of the aluminum and not as a suspension of standalone nanostructures (Applicant’s remarks, pg. 7, 3rd – 4th paragraphs).
However, the claim does not requires a suspension of standalone nanostructures but merely requires a water suspension containing a metallic material and metal oxide nanostructures grown on metallic surfaces of the metallic material by a hot water process. Moon discloses where there is a water suspension, and a metallic material with metal oxide nanostructures grown thereon meeting the claim limitations. Further, even if a suspension of nanostructures was required, as Moon discloses a hot water process for making metal oxide nanostructures, this would flow naturally from the application of the same method.
Applicant also argues that Moon teaches away by noting that hot water treatment alone does not produce a durable coating that lasts (Applicant’s remarks, pg. 8, section A, 2nd and 3rd full paragraphs).
However, as noted in the rejection above, this is merely a negative limitation in a product-by-process claim and merely limits with respect to the structure that is implied by the process. In the instant case, water treatment with and without plasma produces oxide nanostructures and the use of plasma pretreatment does not produce a structure that is distinct from the claimed invention. Further, there is no temporal analysis to patent examination. If the reference teaches the claim limitations, it does not matter if the structure changes later. What is at issue is the claimed structure and as Moon teaches this structure, it renders the claims unpatentable.
Applicant then argues that Moon is in a different field of endeavor with diverging technical objectives of hydrophilicity rather than degrading organic pollutants (Applicant’s remarks, section B, pg. 8 last paragraph – pg. 9 1st paragraph).
In response to applicant's argument that Moon is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Moon and the instant application are concerned with producing metal oxide nanostructures using water as an oxidizer. This places both the method and product in the same field of endeavor. The ultimate use of the metal oxides is not material to the structure of the claimed invention. As Moon discloses the required metal oxide nanostructures in the required size, on metal, in a aqueous solution, it meets the claim limitations.
Finally applicant argues that the single step process achieves superior photocatalytic functionality by pointing to data which was collected using ZnO nanostructures (Applicant’s remarks, section C, pg. 9, 2nd – 4th paragraphs).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range, see MPEP § 716.02(d). Further, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), see MPEP § 716.02(d)(II). In this case, a single example with respect to a single metal oxide (ZnO) does not demonstrate that this invention achieves unexpected results across the claimed range of 17 different metal oxides and their combinations. Also, the rejection over Han and Khedir demonstrates that the use of a hot water process to create metal oxide nanostructures is known in the art. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Also, while applicant argues that Davis and Sakar do not cure the issues of Moon (Applicant’s remarks, pg. 10, first three paragraphs), as Moon discloses/renders obvious the claimed structure, there is no deficiency to cure.
Finally, with respect to new claim 32, applicant argues that none of the references disclose where photocatalytic activity degrades about 25% of an organic chemical dye in polluted water within a 4-hour exposure to light (Applicant’s remarks, pg. 10, next to last paragraph).
In response to applicant's argument that the claimed metal oxide nanostructure achieves where photocatalytic activity degrades about 25% of an organic chemical dye in polluted water within a 4-hour exposure to light, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). This merely is a function of the structure of the metal oxide and as the metal oxides in Moon meet the claimed structure, they would necessarily have the same properties when applied to organic chemical dye in polluted water.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JOSHUA S CARPENTER/Examiner, Art Unit 1733
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