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 Arguments
In response to the amendments filed 11/28/2025, the rejection under 112(b) is withdrawn.
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
Applicant argues that the cited references do not teach the amended portions of claim 1 because Hong does not show removal of the replication material in Figures 2/20. Examiner disagrees and further clarifies the patterning layer 200, sometimes referred to in the art as a residual layer, is removed and is not present at all after the sintering step as shown in Figure 2. The pattern 210 itself, as noted by Applicant, does remain after sintering.
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.
Claims 1, 6, 8-10, 38-39, and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong (US 2018/0045856, made of record on the IDS dated 5/31/2023.)
Regarding claim 1, Hong meets the claimed, A method comprising: pressing a face of a stamp into a replication material disposed on a substrate, to cause the replication material to have a predetermined characteristic, (Hong [0093] describes pressing a stamp 50 into a nanoparticle solution 20 on a substrate 100 to form a pattern 210) wherein a plurality of nanoparticles are embedded in the replication material, (Hong [0093] nanoparticle solution 20) the plurality of nanoparticles having a size distribution with a first local maximum at a first diameter and a second local maximum at a second, different diameter, and wherein the plurality of nanoparticles includes a first subset of nanoparticles having diameters closer to the first diameter than to the second diameter and a second subset of nanoparticles having diameters closer to the second diameter than to the first diameter; (Hong [0081] describes a first nanoparticle 310 having one size and a different second nanoparticle 320 having a different size) curing the replication material; and removing the face of the stamp from contact with the replication material (Hong [0093] describes curing and removing) and removing at least some of the replication material by applying a treatment to the replication material, (Hong Figure 20 showing the resist material before/during the sintering vs Hong Figure 2 showing less resist material afterwards, see the entire patterning layer 200 is removed) wherein applying the treatment causes densification of the plurality of nanoparticles, wherein the treatment comprises, heating, laser exposure, or chemical processing (Hong [0098] describes sintering (heating) the resulting pattern layer and nanoparticles and that the sintering results in nanoparticles being in contact with one another or electrically coupled together.)
Regarding claim 6, Hong meets the claimed, The method of claim 1, wherein applying the treatment to the replication material comprises sintering the nanoparticles to one another, wherein the sintered nanoparticles form one or more optical metastructures (Hong [0098] describes sintering the resulting pattern layer and nanoparticles.)
Regarding claim 8, Hong meets the claimed, The method of claim 1, wherein the predetermined characteristic comprises a surface structure of the replication material (Hong [0093] discloses a pattern 210.)
Regarding claim 9, Hong meets the claimed, The method of claim 8, wherein the surface structure provides an optical functionality (Hong [0098] discloses the resulting metastructure has optical properties such as a refractive index.)
Regarding claim 10, Hong meets the claimed, The method of claim 1, wherein the predetermined characteristic comprises an optical metastructure functionality (Hong [0098] discloses the metastructure resulting from the formed pattern has optical properties such as a refractive index.)
Regarding claim 38, Hong meets the claimed, The method of claim 1, wherein applying the treatment to the replication material comprises applying a first heat treatment to the replication material to burn off the at least some of the replication material (Hong Figure 20 showing the resist material before/during the sintering vs Hong Figure 2 showing less resist material afterwards, see the entire patterning layer 200 is removed.)
Regarding claim 39, Hong meets the claimed, The method of claim 38, wherein applying the first heat treatment simultaneously sinters the plurality of nanoparticles (Hong [0098] describes sintering (heating) the resulting pattern layer and nanoparticles and that the sintering results in nanoparticles being in contact with one another or electrically coupled together.)
Regarding claim 42, Hong meets the claimed, The method of claim 1, wherein applying the treatment completely removes the replication material (Hong Figure 20 showing the resist material before/during the sintering vs Hong Figure 2 showing the entire layer 210 is removed.)
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over modified Hong (US 2018/0045856.)
Regarding claim 2, the embodiment cited in Hong [0093] discloses the first and second nanoparticles may be different but does not explicitly disclose their refractive index. Another embodiment of Hong does meet the claimed, The method of claim 1, wherein nanoparticles in the first subset have a first refractive index, and wherein nanoparticles in the second subset have a second refractive index different from the first refractive index (Hong [0095] discloses the nanoparticles 310/320 may have different refractive indices.)
It would have been obvious to a person of ordinary skill in the art before the filing date to modify the nanoparticles described in the earlier embodiment of Hong to be different particles with different refractive indices in order to impart a negative refractive index on the resulting metastructure, see Hong [0053] and [0095].
Claims 3-5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hong modified by Garito (US 2003/0180029, made of record on the IDS dated 5/13/2023.)
Regarding claim 3, Hong does not describe the particles as having a negative thermal expansion coefficient (CTE) and does not meet the claimed, The method of claim 1, wherein at least some of the plurality of nanoparticles have a negative thermal expansion coefficient.
Garito also describes an optical component containing nanoparticles and the method of making it and meets the claimed, The method of claim 1, wherein at least some of the plurality of nanoparticles have a negative thermal expansion coefficient (Garito [0176]-[0177] describe including nanoparticles with a negative CTE within the matrix material.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the nanoparticles of Hong with the negative CTE particles of Garito in order to impart the ability to contract under heat which lowers the overall CTE of the composite and can prevent stress between two materials of different expansion rates, see Garito [0175].
Regarding claim 4, Garito further meets the claimed, The method of claim 3, wherein the nanoparticles having the negative thermal expansion coefficient are exclusively in the first subset or the second subset of the plurality of nanoparticles (Garito [0177] describes the negative CTE particles are combined with other positive CTE particles and the negative CTE particles are larger, i.e., belonging to a different subset, than the positive CTE particles.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the nanoparticles and negative CTE particles of modified Hong with the negative CTE particles in order to modify the amounts of the materials in the matrix and modify the overall expansion coefficient, see Garito [0177].
Regarding claim 5, Hong does not disclose the size difference and does not meet the claimed, The method of claim 1, wherein the first diameter and the second diameter are different by at least about 20 nm.
Garito does not explicitly meet the claimed, The method of claim 1, wherein the first diameter and the second diameter are different by at least about 20 nm, however, Garito [0177] discloses that one group of particles containing a negative CTE particle may be sized larger than the other and the sizes and thereby amounts of the larger particle can be controlled so as to maintain the overall CTE of the composite and prevent stress, see Garito [0175]-[0177].
Garito discloses the size of the particles affects the amount of material which thereby affects the CTE of the composite material. It would have been obvious to a person of ordinary skill in the art before the filing date to optimize the size of the particles and the difference between the particles’ sizes in order to optimize the CTE to avoid stress and cracking see Garito [0175]-[0177]. MPEP §2144.05(II)(B).
Regarding claim 12, Garito further meets the claimed, The method of claim 3, wherein at least some of the plurality of nanoparticles having a negative thermal expansion coefficient comprise an AM208 material wherein A is a first element and M is a second element that is different from the first element (Garito [0179] describes ZrW2O8 and ZrMo2O8 among others.)
The courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to further modify Hong such that the negative CTE material disclosed in Garito includes ZrW2O8 or ZrMo2O8 because they are known materials having a negative CTE, see Garito [0179] and would have a reasonable expectation of success.
Claims 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Niklas (US 2020/0388904.)
Regarding claim 40, Hong only describes one heating step and does not meet the claimed, The method of claim 38, wherein applying the treatment to the replication material comprises applying a second heat treatment to the replication material to sinter the plurality of nanoparticles.
Analogous in the field of nanoparticle structure formation, Niklas also seeks to make a conductive component using nanoparticles, Niklas meets the claimed, The method of claim 38, wherein applying the treatment to the replication material comprises applying a second heat treatment to the replication material to sinter the plurality of nanoparticles (Niklas [0042]-[0043] describe printing a structure containing nanoparticles on a substrate, a first heating step to dry ink, and a second heating step for sintering.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the one step heating process of Hong for the two step process described in Niklas in order to first dry the ink to avoid smudging or displacement, see Niklas [0015] and to second sinter for electrical conductivity, see Niklas [0006].
Regarding claim 42, Niklas further meets the claimed, The method of claim 40, wherein the second heat treatment occurs at a temperature that is higher than a temperature of the first heat treatment (Niklas [0026] and [0042]-[0043] describes the drying occurs at a temperature below the sintering temperature.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the one step heating process of Hong for the two step process wherein the first heating step has a lower temperature than the second as described in Niklas in order to first dry the ink to avoid smudging or displacement, see Niklas [0015].
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.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744