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 .
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1.114, and the fee set forth in 37 CFR1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/05/26 has been entered.
Claims 19-24 withdrawn from further consideration pursuant to 37 CFR 1.142(b)
as being drawn to a nonelected Group II, there being no allowable generic or linking
claim. Election was made without traverse in the reply filed on 07/15/24.
Applicant's election of Group I in the reply filed on 07/15/24 is acknowledged. Because
applicant did not distinctly and specifically point out the supposed errors in the
restriction requirement, the election has been treated as an election without traverse
(MPEP § 818.01(a)).
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.
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 1-2, 5-6, 9-11, 15, 17-18, and 25-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support in disclosure indicating nanoparticles adhere to the substrate at atmospheric pressure. The support is only for laser ablation system at atmospheric pressure.
Claims 1-2, 5-6, 9-11, 15, 17-18, and 25-16 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. It is not clear what the applicant means by nanoparticles adhere to the substrate at atmospheric pressure, it is not clear whether or not the pressure of the chamber is one atmosphere or the chamber is in atmospheric pressure or not highly vacuumed (there is atmosphere or gas in chamber). For examination purposes it is considered as nanoparticles adhere to the substrate is in atmospheric pressure.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 6, 9-11, 17-18 are rejected under 35 U.S.C. 103 as being
unpatented by Hatono Hironori et al (Japanese Patent: 2010/133019, here after 019).
Claims 1 and 9 are rejected. 019 teaches a method of mask-free printing of dry
nanoparticles [Technical-Field] the method comprising generating a dry nanoparticle
stream from a feedstock material (107) in near atmospheric gas flow (100 kPa) [page 4
paragraph 1 last sentence] using a laser ablation system using a single laser beam (112) at atmospheric pressure [fig. 1], the dry nanoparticle stream uncontaminated by the fluidic carrier medium (argon or helium gas 101 do not make contamination), wherein the dry nanoparticles uncontaminated by a fluidic carrier medium and unsintered are directed to a substrate (115) through a nozzle (106) by the gas flow (102) in a dry state and adhere to the substrate in a mask-free print [fig. 1; and wherein the particles are printed on the substrate as a coating [page 5 first paragraph]. Although 019 does not teach generating a dry nanoparticle stream from a feedstock material in atmospheric gas flow, however teaches pressure is 100 kPa (0.986 atm). A prima facie case of obviousness exists where the claimed ranges and prior art do not overlap but are close enough that one in ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 f.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of 019 where the nanoparticle stream from a feedstock material is in atmospheric gas flow, because one ordinary skill in the art would have expected them to have the same properties. Although 019 does not teach the coating(film) is porous, however teaches sufficient kinetic energy form a relatively dense structure (not theorical density) [page 7 paragraph 4], which means there is some porosity in the structure. 019 also teaches the laser ablation(110a) is performed before the nanoparticles enter the nozzle (106) [fig. 1]. 019 teaches the nanoparticles adhere to the substrate at an atmospheric(gas) pressure in the film forming chamber [page 4 paragraph 1 last sentence].
Claim 2 is rejected. 019 teaches heating the atmospheric gas flow prior to
printing on the substrate (with heater 114) [fig. 1].
Claims 6 and 18 are rejected. 019 teaches the feedstock(target) is a ceramic
[page 4 paragraph 5].
Claim 10 is rejected. Although 019 does not teach the distance between
the nozzle tip and substrate is 0.1 mm to 15 mm. However, 019 teaches the
particles ejected from the nozzle with high speed to collide to substrate with high
kinetic energy [page 5 paragraph 1]. Therefor the distance between the nozzle
and substrate is a result effective variable and has to be optimized. If the
distance between the nozzle and substrate is very high, the particles do not have
enough energy to attach to the substrate surface, if the distance is very small, the
particles with very high energy may cause damage to substrate. Therefore, it
would have been obvious to one of ordinary skill in the art at the time of the
invention was made to have a method of 019 where the distance between
the nozzle tip and substrate is 0.1 mm to 15 mm, because it is a result effective
variable and has to be optimized.
Claim 11 is rejected. Although 019 does not teach velocity of the gas
leaving the nozzle is 0.05 m/s to 1000 m/s. However, 019 teaches the particles
ejected from the nozzle with high speed(velocity) to collide to substrate with high
kinetic energy [page 5 paragraph 1]. Therefor the velocity of the gas leaving the
nozzle is a result effective variable and has to be optimized. If the velocity of the
gas leaving the nozzle is very low, the particles do not have enough energy to
attach to the substrate surface, if the velocity is very high, the particles with very
high energy may cause damage to substrate. Therefore, it would have been
obvious to one of ordinary skill in the art at the time of the invention was made to
have a method of 019 where the velocity of the gas leaving the nozzle is 0.05
m/s to 1000 m/s, because it is a result effective variable and has to be optimized.
Claim 17 is rejected as 019 teaches the substrate is glass [page 8 line 6].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over
Hatono Hironori et al (Japanese Patent: 2010/133019, here after 019), further in
view of Bing Liu et al (U. S. Patent Application: 2008/0006524, here after 524).
Claim 15 is rejected. 019 teaches using Nd:YAG laser for laser ablation of
oxides [page 8 first paragraph], and does not teach pulse duration of the laser
beam. 524 teaches a method of laser ablation for making nanoparticles of oxides
where the laser is Nd:YAG with pulse duration of the laser beam is in a range of
a few femtoseconds to a few tens of picoseconds [abstract, 0001, 0005].
Therefore, it would have been obvious to one of ordinary skill in the art at the
time of the invention was made to have a method of 019 laser pulse duration is
based on 524, because it is suitable laser pulse duration for laser ablation of
oxides.
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over
Hatono Hironori et al (Japanese Patent: 2010/133019, here after 019), further in view of
Michael J. Renn et al (U. S. Patent Application: 2004/0197493, here after 493).
Claims 25-26 are rejected. 019 does not teach sintering the powder after printing.
493 teaches a method of direct writing particles where after printing the (oxide)
particles, particles sintered thermally or by laser beam to form dense layer [0105].
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the
invention was made to have a method of 019 and sinter the particles after deposition on
substrate, because it helps further densification of the layer.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hatono
Hironori et al (Japanese Patent: 2010/133019, here after 019), further in view of Michael J. Renn et al (U. S. Patent Application: 2004/0197493, here after 493), and Michael J. Renn et al (U. S. Patent Application: 2005/0129383, here after 383).
019 does not teach sintering the powder after printing. 493 teaches a method of
direct writing particles where after printing the (oxide) particles, particles sintered
thermally to form dense layer [0105]. Therefore, it would have been obvious to one of
ordinary skill in the art at the time of the invention was made to have a method of 019
and sinter the particles after deposition on substrate, because it helps further
densification of the layer. They do not teach the sintering by heating in furnace. 383
teaches heating in furnace to sinter the particles by laser beam or in furnace [0072].
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the
invention was made to have a method of 019, and 493 and sinter the particles after
deposition on substrate in furnace, because it is alternative way for thermally sintering
the particles.
Response to Arguments
Applicant's arguments filed 05/05/26 have been fully considered but they are not persuasive. The applicant argues that the reference does not teach the nanoparticle steam is generated at atmospheric pressure. The examiner disagrees, nanoparticles(110a) generate in chamber 103 which is in near atmospheric pressure (100 kpa) [fig. 1], the vacuum pump system is connected to film forming chamber (105). Furthermore, Hironori teaches the film forming chamber is in an atmospheric pressure [page 4 paragraph 1 last sentence].
The applicant argument regrading claim 10 rejection is not persuasive, Hironori teaches the particles ejected from the nozzle with high speed to collide to substrate with high
kinetic energy which can justify the distance of the nozzle from the substrate as discussed above.
Same above argument is valid for applicant regarding claim 11, as kinetic energy is related to velocity and it can justify velocity of the gas leaving the nozzle.
The applicant argument regarding claim 15 rejection is not valid, Liu teaches suitable laser for of laser ablation for making nanoparticles of oxides which in fact can be used for laser ablation of Hironori’ system.
The applicant argument regarding claims 25-26 rejection is not valid, Renn
only teaches using laser beam for sintering particles after printing
the applicant argument regrading claim 5 is not valid as Renn teaches heating and sintering with laser or in furnace after printing step (see claim rejection above).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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, Gordon Baldwin can be reached at 5712725166. 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.
/TABASSOM TADAYYON ESLAMI/Primary Examiner, Art Unit 1718
Prosecution Insights