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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/25 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 11, & 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kudera et al. (US PG Pub 2011/0284820; hereafter ‘820).
Claim 1: ‘820 is directed towards a method of forming nanowires (title), comprising:
forming on a surface of a continuous metal layer (the substrate surface can be metal; ¶ 10), a perforated layer having through openings opening on the surface of the continuous metal layer (a block copolymer template is deposited on the metal surface of the substrate, ¶s 12 & 32); and
producing nanowires in the through openings by deposition in at least one solution of a material provided for forming nanowires, of nanowires and extending vertically from the surface of the continuous metal layer (¶s 17-18, see Fig. 2),
wherein the at least one solution for forming the nanowires comprises precursors for CdSe, CdTe, CdS, PbSe, PbTe, PbS, ZnO, and (ZnMg)O (¶ 17).
‘820 does not explicitly teach using two different precursor solutions with different compositions.
However, although the taught range of at least one solution is not explicitly the claimed two chemical baths, it does overlap. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, it would have been obvious to one of ordinary skill in the art at the time of filing to use different compositions for the first and second bath because ‘820 teaches that the individual baths can be any one of the group including CdSe, CdTe, CdS, PbSe, PbTe, PbS, ZnO, and (ZnMg)O and at least solution for forming nanowires and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
I.e. ‘820 teaches forming nanowires wherein the first and second portions of the nanowires are made of CdSe, CdTe, CdS, PbSe, PbTe, PbS, ZnO, and (ZnMg)O.
Claim 2: The first chemical bath for forming said portions comprises, in solution:
a first compound defining a source of metal cations (¶s 17-19); and
a second compound comprising a source of sulfide or selenide ions (see ¶s 17-19).
‘820 does not teach that the first compound is in superstoichiometric concentration with respect to the second compound.
However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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). MPEP 2144.05(II)(A).
Claim 3: ‘820 teaches that the metal cations are metal cation ions of Cd (¶s 17-19).
Claim 4: The second chemical bath for forming the second portions comprises in solution:
a first compound defining a source of metal cations (cadmium stearate, ¶ 38-44); and
a second compound comprising a source of selenide ions (¶ 38-44),
the concentrations of the first and second compounds and/or their ratio being greater than a concentration threshold of the second chemical bath for forming the second portions being such that, when the concentrations are greater than this threshold, a growth of the second portions orthogonally to said layer is favored (see Fig. 2 and ¶s 32-44).
Claim 5: The metal cations of the second chemical bath are Cd (¶s 38-44).
Claim 6: The method further comprises forming at one end of the nanowires opposite to the metal substrate, of an electrically-conductive region in contact with the nanowires (see Fig. 2).
Claim 7: A polymer matrix is formed between the nanowires (¶ 26, Fig. 2).
Claim 8: The block copolymer layer is removed (¶ 32).
Claim 11: The perforated layer is a block copolymer layer (¶s 12 & 32).
Claim 13: The nanowires have a diameter of 1-100 nm (¶ 1).
Claim 14: Claim 14 depends from claim 2 which was rejected based on the superstoichiometric concentration and claim 14 does not actively require the alternative limitation of claim 2. Therefore, claim 14 is contingent on the selection of the alternative optional limitation of claim 2 and does not have to be met by the prior art. See MPEP §2111.04.
Claim 15: Claim 15 depends from claim 2 which was rejected based on the superstoichiometric concentration and claim 15 does not actively require the alternative limitation of claim 2. Therefore, claim 15 is contingent on the selection of the alternative optional limitation of claim 2 and does not have to be met by the prior art. See MPEP §2111.04.
Claim 16: ‘820 does not teach a specific concentration of the first chemical bath solution.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentration of the first solution to obtain the desired results because concentrations are prima facie obvious to optimize.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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). MPEP 2144.05(II)(A).
Claim 17: Claim 17 depends from claim 4 which was rejected based on the concentration threshold and claim 17 does not actively require the alternative limitation of claim 4. Therefore, claim 17 is contingent on the selection of the alternative optional limitation of claim 4 and does not have to be met by the prior art. See MPEP §2111.04.
Claim 18: The nanowires have diameters of 1-100 nm (¶ 1).
Although the taught range of 1-100 nm is not explicitly the claimed range of smaller than 50 nm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claim 19: The nanowires have lengths up to into the micrometer range (¶ 1)
Although the taught range of up to into the micrometer range is not explicitly the claimed range of greater than 1 µm, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over ‘820 as applied above, and further in view of Furukawa et al (US PG Pub 2011/0086246; hereafter ‘246).
Claims 9-10: As discussed above, ‘820 teaches that the surface of the substrate can be metal.
‘820 does not teach a thickness of the metal surface of the substrate or a specific metal.
However, ‘820 further teaches that the structure of the substrate can be an electrode for a solar cell (see ¶s 10 & 29 and Fig. 2).
‘246, which is directed towards solar cell devices (title) discloses that a metal coated substrate for the use in a solar cell wherein the electrode is formed of platinum with a thickness of 200 nm (¶ 112).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘246 into the process of ‘820 such that the electrode layer on the substrate from which the nanowires are formed is made of platinum at a thickness of 200 nm because as taught by ‘246, platinum with a thickness of 200 nm is an art recognized electrode for a solar cell and would have predictably been suitable as the electrode of the solar cell of ‘820.
Allowable Subject Matter
Claim 12: Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 11/11/25 have been fully considered but they are not persuasive.
In regards to applicant’s argument that ‘820 does not teach a first and second bath for forming a first and second portion of nanowire wherein the first and second baths have different compositions and the first and second portion of the nanowires are made of a metal oxide, or of a metal hydroxide, or of a chalcogenide because the example of ‘820 teaches forming a gold nanoparticle followed by growing a CdSe nanowire from the gold; the Office does not find this argument convincing because the teachings of ‘820 are broader than the examples and ‘820 states “[f]or producing the nanowires according to the invention, the substrate is dipped with the optionally coated nanoparticles into at least one solution of the material provided for forming the nanowires (emphasis added, ¶ 18) and thus it is apparent that ‘820 renders obvious using two solutions of a material provided for forming the nanowires wherein the material can be selected from the group made up of CdSe, CdTe, CdS, PbSe, PbTe, PbS, ZnO, and (ZnMg)O and thus renders obvious to use a combination of two solutions with different compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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, Curtis Mayes can be reached at 571-272-1234. 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.
/James M Mellott/ Primary Examiner, Art Unit 1759