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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/24/2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-5, 8, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Toyama et al. (JP2017126064, with reference to translation) in view of Raman et al.
Claim 1: Toyama et al. discloses a thermal-coating structure, comprising: a substrate (lower portion of the nanostructure, or alternatively substrate 4 - e.g. Figs. 3-4) comprising a top surface and a bottom surface (evident in figures); and nanostructures (2) formed on and in contact with at least the top surface of the substrate (as shown), the nanostructures comprising a refractive index of less than or equal to 1.75 (paragraphs 38, 60), the nanostructures being substantially uniformly distributed across a predetermined area of at least the top surface of the substrate (“periodic” - e.g. paragraph 25; Figs. 3-4).
Toyama also generally discloses aspect ratios above 2, or even above 3.5 or 4, and below 8 or 25 (e.g. paragraphs 9, 14, 24-25, 27, 29-31, 33), and thus discloses aspect ratios in the range of 2-25, or more narrowly 4-8, but not necessarily a nominal aspect ratio between 4 and 6. However, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Similarly, a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP 2144.05. Thus, it is submitted that the claimed range of 4-6 would have been prima facie obvious in view of the broader encompassing ranges of Toyama. Alternatively, Toyama also explains that the shape and depth of the nanostructure regions need to be designed appropriately to shape the light as desired, and that the shape of a diffraction grating and optimum depth of the diffraction grating are determined by the wavelength of light among other factors (paragraphs 25, 29). As noted above, Toyama discloses a relatively narrow range of aspect ratios from which one of ordinary skill could have realistically tried a finite number of with reasonable expectation of success in creating the diffraction grating with the desired properties. Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have selected a nominal aspect ratio between 4 and 6 as they would have had good reason to pursue the known options within their technical grasp (MPEP 2143 I. E.).
Toyama discloses using resin as the material for the nanostructures, and specifically one having a refractive index within the claimed range as cited above (paragraph 38). The resin is not necessarily polydimethylsiloxane. However, Raman teaches a similar thermal-coating structure which uses PDMS (which also shares a similar refractive index). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used PDMS due to its chemical stability, bio-compatibility, and reducing sidewall roughness scattering (Raman, abstract).
Based on the above, it would have been obvious to have arrived at a product sharing the same structure and materials as claimed. The resulting structure is not explicitly configured to provide a transmissivity greater than 80% for electromagnetic radiation having a wavelength between 2000 nm and 14,000 nm. However, it has been held that 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). Because the modified Toyama device would comprise the same refractive index, material composition, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary.
Claim 3: The thermal-coating structure resulting from the above does not explicitly comprise a transmissivity of greater than 80% for electromagnetic radiation comprising a wavelength range of 8000 nm to 12,000 nm inclusive. However, as noted above, it has been held that 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). Because the modified Toyama device would comprise the same refractive index, material composition, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary.
Claim 4: Toyama generally discloses aspect ratios between 2-25 or 4-8 as cited previously, but not necessarily wherein a substantial number of the nanostructures comprise a nominal aspect ratio of 5. However, the examiner submits that a prima facie case exists in view of the encompassing range, and/or that it would have been obvious to try an aspect ratio of 5 in view of the disclosure of Toyama, for the reasons articulated above for claim 1.
Claim 5: The thermal-coating structure resulting from the above does not explicitly comprise a transmissivity of greater than 90% for electromagnetic radiation comprising a wavelength of 10,000 nm. However, as noted above, it has been held that 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). Because the modified Toyama device would comprise the same refractive index, material composition, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary.
Claim 8: The thermal-coating structure does not necessarily comprise a focusing lens configured to collect and direct electromagnetic radiation emitted from an object to an infrared detector in a non-contact. However, Raman also teaches that such a structure may be useful as a lens (section 4.3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the nanostructure into a lens as it represents one of various useful applications for such a structure. The limitation “configured to collect and direct electromagnetic radiation emitted from an object to an infrared detector in a non-contact temperature sensing device” pertains to the intended use of the lens, and as a lens, the examiner submits that it would be generally capable of collecting and directing electromagnetic radiation, where the receiving elements of said electromagnetic radiation (e.g. an infrared detector in a non-contact temperature sensing device) are inconsequential to the thermal-coating structure itself.
Claim 17: Toyama et al. discloses a nanostructure device, comprising: a substrate (lower portion of the nanostructure, or alternatively substrate 4 - e.g. Figs. 3-4) comprising a top surface and a bottom surface (evident in figures); and nanostructures (2) formed on and in contact with at least the top surface of the substrate (as shown), the nanostructures being substantially uniformly distributed across a predetermined area of the top surface of the substrate (“periodic” - e.g. paragraph 25; Figs. 3-4).
Toyama also generally discloses aspect ratios above 2, or even above 3.5 or 4, and below 8 or 25 (e.g. paragraphs 9, 14, 24-25, 27, 29-31, 33), and thus discloses aspect ratios in the range of 2-25, or more narrowly 4-8, but not necessarily a nominal aspect ratio between 4 and 6. However, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Similarly, a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See MPEP 2144.05. Thus, it is submitted that the claimed range of 4-6 would have been prima facie obvious in view of the broader encompassing ranges of Toyama. Alternatively, Toyama also explains that the shape and depth of the nanostructure regions need to be designed appropriately to shape the light as desired, and that the shape of a diffraction grating and optimum depth of the diffraction grating are determined by the wavelength of light among other factors (paragraphs 25, 29). As noted above, Toyama discloses a relatively narrow range of aspect ratios from which one of ordinary skill could have realistically tried a finite number of with reasonable expectation of success in creating the diffraction grating with the desired properties. Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have selected a nominal aspect ratio between 4 and 6 as they would have had good reason to pursue the known options within their technical grasp (MPEP 2143 I. E.).
Toyama discloses using resin as the material for the nanostructures, and specifically one having a refractive index within the claimed range as cited above (paragraph 38). The resin is not necessarily polydimethylsiloxane. However, Raman teaches a similar thermal-coating structure which uses PDMS (which also shares a similar refractive index). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used PDMS due to its chemical stability, bio-compatibility, and reducing sidewall roughness scattering (Raman, abstract).
The nanostructures does not necessarily form a lens. However, Raman also teaches that such a structure may be useful as a lens (section 4.3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the nanostructure into a lens as it represents one of various useful applications for such a structure.
Based on the above, it would have been obvious to have arrived at a product sharing the same structure and materials as claimed. The resulting structure is not explicitly configured to provide a transmissivity greater than 80% for electromagnetic radiation having a wavelength between 2000 nm and 14,000 nm. However, it has been held that 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). Because the modified Toyama device would comprise the same refractive index, material composition, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary.
Claim 18: Referring to Toyama, the nanostructures comprise a refractive index of less than or equal to 1.75 (paragraphs 38, 60).
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered.
The examiner notes that the amendments filed after final on 5/25/2026 were in fact entered and the rejection under 112(a) withdrawn, though some of Applicant’s amendments and remarks are made as if these amendments were not entered.
Upon further consideration and consultation, the examiner agrees that the prior reliance upon In re Aller was insufficient, and the rejections based thereon have been withdrawn. Thus, any arguments to this point are moot.
The rejections over Raman et al. as a primary reference have been withdrawn in favor of focusing on Toyama et al. Toyama et al. discloses ranges of aspect ratio encompassing the claimed ranges such that the examiner submits the claimed range of 4-6 is either prima facie obvious on its face, or else would have been obvious to try. These rationales are independent and distinct from the routine optimization of a result effective variable as relied upon in previous Office Actions.
The examiner otherwise maintains the stance that the claimed properties would flow naturally from the structure rendered obvious by the prior art. Applicant has yet to provide evidence to the contrary. On page 10 of the remarks, Applicant does not necessarily deny that the properties would be inherent to structure, but instead relies on prior deficiencies of the routine optimization rejections to attack the structural basis upon which the inherency argument was made. These deficiencies are now moot as discussed above.
Applicant’s remaining arguments either rely on those addressed above or are otherwise moot in view of the new grounds over Toyama et al.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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