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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed October 29, 2025, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Akgul et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite a band gap and argues that the band gap differs from that which is disclosed by Akgul and that the claimed band gap is a structural limitation rather than a property. The Examiner respectfully disagrees. As noted in the Examiner Interview Summary mailed October 21, 2025, the Office construes the band gap to be a property limitation of the claimed CuO crystallite rather than a structural limitation. That is, the band gap results from underlying structural features (e.g., dopant, synthesis solvent and stoichiometry, nanoparticle size, and shape of the nanostructure and morphology, as construed from the instant specification para. [0072]). In the instant case, the structural features that are recited within the instant claim are anticipated by Akgul. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Applicant also argues that the different synthetic methods and different intended use disclosed by Akgul provide evidence that the structural configuration of the claimed crystallites are distinct from that of Akgul. Applicant notes that Akgul uses a sol-gel deposition method based on Cu(CH3COO)2 while the instant application uses a precipitation reaction between Cu(NO3)2 and an alkaline base and then sintering the precipitate for form a CuO crystallite. However, the instant claims do not recite any structural differences that may arise from these difference processes. Furthermore, the breadth of the instantly claimed copper oxide crystallite does not exclude that which is derived from the process of Akgul, and further, it is the position of the Office that the only structural limitations recited are a copper oxide crystallite having a specific particle size and ratio of (-111)/(111), which are anticipated by Akgul. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments and amendments are considered fully responded to within the comments above and rejections below.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akgul et al. (“Influence of thermal annealing on microstructural, morphological, optical properties and surface electronic structure of copper oxide thin films,” Mater. Chem. Phys. 2014, 147 (3), 987-995, hereinafter referred to as “Akgul”).
As to Claim 1: Akgul teaches a copper oxide thin film (Abstract) having a polycrystalline structure comprising crystallites (i.e., a copper oxide crystallite) (pg. 989, col. 2, para. 2) confirmed via x-ray diffraction (XRD) (pg. 989, col. 1 para. 2). Akgul discloses that the copper oxide crystallites therein exhibit XRD traces associated with the (-111) and (111) Bragg reflections that are “nearly equal” (construed to indicated a (-111)/(111) ratio of about 1.0) in intensity (pg. 989, col. 1, para. 2) and shows in Fig. 1 XRD patterns of copper oxide crystallites at varied annealing temperatures exhibiting the same. Akgul further teaches that the crystallites therein exhibit a crystallite size within the claimed range including, e.g., 8.96 nm, 9.71 nm, and 13.71 nm (Table 1, pg. 990).
Akgul is silent towards wherein the band gap of the copper oxide crystallite is within the claimed range.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. band gap, would naturally arise and be achieved by a composition with all the claimed ingredients (i.e., a copper oxide crystallite having the claimed particle size). "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Akgul is silent towards the blackness My of the copper oxide crystallite.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification suggests that the blackness of the CuO crystallite may be controlled via the particle size thereof). Therefore, the claimed effects and physical properties, i.e. blackness My, would naturally arise and be achieved by a composition with all the claimed ingredients (i.e., a copper oxide crystallite having the claimed particle size). "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Akgul teaches various reflectance values for the copper oxide crystallites, but there is insufficient evidence that the claimed “reflectivity” and the “reflectance” reported by Akgul are identical properties (International Commission on Illumination (CIE) guidance distinguishes reflectivity and reflectivity for layered and finite media, see CIE definition [17-24-093] which defines reflectivity as reflectance of a layer of a material that is of sufficient thickness so that there is no change in reflectance with increase in thickness). Furthermore, Akgul does not teach a reflectivity value for a significant portion of the wavelength ranges in the near-IR and LiDAR spectrum (construed to refer to wavelengths from 800 nm to 2500 nm and from 905 nm to 1550 nm, respectively according to the instant specification para [0059]). Accordingly, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Akgul teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification para. [0075] and [0077] suggest that a balance of the ratio of (-111)/(111) planes in the crystallite phase and the average crystallite size of the resultant CuO crystallites determine reflectivity). Therefore, the claimed effects and physical properties, i.e. reflectivity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claims 2: Akgul teaches the copper crystallite of claim 1 (supra).
Akgul further teaches that the copper oxide crystallites exhibit a reflectance in the visible spectrum (construed to refer to wavelengths from 350 nm to 750 nm according to the instant specification para. [0058]) that are within the claimed range, (see Fig. 6 (a)) however, there is insufficient evidence that the claimed “reflectivity” and the “reflectance” reported by Akgul are identical properties (International Commission on Illumination (CIE) guidance distinguishes reflectivity and reflectivity for layered and finite media, see CIE definition [17-24-093] which defines reflectivity as reflectance of a layer of a material that is of sufficient thickness so that there is no change in reflectance with increase in thickness). Furthermore, Akgul does not teach a reflectivity value for a significant portion of the wavelength ranges in the near-IR and LiDAR spectrum (construed to refer to wavelengths from 800 nm to 2500 nm and from 905 nm to 1550 nm, respectively according to the instant specification para [0059]). Accordingly, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Akgul teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification para. [0075] and [0077] suggest that a balance of the ratio of (-111)/(111) planes in the crystallite phase and the average crystallite size of the resultant CuO crystallites determine reflectivity). Therefore, the claimed effects and physical properties, i.e. reflectivity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 3: Akgul teaches the copper crystallite of claim 1 (supra).
Akgul teaches various reflectance values for the copper oxide crystallites, but there is insufficient evidence that the claimed “reflectivity” and the “reflectance” reported by Akgul are identical properties (International Commission on Illumination (CIE) guidance distinguishes reflectivity and reflectivity for layered and finite media, see CIE definition [17-24-093] which defines reflectivity as reflectance of a layer of a material that is of sufficient thickness so that there is no change in reflectance with increase in thickness). Furthermore, Akgul does not teach a reflectivity value for a significant portion of the wavelength ranges in the near-IR and LiDAR spectrum (construed to refer to wavelengths from 800 nm to 2500 nm and from 905 nm to 1550 nm, respectively according to the instant specification para [0059]). Accordingly, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Akgul teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification para. [0075] and [0077] suggest that a balance of the ratio of (-111)/(111) planes in the crystallite phase and the average crystallite size of the resultant CuO crystallites determine reflectivity). Therefore, the claimed effects and physical properties, i.e. reflectivity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 4: Akgul teaches the copper crystallite of claim 1 (supra).
Akgul discloses that the copper oxide crystallites therein exhibit XRD traces associated with the (-111) and (111) Bragg reflections that are “nearly equal” (construed to indicated a (-111)/(111) ratio of about 1.0) in intensity (pg. 989, col. 1, para. 2) and shows in Fig. 1 XRD patterns of copper oxide crystallites at varied annealing temperatures exhibiting the same.
As to Claim 5: Akgul teaches the copper crystallite of claim 1 (supra).
Akgul further teaches that the crystallites therein exhibit a crystallite size within the claimed range including, e.g., 8.96 nm and 9.71 nm (Table 1, pg. 990).
As to Claim 6: Akgul teaches the copper crystallite of claim 1 (supra).
Akgul is silent towards the blackness My of the copper oxide crystallite.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification suggests that the blackness of the CuO crystallite may be controlled via the particle size thereof). Therefore, the claimed effects and physical properties, i.e. blackness My, would naturally arise and be achieved by a composition with all the claimed ingredients (i.e., a copper oxide crystallite having the claimed particle size). "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 7: Akgul teaches the copper crystallite of claim 1 (supra).
Akgul teaches a copper oxide thin film (Abstract) having a polycrystalline structure comprising crystallites (i.e., a copper oxide crystallite) (pg. 989, col. 2, para. 2) confirmed via x-ray diffraction (XRD) (pg. 989, col. 1 para. 2). Akgul discloses that the copper oxide crystallites therein exhibit XRD traces associated with the (-111) and (111) Bragg reflections that are “nearly equal” (construed to indicated a (-111)/(111) ratio of about 1.0) in intensity (pg. 989, col. 1, para. 2) and shows in Fig. 1 XRD patterns of copper oxide crystallites at varied annealing temperatures exhibiting the same. Akgul further teaches that the crystallites therein exhibit a crystallite size within the claimed range including, e.g., 8.96 nm and 9.71 nm (Table 1, pg. 990).
Akgul is silent towards the blackness My of the copper oxide crystallite.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification suggests that the blackness of the CuO crystallite may be controlled via the particle size thereof). Therefore, the claimed effects and physical properties, i.e. blackness My, would naturally arise and be achieved by a composition with all the claimed ingredients (i.e., a copper oxide crystallite having the claimed particle size). "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Akgul teaches various reflectance values for the copper oxide crystallites, but there is insufficient evidence that the claimed “reflectivity” and the “reflectance” reported by Akgul are identical properties (International Commission on Illumination (CIE) guidance distinguishes reflectivity and reflectivity for layered and finite media, see CIE definition [17-24-093] which defines reflectivity as reflectance of a layer of a material that is of sufficient thickness so that there is no change in reflectance with increase in thickness). Furthermore, Akgul does not teach a reflectivity value for a significant portion of the wavelength ranges in the near-IR and LiDAR spectrum (construed to refer to wavelengths from 800 nm to 2500 nm and from 905 nm to 1550 nm, respectively according to the instant specification para [0059]). Accordingly, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Akgul teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the instant specification para. [0075] and [0077] suggest that a balance of the ratio of (-111)/(111) planes in the crystallite phase and the average crystallite size of the resultant CuO crystallites determine reflectivity). Therefore, the claimed effects and physical properties, i.e. reflectivity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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, Mark Eashoo can be reached on (571) 272-1197. 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.
/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767