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 .
Status Of Claims
This Office Action is in response to an amendment received 3/22/2023 in which Applicant lists claims 1-33 as being currently amended, and claims 34-40 as being new. It is interpreted by the examiner that claims 1-40 are pending.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, they are reminded of their duty under 37 CFR 1.56 to disclose the same.
Election/Restrictions
Applicant's election with traverse of Group III in the reply filed on 9/15/2025 is acknowledged. The traversal is on the ground(s) that claims 1 and 38 include technical features which are special technical features making a contribution over the prior art noted by the Office. This is not found persuasive because, as cited in the prior art rejection(s) below, at least Li discloses the technical features cited by Applicant, and therefore these technical features are not special technical features making a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-4, 7-11, 14-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to at least one nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/15/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Application PCT/IB2021/053151 filed on 4/16/2021 is the earliest filed application that discloses all of the limitations in claims 21-33 (drawn to figures 27-33 which are not supported by foreign priority document IT 10-2020-000008113) and therefore is the earliest priority date given for the instant application.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on 3/22/2023 was considered.
Claim Interpretation
It is noted that the “visible spectrum” in the claims is interpreted in view of at least specification paragraph [11] to refer to the wavelength range of 380 nm ≤ λ ≤ 740 nm.
It is noted that the surface density (Dp) of the nano-pillars/nano-pores/nano structures is interpreted in view of at least specification paragraph [88] to refer to the number of nano structures per unit area of the second surface of the chromatic diffusion layer with can be measured as the number of nano structures per square micron or in terms of (average) distance between adjacent structures, or inter-pores distance Ip.
It is noted that the porosity (Pp) of the nano-pillars/nano-pores/nano structures is interpreted in view of at least specification paragraph [88] to refer to the percentage of area occupied by the material having a lower refractive index nm with respect to the area of the second surface.
It is noted that the “regular reflectance” (i.e. regular specular reflectance) in the claims is interpreted in view of at least specification paragraph [3] to refer to the definitions provided in ASTM E284-09a for “regular reflection” which refers to the definition for “specular reflection”, as provided in the 3/22/2023 Information Disclosure Statement, and as interpreted to be measured as set forth in at least specification paragraph [115].
It is noted that the “diffuse reflectance” (i.e. diffuse spectral reflectance) in the claims is interpreted in view of at least specification paragraph [3] to refer to the definitions provided in ASTM E284-09a for “diffuse reflectance”, as provided in the 3/22/2023 Information Disclosure Statement, and as interpreted to be measured as set forth in at least specification paragraphs [116]-[118].
It is noted that the refractive index for the first refractive index (n1) and the second refractive index (n2) in the claims is interpreted in view of at least specification paragraph [102] to refer to the standard refractive index measurements measured with wavelength equal to 589.29 nm.
It is noted that wavelengths of incident light in “the range of red” in the claims is interpreted in view of at least specification paragraph [14] to refer to wavelengths between 600 nm and 740 nm.
It is noted that wavelengths of incident light in “the range of blue” in the claims is interpreted in view of at least specification paragraph [15] to refer to wavelengths between 380 nm and 500 nm.
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, 5-6, 12-13 and 38-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for achieving the tailored chromatic effect while having specific values for pillar diameter/pore diameter (dp), pillar length/pore length (lp), surface density of the nano-pillars/nano-pores (Dp) as well as specific porosity (Pp) values, does not reasonably provide enablement for achieving the tailored chromatic effect without specific values for surface density of the nano-pillars/nano-pores (Dp) as well as specific porosity (Pp) values. Additionally, claims 1 and 38 set forth “at least one of” a surface density and a porosity of the nano structures is configured to provide a higher regular reflectance for wavelengths of incident light in the range of red with respect to wavelengths of incident light in the range of blue and a higher diffuse reflectance for wavelengths of incident light in the range of blue than wavelengths of incident light in the range of red. However, it is not clear how the unit of claim 1 or 38 may achieve the tailored chromatic effect without specific values for both the surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp). Specifically, the specification sets forth examples in paragraphs [126]-[128] wherein specific values for pillar diameter/pore diameter (dp), pillar length/pore length (lp), surface density of the nano-pillars/nano-pores (Dp) and/or inter-pore distance (Ip), as well as specific porosity (Pp) values, are necessary for achieving the desired tailored chromatic effect. Whereas, the specification sets forth examples in paragraphs [129]-[134] wherein insufficient values for pillar length/pore length (lp), for pillar diameter/pore diameter (dp) and/or for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp) results in a failure to obtain the desired diffuse reflectance characteristics. Therefore, specific values/ranges for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp), which are absent from at least claims 1 and 38, are considered critical/essential features for the practice of the invention. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to achieve the desired tailored chromatic effect of having the desired regular reflectance and diffuse reflectance characteristics for the invention commensurate in scope with these claims.
The factors considered when determining if the disclosure satisfies the enablement requirement and whether any necessary experimentation is undue include, but are not limited to: 1) nature of the invention, 2) state of the prior art, 3) relative skill of those in the art, 4) level of predictability, 5) existence of working samples, 6) breadth of claims, 7) amount of direction or guidance by the inventor, and 8) quantity of experimentation needed to make or use the invention. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The nature of the invention is drawn to achieving desired diffuse reflectance characteristics from a chromatic diffusion layer having nano structures on a reflective layer surface.
The claims recite specifics of the chromatic diffusion layer wherein the chromatic diffusion layer includes nano-pillars/nano-pores/nano structures having a ratio between a higher refractive index material and a lower refractive index material between 1.05 and 3, a pillar diameter/pore diameter (dp) between 40 nm and 300 nm, and a pillar length/pore length (lp) between 0.3 µm and 40 µm.
The state of the art discloses a similar chromatic effect light reflective unit including a chromatic diffusion layer having nano structures on a reflective layer surface, wherein the chromatic diffusion layer includes nano-pillars/nano-pores/nano structures having a ratio between a higher refractive index material and a lower refractive index material between 1.05 and 3, a pillar diameter/pore diameter (dp) between 40 nm and 300 nm, and a pillar length/pore length (lp) between 0.3 µm and 40 µm (see at least the abstract and pages 1-5 of Li et al., as set forth in the rejections below). Additionally, Li discloses that the reflection colors may be tuned by altering the thickness of the dielectric cavity, the pore diameter and/or the gap (see at least the abstract and pages 1-3 of Li).
The level of skill in the art is related to the areas of nanoscale reflective structures. The skill level is generally high (e.g. masters or PhD level) due to level of complexity in designing and making nanoscale reflective structures.
The specification only sets forth working examples including specific values for pillar diameter/pore diameter (dp), pillar length/pore length (lp), surface density of the nano-pillars/nano-pores (Dp) and/or inter-pore distance (Ip), as well as specific porosity (Pp) values, which are necessary for achieving the desired tailored chromatic effect.
Applicants’ claims are excessively broad due, in part, to the complex and diverse nature of nanoscale reflective structures, and the lack of working examples which do not include specific values for surface density of the nano-pillars/nano-pores (Dp) as well as specific porosity (Pp) values.
Therefore, based on the discussions above concerning the art’s recognition that desired reflectance and structural color filtering may be tuned by altering the thickness of the dielectric cavity, the pore diameter and/or the gap (see at least the abstract and pages 1-3 of Li), the specification fails to teach the skilled artisan how to use the claimed methods without resorting to undue experimentation to achieve the desired tailored chromatic effect of desired regular reflectance and desired diffuse reflectance without specific values for surface density of the nano-pillars/nano-pores (Dp) as well as specific porosity (Pp) values.
Due to the large quantity of experimentation necessary to determine how to achieve the desired tailored chromatic effect of desired regular reflectance and desired diffuse reflectance without any specific values for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp), the lack of direction/guidance presented in the specification regarding same, the absence of sufficient working examples directed achieving the desired tailored chromatic effect of desired regular reflectance and desired diffuse reflectance without any specific values for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp), the complex nature of the invention, and the state of the prior art, undue experimentation would be required of the skilled artisan to make and/or use the claimed invention in its full scope.
Claims 5-6, 12-13 and 39-40 are rejected for inheriting the same deficiencies of the claims from which they depend.
Claims 1, 5-6, 12-13 and 38-40 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without specific values/ranges for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp), which are absent from at least claims 1 and 38, which are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). Specifically, the specification sets forth examples in paragraphs [126]-[128] wherein specific values for pillar diameter/pore diameter (dp), pillar length/pore length (lp), surface density of the nano-pillars/nano-pores (Dp) and/or inter-pore distance (Ip), as well as specific porosity (Pp) values, are necessary for achieving the desired tailored chromatic effect. Whereas, the specification sets forth examples in paragraphs [129]-[134] wherein insufficient values for pillar length/pore length (lp), for pillar diameter/pore diameter (dp) and/or for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp) results in a failure to obtain the desired diffuse reflectance characteristics. Therefore, specific values/ranges for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp), which are absent from at least claims 1 and 38, are considered critical/essential features for the practice of the invention.
Claims 5-6, 12-13 and 39-40 are rejected for inheriting the same deficiencies of the claims from which they depend.
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 1, 5-6, 12-13 and 38-40 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.
The term “substantially non-absorbing or transparent” in at least claims 1 and 38 is a relative term which renders the claim indefinite. The term “substantially non-absorbing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specification paragraphs [77]-[78], [152], [156]-[157] and [166]-[167] recite specific materials which may be used for the chromatic diffusion layer, but no specific materials are claimed, and the claim does not set forth what amount of absorption or transparency would be considered “substantially non-absorbing or transparent”. Therefore, the scope of the claim(s) is unclear as the metes and bounds of the claim(s) cannot be determined.
Claims 5-6, 12-13 and 39-40 are rejected for inheriting the same deficiencies of the claims from which they depend.
Claims 1 and 38 require that at least one of a surface density and a porosity of the nano structures is configured to provide a higher regular reflectance for wavelengths of incident light in the range of red with respect to wavelengths of incident light in the range of blue and a higher diffuse reflectance for wavelengths of incident light in the range of blue than wavelengths of incident light in the range of red. However, it is not clear what physical structure in claim 1 or 38 would result in the unit being “configured to” provide the claimed results, and therefore it is not clear what technical features are necessary for achieving the claimed result. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114. Therefore, the scope of the claims are indefinite as the metes and bounds of the claims cannot be determined.
Claims 5-6, 12-13 and 39-40 are rejected for inheriting the same deficiencies of the claims from which they depend.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, at least claims 5, 6, 12, 13 recite a broad recitation, and the claim also recites a narrower statement of the range/limitation. See for example at least claim 5 wherein the inter-pore/inter-pillar distance is less than 2.8 times the diameter, less than 2.6 times the diameter, or less than 2.4 times the diameter. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Therefore, the scope of the claims are indefinite as the metes and bounds of the claims cannot be determined.
Claim 12 requires that at least one of a surface density and a porosity of the nano structures is configured to provide a regular reflectance measured at the wavelength equal to 450 nm, in the range from 0.05 to 0.95, or from 0.1 to 0.9; and/or to provide a regular reflectance measured at the wavelength equal to 630 nm, at least 1.05 times, 1.2 times, or 1.6 times greater than the regular reflectance measured at the wavelength equal to 450 nm. However, it is not clear what physical structure in claim 12 would result in the unit being “configured to” provide the claimed results, and therefore it is not clear what technical features are necessary for achieving the claimed result. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114. Therefore, the scope of the claim(s) is indefinite as the metes and bounds of the claim(s) cannot be determined.
Claim 13 requires that at least one of a surface density and a porosity of the nano structures is configured to generate a regularly reflected beam with a correlated color temperature of at least 10% less, at least 15% less, or at least 20% less than the correlated color temperature of the incident light; and/or to generate a diffusedly reflected beam with a correlated color temperature of at least 20% higher, at least 30% higher, or at least 50% higher than the correlated color temperature of the incident light. However, it is not clear what physical structure in claim 13 would result in the unit being “configured to” provide the claimed results, and therefore it is not clear what technical features are necessary for achieving the claimed result. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114. Therefore, the scope of the claim(s) is indefinite as the metes and bounds of the claim(s) cannot be determined.
Claims 1, 5-6, 12-13 and 38-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: specific values/ranges for surface density of the nano-pillars/nano-pores (Dp) and porosity (Pp), which are absent from at least claims 1 and 38, and which are deemed critical or essential to the practice of the invention as set forth above in the 112(a) rejections.
Claims 5-6, 12-13 and 39-40 are rejected for inheriting the same deficiencies of the claims from which they depend.
It is noted that the withdrawn claims should also be carefully checked as they are replete with similar 112(b) issues including insufficient antecedent basis; indefinite configured to language which does not provide sufficient structure which would result in the unit being “configured to” provide the claimed results; broad ranges or limitations together with a narrow ranges or limitations that fall within the broad range or limitation in the same claim; and/or introduce claim elements without providing numerical values or definition criteria to define what technical limitations they imply/introduce.
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, 38-40 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Li et al., Large-Area Structural Color Filtering Capitalizing on Nanoporous Metal-Dielectric-Metal Configuration. Nanoscale Res Lett. 2018 Jul 20;13(1):217. doi: 10.1186/s11671-018-2629-8. PMID: 30030645; PMCID: PMC6054599 (hereafter Li).
Regarding claim 1, as best understood, Li discloses a chromatic effect light reflective unit (see at least figure 1a) comprising
a reflective layer having at least one reflective surface (see at least figure 1a, AL substrate), and
a chromatic diffusion layer having a first surface proximal to the reflective surface and a second surface, opposite and substantially parallel to the first surface, the second surface configured to be illuminated by incident light (see at least figure 1a, NAA film with thickness t2, and the abstract and pages 1-5 of Li),
wherein the chromatic diffusion layer comprises a nano-pillar or nano-pore structure formed of a first material having a first refractive index, immersed in a second material having a second refractive index other than the first refractive index, in which the first and second materials are substantially non-absorbing or transparent to electromagnetic radiations with wavelength included in the visible spectrum (see at least figure 1a, NAA film formed of alumina and air),
wherein the ratio (nM/nm) between a higher refractive index and a lower refractive index chosen between the first refractive index and the second refractive index is between 1.05 and 3 (see at least figure 1a, NAA film formed of alumina (n = 1.7681 @ 589.29 nm) and air (n = 1); 1.7681/1 = 1.7681),
wherein the nano-pillars or nano-pores have a development along a main direction not parallel to the first surface and the second surface of the chromatic diffusion layer (see at least figures 1a, 4a-4b), and the nano-pillars or nano-pores structure is characterized by a plurality of geometric parameters comprising:
a pillar diameter or pore diameter (dp) (see at least page 2, d=65nm),
a pillar length or pore length (lp) along said main development direction (see at least figures 2a and 4a wherein pillar length/pore length may be 300-320nm), and
a surface density of nano-pillars or nano-pores (Dp) and a structure porosity (Pp) (see at least figures 1a, 1b, 4a, 4b and pages 1-5 of Li), and
wherein the pillar diameter or pore diameter (dp) is between 40 nm and 300 nm (see at least page 2, d=65nm), the length (lp) along the main development direction is 0.3 µm and 40 µm (see at least figures 2a and 4a wherein pillar length/pore length may be 300-320nm).
It is noted that in product and apparatus claims, when the structure and composition recited in the reference(s) is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent, see M.P.E.P. 2112.01. As the structure and materials provided by Li are the same as that recited in claim 1 (see at least page 2 wherein the pore diameter is the same as defined by claim 1, d=65nm, and see at least figures 1a, 1b, 2a and 4a wherein pillar length/pore length is the same as defined by claim 1, 300-320nm, and wherein both the surface density of nano-pillars/nano-pores (Dp) and the structure porosity (Pp) are undefined in claim 1) then it is expected that the chromatic effect light reflective unit provided by Li would have the same results as claimed. It has been held that where the claimed and prior art products are identical, or substantially identical, in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Because the structure of the prior art system, as identified above, is the same as that claimed, it must inherently perform the same function. Furthermore, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Additionally, Li discloses that varying physical characteristics of the chromatic diffusion layer results in tuning the spectral response of the regular reflectance (see at least pages 2-4, figures 2a, 2b).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to optimize at least one of the surface density of nano-pillars or nano-pores (Dp) and the structure porosity (Pp) such that the unit is configured to provide a higher regular reflectance for wavelengths of incident light in the range of red with respect to wavelengths of incident light in the range of blue and a higher diffuse reflectance for wavelengths of incident light in the range of blue than wavelengths of incident light in the range of red, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to optimize at least one of the surface density of nano-pillars or nano-pores (Dp) and the structure porosity (Pp) such that the unit is configured to provide a higher regular reflectance for wavelengths of incident light in the range of red with respect to wavelengths of incident light in the range of blue and a higher diffuse reflectance for wavelengths of incident light in the range of blue than wavelengths of incident light in the range of red, for the purpose of tuning the unit to achieve a desired spectral response. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Regarding claim 38, as best understood, Li discloses a chromatic effect light reflective unit (see at least figure 1a) comprising
a reflective layer having at least one reflective surface (see at least figure 1a, AL substrate), and
a chromatic diffusion layer having a first surface proximal to the reflective surface and a second surface, opposite and substantially parallel to the first surface, the second surface configured to be illuminated by incident light (see at least figure 1a, NAA film with thickness t2, and the abstract and pages 1-5 of Li), the chromatic diffusion layer comprising a plurality of extending nano structures, each structure formed of a first material having a first refractive index (n1) and immersed in a second material having a second refractive index (n2) other than the first refractive index, in which the first and second materials are substantially non-absorbing or transparent to electromagnetic radiations with wavelength included in the visible spectrum (see at least figure 1a, NAA film formed of alumina (n1) immersed in air (n2)), wherein a ratio n1/n2 is between 1.05 and 3 (see at least figure 1a, NAA film formed of alumina (n = 1.7681 @ 589.29 nm) and air (n = 1); 1.7681/1 = 1.7681),
wherein the nano structure extends along a main direction not parallel to the first surface and the second surface of the chromatic diffusion layer (see at least figures 1a, 4a-4b),
wherein a diameter associated with each nano structure is between 40 nm and 300 nm (see at least page 2, d=65nm), a length of each nano structure taken along the main direction is between 0.3 um and 40 um (see at least figures 2a and 4a wherein pillar length/pore length may be 300-320nm).
It is noted that in product and apparatus claims, when the structure and composition recited in the reference(s) is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent, see M.P.E.P. 2112.01. As the structure and materials provided by Li are the same as that recited in claim 38 (see at least page 2 wherein the pore diameter is the same as defined by claim 1, d=65nm, and see at least figures 1a, 1b, 2a and 4a wherein pillar length/pore length is the same as defined by claim 1, 300-320nm, and wherein both the surface density of nano-pillars/nano-pores (Dp) and the structure porosity (Pp) are undefined in claim 38) then it is expected that the chromatic effect light reflective unit provided by Li would have the same results as claimed. It has been held that where the claimed and prior art products are identical, or substantially identical, in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Because the structure of the prior art system, as identified above, is the same as that claimed, it must inherently perform the same function. Furthermore, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Additionally, Li discloses that varying physical characteristics of the chromatic diffusion layer results in tuning the spectral response of the regular reflectance (see at least pages 2-4, figures 2a, 2b).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to optimize at least one of a surface density and a porosity of the nano structures such that the unit is configured to provide a higher regular reflectance for wavelengths of incident light in the range of red with respect to wavelengths of incident light in the range of blue and a higher diffuse reflectance for wavelengths of incident light in the range of blue than wavelengths of incident light in the range of red, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to optimize at least one of a surface density and a porosity of the nano structures such that the unit is configured to provide a higher regular reflectance for wavelengths of incident light in the range of red with respect to wavelengths of incident light in the range of blue and a higher diffuse reflectance for wavelengths of incident light in the range of blue than wavelengths of incident light in the range of red, for the purpose of tuning the unit to achieve a desired spectral response. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Regarding claim 39, as best understood, Li discloses that each extending nano structure is a nano-pillar formed of the first material and immersed in the second material (see at least figure 1a, NAA film formed of alumina (n1) immersed in air (n2)).
Regarding claim 40, as best understood, Li discloses that each extending nano structure is a nano-pore structure formed of the first material in which an extending nano-pore is defined, the second material filling each extending nano-pore (see at least figure 1a, NAA film with a nano-pore structure formed of alumina (n1) immersed in air (n2) which fills each extending nano-pore).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 6, 38, 39 and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/249438 (corresponds to US 2023/0383596 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader than or an obvious variation of claims 1-6 of copending Application No. 18/249438.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1 of the instant application, see claims 1-4 of copending Application No. 18/249438 which together claim all of the limitations of claim 1.
Regarding claim 5 of the instant application, see claims 1-5 of copending Application No. 18/249438 which together claim all of the limitations of claim 5.
Regarding claim 6 of the instant application, see claims 1-4 and 6 of copending Application No. 18/249438 which together claim all of the limitations of claim 6.
Regarding claim 38 of the instant application, see claims 1-4 of copending Application No. 18/249438 which together claim all of the limitations of claim 38.
Regarding claim 39 of the instant application, see claims 1-4 of copending Application No. 18/249438 which together claim all of the limitations of claim 39.
Regarding claim 40 of the instant application, see claims 1-4 of copending Application No. 18/249438 which together claim all of the limitations of claim 40.
Conclusion
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/Derek S. Chapel/Primary Examiner, Art Unit 2872 10/17/2025
Derek S. CHAPEL
Primary Examiner
Art Unit 2872