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 .
Claim Interpretation
The “low dimensional nanostructures” recited in at least claims 1, 7-8, 16, and 20 are interpreted in light of p. 6, ll. 3-22 of the specification as entities such as nanoparticles (NPs), quantum-dots (QDs), nano-dots (NDs), nanowires or nanolines (NWs or NLs).
The term “self-assembled” as recited in claim 1 is interpreted in light of pp. 5-6 of applicants’ June 20, 2025, reply as meaning that the nanostructures spontaneously exhibit some degree of self-organization. This means that there is at least a driving force which causes some degree of organization between at least some individual nanostructures which causes them to become more aligned in some way.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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, 7, 15-16, and 18-21 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.
As amended, claim 1 recites, inter alia, that the over pressure is controlled using “one or more gases selected from the group consisting of O2, N2, and Ar, at a partial pressure ranging from 0 to 10 mTorr.” However, the specification as originally filed does not appear to teach or suggest that N2 and Ar are also controlled to a partial pressure range of from 0 to 10 mTorr. At most, ¶[0085] and ¶[0193] of the published application teach the use of an O2 pressure of from 0 to 10 mTorr. However, there is no specific teaching or suggestion for the pressure ranges utilized when the gas is N2 or Ar. Dependent claims 7, 15-16, and 18-21 are similarly rejected due to their dependence on claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 15, and 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over a publication to Verma, et al. entitled “Influence of process parameters on surface plasmon resonance characteristics of densely packed gold nanoparticle films grown by pulsed laser deposition,” Applied Surface Science, Vol. 258, pp. 4898-4905 (2012) (hereinafter “Verma”) in view of U.S. Patent Appl. Publ. No. 2017/0145589 to Kim, et al. (“Kim”) and further in view of a publication to K. Hojrup-Hansen, et al. entitled “Nucleation and growth kinetics of gold nanoparticles on MgO(100) studied by UHV-AFM,” Appl. Surf. Sci., Vol. 226, pp. 167-72 (2004) (“Hansen”) and still further in view of U.S. Patent Appl. Publ. No. 2013/0168233 to Eom, et al. (“Eom”).
Regarding claim 1, Verma teaches a method of fabricating low dimensional nanostructures on a growth substrate (see, e.g., the Abstract, Figs. 1-7, and entire reference which teach a method of forming gold nanoparticles on a sapphire substrate), the method comprising:
using pulsed laser deposition (PLD) in a vacuum chamber to grow low dimensional nanostructures (see, e.g., Figs.4-5, Tables 1-2, and the Experimental section at p. 4899 which teach using pulsed laser deposition (PLD) to deposit gold (Au) nanoparticles by irradiating a Au target and generating a plasma plume at a base pressure of about 3×10-6 mbar) comprising:
performing PLD at the second temperature for growing low dimensional nanostructures; and cooling the growth substrate to room temperature (see, e.g., Figs.4-5, Tables 1-2, and the Experimental section at p. 4899 which teach depositing Au nanoparticles by PLD at room temperature to 300 °C; moreover, the deposited Au nanoparticles are necessarily cooled to room temperature after deposition is complete),
wherein the step of growing the low dimensional nanostructures comprising: controlling shape and crystal orientation of the low dimensional nanostructures by choosing a surface orientation of the growth substrate (see, e.g., the Experimental section at p. 4899 which teaches that a sapphire substrate having a predetermined surface orientation is chosen as the growth substrate which, as shown specifically in Figs. 4-5, necessarily controls the shape and crystal orientation of the Au nanoparticles);
controlling size of the low dimensional nanostructures by choosing the second temperature, wherein the second temperature is chosen to be high enough to promote the strain relief mechanism and low enough to avoid desorption from the growth substrate (see, e.g., Figs. 4-5, Table 1, and the Experimental section at p. 4899 which teach that deposition is performed at room temperature up to 300 °C which, as shown specifically in Figs. 4-5, necessarily controls the size of the Au nanoparticles; moreover, the temperature of 300 °C avoids desorption of the Au nanoparticles from the surface, but is still high enough to promote strain relief between Au and the sapphire substrate; furthermore, since the combination of Verma, Kim, and Hansen (see infra) teach each and every step of the claimed process it must necessarily yield the same results); and
using overpressure conditions during the PLD to control the shape and crystal orientation of the low dimensional nanostructures, wherein the over pressure conditions comprise introducing one or more gases selected from the group consisting of O2, N2, and Ar, at a partial pressure ranging from 0 to 10 mTorr (see, e.g., Table 1 and the Experiments section on p. 4899 which teach that PLD is performed at a base pressure of 3×10-6 mbar (i.e., 2.25×10-6 Torr) in the absence of an oxygen, nitrogen, or argon overpressure which is considered as being substantially equal to an O2, N2, or Ar partial pressure of 0 mTorr (i.e., 0×10-3 Torr) which therefore necessarily involves using the over pressure as one of the growth conditions used to control the shape and crystal orientation of the nanostructures); and
wherein the method enables real-time control of a growth of the low dimensional nanostructures (see, e.g., Figs.4-5, Tables 1-2, and the Experimental section at p. 4899 which teach that the laser fluence, total number of pulses, and growth temperature may be controlled in real time during film growth to control growth of the Au nanoparticles), and
wherein the low dimensional nanostructures are self-assembled gold nanostructures formed as the strain relief mechanism promoted by a similarity of crystal structure 2-dimensional symmetry between the growth substrate and the low dimensional nanostructures to be grown and a lattice mismatch between the growth substrate and the low dimensional nanostructures to be grown (see, e.g., Figs. 4(b) & 5(b) and pp. 4901-03 of the Results and Discussion section which teach that the Au nanoparticles possess faceted boundaries with preferential alignment and, hence, self-assembly in one or more directions; moreover, since there is a lattice mismatch between the sapphire substrate and Au nanoparticles the Au particles necessarily are strained with the faceted structure of the Au nanoparticles necessarily occurring as a result of strain relief with increasing thickness due to the differing lattice parameters and crystal structures of Au and sapphire).
Verma does not teach annealing a growth substrate to a first temperature and cooling the growth substrate to a second temperature lower than the first temperature. However, in Figs. 1-2 and ¶¶[0054]-[0061] as well as elsewhere throughout the entire reference Kim teaches a method of depositing an epitaxial layer onto a sapphire substrate by a physical vapor deposition process such as sputtering. In ¶[0054] and ¶[0060] Kim specifically teaches that prior to film growth it is desirable to clean the sapphire substrate by heating to an elevated temperature of up to 600 °C for a predetermined duration in order to remove any surface contamination including the presence of volatile contaminants via desorption prior to film growth. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Kim and would be motivated to first heat the sapphire substrate utilized in the method of Verma to a first temperature such as 600 °C prior to cooling to the growth temperature of 300 °C in order to desorb any contaminants present on the surface and thereby provide a cleaner surface for the growth of higher quality gold nanoparticles thereupon.
Vera and Kim do not teach choosing the second temperature from a range of from 500 to 750 °C. However, in Figs. 1-3 as well as the Experimental and Results section at pp. 167-69 Hansen teaches an analogous method of depositing Au nanoparticles onto a crystalline substrate such as MgO by a PVD growth process such as molecular beam epitaxy. Figures 1(a)-(c) and 3(a)-(c) show that the shape, size, orientation, and spacing of the Au nanoparticles formed on the MgO substrate varies with and, hence, can be controlled by the total deposition time and temperature with Figs. 1(a)-(c), 2, & 3(c) and the Results section at pp. 168-169 specifically showing that a deposition temperature of 600 °C leads to the formation of gold nanoparticles which coalesce and self-align along step edges with increasing thickness. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hansen and would be motivated to utilize a higher growth temperature such as 600 °C, which is within the claimed range of 500 to 750 °C, during deposition of the gold nanoparticles in the method of Verma, Kim, and Eom in order to provide more thermal energy to the surface and thereby promote greater coalescence and self-alignment of the gold nanoparticles so that the desired size and arrangement may be obtained.
Verma, Kim, and Hansen do not explicitly teach that the PLD is in an ultrahigh vacuum chamber with a base pressure of 1×10-8 Torr. However, in at least Fig. 1 and ¶¶[0020]-[0027] as well as elsewhere throughout the entire reference Eom teaches an analogous embodiment of a PLD chamber for the heteroepitaxial deposition of thin films. In ¶[0021] Eom specifically teaches that the PLD vacuum chamber (102) preferably is an ultrahigh vacuum chamber capable of maintaining a base pressure of 2×10-8 Torr or lower. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Eom and would be motivated to configure the PLD system of Verma with an ultrahigh vacuum chamber having a base pressure of at least 1×10-8 Torr in order to facilitate the use of a growth environment with lower impurity levels. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 15, Verma, Hansen, and Eom do not explicitly teach that the first temperature is 900°C. However, as noted supra with respect to the rejection of claim 1, in Figs. 1-2 and ¶¶[0054]-[0061] as well as elsewhere throughout the entire reference Kim teaches a method of depositing an epitaxial layer onto a sapphire substrate by a physical vapor deposition process such as sputtering. In ¶[0054] and ¶[0060] Kim specifically teaches that prior to film growth it is desirable to clean the sapphire substrate by heating to an elevated temperature ranging from 400 to 600 °C for a predetermined duration in order to remove any surface contamination including the presence of volatile contaminants via desorption prior to film growth. In this regard, the annealing temperature is considered to be a result-effective variable, i.e., a variable which achieves a recognized result. See, e.g., In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also MPEP 2144.05(II)(B). It therefore would have been within the capabilities of a person of ordinary skill in the art prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal annealing temperature, including up to the claimed temperature of about 900 °C, necessary to desorb contaminants and obtain the desired surface structure and cleanliness for the growth of higher quality gold nanoparticles thereupon.
Regarding claim 18, Verma teaches that the PLD is performed with a pulsed frequency in a range from 1 - 10 Hz, a laser energy in a range of 1 - 5 Jcm-2, and a number of pulses from about 0 - 10,000 pulses (see, e.g., Table 1 and the Experiments section on p. 4899 which teach that PLD is performed with a 10 Hz repetition rate, a laser energy of 2.5 or 4 J/cm2, and 500 to 7,500 pulses).
Regarding claim 19, Verma teaches using a Nd:YAG laser with an output wavelength of 266nm or a KrF Excimer laser with an output wavelength of 248 nm (see, e.g., the Experimental section on p. 4899 which teach the ues of a KrF excimer laser with a wavelength of 248 nm).
Regarding claim 20, Verma teaches that the low dimensional nanostructures are Au quantum dots (see, e.g., the Experimental section on p. 4899 and Figs. 4-5 which teach that Au quantum dots are formed by PLD).
Regarding claim 21, Verma, Kim, and Eom do not teach that the growth substrate is MgO. However, in Figs. 1-3 as well as the Experimental and Results section at pp. 167-69 Hansen teaches an analogous method of depositing Au nanoparticles onto a crystalline substrate such as MgO by a PVD growth process such as molecular beam epitaxy. Figures 1(a)-(c) and 3(a)-(c) show that the shape, size, orientation, and spacing of the Au nanoparticles formed on the MgO substrate varies with and, hence, can be controlled by the total deposition time and temperature. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hansen and would readily recognize that MgO may be utilized as a substrate in place of sapphire in the method of Verma, Kim, and Eom since this would involve nothing more than the use of a known material according to its intended use. Moreover, since the MgO surface has crystal structure and lattice spacing which is different than sapphire, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to utilize a MgO substrate in the method of Verma, Kim, and Eom to obtain the desired shape, size, orientation, and spacing of the deposited Au nanoparticles.
Claims 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verma in view of Kim and further in view of Hansen and Eom and still further in view of U.S. Patent Appl. Publ. No. 2004/0079278 to Kamins, et al. (“Kamins”).
Regarding claim 7, Verma, Kim, Hansen, and Eom do not teach transferring the low dimensional nanostructure from the growth substrate to a secondary substrate. However, in Figs. 1a-c and ¶¶[0033]-[0038] Kamins teaches a method of transferring a catalyst material (14) having nanoscale dimensions from a mold (10) to a supporting substrate (16) by, for example, making physical contact or by energetic or chemical attraction so that further processing such as the formation of nanowires or nanorods may be performed thereupon. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to transfer the Au nanoparticles formed in the method of Verma, Kim, and Hansen to a supporting substrate having the desired materials properties such that further processing steps as part of, for example, the formation of electronic devices may be performed.
Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Verma in view of Kim and further in view of Hansen and Eom and still further in view of U.S. Patent Appl. Publ. No. 2007/0243328 to Liu, et al. (“Liu”).
Regarding claim 16, Verma, Kim, Hansen, and Eom do not teach cleaning a target for the PLD prior to performing the PLD at the second temperature for growing the low dimensional nanostructures. However, in Fig. 1 and ¶¶[0034]-[0044] Liu teaches an analogous method of depositing an epitaxial thin film onto a substate by pulsed laser deposition (PLD). In ¶[0041] Liu specifically teaches that the target surface is usually pre-ablated for at least 20 min prior to film deposition in order to clean the target surface by removing surface contaminants. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Liu and would be motivated to clean the Au target prior to performing PLD growth in the method of Verma in order to remove surface contaminants present thereupon.
Response to Arguments
Applicants’ arguments filed October 27, 2025, have been fully considered, but they are not persuasive and are moot in view of the new grounds of rejection set forth in this Office Action.
Applicants initially argue that there is no motivation to combine the teachings of Verma and Kim since Verma relates to the formation of plasmonic gold nanoparticle films with controlled nanoparticle morphology while Kim relates to the growth of epitaxial thin films. See applicants’ 10/27/2025 reply, pp. 5-6. This argument is not found persuasive since both Verma and Kim utilize related deposition techniques since they both utilize a physical vapor deposition technique such as PLD or sputtering. In this regard, the microstructure and materials properties of the resulting film in both PLD and sputtering is heavily influenced by the quality of the starting surface. In ¶[0054] and ¶[0060] Kim teaches the desirability of cleaning the substrate by heating to an elevated temperature of up to 600 °C for a predetermined duration in order to remove surface contamination via desorption from the surface. Thus, a person of ordinary skill in the art would look to the teachings of Kim and would be motivated to heat the substrate to a first temperature prior to performing film growth in the method of Vera in order to promote desorption of contaminants from the surface such that a cleaner surface for the growth of higher quality gold nanoparticles is obtained.
Applicants then argue that Vera and Kim do not teach the second temperature of 550 to 750 °C as recited in claim 1. Id. at p. 6. As an initial matter it is noted that claim 1 appears to recite a lower temperature limit of 500 °C rather than 550 °C as argued by applicants. Second, applicants’ argument is moot in view of the introduction of Hansen to teach Au nanoparticle deposition at the newly introduced temperature range as recited in amended claim 1.
Applicants subsequently argue that Agarwal does not teach or suggest a partial pressure of 0 to 10 mTorr (0 to 1.3 Pa) as this is considerably below the Ar pressure range of 10 to 100 Pa disclosed in Agarwal and that Eom does not remedy this deficiency. Id. at pp. 6-8. Applicants’ argument is noted, but is moot in view of new grounds of rejection set forth in this rejection which was necessitated by applicants’ claim amendment. In this case Verma is relied upon to teach the use of an oxygen, nitrogen, or argon partial pressure of 0 mTorr since Verma utilizes a base pressure of 3×10-6 mbar (i.e., 2.25×10-6 Torr) during film growth without intentionally introducing oxygen, nitrogen, or argon. This therefore is considered as being substantially equal to an O2, N2, or Ar partial pressure of 0 mTorr (i.e., 0×10-3 Torr) as claimed.
Finally, applicants generally argue that certain features in claim 1 are not taught by the cited references and that a routine combination of these teachings relies on impermissible hindsight. Id. at p. 8. This argument also is found unpersuasive as the rejection of claim 1 supra clearly identifies where each and every limitation is taught in the cited prior art and the requisite motivation to combine their teachings has also been provided. Moreover, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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