Prosecution Insights
Last updated: April 19, 2026
Application No. 17/591,711

SELECTED-AREA DEPOSITION OF HIGHLY ALIGNED CARBON NANOTUBE FILMS USING CHEMICALLY AND TOPOGRAPHICALLY PATTERNED SUBSTRATES

Non-Final OA §103
Filed
Feb 03, 2022
Examiner
ARDEO, EMILIO
Art Unit
2899
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Wisconsin Alumni Research Foundation
OA Round
3 (Non-Final)
40%
Grant Probability
Moderate
3-4
OA Rounds
3y 7m
To Grant
57%
With Interview

Examiner Intelligence

Grants 40% of resolved cases
40%
Career Allow Rate
2 granted / 5 resolved
-28.0% vs TC avg
Strong +17% interview lift
Without
With
+16.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
27 currently pending
Career history
32
Total Applications
across all art units

Statute-Specific Performance

§103
58.6%
+18.6% vs TC avg
§102
18.8%
-21.2% vs TC avg
§112
22.6%
-17.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 5 resolved cases

Office Action

§103
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/20/2025 has been entered. Status of Claims Claims 1-4, and 22 have been amended. Claim 21 has been cancelled. Claims 25 and 26 are newly added claims. Response to Arguments Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive. Regarding the rejection of independent claim 1, applicant argues in page 5 that Xiong fails to teach flowing a suspension of organic material-coated carbon nanotubes through the trench, wherein organic material-coated carbon nanotubes moving in the flow direction of the flowing suspension are deposited from the flowing suspension. Applicant further presents that Xiong’s method relies on “guided fluidic assembly based on dip-coating to deposit networks of the nanoelements on the floor of a trench in which the floor and sidewalls have contrasting surface properties,” further stating that “rather than utilizing trench surface properties that promote adhesion between the trench floor and organic material-coated carbon nanotubes in an actively flowing suspension, Xiong's methods rely upon trench surface properties that promote the wetting of the trench floor by water in an aqueous carbon nanotube suspension and the subsequent drying of the suspension in the trench.” The examiner maintains that the elements of Xiong’s methods are similar to what is being claimed as the claimed invention also relies on the surface properties of the trench, the flowing of a fluid suspension and its subsequent removal of the fluid (which is the definition of drying). The examiner submits that dip-coating is a known method of depositing thin films where the mechanism relies on the capillary action and surface tension between the suspension and the substrate. This results in the formation of a layer of liquid along the substrate that effectively flows the liquid over a substrate as the substrate is pulled or as the liquid is drained. This liquid may contain particles in a suspension. Since the suspended particles in a suspension is ultimately part of the suspension, it should be understood that on average, the suspended particles must always move in the flow direction of the suspension, wherein some of the suspended particles are then deposited unto surfaces with the appropriate surface properties due to surface forces. The examiner would also like to clarify that “flow” in this context is not merely interpreted as the movement of the air-water interface, but the movement of fluid under the influences of forces. As such, the suspension may have multiple flow lines throughout the fluid body that may be have different velocities as in the case of fluids with pressure or temperature gradients or where electromagnetic, and surface or interface dynamics are predominant. With regards to Claim 3, the applicant argues that Xiong or any cited references fail to motivate functionalizing the upper portion of a trench sidewall. However, the examiner submits that the references of Xiong and Fischer, alone or in combination, indicate that the engineering of surfaces and their properties are well-known methods of controlling the deposition behavior of carbon nanotubes (CNTs). Therefore, functionalizing a part of the trench to prevent or to encourage the selective deposition of CNTs is a known method for a known goal where the claimed invention has not demonstrated any unexpected result or an indication that there was no reasonable expectation of success. Regarding Claims 4-5, 12-13, 22, and 23, the applicant argues that since Xiong and Fischer fail to render claim 1 obvious, and that Kumar, failing to cure the alleged deficiencies, that the said claims must be patentable. However, for reasons stated above regarding the independent claim 1, the argument is not found to be persuasive. Regarding Claims 6, 14-16, and claim 7, the applicant provides the same argument as Claims 4-5, 12-13, 22, and 23, and again for reasons stated above regarding the independent claim 1, the argument is not found to be persuasive. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claims 1-3, 8-11, 17-20, 21, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Xiong et al. (US 20100183844 A1), hereinafter, referred to as Xiong, in view of Fischer et al. (US 7666465 B2), hereinafter referred to as Fischer. With regards to the independent claim 1: Xiong teaches a method of forming a film of aligned carbon nanotubes in a trench, the trench defined by: a trench floor, a first sidewall mesa that provides a first trench sidewall, a second sidewall mesa that provides a second trench sidewall disposed opposite the first trench sidewall (Xiong [0024] "...preparing a network of trenches or channels having a hydrophilic bottom surface surrounded by a hydrophobic mask material on a substrate."), the method comprising: flowing a suspension of organic material-coated carbon nanotubes through the trench (Xiong [0024] "...SWNT film is deposited by simply lifting the substrate through the surface of an aqueous SWNT suspension, preferably with the direction of motion aligned with the long axis of the trench surfaces on which the nanofilm is to deposit"). The examiner notes that the act of submersing the template in a suspension of SWNT and its subsequent extraction is considered to cause the suspension to effectively flow through the template. Wherein organic material-coated carbon nanotubes moving in the flow direction of the flowing suspension are deposited from the flowing suspension onto the trench floor to form a film of aligned carbon nanotubes (Xiong [0006] "The trenches possess a bottom hydrophilic surface that attracts the SWNT suspension, leading to the assembly of a nanofilm of SWNT...", [0051] “When the width of template channels was shrunk to nanoscale, well-aligned SWNT nano films or nanowires were achieved” [0033] “SWNT can be derivatized or functionalized. Preferred are open-ended SWNT that terminate in carboxyl groups, which bear a net negative charge that can be offset by binding to cations…” Where the “flow direction of the flowing suspension” is interpreted by the examiner as the movement of fluid under the influences of forces such as capillary force and electrostatic force, and forces generated by thermal or pressure gradients. As such, the suspension in this context may have multiple flow lines throughout the fluid body that may be have different velocities in different areas. Since the suspended particles in a suspension is ultimately part of the suspension, it should be understood that on average, the suspended particles must always move in the flow direction of the suspension, wherein some of the suspended particles (CNTs) are then deposited unto surfaces with the appropriate surface properties due to surface forces.). Xiong fails to teach a method where organic chemical groups [are] functionalizing at least a portion of the first sidewall mesa and at least a portion of the second sidewall mesa. This is because Xiong has no need of functionalization due to the trench being already made of hydrophobic organic material. (Xiong [0006] "The template includes a substrate having an upper hydrophobic surface and one or more nanoscale trenches." [0007] "...coating the etched surface with a hydrophobic mask material"). Fischer, however, in a related field of depositing carbon nanotubes within chemically patterned substrate trenches, teaches a method where organic chemical groups [are] functionalizing at least a portion of the first sidewall mesa and at least a portion of the second sidewall mesa. Fischer discloses the use of organic surfactants to chemically alter the surface properties of the top portion of the trench. (Fischer, Col. 4 Line 46, "A cationic Surfactant such as cetyl trimethyl ammonium bromide...may be used the convert the Surface from a negative to a positive Zeta potential.") Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use materials with contrasting surface energies (hydrophilic vs. hydrophobic) as taught by Xiong or to alter the surface energies via functionalization to obtain a confining trench with contrasting surface energies (positively charged vs. negatively charges) as taught by Fischer, with the expected result of being able to selectively deposit carbon nanotubes within a target area (bottom of the trench) (Fischer Col. 5 Line 18, “…the second charge state 219 of the bottom surface 211 and the at least one sidewall 213 may be a negative second charge state 219, and the at least one nanotube 218 (that may comprise a positive nanotube charge State in this example) may be attracted to the bottom surface 211 and the at least one sidewall 213 of the substrate 200, since, opposite charges attract each other.”) With regards to claim 2: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 1. Xiong fails to teach a method wherein only a top surface of the first sidewall mesa and a top surface of the second sidewall mesa are is functionalized by the organic chemical groups. Fischer, however, in a related field of depositing carbon nanotubes within chemically patterned substrate trenches, teaches a method wherein only a top surface of the first sidewall mesa and a top surface of the second sidewall mesa are is functionalized by the organic chemical groups (Fischer, Col. 4 Line 46, "A cationic Surfactant such as cetyl trimethyl ammonium bromide, cetyl trimethyl ammonium chloride, cetyl trimethyl ammonium hydroxide, dodecyl trimethyl ammonium bromide, dodecyl trimethyl ammonium chloride, dodecyl trim ethyl ammonium hydroxide, and others, as are well known in the art, may be used the convert the Surface from a negative to a positive Zeta potential. Sufficient Surfactant may be required to form a double layer as is well known in the art....(Fischer Fig. 2b, Col. 4 Line 38, "The bottom surface 211 and the at least one sidewall 213 of the at least one opening 206 may be negatively charged in the pH range of the current embodiment, and may comprise various films having a silica-based backbone"). Xiong teaches the use of materials with contrasting surface energies (hydrophilic vs. hydrophobic) in order to control the deposition of single walled CNTs. In the case where the trench material does not have the desired surface properties, Fischer teaches the modification of surface energies via functionalization to obtain a confining trench with contrasting surface energies (positively charged vs. negatively charges) to selectively deposit carbon nanotubes within a target area (bottom of the trench). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings of Fischer to the disclosure of Xiong, in order to further modify parts of the trench to increase the selectivity of the deposition process (Fischer Col. 5 Line 18, “…the second charge state 219 of the bottom surface 211 and the at least one sidewall 213 may be a negative second charge state 219, and the at least one nanotube 218 (that may comprise a positive nanotube charge State in this example) may be attracted to the bottom surface 211 and the at least one sidewall 213 of the substrate 200, since, opposite charges attract each other.”). With the expected result of being able to further confine and control the deposition of the single walled CNTs within the trench structure. With regards to Claim 3: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 1. Xiong teaches a method wherein a lower portion of the first trench sidewall adjacent to the trench floor is not functionalized by the organic chemical groups and a lower portion of the second trench sidewall adjacent to the trench floor is not functionalized by the organic chemical groups (Xiong Fig. 1, where the process is shown to use a hydrophilic substrate (10) and hydrophobic trench material (20), thereby eliminating the need for functionalization of trench sidewall adjacent to the floor.). Xiong fails to teach a method wherein an upper portion of the first trench sidewall is functionalized by the organic chemical groups and an upper portion of the second trench sidewall is functionalized by the organic chemical groups. Fischer, however, in a related field of depositing carbon nanotubes within chemically patterned substrate trenches, teaches a method wherein a upper portion of the first sidewall mesa and a upper portion of the second sidewall mesa are is functionalized by the organic chemical groups (Fischer, Col. 4 Line 46, "A cationic Surfactant such as cetyl trimethyl ammonium bromide, cetyl trimethyl ammonium chloride, cetyl trimethyl ammonium hydroxide, dodecyl trimethyl ammonium bromide, dodecyl trimethyl ammonium chloride, dodecyl trim ethyl ammonium hydroxide, and others, as are well known in the art, may be used the convert the Surface from a negative to a positive Zeta potential. Sufficient Surfactant may be required to form a double layer as is well known in the art....(Fischer Fig. 2b, Col. 4 Line 38, "The bottom surface 211 and the at least one sidewall 213 of the at least one opening 206 may be negatively charged in the pH range of the current embodiment, and may comprise various films having a silica-based backbone"). Since Xiong teaches the use of materials with contrasting surface energies (hydrophilic vs. hydrophobic) in order to control the deposition of single walled CNTs, and in the case where the trench material does not have the desired surface properties, Fischer teaches the modification of surface energies via functionalization to obtain a confining trench with contrasting surface energies (positively charged vs. negatively charges) to selectively deposit carbon nanotubes within a target area (bottom of the trench) -- it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings of Fischer to the disclosure of Xiong, in order to further modify parts of the trench to increase the selectivity of the deposition process (Fischer Col. 5 Line 18, “…the second charge state 219 of the bottom surface 211 and the at least one sidewall 213 may be a negative second charge state 219, and the at least one nanotube 218 (that may comprise a positive nanotube charge State in this example) may be attracted to the bottom surface 211 and the at least one sidewall 213 of the substrate 200, since, opposite charges attract each other.”). This is obvious to try with the expected result of being able to further confine and control the deposition of the single walled CNTs within the trench structure. With regards to claim 8: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 1. Xiong further teaches a method wherein the trench floor is hydrophilic and the organic chemical groups are hydrophobic (Xiong [0024] "requires preparing a network of trenches or channels having a hydrophilic bottom surface surrounded by a hydrophobic mask material on a substrate."). With regards to claim 9: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 8. Xiong teaches a method wherein the hydrophilic trench floor comprises silicon dioxide (Xiong [0040] "Brief exposure of a silicon, silicon dioxide….to an appropriate plasma results in ...forming a basis to make the surface hydrophilic and wettable by SWNT suspensions...Performing lithography ...exposes trenches having exposed modified (i.e., hydrophilic) substrate surface at the bottom of the trenches."). With regards to claim 10: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 9. Xiong teaches a method wherein the carbon nanotubes are single-walled carbon nanotubes coated with an organic material. (Xiong [0033] "SWNT can be derivatized or functionalized. Preferred are open-ended SWNT that terminate in carboxyl groups, which bear a net negative charge that can be offset by binding to cations") With regards to claim 17: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 1. Xiong further teaches that the trench has a width that is smaller than the average length of the carbon nanotubes in the suspension (Xiong [0044] “If the average length of the SWNTs is larger than the width of the trench, then the SWNTs will be aligned along the length of the trench during the assembly process.). With regards to claim 18: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 17. Furthermore, Xiong teaches a method wherein the carbon nanotubes have an average length in the range from 100 nm to 1000 nm. (Xiong [0008] "The width and length of the nanofilm can range from nanoscale dimensions, 50 nm for example, to microscale dimensions of 10 μm or more." [0033] "SWNT … can be several microns in length.") The examiner notes that since the films can range from 50 nm to 10 μm or more, it is reasonable to expect that the carbon nanotubes deposited within the films would also have dimensions comparable to the formed films. With regards to claim 19: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 18. Furthermore, Xiong teaches a method wherein the carbon nanotubes have an average diameter in the range from 1 nm to 2 nm. (Xiong [0052] "The observed frequencies of the RBM peaks corresponded to SWNT diameters in the range of 0.9-1.55 nm") With regards to claim 20: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 19. Xiong teaches the method further comprising removing the first and second sidewall mesas (Xiong [0041] "Optionally, the mask material can be removed, for example by dissolving the material in a suitable solvent, leaving just the nano film stably deposited on the substrate and forming a desired network or circuit pattern."). With Regards to Claim 24: The combined disclosure of Xiong and Fischer teaches the method of claim 1. Xiong further teaches the method, wherein the suspension of carbon nanotubes is flowing through the trench under shear and the alignment of the carbon nanotubes in the film of aligned carbon nanotubes is due, at least in part, to shear forces (Xiong [0024] "...SWNT film is deposited by simply lifting the substrate through the surface of an aqueous SWNT suspension, preferably with the direction of motion aligned with the long axis of the trench surfaces on which the nanofilm is to deposit"). The examiner notes that the act of submersing the template in a suspension of SWNT and its subsequent extraction is considered to cause the suspension to effectively flow through the template and where this flowing motion is understood to induce shearing forces responsible for the general alignment of the deposited CNTs. With regards to claim 25: The combined disclosure of Xiong and Fischer teaches the method of claim 1. Xiong further teaches the method wherein the carbon nanotubes are coated with an organic polymer (Xiong [0033] "SWNT can be derivatized or functionalized. Preferred are open-ended SWNT that terminate in carboxyl groups, which bear a net negative charge that can be offset by binding to cations"). With regards to claim 26: The combined disclosure of Xiong and Fischer teaches the method of claim 1. Xiong further teaches the method wherein the organic polymer is a π-conjugated organic polymer (Xiong [0033] "SWNT can be derivatized or functionalized. Preferred are open-ended SWNT that terminate in carboxyl groups, which bear a net negative charge that can be offset by binding to cations" Where the examiner notes that carboxyl groups binded to cations are known to form π-conjugated bonds, where the carbonyl group being sp2 hybridized, allows for the delocalization of electrons.). Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Xiong, in view of Fischer, in and in further view of Schreiber et al. (Progress in Surface Science 65 (2000) 151-256), hereinafter referred to as Schreiber. With regards to claim 11: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 10. Xiong and Fischer teach a method wherein the organic chemical groups comprise alkyl groups (Examiner notes that the mask layer of Xiong may be composed of a hydrophobic polymer such as poly( 4-methyl-1-pentene ) where the methyl group is recognized to belong to the alkyl group (Xiong [0028]) and Fischer, Col. 4 Line 46, "A cationic Surfactant such as cetyl trimethyl ammonium bromide...” which the examiner also notes, belongs to the alkyl group) Xiong and Fischer fail to teach a method wherein the organic groups form a self-assembled monolayer on the first and second sidewall mesas. Schreiber, however, reviewing the principles governing the growth and structure of self-assembled monolayers, teaches that alklythiol-based monolayers are widely utilized for their tunability via the selective modification of specific functional groups while leaving the rest of the molecule unchanged. (Schreiber pg. 154 "A good example for this is the change from a hydrophobic to a hydrophilic surface by changing just the endgroup of alkylthiol-based monolayers from -CH3 to -OH.") Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings of Schreiber to the combined disclosure of Xiong and Fischer, in order to selectively control the surface property of their disclosed trench/substrate via the formation of self-assembled monolayer of organic chemical compounds on target surfaces since these are well-known in the art to be used for the intended purpose of modifying the wettability of surfaces (Schreiber pg. 154 “One deeper reason why organic materials are attractive in such diverse fields is ...the tunability of the properties of these materials by selectively modifying specific functional groups ... change from a hydrophobic to a hydrophilic surface by changing just the endgroup of alkylthiol-based monolayers from -CH3 to -OH.”). Claims 4-5, 12-13, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Xiong, in view of Fischer, in further view of Kumar et al. (Langmuir 1994, 1498-1511), hereinafter referred to as Kumar. With regards to claim 4: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 3. Xiong and Fischer fail to teach a method wherein the lower portions of the first and second trench sidewalls that are not functionalized by the organic chemical groups comprise a first material and the upper portions of the first and second trench sidewalls that are functionalized by the organic chemical groups comprise a second material. This is because Xiong does not have any need for any functionalization due to their disclosed trench already having the desired surface characteristics (hydrophobic masks and hydrophilic trench bottom). Fischer also discloses that the trench materials is composed of a singular hard mask material such as (Fischer Col. 4 Line 26) However, the examiner notes that it is conceivable that by etching further into the substrate of Xiong, the resulting sidewalls of the trench would be divided into two materially distinct parts: an upper sidewall layer composed of an organic hydrophobic mask layer and a bottom sidewall layer made of a hydrophilic substrate. (Xiong [0029] "The pattern established by lithography leaves a trench having side walls composed of the mask material" further noting that the mask material of Xiong may be composed of a hydrophobic organic polymer such as poly( 4-methyl-1-pentene ), polyalkenes and polyalkynes, which results in a hydrophobic upper portion, and a hydrophilic lower portion adjacent to the trench floor (Xiong [0028])). Xiong further discloses that SWNT assembly can also be achieved on gold surfaces thereby teaching the use of gold layers as a deposition substrate (Xiong [0055], Fig. 7b, “…that the assembly was achieved continuously on both gold and silicon oxide substrate surfaces”). In the field of functionalizing surfaces using self-assembled monolayers (SAM), Kumar discloses functionalizing a substrate, composed of gold, titanium, and silicon layers, with organic thiols (Kumar FIg. 1a) 1a). Kumar also teaches that organic thiols and sulfides readily form SAMs on gold. Kumar also teaches that "[by] variation of the length of the alkane chain and the identity of the functional group at its terminus...the chemical properties of the exposed interface can be controlled with great precision." where these properties are important in applications relating to "tribology, adhesions, and wetting." (Kumar, Introduction) Since Xiong teaches that gold can be used in the process of fabricating SWNT films, while Kumar teaches that gold could be readily functionalizable with organic thiols and sulfides; it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings of Kumar to the disclosure of Xiong, in order to allow the variation of the materials of the trench to that of a functionalizable material such as gold, to achieve greater tunability of the surface properties of the trench material with the use of functional thiols of appropriate chain length and terminal functional group (Kumar, Introduction). With regards to claim 5: The combined disclosure of Xiong, Fischer, and Kumar teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 4. Xiong and Fischer fail to teach a method wherein the first material and the second material are metals. Kumar, however, in a related field of functionalizing surfaces with SAMs, teaches functionalizing a substrate, composed of gold, titanium, and silicon layers, with organic thiols (Kumar FIg. 1a). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar, to the disclosure of Xiong and Fischer, to be able to substitute the materials of the trench with that of the disclosed metals of Kumar, since Kumar teaches that a bimetallic layer could also have tunable surface properties when functionalized with organic thiols (Kumar, Introduction). With regards to claim 12: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 1. Xiong and Fischer fail to teach a method wherein the first material and the second material are metals. Kumar, however, in a related field of functionalizing surfaces with SAMs, teaches functionalizing a substrate, composed of gold, titanium, and silicon layers, with organic thiols (Kumar FIg. 1a). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar, to the disclosure of Xiong and Fischer, to be able to substitute the materials of the trench with that of the disclosed metals of Kumar, since Kumar teaches that a bimetallic layer could also have tunable surface properties when functionalized with organic thiols (Kumar, Introduction). With regards to claim 13: The combined disclosure of Xiong and Fischer teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 12. Xiong and Fischer fail to teach a method wherein the first sidewall mesa and the second sidewall mesa both comprise a layer of a first metal adjacent to the trench floor and a layer of a second metal disposed over the layer of the first metal. Kumar, however, in a related field of functionalizing surfaces with SAMs, teaches functionalizing a substrate, composed of gold, titanium, and silicon layers, with organic thiols (Kumar FIg. 1a, showing gold deposited over a layer of titanium). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar, to the combined disclosure of Xiong and Fischer, to be able to substitute the materials of the trench with that of the disclosed metals of Kumar, -- where etching a trench on a substrate of layered titanium and gold will result in a trench that has a first metal layer adjacent to the trench floor (titanium) and a second metal layer (gold) disposed over the first metal layer. This is obvious to try, as Kumar teaches that gold can also be functionalized with thiols to modify its surface properties (Kumar, Introduction). With regards to Claim 22: The combined disclosure of Xiong and Fischer teaches the method of claim 3. Xiong fail to teach the method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers on the first and second sidewall mesas. Fischer also fails to teach a method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers on the first and second sidewall mesas. The examiner notes that this is because Fischer discloses the use of organic surfactants that form double layers to change the surface charge of the top portion of the trench as opposed to a monolayer (Fischer Col. 4, Line 54). Kumar, however, in a related field of functionalizing gold surfaces with SAMs, teaches the method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers (Kumar pg. 1501 "…SAMs comprising non-polar, methyl-terminated thiolates exhibited the greatest resistance to etching." As previously mentioned in an earlier office action, non-polar, methyl-terminated thiolates belong to the alky group). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar to the combined disclosure of Xiong and Fischer in order to include alkyl groups that form self-assembled monolayers, as a possible material for functionalization. This is obvious to try as Kumar also teaches that organic thiols and sulfides that readily form SAMs are highly tunable which makes them ideal materials for surface functionalization (Kumar Introduction, "[by] variation of the length of the alkane chain and the identity of the functional group at its terminus...the chemical properties of the exposed interface can be controlled with great precision." where these properties are important in applications relating to "tribology, adhesions, and wetting.") With regards to Claim 23: The combined disclosure of Xiong and Fischer teaches the method of claim 3. Xiong fail to teach the method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers on the first and second sidewall mesas. Fischer also fails to teach a method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers on the first and second sidewall mesas. The examiner notes that this is because Fischer discloses the use of organic surfactants that form double layers to change the surface charge of the top portion of the trench as opposed to a monolayer (Fischer Col. 4, Line 54). Kumar, however, in a related field of functionalizing gold surfaces with SAMs, teaches the method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers (Kumar pg. 1501 "…SAMs comprising non-polar, methyl-terminated thiolates exhibited the greatest resistance to etching." As previously mentioned in an earlier office action, non-polar, methyl-terminated thiolates belong to the alky group). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar to the combined disclosure of Xiong and Fischer in order to include alkyl groups that form self-assembled monolayers, as a possible material for functionalization. This is obvious to try as Kumar also teaches that organic thiols and sulfides that readily form SAMs are highly tunable which makes them ideal materials for surface functionalization (Kumar Introduction, "[by] variation of the length of the alkane chain and the identity of the functional group at its terminus...the chemical properties of the exposed interface can be controlled with great precision." where these properties are important in applications relating to "tribology, adhesions, and wetting.") Claim 6, 14-16 is rejected under 35 U.S.C. 103 as being unpatentable over Xiong, in view of Fischer, in further view of Kumar, and in further view of Todeschini et al. (ACS Appl. Mater. Interfaces 2017, 9, 37374-37385), hereinafter referred to as Todeschini. With regards to claim 6: The combined disclosure of Xiong, Fischer, and Kumar teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 5. Xiong and Fischer fail to teach a method wherein the first material is chromium or copper and the second material is gold. Kumar, however, in a related field of functionalizing surfaces with SAMs, teaches the method wherein the second material is gold (Kumar Fig. 1a, shows gold deposited on top of titanium). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar, to the disclosure of Xiong and Fischer, to be able to substitute the materials of the trench with that of the disclosed metals of Kumar, since Kumar teaches that a bimetallic layer could also have tunable surface properties when functionalized with organic thiols (Kumar, Introduction). Kumar Fails to teach the first material is chromium or copper. Todeschini, however, with a disclosure relating to the field of adhesion layers, teaches the use of chromium and titanium as adhesion metals that are used to help bond gold films on silicon substrates (Todeschini, Fig. 1, Introduction, "[to] enhance adhesion…adhesion layers are applied between substrates and noble metal films...most used adhesion metals are Ti and Cr..."). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings of Todeschini to the combined disclosure of Xiong, Fischer, and Kumar, to recognize that chromium can be substituted for titanium since both metals are well-known in the art to be good adhesion metals that aid in the bonding of gold films to a dielectric or semiconductor material such as silicon dioxide. With regards to claim 14: The combined disclosure of Xiong, Fischer, Kumar, and Todeschini teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 13. Xiong and Fischer fails to teach a method wherein the first metal is chromium or copper and the second metal is gold. Kumar, however, in a related field of functionalizing surfaces with SAMs, teaches the method wherein the second material is gold (Kumar Fig. 1a). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention to apply the teachings of Kumar, to the disclosure of Xiong and Fischer, to be able to substitute the materials of the trench with that of the disclosed metals of Kumar, since Kumar teaches that a bimetallic layer could also have tunable surface properties when functionalized with organic thiols (Kumar, Introduction). Kumar Fails to teach the first material is chromium or copper. Todeschini, however, with a disclosure relating to the field of adhesion layers, teaches the use of chromium and titanium as adhesion metals that are used to help bond gold films on silicon substrates (Todeschini, Fig. 1, Introduction, "[to] enhance adhesion…adhesion layers are applied between substrates and noble metal films...most used adhesion metals are Ti and Cr..."). Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings of Todeschini to the combined disclosure of Xiong, Fischer, and Kumar, to recognize that chromium can be substituted for titanium since both metals are well-known in the art to be good adhesion metals that aid in the bonding of gold films to a dielectric or semiconductor material such as silicon dioxide With regards to claim 15: The combined disclosure of Xiong, Fischer, Kumar, and Todeschini teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 14. Furthermore, Xiong teaches a method wherein the trench floor comprises silicon dioxide (Xiong [0040] "Brief exposure of a silicon, silicon dioxide….to an appropriate plasma results in ...forming a basis to make the surface hydrophilic and wettable by SWNT suspensions...Performing lithography ...exposes trenches having exposed modified (i.e., hydrophilic) substrate surface at the bottom of the trenches."). With regards to claim 16: The combined disclosure of Xiong, Fischer, Kumar, and Todeschini teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 15. Furthermore, Xiong teaches a method wherein the carbon nanotubes are single-walled carbon nanotubes coated with an organic material (Xiong [0033] "SWNT can be derivatized or functionalized. Preferred are open-ended SWNT that terminate in carboxyl groups, which bear a net negative charge that can be offset by binding to cations"). Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Xiong, in view of Fischer, in further view of Kumar, in further view of Todeschini, and in further view of Schreiber et al. (Progress in Surface Science 65 (2000) 151-256), hereinafter referred to as Schreiber. With regards to claim 7: The combined disclosure of Xiong, Fischer, Kumar, and Todeschini teaches the method of forming a film of aligned carbon nanotubes in a trench of claim 6. Xiong fails to teach a method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers on the first and second sidewall mesas. Though the examiner notes that Xiong discloses the trench being formed from a mask layer that may be composed of a hydrophobic polymer such as poly( 4-methyl-1-pentene ) where the methyl group is recognized to belong to the alkyl group (Xiong [0028] Fischer also fails to teach a method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers on the first and second sidewall mesas. The examiner notes that this is because Fischer discloses the use of organic surfactants that form double layers to change the surface charge of the top portion of the trench as opposed to a monolayer (Fischer Col. 4, Line 54). Kumar, however, in a related field of functionalizing gold surfaces with SAMs, teaches the method wherein the organic chemical groups comprise alkyl groups and form self-assembled monolayers (Kumar pg. 1501 "…SAMs comprising non-polar, methyl-terminated thiolates exhibited the greatest resistance to etching" Where the examiner notes that non-polar, methyl-terminated thiolates belong to the alky group). Furthermore, Schreiber, with a disclosure relating to the use of thiols to functionalize gold surfaces, teaches that alklythiol-based monolayers are widely utilized for their tunability via the selective modification of specific functional groups while leaving the rest of the molecule unchanged. (Schreiber pg. 154 "A good example for this is the change from a hydrophobic to a hydrophilic surface by changing just the end group of alkylthiol-based monolayers from -CH3 to -OH.") Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the teachings Schreiber, to the combined disclosure of Xiong, Fischer, Kumar, and Todeschini -- to use organic chemical groups comprising alkyl groups to functionalize the first and second sidewall mesas. The motivation being that surfaces that are functionalized with SAMs comprising alkyl groups are known in the art to possess tunable properties, such as being able to switch from being hydrophobic to hydrophilic, depending on the terminal end group as taught by Schreiber (Schreiber pg. 154). Thereby allowing the structure taught by Xiong and FIscher, that can be modified by using the materials disclosed by Kumar and Todeschini, to have either hydrophobic or hydrophilic surfaces via surface functionalization using alkly-containting SAMs. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILIO ARDEO whose telephone number is (703)756-1235. The examiner can normally be reached Mon-Fri EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brent Fairbanks can be reached at 408-918-7532. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /EMILIO ARDEO/Examiner, Art Unit 2899 /Brent A. Fairbanks/Supervisory Patent Examiner, Art Unit 2899
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Prosecution Timeline

Feb 03, 2022
Application Filed
Jan 22, 2025
Non-Final Rejection — §103
Apr 28, 2025
Response Filed
Jul 16, 2025
Final Rejection — §103
Oct 20, 2025
Request for Continued Examination
Oct 29, 2025
Response after Non-Final Action
Feb 25, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

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2y 5m to grant Granted Mar 03, 2026
Study what changed to get past this examiner. Based on 1 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
40%
Grant Probability
57%
With Interview (+16.7%)
3y 7m
Median Time to Grant
High
PTA Risk
Based on 5 resolved cases by this examiner. Grant probability derived from career allow rate.

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