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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 15, 2025 has been entered.
Claims 1-10 and 20-30 are currently pending in the above identified application.
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 1-10 and 20-30 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. Specifically, the limitations “the second glass portion and the first glass portion are different from each other to have an interface therebetween” (claims 1, 20) and “wherein the second glass portion is free of a binder” (claim 29-30). There is no explicit support for these limitations.
The originally filed disclosure discusses a first glass portion and a second glass portion but does not discuss these portion as different nor discusses an interface in the finally formed product. On page 7 of the Remarks filed April 15, 2025, Applicant points to the teaching that the second glass may be cured to prepare a second glass portion 130 covering the first glass portion 120 and the discussion that the second glass portion 130 may serve as a binder that may be removed by FAB process when an electronic component is manufactured using the nanowire bundle 100 later. However, these portions do not support the full scope of the claim amendment with the first portion and the second portion being different from each other with an interface. The cited portions support the second glass portion being cured or removable by FAB process. The second glass portion being removable does not speak to the impact on the first glass portion such that there would necessarily be an interface in the finally formed product as claimed. It is also unclear that a cured glass portion would necessarily remain distinct from the other glass portion below and therefore maintain an interface.
The only mention in the originally filed disclosure with regards to a binder is para 0049 of the published application stating “[i]n addition, the second glass portion 130 may serve as a binder that may be removed by an FAB process wherein an electronic component is manufactured using the nanowire bundle 100 later.” The ability of the second glass portion to serve as a binder is different from the second glass portion being free of a binder.
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim, or modify this limitation as supported in the originally filed disclosure as discussed above, or remove the limitation(s).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 29-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 29-30 recite the limitation “wherein the second glass portion is free of a binder.” The scope of binder is unclear. The only mention of binder is with regards to the second glass portion may serve as a binder. The composition or structural distinction that would prevent or cause the second glass portion to serve as a binder is not specified. Binder could also refer to a polymer adhesive or glue. As the scope of binder is unclear, the claim is indefinite.
Claim Rejections - 35 USC § 103
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, 9-10, 20-23, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over CN 106111980 to Suzhou in view of US Pub. No. 2017/0309375 to Aimone.
NOTE: The English Machine translation of CN 106111980 is being used for prior art mapping.
Regarding claims 1-3, 9-10, 20-23, and 28-30, Suzhou teaches a glass-coated nano-wire material bundle (nanowire bundle) comprising multiple nanometer wire of metal or semiconductor material, such as metal (claim 2, 21) (plurality of nanowires including metal) necessarily arranged in a predetermined shape at intervals coated with glass A (first glass portion including glass and covering the plurality of nanowires) that is bundled than placed in a glass tube of glass material B to form a glass coated wire bundle (second glass portion including glass and covering the first glass portion and the plurality of nanowires) (Suzhou, abstract, Fig. 2 p. 3). As the glass coated are added separately (Id., abstract, Fig, 2), the glass B, corresponding to the second glass portion, and the glass A, corresponding to the first glass portion, would be different from each other to have an interface therebetween, absent evidence to the contrary. Suzhou teaches the nanowire diameter being uniform and controllable (Suzhou, abstract), reading on the plurality of nanowires being arranged in a predetermined shape at intervals. Suzhou teaches the nanowire being used in sensor and electronic industrial product (Id., abstract).
Suzhou does not teach the glass cladding corresponding to the second glass portion having an outer shape of a polygonal columnar shape (claim 1, 23) and does not appear to explicitly teach one nanowire disposed at a center of the nanowire bundle among the plurality of nanowires having a diameter greater than a diameter of each of the other nanowires among the plurality of nanowires.
However, Aimone teaches a superconducting wire comprising an assemblies of clad composite filaments within a wire matrix and one or more stabilizing elements for improved mechanical properties (Aimone, abstract). Aimone teaches the composite having a cross sectional shape facilitating efficient stacking of various elements including hexagonal, square, rectangular, or triangular (polygonal) (Id., para 0005, 0011, 0047-0051, Fig. 4E, 5C). Aimone shows a central stabilizing element (wire) having a larger diameter for increased mechanical stability (Id., para 0049-0050, Fig. 5D-5E), reading on one nanowire disposed at a center of the nanowire bundle among the plurality of nanowires having a diameter greater than a diameter of each of the other nanowires among the plurality of nanowires.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the glass-coated nano-wire material bundle of Suzhou, wherein the outer glass has a cross sectional shape that is hexagonal, square, rectangular, or triangular, motivated by the desire of using conventionally known cross sectional shapes predictable suitable for use in wire assemblies comprising multiple cores and outer cladding and by the desire of facilitating efficient stacking. It would have been obvious to one of ordinary skill in the art before the effective filing date bundle, wherein the bundle contains a nano-wire disposed at the center having a greater diameter as taught by Aimone, motivated by the desire controlling the nanowire diameter as taught Suzhou and result in increased mechanical stability as taught by Aimone.
Regarding claim 3 and 22, the prior art combination shows the nanometer wires (plurality of nanowires) having a circular columnar shape and shows the second glass portion can have a circular columnar shape (Suzhou, Fig. 2; Aimone, para 0005, 0011, 0047-0051, Fig. 4E, 5C).
Regarding claim 4 and 23, the prior art combination teaches the monofilament (nanowires) having a cross-shape that the facilitates efficient stacking within composite filament (coated nanowire bundle), such as hexagonal, square, and rectangular (polygonal) (Aimone, para 0005). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the bundle of the prior art combination, wherein the nanowires have a cross section as taught by Aimone, such as hexagonal, square, and rectangular, motivated by the desire of using conventionally known cross section predictably suitable for multicore assembles with outer cladding and the desire to facilitate stacking.
Regarding claim 9, the prior art combination teaches the nano-wire diameter being controllable and can obtain nanowire with different diameters (Suzhou, p. 2), reading on among the plurality of nanowires, one nanowire has a diameter different from a diameter of other respective nanowires.
Regarding claim 10 and 28, the prior art combination shows a central stabilizing element having a larger diameter for increased mechanical stability (Aimone, para 0049-0050, Fig. 5D-5E), reading on an average diameter of nanowires disposed in on plurality of zone arranged radially in the second glass portion is different from an average diameter of nanowires disposed in another of the plurality of zones. It would have been obvious to one of ordinary skill in the art before the effective filing date bundle, wherein the nano0wire diameter is control to have a larger diameter central wire as taught by Aimone, motivated by the desire controlling the nanowire diameter as taught Suzhou and result in increased mechanical stability as taught by Aimone.
Regarding claims 29-30, the prior art combination does not teach the presence of a binder (Suzhou, all), reading on the second glass portion being free of a binder, as best understood by Examiner.
Claims 5-8 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over CN 106111980 to Suzhou in view of US Pub. No. 2017/0309375 to Aimone, as applied to claims 1-3, 9-10, 20-23, and 28-30, further in view of CN 1914542 to Tang and US Pub. No. 2014/0242329 to Banaei
NOTE: The English machine translation of CN 106111980 and CN 1914542 are being used for prior art mapping.
Regarding claims 5-8 and 24-27, the prior art combination teaches the nano-wire being suitable for various metal and semiconductor nanowires (Suzhou, p. 2).
The prior art combination does not explicitly the nanowires comprising material different from metal of other nanowires (claim 5, 24) with a plurality of zones arranged radially in the second glass portion such that one other plurality of zone comprises a metal different from a metal included in nanowires disposed in another of the plurality of sones (claim 7, 26), so that a first nanowire includes nickel, a second nanowire includes copper, and a third nanowire includes palladium (claim 6, 8, 25, 28).
However, Tang teaches a fiber used in electronics, such as field-emitter, comprising an electrical conductor, including nickel, copper, palladium, and combinations thereof (Tang, abstract, claim 15). Banaei teaches a fiber having novel functionalities that expand functionality by including fibers with semiconducting glass and metal electrodes integrated into a single fiber (Banaei, para 0004). Banaei teaches alternative layers of metals and glasses (Id., para 0045), reading on a plurality of zone arranged radially in the second glass portion comprising metals different from each other.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the bundle of the prior art combination, wherein the nanowires are a combination of nanowires of nickel, copper, and palladium as taught by Tang, motivated by the desire of using conventionally known metals predictably suitable for use in encased in glass for in electronic applications and arranged, such as with different metals in different zones, to achieve a novel functionality through the use of a combination of material as taught Banaei, absent evidence of unexpected result.
Response to Arguments
Applicant's arguments filed April 15, 2025 have been fully considered but they are moot based upon the new grounds of rejection.
Conclusion
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/JENNIFER A GILLETT/Examiner, Art Unit 1789