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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-16) in the reply filed on 03/31/2026 is acknowledged.
Claims 17-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/31/2026.
Specification
The use of the term “Castro” [Castrol], Rubbia, and “Motui” [Motul], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities: The specification refers to Castro oil and Castrol oil seemingly interchangeably (see at least, for instance, paragraph 0066). Additionally, Motui oil appears to be referencing “Motul” oil.
Appropriate correction is required.
Claim Objections
Claim 6 is objected to because of the following informalities: “Castro” should be “Castrol.”
Claims 2, 3, 14, and 15 are objected to because of the following informalities: “the step” should be “a step.”
Claim 11 is objected to because of the following informalities: there is a missing comma between CuO and Al2O3.
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 6-13 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 6 contains the trademark/trade name “Castrol” and “Rubbia.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe engine oils and, accordingly, the identification/description is indefinite. Please note, that the above is based on “Castro” being a misspelling of “Castrol.” If this is not the case, that it is not clear what “Castro” oil is.
Claim 6 recites “any one or more of the group including” which renders the claim indefinite. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05 (h).
Claim 7 recites “any one or more of the group including” which renders the claim indefinite. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05 (h).
Claims 8-13 inherit the deficiency of claim 7 based on their respective dependency from the same.
Claim 11 recites “any one or more of the group including” which renders the claim indefinite. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05 (h).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-13 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (US 2010/0196192).
Note: as used herein “nanofluid” is understood to refer to a “solid-liquid mixture or suspension produced by dispersing nano scaled metallic or nonmetallic solid particles in liquid” as defined in paragraph 0003 of the instant application.
Regarding claim 1, Liu teaches a method of producing a nanofluid which includes laser ablating a target on a surface of which a liquid is flowing (See Abstract; “Various embodiments include a method of producing chemically pure and stably dispersed metal and metal-alloy nanoparticle colloids with ultrafast pulsed laser ablation. A method comprises irradiating a metal or metal alloy target submerged in a liquid with ultrashort laser pulses at a high repetition rate, cooling a portion of the liquid that includes an irradiated region, and collecting nanoparticles produced with the laser irradiation and liquid cooling.”) (See para. 0039; liquid flow causes cooling…and transporting of the nanoparticles away from a target region and toward a collection location) (See also Figure 1 and para. 0052; laser 1 is directed to target 4, via lens 2 and mirror 3, to ablate the target. The ablation produces nanoparticles in the liquid.) (para. 0055 discloses the use of a liquid circulation system to produce liquid flow over the target) (paragraphs 0022-005 disclose various metallic elements for the target.
Here, the nanoparticle formed by ablating the target with the laser are suspended in the flowing liquid, thus forming a nanofluid.
Regarding claim 2, Liu teaches the claimed method, as applied in claim 1, and further teaches wherein said method includes the step of moving the target and a laser beam relative to each other (paragraph 0052 discloses moveable mirror 3 for guiding the movement of the laser beam relative to the target 4 and that the target is placed on a translation stage 7) (para. 0014 discloses producing relative motion between the laser beam and the target, or both) (claim 1 also recites “relative motion between said pulsed laser beams and said target”).
Regarding claim 3, Liu teaches the claimed method, as applied in claim 2, and further teaches wherein said method includes the step of moving the target relative to the laser beam such that the laser beam scans across the surface of the target in an X or Z direction when the laser beam is oriented in a Y direction and the target faces the laser beam (As detailed above, the laser is guided by mirror 3, which scans the laser across the surface of target 4. Target 4 is also on a translation stage moving in the horizontal direction. Accordingly, the target is moved relative to the laser beam such that the laser beam scans across the surface of the target in the horizontal direction when the laser beam is oriented in the vertical direction and the target faces the laser beam.).
Regarding claim 4, Liu teaches the claimed method, as applied in claim 1, and further teaches wherein the liquid is continuously flowing on the surface of the target that is being laser ablated, and the liquid is arranged to flow on the target at a predefined speed (para. 0055 details using a liquid circulation system to produce a flow speed greater than 10 ml/s. Para. 0052 details that the target is submerged several millimeters below the surface of the liquid.) so as to maintain a predefined thickness of the liquid flowing on the target (based on the aforementioned a predefined thickness of liquid flowing on the target is maintained).
Regarding claim 5, Liu teaches the claimed method, as applied in claim 1, and further teaches wherein the liquid is heated to a predefined temperature (para. 0068; laser ablation causes localized heating of the liquid) [The beam parameters, fluence, pulse rate, etc., chosen to ablate the target are predefined and lead to localized heating of the liquid. As such, the temperature of the liquid upon the target being ablated is at least partially predefined].
Regarding claim 6, Liu teaches the claimed method, as applied in claim 1, and further teaches wherein the liquid is in the form of any one or more of the group including water (para. 0052 discloses water), Castro oil, engine oil, or Rubbia oil.
Regarding claim 7, Liu teaches the claimed method, as applied in claim 1, and further teaches wherein the target (4) is in the form of any one or more of the group including a metallic target (para. 0022-0025 discloses various metallic elements such as gold, copper, platinum, palladium, and alloys thereof), an oxide target, a nitride target, or a carbide target.
Regarding claim 8, Liu teaches the claimed method, as applied in claim 7, and further teaches wherein the metallic target is in the form of non-oxidized but pristine metals, based on platinum group metals (PGMs) (para. 0025; target can be precious metal comprising platinum, palladium or alloys containing platinum or palladium).
Regarding claim 9, Liu teaches the claimed method, as applied in claim 7, and further teaches wherein the metallic target is in the form of Cu or Al (para. 0022; target comprises gold, silver, or copper).
Regarding claim 10, Liu teaches the claimed method, as applied in claim 7, but does not explicitly state wherein the oxide target is in the form of oxidized metals.
However, claim 7 sets forth an alternative limitation by recited “any one or more.” In this case, the prior art need only teach one of the alternatives as claim 10 is not limited to requiring the target to be an oxide target. Rather, the broadest reasonable interpretation of claim 10 merely defines what the oxide target would include if the target were an oxide.
As Liu already teaches the target being a metallic target, Liu does not need to teach the alternatives in order to anticipate the claim.
Regarding claim 11, Liu teaches the claimed method, as applied in claim 10, but does not explicitly state wherein the oxidized metals are selected from the group including CuO, A12O3, TiO2, or MgO.
However, claim 7 sets forth an alternative limitation by recited “any one or more.” In this case, the prior art need only teach one of the alternatives as claim 11 is not limited to requiring the target to be an oxide target. Rather, the broadest reasonable interpretation of claim 11 merely defines what the oxide metals would include if the target were an oxide.
As Liu already teaches the target being a metallic target, Liu does not need to teach the alternatives in order to anticipate the claim.
Regarding claim 12, Liu teaches the claimed method, as applied in claim 7, but does not explicitly state wherein the nitride target is in the form of TiN.
However, claim 7 sets forth an alternative limitation by recited “any one or more.” In this case, the prior art need only teach one of the alternatives as claim 12 is not limited to requiring the target to be an nitride target. Rather, the broadest reasonable interpretation of claim 12 merely defines what the nitrides would include if the target were a nitride.
As Liu already teaches the target being a metallic target, Liu does not need to teach the alternatives in order to anticipate the claim.
Regarding claim 13, Liu teaches the claimed method, as applied in claim 7, but does not explicitly state wherein the carbide target is in the form of TiC or WC.
However, claim 7 sets forth an alternative limitation by recited “any one or more.” In this case, the prior art need only teach one of the alternatives as claim 13 is not limited to requiring the target to be an carbide target. Rather, the broadest reasonable interpretation of claim 13 merely defines what the carbides would include if the target were a carbide.
As Liu already teaches the target being a metallic target, Liu does not need to teach the alternatives in order to anticipate the claim.
Regarding claim 14, Liu teaches the claimed method, as applied in claim 1, wherein said method includes the step of collecting the liquid carrying laser ablated particles, wherein the laser ablated particles are in suspension in the collected liquid (As detailed above in claim 1 and detailed in paragraph 0039, Liu teaches causing a liquid flow over the target surface being ablated to transport the nanoparticles toward a collection location. It logically follows that the liquid and nanoparticles within the liquid are collected together), wherein the liquid and suspended laser ablated particles define the nanofluid (see claim 1, above, for analysis regarding the definition of nanofluid).
Regarding claim 16, Liu teaches the claimed method, as applied in claim 1, and further teaches a nanofluid manufactured according to a method as claimed in claim 1 (see above in claim 1).
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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(s) 10-11 are, alternatively, rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Mitra et al. (US2020/0197897).
Regarding claims 10-11, Liu teaches the claimed method, as applied in claim 7, except for wherein the oxide target is in the form of oxidized metals (claim 10) and wherein the oxidized metals are selected from the group including CuO, A12O3, TiO2, or MgO (claim 11).
Mitra relates to the generation of nanoparticles via femtosecond laser ablation (para. 0001) and teaches laser (101A-101N) ablating a target (107) submerged in a liquid (105) (Fig. 1).
Mitra teaches that the target can be chosen from a variety of metal, semiconductor, or metal-oxide targets, for instance CuO (para. 0047)
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Lui with Mitra, by substituting the metallic material of the target of Lui, with the metal oxide material taught by Mitra, for in doing so would amount to the mere selection of a known material based on its suitability its intended purpose (forming nanoparticles via laser ablation). See MPEP 2144.07. Additionally, the prior art of record suggests that generating nanoparticles via laser ablation a target can be accomplished using various metals, semiconductor, or metal-oxide materials. Using a metal oxide material in lieu of a metallic material would amount to a simple substitution of art recognized materials used to generate nanoparticles via laser ablation and the results of the substitution would have been predictable. See MPEP 2144.06-II.
Claim(s) 12-13 are, alternatively, rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Lappalainen et al. (KR20090004885).
Regarding claim 12, Liu teaches the claimed method, as applied in claim 7, but does not explicitly state wherein the nitride target is in the form of TiN.
Lappalainen relates to a method for producing nanoparticles by laser ablating a target (“wherein the method produces the high quality surfaces or nanoparticles in vacuum, at normal atmospheric pressure, or at overpressure.”) (“The present invention also relates to a method of forming nanoparticles in which nanoparticles are formed by ablation by a pulsed laser in a space of at least 10 .sup.−3 atm of target material.”).
Lappalainen teaches the target being titanium nitride (“ Specific particular decorative metals or metal compounds utilized as targets in accordance with the present invention include, for example, gold, silver, chromium, platinum, tantalum, titanium, copper, zinc, aluminum, iron, steel, zinc black, ruthenium Ruthenium black, ruthenium, cobalt, vanadium, titanium nitride, titanium aluminum, zirconium nitride, chromium nitride, titanium carbide silicon and chromium carbide.”).
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Lui with Lappalainen, by substituting the metallic material of the target of Lui, with the nitride material taught by Lappalainen, for in doing so would amount to the mere selection of a known material based on its suitability its intended purpose (forming nanoparticles via laser ablation). See MPEP 2144.07. Additionally, the prior art of record suggests that generating nanoparticles via laser ablation a target can be accomplished using various metals and metal alloys. Using a metal nitride material in lieu of a metallic material would amount to a simple substitution of art recognized materials used to generate nanoparticles via laser ablation and the results of the substitution would have been predictable. See MPEP 2144.06-II.
Regarding claim 13, Liu teaches the claimed method, as applied in claim 7, but does not explicitly state wherein the carbide target is in the form of TiC or WC.
Lappalainen relates to a method for producing nanoparticles by laser ablating a target (“wherein the method produces the high quality surfaces or nanoparticles in vacuum, at normal atmospheric pressure, or at overpressure.”) (“The present invention also relates to a method of forming nanoparticles in which nanoparticles are formed by ablation by a pulsed laser in a space of at least 10 .sup.−3 atm of target material.”).
Lappalainen teaches the target being titanium carbide (“Specific particular decorative metals or metal compounds utilized as targets in accordance with the present invention include, for example, gold, silver, chromium, platinum, tantalum, titanium, copper, zinc, aluminum, iron, steel, zinc black, ruthenium Ruthenium black, ruthenium, cobalt, vanadium, titanium nitride, titanium aluminum, zirconium nitride, chromium nitride, titanium carbide silicon and chromium carbide.”).
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Lui with Lappalainen, by substituting the metallic material of the target of Lui, with the carbide material taught by Lappalainen, for in doing so would amount to the mere selection of a known material based on its suitability its intended purpose (forming nanoparticles via laser ablation). See MPEP 2144.07. Additionally, the prior art of record suggests that generating nanoparticles via laser ablation a target can be accomplished using various metals and metal alloys. Using a metal carbide material in lieu of a metallic material would amount to a simple substitution of art recognized materials used to generate nanoparticles via laser ablation and the results of the substitution would have been predictable. See MPEP 2144.06-II.
Claim(s) 14 is, alternatively, rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Ichikawa et al. (US20140322138).
Regarding claim 14, Liu teaches the claimed method, as applied in claim 1, wherein said method includes the step of collecting the liquid carrying laser ablated particles,
While it logically follows that Liu implies that the laser ablated particles are in suspension in the collected liquid, this is not explicitly stated in the disclosure.
Ichikawa relates to a similar system and method for ablating a target in a liquid flow via laser (Figure 2A) and is concerned with producing an aqueous suspension of precious metal nanoparticles with reliable particle size control (para. 0003).
Ichikawa teaches producing a nanofluid which includes laser ablating (via beam 202) a target (208) on a surface of which a liquid (212) is flowing (Fig. 2A provides arrows indicating liquid flow).
Ichikawa provides an explicit teaching for collected the liquid carrying laser ablated particles wherein the laser ablated particles are in suspension in the collected liquid (See container 270; Fig. 2A) (See para. 0050; “Container 214 has inlet 226 and outlet 228 and suspension liquid 212 flows through container 214 from inlet 226 to outlet 228, so that generated PMNPs 218 are carried away and collected out of container 214 in a container 270.”) (para. 0080; “A portion of the suspension liquid 212 in which the generated PMNPs 218 exist is collected in a form of a colloidal suspension, illustrated as region 250 of liquid 212, and is collected and stored in a container 270 as an outcome of step 306. A collection of the colloidal suspension 250 may be done after or during step 306. For a circulation system, the colloidal suspension 250 may be taken at any suitable location through which the suspension liquid 212 moves from outlet 228 to inlet 226.”).
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Lui with Ichikawa, by modifying the collecting of the nanoparticles of Lui, with the collecting the liquid carrying laser ablated particles wherein the laser ablated particles are in suspension in the collected liquid of Ichikawa, in order to collect both the suspension liquid and the nanoparticles generated during the laser ablation of the target so that the resulting nanofluid can be stored for later use.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Hu et al. (US2011/0196044).
Regarding claim 15, Liu teaches the claimed method, as applied in claim 1, except for wherein said method includes the step of laser ablating the target in an open atmosphere.
HU relates to a similar system and method for ablating a target in a liquid flow via laser (Figure 2, with Figure 1 showing an embodiment similar to that of Lui) and is concerned with generating stable nanoparticles via ablations using a ultrafast pulsed laser (para. 0003).
Hu teaches producing a nanofluid which includes laser ablating (via beam 1) a target (4) on a surface of which a liquid (5) is flowing (Fig. 2 provides arrows indicating liquid flow).
Hu teaches the step of laser ablating the target in an open atmosphere (Fig. 2 shows the target 4 not submerged within the liquid, but resting atop the liquid).
Lui, as explained above, details submerging the target in the liquid. Hu illustrates an alternative method in which the target is not submerged. Hu explains, in paragraph 0028, that this arrangement results in a laminar flow of liquid towards and across the target and distribution of nanoparticles into the liquid, while preventing gas bubbles that may be generated from staying on the target.
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Lui with Hu, by modifying the placement of the target relative to the liquid flow of Lui, with the target being in an open atmosphere of Hu, in order to provide an arrangement which results in a laminar flow of liquid towards and across the target and distribution of nanoparticles into the liquid, while preventing gas bubbles that may be generated from staying on the target.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Publication 2016/0236296 to Tan relates to a nanoparticle manufacturing system in which a target (2) is placed within a liquid flow (13) and a laser (14) ablates the target (see Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN C DODSON whose telephone number is (571)270-0529. The examiner can normally be reached Mon.-Fri. 1:00-9:00 PM (ET).
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/JUSTIN C DODSON/Primary Examiner, Art Unit 3761
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