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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submissions filed on August 12, 2025 and June 2, 2025 have been entered.
Response to Amendment
Applicant’s amendment has been entered. Claims 1-16 and 21-24 are pending. Claims 17-20 are canceled.
Response to Declaration Under 37 CFR 1.132
The declarations under 37 CFR 1.132 filed June 2, 2025 and August 12, 2025 are sufficient to overcome the rejection of claims 1-16, 21-22 and 24 based upon 35 USC 103 over Chang (CHANG, JULIA J., "Coupling metastability of undercooled liquid metal particles with self-driven process in autonomous fabrication of functional materials", Thesis, Materials Science and Engineering, Iowa State University, Ames, IA, (2020)). The declarations are sufficient to show that the published Chang dissertation is a disclosure made 1 year or less before the effective filing date of the claimed invention. Julia Chang, the sole listed author of the reference, is an inventor of the presently claimed invention.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, and 7-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang Defense (CHANG, JULIA J., "Coupling Metastability of Undercooled Liquid Metal Particles with Self- driven Process in Autonomous Fabrication Materials", Julia J. Chang in partial fulfillment of the requirements for the degree of DOCTOR OF PHILOSOPHY; Major: Materials Science & Engineering Program of Study Committee: Martin M. Thuo, Major Professor; Xiaoli Tan; Shan Jiang; Wenyu Huang; Shan Hu; (10/30/2020)). The Chang Defense is cited in the IDS filed August 12, 2025. References are directed to the slides which depict the presented subject matter.
The present rejection relies on the disclosure of the invention by Julia Chang in the presentation that took place October 30, 2020 and not on the later-published dissertation which the presentation defended. The declarations filed June 2, 2025 and August 12, 2025 support treatment of the presentation as a public disclosure because the declarations attest to a public announcement of the presentation and possible attendance by members of the public. Absent further evidence that the information presented in Dr. Chang’s defense was withheld from the public, the subject matter presented in the Chang Defense on October 30, 2020 is a disclosure “otherwise available to the public before the effective filing date of the claimed invention” (35 USC 102(a)(1)). See MPEP 2152.02(e) for further discussions on public disclosures which are not printed publications as prior art.
Regarding claim 1, Chang Defense discloses a method of forming a wire that is a microwire or nanowire (slides 28-34, 41). Chang Defense discloses disposing a plurality of metal particles in a portion of channels (slides 28, 30-31). Chang Defense discloses that the channels direct and mold the wires and that the formed wires have the shape of the cannels (slide 29-30). The defense shows that the formed wires are microwires or nanowires (slides 28-31). Channels that mold microwires or nanowires to have the same shape as the channels are microchannels or nanochannels. The figure labeled “f” on Extra Slide 41 further shows that channels are of micrometer length scale, and identify the channel template as a mold. Chang Defense discloses etching the metal particles with an activation agent to form a flux that penetrates an additional portion of the channel (slides 28-30). Chang Defense discloses that the flux comprises an etching product of the activation agent and the metal particles (slide 28 upper left image). Chang Defense discloses allowing the activation agent to at least partially evaporate to form the wire (particularly slide 29).
Regarding claim 2, Chang Defense discloses metal particles comprising Field’s metal (slides 28, 31) and InSn alloy (slide 32). As Field’s metal has a composition of In (indium 51%, wt%)–Bi (bismuth 32.5%, wt%)–Sn (tin 16.5%, wt%), the particles disclosed by Chang Defense (slides 28, 31) meet the claimed alternatives of Field’s metal, InSn alloy, InBi alloy, SnBi alloy, Sn, Bi, In, and combinations thereof. Chang Defense further discloses investigating eutectic GaIn, which is a GaIn alloy (slide 6) for assembling to form structures (slides 8, 10).
Regarding claim 3, Chang Defense discloses that the metal particles comprise liquid metal particles comprising a liquid metal or alloy (slide 34, with reference to concepts discussed in slides 6-8 and 28).
Regarding claim 7, Chang Defense investigates embodiments wherein the channel is open along its length (slides 28-30, particularly slide 29).
Regarding claim 8, Chang Defense discloses embodiments wherein the channel is closed along at least part of its length (lower row of figures in slide 29). Though these figures do not identify with text the channels as closed along some length, the figures do show that the channels in the lower row are closed at some portions along the length (slide 29).
Regarding claim 9, Chang Defense discloses that disposing the metal particles in the portion of the channel comprises disposing the metal particles between the portion of the channel and a substrate (slide 29 bottom-left figure). Chang Defense discloses a Si substrate (slide 29).
Regarding claim 10, Chang Defense shows in extra slide 41 that the channels at least in disclosure of slide 330 are of a PDMS mold (slide 41, central image apparently labeled c). PDMS is an elastomer.
Regarding claim 11, Chang Defense discloses forming the wire in a plurality of channels to form a plurality of wires, wherein the plurality of channels comprises the channel and the plurality of wires comprises the wire (slides 28-31, 41).
Regarding claim 12, Chang Defense discloses that the portion of the channel wherein the metal particles are deposited is an entrance to the channel (prominently shown in slides 28 and 30).
Regarding claim 13, Chang discloses that the activation agent comprises a solvent and an acid, wherein the acid comprises acetic acid (slide 30), which meets both the claimed “carboxylic acid”, and the “acetic acid” alternatives.
Regarding claim 14, Chang Defense discloses calcining the wire to form a calcined wire (central image of the lower row of slide 31). Chang Defense discloses calcining comprising heating the wire to temperatures of 400°C and 600°C (left image in the lower row of slide 31).
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.
Claim(s) 4, 15, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang Defense (CHANG, JULIA J., "Coupling Metastability of Undercooled Liquid Metal Particles with Self- driven Process in Autonomous Fabrication Materials", Julia J. Chang in partial fulfillment of the requirements for the degree of DOCTOR OF PHILOSOPHY; Major: Materials Science & Engineering Program of Study Committee: Martin M. Thuo, Major Professor; Xiaoli Tan; Shan Jiang; Wenyu Huang; Shan Hu; (10/30/2020)) as applied to claim 1 above, and further in view of Thuo (US20180311655). Thuo is the publication of “THUO, MARTIN M., et al., "Metal oxide materials made using self-assembled coordination polymers", U.S. Application Serial No. 15/932,805, filed April 27, 2018, 15 pgs” cited in the IDS filed December 1, 2022, and Thuo is cited in prior office action(s).
Regarding claim 4, Chang Defense discloses that the disposed metal particles are liquid metallic core-shell particles comprising a liquid metal or alloy slide 34, with reference to concepts discussed in slides 6-8 and 28). Chang discloses that such particles comprise a solid outer shell on the liquid metallic core (slides 6-7, 34), but Chang Defense does not disclose an embodiment wherein the particles comprise solid metal particles or alloys.
Thuo teaches a method of forming high aspect ratio inorganic nanowires (nanobeam) ([0017-19], [0024], [0032-33], [0038], [0040], Figs. 2A-F, 3, 4). Thuo teaches etching the metal particles with an activation agent to form a complex [0024-25], [0031-32], the flux comprising an etching product of the activation agent and the metal particles (cations that chelate with the conjugate base to an acetate complex [0032-33], claims 2-3). Thuo teaches at least partially removing the activation agent to form the wire [0038].
Both Thuo and Chang Defense as applied above teach similar etching processes for producing inorganic nanostructures. Chang Defense discloses that the nanowires are high aspect ratio (slide 33). Chang Defense discloses that the activation agent comprises a solvent and a carboxylic acid (slides 30, 41). Chang Defense notes that heterogeneous metal/ligand reactions in solution are multi-directional reactions, which Chang suggests may be controlled by confinement by contrasting reaction products with and without channel confinement (slide 28). The reaction taught by Thuo is an unconfined heterogenous metal/ligand (chelating) reaction in solution [0024-25], [0031-32]. Thuo teaches an activation agent comprises a solvent and carboxylic acid [0025], [0031-32], and Thuo teaches that etched metal particle can be a liquid metal core-shell particle, a solid metal or alloy, semi-solid or liquid metal or metal alloy material, and/or a metal composite material ([0025], claim 10).
Chang Defense differs from claim 4 in that Chang Defense discloses that the disposed metal particles are liquid metallic core-shell particles comprising a liquid metal or alloy (slide 34, with reference to concepts discussed in slides 6-8 and 28) whereas claim 4 claims the metal particles comprise solid metal particles comprising a solid metal or alloy. In view of Thuo, one of ordinary skill in the art of producing nanostructures by heterogeneous metal/ligand reaction with carboxylic acid activation agent would know that metal particles etched by the acetic acid can be a liquid metal core-shell particle, a solid metal or alloy, semi-solid or liquid metal or metal alloy material, and/or a metal composite material ([0025], claim 10). It would have been obvious for one of ordinary skill in the art to dispose solid metal particles comprising a solid metal or alloy as metal particles in the method disclosed by Chang, as applied above to yield the predictable result taught by Thuo of forming high aspect ratio nanostructures [0024], [0032-33], [0038], [0040], from material taught by Thuo as appropriate for heterogenous metal/ligand reactions ([0024-25], [0031-32], claim 10). One of ordinary skill in the art would have been motivated by the advantages which Chang Defense suggests for confined reaction over free reaction in solution (slide 28).
Regarding claim 15, Chang Defense discloses heat treating formed wires (slide 31), but Chang Defense does not disclose pyrolyzing the wire to form a coating on the wire comprising graphene, graphene oxide, and/or graphite.
Thuo teaches a method of forming high aspect ratio inorganic nanowires (nanobeam) ([0017-19], [0024], [0032-33], [0038], [0040], Figs. 2A-F, 3, 4). Thuo teaches etching the metal particles with an acetic acid solution activation agent to form a complex [0024-25], [0031-32], the flux comprising an etching product of the activation agent and the metal particles (cations that chelate with the conjugate base to an acetate complex [0032-33], claims 2-3). In examples, Thuo teaches pyrolyzing the formed nanostructures (heat treated under anaerobic conditions that promote incomplete ablation of the organic ligands of the material) [0047]. Thuo teaches that the pyrolysis forms a carbon-containing layer which may contain graphite, graphene, and other forms of mixed-oxidation states of carbon [0047]. Thuo teaches that the pyrolysis (anaerobic heat treatment) provides means for tuning the color, UV absorptivity, and electrical conductivity of the produced nanostructure [0049]; that such tuning of properties renders the anaerobic thermally treated material to be a prime candidate for use in sensors [0049], and that electrical conductivity can be increased to the extent that the material resulting from the pyrolysis (anaerobic heat treatment) is highly electrically conductive and can provide a starting point material for high-electron mobility semiconductors such as heterostructure field emission transistors [0049].
Both Chang Defense and Thuo teach substantially similar methods for producing high aspect ratio nanostructures. Chang Defense exemplifies a cation and acetic acid (metalx+/(CH3COO-)x) monomers as the etching product (slides 28 and 30).
It would have been obvious for one of ordinary skill in the art to pyrolyze the wire in the process disclosed by Chang Defense, applied above to form a coating on the wire comprising graphene, graphene oxide, and/or graphite, in order to predictably attain the advantageous results taught by Thuo for pyrolyzing nanostructured product of reaching metal particles with acetic acid to form a metal ion/acetate complex [0024-25], [0031-32], [0047], [0049].
Regarding claim 21, Chang Defense discloses that the activation agent comprises a solvent and an acid, wherein the acid comprises acetic acid (page 30), but Chang Defense does not disclose that the activation agent comprises one of the activation agent constituents recited in claim 21.
Thuo teaches a method of forming high aspect ratio inorganic nanowires (nanobeam) ([0017-19], [0024], [0032-33], [0038], [0040], Figs. 2A-F, 3, 4). Thuo teaches etching the metal particles with an acetic acid solution activation agent to form a complex [0024-25], [0031-32], the flux comprising an etching product of the activation agent and the metal particles (cations that chelate with the conjugate base to an acetate complex [0032-33], claims 2-3). Thuo exemplifies a solution comprising a solvent and acetic acid as an activating agent [0032], and Thuo teaches that etchant may comprise any acid-base pair derived from carboxylic acid such as acetic acid, benzoic acid, propionic acid or other carboxylic acids; protonated amines, analogous, or any other combined system capable of dissociating to give an electron-poor adduct and electron rich adduct [0025].
Both Chang Defense and Thuo teach substantially similar methods for producing high aspect ratio nanostructures. Chang Defense exemplifies a cation and acetic acid (metalx+/(CH3COO-)x) monomers as the etching product (slides 28 and 30).
It would have been obvious for one of ordinary skill in the art to perform the method disclosed by Chang Defense as applied above with an etching activation agent comprising benzoic acid, thereby meeting the additional limitations recited in claim 21, because Thuo teaches that benzoic acid and derivatives can be supplied for the same etching activation purposes for which acetic acid derivatives are applied [0025], and the activation agent exemplified by Chang Defense comprises acetic acid (slides 28 and 30), to predictably yield effective etching activation as taught by Thuo [0025]. Considering an amino acid is a carboxylic acid comprising an amine, and Thuo teaches any carboxylic acid and protonated amine for the etching [0025], it further would have been obvious in view of Thuo to supply an amino acid as an activation agent constituent which further would be predictable as effective in view of Thuo’s teachings of carboxylic acids and protonated amines [0025].
Claim(s) 5-6, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang Defense (CHANG, JULIA J., "Coupling Metastability of Undercooled Liquid Metal Particles with Self- driven Process in Autonomous Fabrication Materials", Julia J. Chang in partial fulfillment of the requirements for the degree of DOCTOR OF PHILOSOPHY; Major: Materials Science & Engineering Program of Study Committee: Martin M. Thuo, Major Professor; Xiaoli Tan; Shan Jiang; Wenyu Huang; Shan Hu; (10/30/2020)) , as applied to claim 1 above, and further in view of Nylund (Nylund, Gustav, et al. "Designed Quasi-1D Potential Structures Realized in Compositionally Graded InAs1–x P x Nanowires." Nano letters 16.2 (2016): 1017-1021.). Nylund is cited in prior office action(s).
Regarding claim 5, Chang Defense discloses that the disposed metal particles are liquid metallic core-shell particles comprising a liquid metal or alloy slide 34, with reference to concepts discussed in slides 6-8 and 28). Chang discloses that such particles comprise a solid outer shell on the liquid metallic core (slides 6-7, 34). Chang Defense discloses embodiments wherein the ultimately formed wire is a mixed component nanowire (slide 32) and discloses that regions of the nanowires are chemically distinct (slide 32), thereby disclosing local, compositional variability in the nanowires. Chang Defense does not disclose that the compositional variability manifests as a concentration and/or compositional gradient along a longitudinal direction along the wire.
Nylund teaches method of forming nanowires (page 1017 right column, page 1018 left column). Nylund forms nanowires by disposing inorganic feed material onto a substrate (page 1018 left column). Nylund teaches that the nanowires are compositionally graded along the length of the wires (page 1017 right column axially graded heterostructures through highly controlled in situ modulation of the chemical composition along the nanowire axis). Nylund forms the compositionally graded nanowires by selectively applying feed material (page 1018 left column, page 1020 right column). Nylund teaches that nanowires with asymmetric, sawtooth shaped composition profiles behave as near-ideal majority carrier diodes, in which the height and shape of the current rectifying potential is directly encoded in the quasi-graded chemical composition of the nanowire (page 1020 left column). Nylund suggests that arrangements of such compositionally graded nanowires could be useful as a photo diode (page 1020 right column).
Both Nylund and Chang Defense teach manufacturing compositionally variable nanowires.
Chang Defense differs from claim 5 in that Chang does not disclose that the compositionally variable nanowires have a composition or concentration gradient. In view of Nylund, one of ordinary skill in the art would know that adjusting feed material application can yield nanowires having a composition gradient (compositionally graded) (page 1018 left column, page 1020 right column). It would have been obvious for one of ordinary skill in the art to produce nanowires having a composition gradient by the method disclosed by Chang Defense relied upon above. Such compositionally graded nanowires would be predicted to serve as effective carrier diodes suitable for photocurrent applications as taught by Nylund (page 1020 left and right columns). See MPEP 2143(I)(A, G).
Regarding claim 6, Chang Defense discloses that such liquid metallic core-shell particle is an undercooled liquid metallic core-shell particle (slides 6-8). Undercooled liquids by definition remain liquid at temperatures below the liquid’s melting point; therefore, in identifying particles as undercooled liquid metallic core-shell particles (slides 6-8), Chang Defense discloses that the particles have a temperature that is below a melting point of the liquid metallic core.
Regarding claim 16, Chang Defense discloses embodiments wherein the ultimately formed wire is a mixed component nanowire (slide 32) and discloses that regions of the nanowires are chemically distinct (slide 32), thereby disclosing local, compositional variability in the nanowires. Chang Defense does not disclose that the compositional variability manifests as a concentration and/or compositional gradient along a longitudinal direction along the wire.
Nylund teaches method of forming nanowires (page 1017 right column, page 1018 left column). Nylund forms nanowires by disposing inorganic feed material onto a substrate (page 1018 left column). Nylund teaches that the nanowires are compositionally graded along the length of the wires (page 1017 right column axially graded heterostructures through highly controlled in situ modulation of the chemical composition along the nanowire axis). Nylund forms the compositionally graded nanowires by selectively applying feed material (page 1018 left column, page 1020 right column). Nylund teaches that nanowires with asymmetric, sawtooth shaped composition profiles behave as near-ideal majority carrier diodes, in which the height and shape of the current rectifying potential is directly encoded in the quasi-graded chemical composition of the nanowire (page 1020 left column). Nylund suggests that arrangements of such compositionally graded nanowires could be useful as a photo diode (page 1020 right column).
Both Nylund and Chang Defense teach manufacturing compositionally variable nanowires.
Chang Defense differs from claim 16 in that Chang does not disclose that the compositionally variable nanowires have a composition or concentration gradient. In view of Nylund, one of ordinary skill in the art would know that adjusting feed material application can yield nanowires having a composition gradient (compositionally graded) (page 1018 left column, page 1020 right column). It would have been obvious for one of ordinary skill in the art to produce nanowires having a composition gradient by the method disclosed by Chang relied upon above. Such compositionally graded nanowires would be predicted to serve as effective carrier diodes suitable for photocurrent applications as taught by Nylund (page 1020 left and right columns). See MPEP 2143(I)(A, G).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang Defense (CHANG, JULIA J., "Coupling Metastability of Undercooled Liquid Metal Particles with Self- driven Process in Autonomous Fabrication Materials", Julia J. Chang in partial fulfillment of the requirements for the degree of DOCTOR OF PHILOSOPHY; Major: Materials Science & Engineering Program of Study Committee: Martin M. Thuo, Major Professor; Xiaoli Tan; Shan Jiang; Wenyu Huang; Shan Hu; (10/30/2020)) as applied to claim 1 above, and further in view of Haam (US 20100008854). Haam is cited in prior office action(s).
Chang Defense discloses that the activation agent comprises a solvent and an acid, wherein the acid comprises acetic acid (slide 30), but Chang Defense does not disclose that the activation agent comprises one of the activation agent constituents recited in claim 22.
Haam teaches a method for synthesizing metal-containing nanostructures [0002-03]. Haam teaches dispersing surfactant-stabilized metal nanoparticles in a solvent [0026], [0053]. Haam teaches that a precursor is reacted in the solvent to form controlled nanoparticles [0055]. Haam teaches that solvents may include an ether solvent, a heterocyclic solvent, an aromatic solvent, a sulfoxide solvent, an amide solvent, an alcoholic solvent, a hydrocarbon solvent, and water [0055].
Both Haam and Chang Defense teach reacting nanostructure precursors with a precursor to form a nanostructure.
It would have been obvious for one of ordinary skill in the art to use an amide solvent as a solvent in the activation agent in the process disclosed by Chang Defense because Haam teaches that an amide solvent, and alcohol solvent, and water are effective for reactants for forming nanostructures and dispersing metal nanostructures [0026], [0053], [0055], and Chang Defense discloses water or acetone as a solvent for that activation agent (slide 30). Extra slide 41 of Chang Defense further discloses ethanol as a solvent for the acetic acid activation agent (AcOH/EtOH) Note that the constituent of claim 22 as worded may be met by a solvent.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chang Defense (CHANG, JULIA J., "Coupling Metastability of Undercooled Liquid Metal Particles with Self- driven Process in Autonomous Fabrication Materials", Julia J. Chang in partial fulfillment of the requirements for the degree of DOCTOR OF PHILOSOPHY; Major: Materials Science & Engineering Program of Study Committee: Martin M. Thuo, Major Professor; Xiaoli Tan; Shan Jiang; Wenyu Huang; Shan Hu; (10/30/2020)) as applied to claim 1 above, and further in view of Chen (WO2016085410A1). Chen is cited in prior office action(s).
Chang Defense discloses that the activation agent comprises a solvent and an acid, wherein the acid comprises acetic acid (slide 30), but Chang Defense does not disclose that the activation agent comprises an alkaline etching agent.
Chen teaches a method of interconnecting metallic nanostructures (abstract, [0009]). Chen teaches dispersing lower-dimension nanostructures in a solution and reacting the structures to connect [0027-28]. Chen teaches that the reaction may comprise an etching and that the etching may be acidic, alkaline, or a metal salt (abstract, [0038-39], [0061-62]). Chen teaches nanoparticles as low-dimension nanostructures to be connected [0025], [0030].
Both Chang Defense and Chen teach forming a structure by connecting nanoparticles. Chang exemplifies an acidic activating agent (slide 30).
Chang Defense teaches every limitation of claim 24 but discloses an acidic activation agent (slide 30). In view of Chen, one of ordinary skill in the art would have known that both acidic and alkaline agents are effective for etching nanostructures [0038-39], [0061-62] to form larger structures (abstract, [0009]). In view of Chen ([0038-39], [0061-62], abstract), one of ordinary skill in the art would have regarded an alkaline activation agent as an obvious substitution of etching conditions known to one skilled in the art to provide effective etching conditions.
Response to Arguments
Applicant's arguments filed June 2, 2025 and August 12, 2025 have been fully considered but they are not persuasive.
Applicant acknowledges every single prior art rejection set forth in final rejection mailed May 21,2025. Applicant’s arguments are entirely dependent on disqualifying Chang (CHANG, JULIA J., "Coupling metastability of undercooled liquid metal particles with self-driven process in autonomous fabrication of functional materials", Thesis, Materials Science and Engineering, Iowa State University, Ames, IA, (2020)) as prior art. Applicant’s arguments in view of declaration evidence presented June 2, 2025 and August 12, 2025 is persuasive in disqualifying Dr. Chang’s dissertation as prior art; however, declaration evidence and arguments suggest that the presentation which Dr. Chang gave in defense of her dissertation on October 30, 2020 is a disclosure available to the public.
Arguments and declaration filed August 12, 2025 indicate that there was a public announcement of the defense prior to the presentation and that a likely unafiliated member of the public (Dr. Chang’s sister) attended the presentation. The information presented in the defense, when viewed as a public disclosure and shown in the slides is still sufficient to anticipate/render obvious several claims, even without the full textual explication of the dissertation.
Allowable Subject Matter
Claim 23 remains 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.
As the subject matter disclosed in Chang Defense (CHANG, JULIA J., "Coupling Metastability of Undercooled Liquid Metal Particles with Self- driven Process in Autonomous Fabrication Materials", Julia J. Chang in partial fulfillment of the requirements for the degree of DOCTOR OF PHILOSOPHY; Major: Materials Science & Engineering Program of Study Committee: Martin M. Thuo, Major Professor; Xiaoli Tan; Shan Jiang; Wenyu Huang; Shan Hu; (10/30/2020)) was also disclosed in the Chang dissertation (CHANG, JULIA J., "Coupling metastability of undercooled liquid metal particles with self-driven process in autonomous fabrication of functional materials", Thesis, Materials Science and Engineering, Iowa State University, Ames, IA, (2020)), on which prior office action(s) relied, and present claim 23 recites the same europium limitation(s) which defined over Chang in view of secondary references, present claim 23 defines over the prior art for the reasons set forth in prior office action(s).
Conclusion
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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738