DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The preliminary amendment filed 8/7/2023 has been entered. Claims 21-104 have been canceled. Claims 1-20 are pending in the application.
Claim Objections
Claims 7 and 8 are objected to because of the following informalities: “claim ,1” should read “claim 1,” with the comma after the numeral “1”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-20 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. Claim 1 recites the limitation "the cross section of the gradient layer structure" in lines 4-5 . There is insufficient antecedent basis for this limitation in the claim. Similarly, claim 1 also recites the limitation "the cross section of the densely packed particle structure" in line 9. There is insufficient antecedent basis for this limitation in the claim. It is also noted that the term “densely packed” in claim 1 (as well as claims 2, 4, 8, 15-17, and 20) is a relative term which renders the claim indefinite. The term “densely packed” 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. Hence, it is unclear as to how packed, or how not packed, the microscale particles may be in order to be considered “densely packed” to meet the claimed invention, and thus, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 6 is 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. 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, claim 6 recites the broad recitation “smaller than 1 mm”, and the claim also recites “0.1 mm, 0.04 mm, 1000 nm, 500 nm, 100 nm, or 10 nm” which are narrower statements of the range/limitation. 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.
Claim 9 is 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. 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, claim 9 recites the broad recitation “smaller than 1 mm”, and the claim also recites “0.1 mm, 0.04 mm, 1000 nm, 500 nm, 100 nm, or 10 nm” which are narrower statements of the range/limitation. 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.
Claim 15 is 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. Claim 15 recites, “The multilayer composite material of claim 1, wherein the densely packed particle structure is configured such that particles having a size range from 5% to 500% of the mean particle size”, however, the limitation appears to be incomplete with respect to how the “particles having a size range from 5% to 500%” are related to the multilayer composite material and/or the densely packed particle structure. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 16 is 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. 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, claim 16 recites the broad recitation “at least 25%”, and the claim also recites “50%, 75%, or 100%” which are narrower statements of the range/limitation. 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. Further, it is unclear as to the basis of the claimed percentages, e.g. wherein the densely packed particle structure includes at least 25% core-shell particles with respect to a total volume of the densely packed particle structure, or a total volume of the particles of the densely packed particle structure, or a total weight of the densely packed particle structure, etc.?
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1, 3-4, 6, 8-9, and 12-15 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Oyama (WO2005/076919A2). Oyama discloses a composite membrane comprising a porous support, a permselective silica layer, and an intermediate graded particulate layer positioned therebetween, wherein the intermediate graded particulate layer is formed from a plurality of alumina sols having a narrow, well-defined particle size distribution such that sols with increasingly smaller particle size distributions are used to create a graded porous intermediate layer of closely packed sol particles with an upper layer or surface of the intermediate layer produced from the smallest particle size distribution forming a uniform substrate layer upon which the silica layer is formed (Entire document, particularly Abstract; Summary of the Preferred Embodiments on page 3; page 4, line 12-page 5, line 9; Examples; Figs. 1-4). Oyama specifically discloses one example wherein the intermediate graded particulate layer is a five-layer structure formed from successively applying alumina sols of decreasing median particle size of 630, 630, 200, 40, and 40 nm, such that the first layer of 630 nm particles reads upon the claimed “densely packed particle structure including densely packed microscale particles” that is “in contact with the gradient structure” and “wherein a mean particle size of the densely packed microscale particles does not form a particle size gradient in the cross section of the densely packed particle structure” of instant claim 1 as well as the claimed “at least partly arranged in a layer structure” of instant claim 8 and including “at least one layer with a particle size smaller than 1 mm” as in instant claim 9; the second layer of 630 nm particles along with the layer of 200 nm particles and the first layer of 40 nm particles reading upon the claimed “gradient layer structure of a sequence of at least three gradient-contributing layers of microscale particles, wherein a mean particle size of particles of neighboring gradient-contributing layers in the cross section of the gradient layer structure varies from layer to layer, thereby forming a particle size gradient” of instant claim 1 as well as the claimed “at least one layer with a particle size smaller than 1 mm” as in instant claim 6; and the second or top layer of 40 nm particles reading upon the claimed “further comprising at least one additional gradient layer structure and/or densely packed particle structure and wherein the gradient structure, the densely packed particle structure and the at least one additional gradient layer structures and/or densely packed particle structure are arranges as a sequence, where neighboring structures contact each other at a common interface” as in instant claim 4 (Examples 6 and 9); and given that the alumina sol particles are solid particles as in instant claim 3, Oyama anticipates the claimed invention as recited in instant claims 1, 3-4, 6, and 8-9.
With respect to instant claims 12-13, the Examiner notes that the claimed “positioned towards an impact side of the multilayer composite material of a compression wave” and the claimed “thereby providing a decreasing[/increasing] size of particles in direction of a propagating compression wave” constitute intended end use of the claimed multilayer composite material and does not provide any additional material or structural limitations to differentiate the claimed multilayer composite material of instant claims 12-13 from the multilayer composite material disclosed by Oyama and hence Oyama anticipates instant claims 12-13.
With respect to instant claim 14, given that the number of contact points per area between particles within neighboring layers of the graded particulate layer disclosed by Oyama would inherently change according to the particle size gradient, as evident from Fig. 1 c), Oyama anticipates instant claim 14.
With respect to instant claim 15, given the particle size distribution disclosed by Oyama as shown in Fig. 3 with respect to the 630 nm sol particles utilized in the above example (boehmite sol peptized with acetic acid at a molar ratio of H+/Alkoxide of 0.04 as described in Example 2 that was used to form the dipping solution DS630 utilized in Examples 6 and 9), the first layer of which has been equated by the Examiner to the claimed “densely packed particle structure”, Oyama anticipates the claimed invention as recited in instant claim 15 (Examples).
Claims 1-4 and 6-14 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Paul (US2008/0108122A1). Paul discloses a coated substrate or multilayer composite device utilizing microchemical nanofactories to produce the composite, wherein in one embodiment, the coated substrate may comprise a plurality of repeating units each of which comprises a first layer comprising a first plurality of densely packed sub-macroscale particles having a first mean diameter, and a second layer comprising a second plurality of densely packed sub-macroscale particles having a second mean diameter different from the first mean diameter such that the layers create a size gradient (Entire document, particularly Paragraph 0134-0135, 0153, 0188, 0215, 0334, 0363-0374, 0412, 0416-0417, 0422-0423, and 0430; Figures 2, 4, 80, and 88; Examples). Paul discloses that the “microchemical nanofactories could be utilized to fabricate a variety of tailored hierarchical structures from nano-, micro- to macroscale that are currently impossible/or too cumbersome to produce by other means” such as size-gradient structures like the photovoltaic cell depicted in Fig. 80, wherein the structures may be utilized in a variety of applications such as electronics, optical applications, catalysis, etc. (Entire document, see particularly Paragraphs 0215, 0416, 0423, 0424 and 0433). Paul specifically discloses one example wherein a microreactor can be used to produce monodispersed silica nanoparticles, which are then deposited on a substrate to form a size-gradient film as shown in Fig. 4, with a first layer of densely packed 50nm silica nanoparticles, a second layer of 100 nm silica particles, a third layer of 150 nm silica particles, and a fourth layer of 175 nm silica particles such that the first layer reads upon the claimed “densely packed particle structure” that is “in contact with the gradient layer structure” and that includes “densely packed microscale particles, wherein a mean particle size of the densely packed microscale particles does not form a particle size gradient in the cross section of the densely packed particle structure” of instant claim 1 and “arranged in a layer structure” as in instant claim 8, with at least one layer with a particle size of smaller than 1 mm as in instant claim 9; and the second through fourth layers reading upon the claimed “gradient layer structure of a sequence of at least three gradient-contributing layers of microscale particles, wherein a mean particle size of particles of neighboring gradient-contributing layers in the cross section of the gradient layer structure varies from layer to layer, thereby forming a particle size gradient” as in instant claim 1 as well as “wherein the gradient layer structure includes at least one layer with a particle size smaller than 1 mm” as in instant claim 6 and “configured such that a change in particle size between neighboring layers ranges from 5% to 50% of the mean particle size” as in instant claim 11; thereby anticipating instant claims 1, 6, 8-9 and 11.
With respect to instant claim 2, given that the first layer of 50 nm monodispersed particles is equated to the claimed densely packed particle structure and while the second through fourth layers are equated to the claimed gradient structure with the total thickness thereof or distance from the substrate as shown in Fig. 4 providing a thickness ratio as instantly claimed, Paul anticipates instant claim 2.
With respect to instant claim 3, the silica nanoparticles of the above example are solid nanoparticles thereby anticipating instant claim 3, with Paul also disclosing that the particles may be core-shell nanoparticles as shown in Fig. 2 (see also Paragraphs 0134 and 0436).
With respect to instant claim 4, it is noted that the photovoltaic cell as discussed above and shown in Fig. 80 comprising a gradient structure with five layers of varying sized densely packed particles would read upon the claimed multilayer composite material of claim 4 wherein the first layer would read upon the “densely packed particle structure”, the second to fourth layers would read upon the “gradient layer structure”, and the fifth layer would read upon the “at least one additional…densely packed particle structure” that “are arranged as a sequence, where neighboring structures contact each other at a common interface” as instantly claimed, and hence Paul anticipates instant claim 4.
With respect to instant claims 7 and 10, as discussed above, Paul discloses that a microreactor may be utilized to produce size-controlled “monodispersed” silica nanoparticles that are utilized in the above size-gradient film (Paragraph 0423), and hence, the claimed “gradient layer structure includes at least one layer with a mean deviation below about 10% for a median particle size distribution” as in instant claim 7 and claimed “layer structure includes at least one layer with a mean deviation below about 10% for a median particle size distribution” as in instant claim 10 (which is dependent upon instant claim 8 that is discussed in detail above) would have been clearly envisaged by one skilled in the art such that Paul discloses the claimed invention with sufficient specificity to anticipate instant claims 7 and 10.
With respect to instant claims 12-13, the Examiner notes that the claimed “positioned towards an impact side of the multilayer composite material of a compression wave” and the claimed “thereby providing a decreasing[/increasing] size of particles in direction of a propagating compression wave” constitute intended end use of the claimed multilayer composite material and does not provide any additional material or structural limitations to differentiate the claimed multilayer composite material of instant claims 12-13 from the multilayer composite material disclosed by Paul and hence Paul anticipates instant claims 12-13.
With respect to instant claim 14, given that the number of contact points per area between particles within neighboring layers of the size-gradient film disclosed by Paul would inherently change according to the particle size gradient, as evident from Figs. 4 and 80, Paul anticipates instant claim 14.
Claims 1, 3, 6, 8-9, and 11-13 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Pierce (USPN 1981877A). Pierce discloses a filtering medium comprising a multilayer structure of diatomaceous earth having particles sizes between about 30 mesh (about 560-590 microns) to about 180 mesh (about 76 microns) or 200 mesh (about 74 microns), provided on a filter pad, wherein in one embodiment, the particles are arranged in graded particle sizes in distinct layers as shown in Fig. 4, with the most finely comminuted particles proximal the filter pad, with the particles gradually increasing in size as the distance from the filter pad increases (Entire document, particularly page 1, line 102-page 2, line 70; page 4, lines 115-146; Fig. 4). Pierce discloses a preferred embodiment wherein the filtering medium comprises a filter pad (24) of felt, cloth, or other porous material; a layer (27) of the finest of the graded sizes of the comminuted diatomaceous earth spread on an upper surface of the pad, for example a layer composed of 150 mesh (about 100 to 105 microns) particle size; another layer (28) of larger sized particles, such as 100 mesh (about 149 microns for a 50% change as in instant claim 11) particle size, spread on top of layer (27); wherein “in the same manner, additional layers 29, 31, etc., may be spread in superimposed relation, each succeeding layer being composed of larger sizes than those of the layer immediately therebelow” forming a filtering medium in a strata of graded sizes (page 4, lines 115-146); and given that each layer is composed of densely packed particles of one size within the about 30 mesh to about 200 mesh range such that the top or bottom layer (e.g. 27 or 31) may be equated to the claimed “densely packed particle structure” and the remaining layers (e.g. 28-31 or 27-29, respectively) equated to the claimed gradient layer structure, Pierce anticipates instant claims 1 and 11.
With respect to instant claim 3, given that the diatomaceous earth particles are solid particles, Pierce anticipates instant claim 3.
With respect to instant claim 6, given the above mesh sizes disclosed by Pierce for the layers, each of which is at least one layer with a particle size smaller than 1 mm, Pierce anticipates instant claim 6.
With respect to instant claims 8-9, given that the top or bottom layer of densely packed particles disclosed by Pierce is equated to the claimed densely packed structure with each layer of Pierce having a particle size of between about 30 mesh and 200 mesh as noted above, Pierce anticipates instant claims 8-9.
With respect to instant claims 12-13, the Examiner again notes that the claimed “positioned towards an impact side of the multilayer composite material of a compression wave” and the claimed “thereby providing a decreasing[/increasing] size of particles in direction of a propagating compression wave” constitute intended end use of the claimed multilayer composite material and does not provide any additional material or structural limitations to differentiate the claimed multilayer composite material of instant claims 12-13 from the multilayered filtering medium disclosed by Pierce and hence Pierce anticipates instant claims 12-13.
Claims 1-6, 8-9, 12-14, and 16-20 are rejected under pre-AIA 35 U.S.C. 102(a) and/or 102(b) as being anticipated by Whitaker (WO2007/021980A2). Whitaker discloses a composite material for use in a variety of applications including ballistic applications such as armor panels, automotive applications and sporting equipment applications for impact absorption; wherein the composite comprises a substrate material defining an accessible interior void structure, and an electrodeposited compositionally modulated material at least partially disposed within the accessible void structure; wherein the substrate material may be formed from an unconsolidated particle bed of closely packed particles having layers of differently sized particles, for example, repeated graded layers of increasing/decreasing particle size as shown in Figs. 7A-7C (Entire document, particularly Abstract, Figures, Paragraphs 0035-0037, 0047 and 0053; Examples; Claims). Whitaker discloses that the particles can be of any length scale, such as for example, millimeter sized (e.g. 1 to 5 millimeter), micron-sized (e.g. 100 microns to 0.1 microns), or nanometer sized (e.g. 100 nm to 1 nm); with examples of suitable particles including various “solid” particles such as carbide particles, alumina particles, glass particles, and clay platelets (Paragraph 0038), as well as hollow particles such as metal hollow spheres as utilized in Example 5. Whitaker also discloses that the porous substrate formed from the differently sized particles can be tailored to provide desired properties to the composite material, and/or provide additional advantageous material properties to different regions of the composite, wherein various particle arrangements can provide different material properties, with specifically disclosed embodiments including a porous substrate (12) formed of particles (15) that gradually increase in size from an exterior (100) of the compact to an interior (110) of the composite (10), such that the particles can range from, e.g. 5 nm on the exterior (100) to 50 microns, or 10 microns, or 1 micron in the interior (110), or from 10 nm on the exterior (100) to 1 micron in the interior (110); or wherein the particles have a repetitive size distribution as in Fig. 7B, or a graded distribution as in Fig. 7C (Paragraph 0047). Hence, given that any three particle layers of the graded layers of packed particles disclosed by Whitaker having gradually increasing or decreasing particle sizes may read upon the claimed “gradient layer structure of a sequence of at least three gradient-contributing layers of microscale particles, wherein a mean particle size of particles of neighboring gradient-contributing layers in the cross section of the gradient layer structure varies from layer to layer, thereby forming a particle size gradient” of instant claim 1, while any additional one layer, e.g. a single outer layer or central layer, or two or three layers, e.g. spanning different graded or repeated portions, of the packed particles in the structures disclosed by Whitaker in Figs. 7A-C and in contact with the above at least three graded layers may read upon the claimed “and in contact with the gradient layer structure, a densely packed particle structure including densely packed microscale particles, wherein a mean particle size of the densely packed microparticles does not form a particle size gradient in the cross section of the densely packed particle structure” of instant claim 1; Whitaker anticipates the claimed invention as recited in instant claim 1.
With respect to instant claim 3, as noted above, Whitaker clearly discloses solid particles thereby anticipating instant claim 3.
With respect to instant claim 4 as well as instant claim 16, given again that the particle layer structures disclosed by Whitaker, particularly as in Figs. 7A-7C may be sectioned to be equated to the claimed gradient layer structure, densely packed particle structure, as well as an additional gradient layer structure and/or densely packed particle structure that are arranged as a sequence as in instant claim 4, wherein neighboring structures contact each other at a common interface, particularly given that Whitaker clearly discloses that the porous substrate formed from the unconsolidated bed of particles may only be partially coated with an electrodeposited compositionally modulated material or matrix material (Paragraph 0010) and/or that such coating or matrix material may result in “core-shell” particles that contact each other at a common interface (e.g. as shown in Fig. 10), the Examiner takes the position that Whitaker discloses the claimed invention with sufficient specificity to anticipate instant claims 4 and 16.
With respect to instant claim 5, as noted above, Whitaker discloses that the bed of particles may include repeated graded layers of increasing/decreasing particle size as shown in Figs. 7A-7C such that Whitaker clearly discloses a composite material comprising a graded layer structure including a first gradient layer structure having a first particle size gradient in a first direction and further comprising a second gradient layer structure having a second particle size gradient in the first or opposite to the first direction as instantly claimed, wherein it is again noted that one or more outer or central layer(s) may be equated to the claimed “densely packed particle structure”. Hence, Whitaker anticipates instant claim 5.
With respect to instant claim 6, as noted above, Whitaker specifically discloses embodiments comprising at least one layer with particle sizes smaller than 1 mm, and hence Whitaker anticipates instant claim 6.
With respect to instant claims 8-9, given again that one or more layers disclosed by Whitaker may be equated to the claimed “densely packed particle structure”, Whitaker anticipates instant claim 8 as well as instant claim 9 given the particle sizes disclosed by Whitaker as discussed above.
With respect to instant claims 12-13, the Examiner again notes that the claimed “positioned towards an impact side of the multilayer composite material of a compression wave” and the claimed “thereby providing a decreasing[/increasing] size of particles in direction of a propagating compression wave” constitute intended end use of the claimed multilayer composite material and does not provide any additional material or structural limitations to differentiate the claimed multilayer composite material of instant claims 12-13 from the multilayer composite material disclosed by Whitaker, particularly given that Whitaker clearly discloses embodiments wherein either the smallest or the largest particles are at an exterior (100) of the composite. Hence, Whitaker anticipates instant claims 12-13.
With respect to instant claims 14 and 17, given that Whitaker specifically discloses the use of spherical particles, and that the number of contact points per area between spherical particles within neighboring layers of the graded layers disclosed by Whitaker would inherently change according to the particle size gradient, and similarly, would change with respect to the layers equated to the claimed “densely packed particle structure” according to the size of the spherical particles (i.e. as the particle size decreases, the number of contact points increases), Whitaker anticipates instant claims 14 and 17.
With respect to instant claims 18-20, given that two adjacent densely packed graded particle layers of Whitaker may be equated to one gradient-contributing layer comprising at least two sub-layers of particles with a thickness of the combined one gradient-contributing layer having a thickness larger than a mean particle size of the particles of the respective (combined) gradient-contributing layer as in the claimed invention given that the claimed invention does not require any particular limitations with respect to the particle size(s) of the two sub-layers, Whitaker anticipates instant claims 18-20 as currently recited.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7, 10-11, and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Whitaker (WO2007/021980A2). The teachings of Whitaker are discussed in detail above, and although Whitaker teaches that the particle size distribution of the particles may gradually increase or decrease to provide a graded distribution, wherein the particles can be of any length scale, such as for example, millimeter sized (e.g. 1 to 5 millimeter), micron-sized (e.g. 100 microns to 0.1 microns), or nanometer sized (e.g. 100 nm to 1 nm), with suitable particles including spherical particles (Paragraph 0038) including metal hollow spheres and polymer spheres as utilized in the examples, Whitaker does not specifically teach the gradual increase/decrease is configured such that a change in particle size between neighboring layers ranges from 5% to 50% of the mean particle size as in instant claim 11, or that at least one layer has a mean deviation below about 10% for a medium particle size distribution for the gradient structure as in instant claim 7 or 10, or 5% to 500% of the mean particle size for the “densely packed” structure as in instant claim 15. However, given that Whitaker clearly teaches that the graded structure may be tailored to provide desired properties for a particular end use and appears to suggest a gradual change as shown in Figs. 7A-7C that would read upon and/or render obvious the claimed 5 to 50% change as recited in instant claim 11, wherein the particles within a given layer appear to be monodispersed, wherein it is noted that polymer spheres and/or metal hollow spheres can be produce to provide a very small deviation in particle size as in instant claims 7, 10, and/or 15, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 7, 10-11, and 15 would have been obvious over the teachings of Whitaker given that one having ordinary skill in the art at the time of the invention would have been motivated to determine the desired particle sizes and particle size distributions to provide the desired properties of the composite taught by Whitaker for a particular end use.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, 9, 20-26, 28-30, 39-42, and 45-46 of U.S. Patent No. 9,060,560. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are similarly directed to a “multilayer composite material for attenuating a compression wave, the multilayer composite material comprising: a coating in contact with a substrate to be protected from compression wave or impact forces, wherein the coating comprises at least two repeating units, wherein each unit comprises: a. a first layer structure comprising a first plurality of layers of sub-macroscale particles having a first mean diameter; and b. a second layer structure comprising a second plurality of layers of sub-macroscale particles having a second mean diameter that is different from the first mean diameter, wherein the second layer structure is in contact with the first layer structure to define an interface therebetween, wherein the second mean diameter is selected relative to the first mean diameter so as to cause a multi-directional deflection of the compression wave upon crossing the interface from the first layer structure to the second layer structure, wherein the first layer structure and the second layer structure are composed of separate and distinct sub-macroscale particles without additional material in the first layer structure and the second layer structure between the particles, wherein the thickness of the multilayer composite material is greater than approximately 700 nm, and wherein the particle diameters are between approximately 130 nm and approximately 400 nm” (patented claim 1); and given that it would have been obvious to one having ordinary skill in the art to utilize any number of plurality of layers of varying mean diameter or that the patented claims recite “further comprising a plurality of adjacent layer structures, each of the plurality of adjacent layer structures including a plurality of densely packed sub-macroscale particles having a corresponding mean diameter, the plurality of adjacent layer structures disposed so that a mean diameter gradient is formed across the plurality of adjacent layer structures” (patented claim 9); or “wherein the first layer structure is a layer of approximately 130 nm particles, wherein the second layer structure is a layer of approximately 160 nm particles, and further comprising a third layer structure of approximately 220 nm particles, a fourth layer structure of approximately 260 nm particles, a fifth layer structure of approximately 220 nm particles, and a sixth layer structure of approximately 160 nm particles” with the first to sixth layers repeated approximately five times each (patented claims 39-40); or “wherein the first layer structure is a layer of approximately 130 nm particles, wherein the second layer structure is a layer of approximately 160 nm particles, and further comprising a third layer structure of approximately 220 nm particles, a fourth layer structure of approximately 260 nm particles, a fifth layer structure of approximately 320 nm particles, a sixth layer structure of approximately 400 nm particles, a seventh layer structure of approximately 320 nm particles, an eighth layer structure of approximately 260 nm particles, a ninth layer structure of approximately 220 nm particles, and a tenth layer structure of approximately 160 nm particles” and the first to tenth layers are repeated approximately three times each (patented claims 41-42); or “wherein the first layer structure is a layer of approximately 400 nm particles, wherein the second layer structure is a layer of approximately 320 nm particles, and further comprising a third layer structure of approximately 260 nm particles, a fourth layer structure of approximately 220 nm particles, a fifth layer structure of approximately 160 nm particles, and a sixth layer structure of approximately 130 nm particles” and the first to sixth layers are repeated approximately four times each (patented claims 45-46), reading upon the claimed “at least three gradient-contributing layers of microscale particles, wherein a mean particle size of particles of neighboring gradient-contributing layers in the cross section of the gradient layer structure varies from layer to layer, thereby forming a particle size gradient” as in instant claim 1; wherein each or any of the individual layers, particularly on top and/or on bottom, may also read upon the claimed “densely packed particle structure including densely packed microscale particles, wherein a mean particle size of the densely packed microscale particles does not form a particle size gradient in the cross section of the densely packed particle structure” or individual layer, instant claim 1 would have been obvious over patented claim 1, or patented claim 9, or patented claim 40, or patented claim 42, or patented claim 46.
With respect to instant claim 2, given that layer thicknesses of about the same particle size (e.g. particle monolayers) would have been obvious to one skilled in the art, instant claim 2 would have been obvious over any one of patented claim 39, 41, or 45, based upon the above particle sizes, with either the first or last layer reading upon the claimed “densely packed particle structure” as noted above.
With respect to instant claim 3, although solid particles would have been obvious to one skilled in the art, at least each of patented claims 4-7 and 22-26 specifically recite solid particles such that instant claim 3 would have been obvious over patented claim 1, 9, 40, 42, or 46 for the same reasons as discussed above with respect to instant claim 1, or over any one of patented claims 4-7 and 22-26 for the same reasons as discussed above with respect to instant claim 1 over patented claim 1.
With respect to instant claim 4, given the repeating layer structures of patented claim 40, 42, or 46 as noted above, instant claim 4 would have been obvious over patented claim 40, or 42, or 46, wherein the repeated structure would read upon the at least one additional gradient layer structure and/or densely packed particle structure.
With respect to instant claim 5, given the repeated gradient layer structures of patented claim 40, 42, or 46 as noted above, instant claim 5 would have been obvious over patented claim 40, or 42, or 46.
With respect to instant claim 6, patented claim 1 recites that the particle diameters are between approximately 130 nm and approximately 400 nm reading upon the claimed “at least one layer with a particle size smaller than 1 mm” and hence instant claim 6 would have been obvious over patented claim 1, or patented claim 9, or patented claim 40, or patented claim 42, or patented claim 46, for the same reasons as discussed above with respect to instant claim 1.
With respect to instant claims 8-9, given that one of the layers is equated to the densely packed particle structure and that patented claim 1 recites that the particle diameters are between approximately 130 nm and approximately 400 nm, instant claims 8-9 would have been obvious over patented claim 1, or patented claim 9, or patented claim 40, or patented claim 42, or patented claim 46, for the same reasons as discussed above with respect to instant claim 1.
With respect to instant claims 7 and 10-11, given the small difference between particle sizes of the adjacent layers of patented claim 39, or 41, or 45, or that patented claim 20 recites that the first mean diameter differs from the second mean diameter by between 5 and 50% such that a very small mean deviation of less than a difference in diameters would have been obvious to one skilled in the art, instant claims 7 and 10-11 would have been obvious over patented claim 39, or 41, or 45, or 20.
With respect to instant claims 12-13, given that the “positioned towards” limitation constitutes intended end use of the multilayer composite material and/or that one skilled in the art would have been motivated to position the multilayer composite material of patented claim 1 or 9, or 39, or 40, or 41, or 42, or 45, or 46 facing either direction, instant claims 12 and/or 13 would have been obvious over patented claim 1, or 9, or with respect to instant claim 13, patented claim 39, or 40, or 41, or 42, or 45, or 46.
With respect to instant claim 14, patented claim 21 recites “wherein the number of particle surface contact points per unit area changes by at least one between the first layer structure and the second layer structure” thereby reading upon and/or rendering obvious that a number of contact points per are between particles within neighboring layers changes according to the particle size gradient as recited in instant claim 14. Hence, instant claim 14 would have been obvious over patented claim 21 for the same reasons as discussed above with respect to instant claim 1 over patented claim 1.
With respect to instant claim 15, given that the use of monodispersed particles would have been obvious to one skilled in the art for any or each of the layers, instant claim 15 would have been obvious over patented claim 1, or 9, or 40, or 42, or 46 for the same reasons as discussed above with respect to instant claim 1.
With respect to instant claim 16, given that each of patented claims 4-7 and 22-23 recite at least one layer structure comprising core-shell particles such that a layer consisting thereof (100%) would have been obvious to one skilled in the art, instant claim 16 would have been obvious over any of patented claims 4-7 or 22-23.
With respect to instant claim 17, given that the number of contact points of a densely packed particle structure is dependent upon the size of the particles, instant claim 17 would have been obvious over patented claim 1, or 9, or 40, or 42, or 46 for the same reasons as discussed above with respect to instant claim 1.
With respect to instant claims 18-20, patented claim 28 recites, “wherein the first layer structure has a thickness larger than about three times the first mean diameter, and wherein the second layer structure has a thickness larger than about three times the second mean diameter”, while patented claim 29 recites, “wherein the first layer structure has a thickness larger than about five times the first mean diameter, and wherein the second layer structure has a thickness larger than about five times the second mean diameter”, and similarly patented claim 30 recites, “wherein the first layer structure has a thickness larger than about ten times the first mean diameter, and wherein the second layer structure has a thickness larger than about ten times the second mean diameter” such that patented claim 28 or patented claim 29 or patented claim 30 would read upon instant claim 18 and would render obvious instant claims 19-20 given that the thickness would be larger than two sub-layers thereof. Hence, instant claims 18-20 would have been obvious over patented claim 28 or 29 or 30 for generally the same reasons as discussed above with respect to instant claim 1 (from which instant claims 18-20 depend) over patented claim 1 (from which patented claims 28-30 depend).
Claims 1, 3-4, 6, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 9,328,788, or claim 7 of U.S. Patent No. 9,982,736, or claim 5 of U.S. Patent No. 12,064,948, or claim 2 of U.S. Patent No. 10,926,513. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the recited patented claims is directed to a multilayer composite material comprising a plurality of nanoparticle layers of different sizes/diameters arranged in a gradient manner, that would also read upon and/or render obvious a “densely packed particle structure”, especially in light of the lack of clarity thereof as discussed above, wherein it would have been obvious to one having ordinary skill in the art at the time of the invention to utilize any number of (nano)particle layers and/or of gradient-contributing layers in the patented composites and/or to utilize routine experimentation to determine the optimum number of layers and particle sizes to provide the desired shock attenuating and/or energy absorbing properties for a particular end use of the patented composite material. Hence, absent any clear showing of criticality and/or unexpected results, at least instant claims 1, 3-4, 6, and 11 over any of the above patented claims.
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