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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, 8, and 17-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 17 now recite “a nominal aspect ratio between 4 and 20”. However, while the disclosure broadly encompasses “a nominal aspect ratio equal to or greater than 1”, with specific examples such as “between 4 and 6” or 5, the disclosure does not necessarily provide support for the new specific range of “between 4 and 20”. See, for example, Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56 USPQ2d 1481, 1487 (Fed. Cir. 2000) ("[T]he specification does not clearly disclose to the skilled artisan that the inventors... considered the... ratio to be part of their invention.... There is therefore no force to Purdue’s argument that the written description requirement was satisfied because the disclosure revealed a broad invention from which the [later-filed] claims carved out a patentable portion"). See also General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372, 126 USPQ2d 1556, 1560 (Fed. Cir. 2018) (written description support for the claimed concentration is lacking where the specification discloses a range of optical densities and several discrete values in the range with no explicitly defined maximum concentration; and even if the specification may be read to convert each disclosed value into a range, there is insufficient written description for the entire claimed range where the disclosed range minimally overlaps with the claimed range). See also MPEP 2163.05 III. In summary, the disclosure of a broad range of values (in this case an open-ended range with no identified maximum) does not by itself provide written description support for a particular value within that range. That is, “one cannot disclose a forest in the original application, and then pick a tree out of the forest and say here is my invention.” Purdue, 230 F.3d at 1326.
The remaining claims are rejected by virtue of their dependency on claims 1 or 17.
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 Raman et al. (NPL, cited in IDS) in view of Zhan et al. (U.S. Patent 10,670,783, cited in IDS).
Claim 1: Raman discloses a thermal-coating structure, comprising: a substrate comprising a top surface and a bottom surface (e.g. lower portion of Fig. 2 (d)); and nanostructures (“nanopillars”) formed on and in contact with at least the top surface of the substrate (columnar protrusions above the substrate, Id.), the nanostructures comprising a refractive index of less than or equal to 1.75 (understood from being made by PDMS, but also see page 149, section 4.1 - a refractive index of 1.51; Table 1), the nanostructures being substantially uniformly distributed across a predetermined area of at least the top surface of the substrate (Figs 1-2, “square array”; page 146, “regular array”), wherein the nanostructures comprise polydimethylsiloxane (PDMS - e.g. abstract and as noted above).
While an exemplary embodiment shows an aspect ratio of 2.5 (page 150, section 4.3 - 1500nm wide x 600nm tall = 2.5), Raman does not necessarily describe the nanostructures have a nominal aspect ratio between 4 and 20. However, Zhan teaches a similar transmissive optical component wherein each of the posts is defined by a diameter, a thickness/height, and a periodicity (column 6, lines 43-47), and explains that the dimensions and materials of the metasurface are selected to provide the desired coverage [of wavelengths], to the extent possible (column 7, lines 25-36). Thus, the dimensions of the nanostructures (which in turn define the aspect ratio) are a result effective variable influencing the wavelengths affected by the nanostructures. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Raman to have an aspect ratio within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Raman by making the aspect ratio between 4 and 20 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The thermal-coating structure resulting from the above 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 Raman device would comprise the same refractive index, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, as discussed with regard to Zhan, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
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 Raman device would comprise the same refractive index, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, as discussed with regard to Zhan, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
Claim 4: While an exemplary embodiment shows an aspect ratio of 2.5 (as cited above), Raman does not necessarily describe wherein a substantial number of the nanostructures comprise a nominal aspect ratio of 5. However, Zhan teaches a similar transmissive optical component wherein each of the posts is defined by a diameter, a thickness/height, and a periodicity (column 6, lines 43-47), and explains that the dimensions and materials of the metasurface are selected to provide the desired coverage [of wavelengths], to the extent possible (column 7, lines 25-36). Thus, the dimensions of the nanostructures (which in turn define the aspect ratio) are a result effective variable influencing the wavelengths affected by the nanostructures. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Raman to have an aspect ratio within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Raman by making the aspect ratio 5 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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, 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 Raman device would comprise the same refractive index, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, as discussed with regard to Zhan, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
Claim 8: Raman further suggests that the structure may be used as a lens (section 4.3). Zhan also suggests that similar structures may be configured to form lenses having unexpectedly strong focusing power (e.g. abstract). 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: Raman discloses a nanostructure device, comprising: a substrate comprising a top surface and a bottom surface (e.g. lower portion of Fig. 2 (d)); and nanostructures (“nanopillars”) formed on and in contact with at least the top surface of the substrate (columnar protrusions above the substrate, Id.), the nanostructures being substantially uniformly distributed across a predetermined area of the top surface of the substrate (Figs 1-2, “square array”; page 146, “regular array”), the nanostructures forming a lens (implied at section 4.3), wherein the nanostructures comprise polydimethylsiloxane (PDMS - e.g. abstract).
While an exemplary embodiment shows an aspect ratio of 2.5 (page 150, section 4.3 - 1500nm wide x 600nm tall = 2.5), Raman does not necessarily describe the nanostructures have a nominal aspect ratio between 4 and 20. However, Zhan teaches a similar transmissive optical component wherein each of the posts is defined by a diameter, a thickness/height, and a periodicity (column 6, lines 43-47), and explains that the dimensions and materials of the metasurface are selected to provide the desired coverage [of wavelengths], to the extent possible (column 7, lines 25-36). Thus, the dimensions of the nanostructures (which in turn define the aspect ratio) are a result effective variable influencing the wavelengths affected by the nanostructures. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Raman to have an aspect ratio within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Raman by making the aspect ratio between 4 and 20 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The thermal-coating structure/lens resulting from the above is not explicitly configured to transmit electromagnetic radiation comprising a wavelength between 2000 nanometers (nm) and 14,000 nm inclusive or 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 Raman device would comprise the same refractive index, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, as discussed with regard to Zhan, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
Claim 18: Referring to Raman, the nanostructures comprise a refractive index of less than or equal to 1.75 (understood from being made by PDMS, but also see page 149, section 4.1 - a refractive index of 1.51; Table 1).
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 (e.g. paragraphs 9, 14, 25, 29), but not necessarily a nominal aspect ratio between 4 and 20. However, 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 optimum depth of the diffraction grating is determined by the wavelength of light among other factors (paragraphs 25, 29). Thus, the dimensions of the nanostructures (which in turn define the aspect ratio) are a result effective variable influencing the wavelengths affected by the nanostructures. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Toyama to have an aspect ratio within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Toyama by making the aspect ratio between 4 and 6 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The thermal-coating structure resulting from the above 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, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed from Toyama to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
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).
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, 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, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed from Toyama to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
Claim 4: Toyama generally discloses aspect ratios above 2, or even above 3.5 or 4 as cited previously, but not necessarily wherein a substantial number of the nanostructures comprise a nominal aspect ratio of 5. However, 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 optimum depth of the diffraction grating is determined by the wavelength of light among other factors (paragraphs 25, 29). Thus, the dimensions of the nanostructures (which in turn define the aspect ratio) are a result effective variable influencing the wavelengths affected by the nanostructures. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Toyama to have an aspect ratio within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Toyama by making the aspect ratio 5 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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, 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, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed from Toyama to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
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 generally discloses aspect ratios above 2, or even above 3.5 or 4 (e.g. paragraphs 9, 14, 25, 29), but not necessarily a nominal aspect ratio between 4 and 20. However, 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 optimum depth of the diffraction grating is determined by the wavelength of light among other factors (paragraphs 25, 29). Thus, the dimensions of the nanostructures (which in turn define the aspect ratio) are a result effective variable influencing the wavelengths affected by the nanostructures. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Toyama to have an aspect ratio within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Toyama by making the aspect ratio between 4 and 6 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The thermal-coating structure resulting from the above is not explicitly configured to transmit electromagnetic radiation comprising a wavelength between 2000 nanometers (nm) and 14,000 nm inclusive; the nanostructures being 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, nanostructure arrangement, and aspect ratio as claimed, its transmissivity properties are presumed to also be the same absent of evident to the contrary. Additionally or alternatively, if the claimed range of wavelength were of interest to one of ordinary skill, one would have been adequately informed from Toyama to have modified the dimensions of the nanostructure to have tuned the device to the desired wavelengths, and it would have been obvious to have done so for this purpose.
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.
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 1/22/2026 have been fully considered.
The rejections under 35 U.S.C. 102 have been withdrawn in view of Applicant’s amendments. New rejections under 35 U.S.C. 103 have been made above using similar overall grounds as in the prior rejection.
Regarding Toyama, the examiner submits that while Toyama aims to diffract light of a target wavelength, this does not necessarily preclude transmissivity of other wavelengths. Toyama also states throughout that the material of the high refractive index portion 2 (analogous to the claimed product) is transparent to the target wavelength and the transmissivity is not limited [0038].
Zhan generally teaches that the optical properties and covered wavelengths of a nanostructure is influenced by changes to various aspects such as aspect ratio, dimensions, and materials. While Zhan per se does not necessarily target the same wavelengths, Zhan provides one of ordinary skill with the metaphorical dials one must adjust to achieve the desired optical properties of such a nanostructure.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the references are generally directed to similar nanostructure materials where features such as aspect ratio and refractive index may be selected to achieve the desired optical properties. Therefore, one of ordinary skill would have been motivated to have selected the structural aspects of the respective nanostructures based on the desired properties, even if not necessarily motivated by the same goals as in the instant invention. Furthermore, 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).
Regarding the inherency of the claimed subject matter, the examiner has cited structures having substantially the same structures as claimed or at least rendering them obvious for separate reasons. As previously stated and as discussed in MPEP 2112.01 I., "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", and ""When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." The examiner has already provided references anticipating or rendering obvious the claimed structures. In other words, one of ordinary skill may have independently arrived at the claimed structures for different reasons depending on their goals. The claimed optical properties are presumed to flow naturally from this, regardless of if they were intended by one of ordinary skill. The examiner is unable to definitively prove this given that examiners lack the time and resources to physically test the materials in question. Therefore, the examiner must presume inherency based on the otherwise similar structural characteristics. Applicant now bears the burden of proving otherwise with evidence, which as yet is absent from the record.
It is noted that Applicant’s own specification seems to attribute the claimed properties to little more than the claimed ranges of aspect ratio and refractive index (e.g. paragraph 25). The only structural aspects substantially discussed and claimed in the instant application are a surface having nanostructures uniformly distributed thereon and having an aspect ratio and refractive index within a given range, where refractive index is essentially a material property. Thus, it is presumed that if a product has a similar structural aspects within the disclosed or claimed ranges, then the optical properties would flow naturally therefrom.
Regarding Applicant’s assertion that the references teach away from the claimed invention, again, one of ordinary skill may have had motivation to arrive at the claimed structure for different reasons than to achieve the claimed properties. As noted above, a reference invention being designed to diffract wavelengths in one range does not necessarily preclude transmissivity in a different wavelength, for example.
The examiner is not aware of any requirement that “Aller' s ‘routine optimization’ presumes the parameter is recognized in the art as result-effective for achieving the claimed result” as asserted by Applicant, but only that “a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result” (MPEP 2144.05 II. B., emphasis added). Applicant has not shown that the claimed variable was not recognized in the prior art to be a result-effective variable, only that the references were not necessarily interested in achieving the specific results claimed as their main motivation. The examiner maintains that In re Aller does apply since a structural aspect such as aspect ratio (for which In re Aller was relied upon to teach) affects the optical properties of this type of nanostructure. Just because the references may not teach adjusting the aspect ratio for achieving the claimed transmissivity properties does not mean they would not have motivated one of ordinary skill to have similarly adjusted these variables for other motivations such as to achieve other, non-conflicting optical properties.
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.
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.
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, 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