DETAILED ACTION
This is the Office action based on the 18309925 application filed May 1, 2023, and in response to applicant’s argument/remark filed on June 5, 2026. Claims 1-20 are currently pending and have been considered below. Claim 20 withdrawn from consideration.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election, without traverse, of the invention of Group I, claims 1-19 in the reply filed on November 26, 2025 is acknowledged. Claim 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Interpretations
Claim 1 recites the term “nanoparticle”. According to Britanica, the term nanoparticle means “nanoparticle, ultrafine unit with dimensions measured in nanometers (nm; 1 nm = 10−9 meter). Nanoparticles exist in the natural world and are also created as a result of human activities. Because of their submicroscopic size, they have unique material characteristics, and manufactured nanoparticles may find practical applications in a variety of areas, including medicine, engineering, catalysis, and environmental remediation”. Thus, for the purpose of examining, the term nanoparticle will be interpreted as a particle of nanoscale to submicroscopic size, i.e. 1-1000 nm.
Claim 1 recites “forming a second mask on the surface of the substrate by depositing an additional quantity of metallic material at a second angle relative to the surface, the second angle being different from the first angle, where the surface features create a shadow effect that produces a plurality of regions adjacent each one of the surface features where the additional quantity of metallic material is absent due to the surface features blocking deposition of the metallic material at the second angle” (emphasis added). The claimed feature “a plurality of regions adjacent each one of the surface features where the additional quantity of metallic material is absent” appears to be directed to a product-by-process. Accordingly, a method of forming such feature has little patentable weight; therefore, as long as a feature in a prior art matches the claimed feature, it is considered to read on the claimed feature.
Claim 16 recites “forming a second mask on the upper surface of the substrate by depositing an additional quantity of metallic material on the upper surface at an angle non-normal to the upper surface, wherein the vertical rods cast shadows on the upper surface during deposition such that the second mask covers the upper surface except for a plurality of linear, dash-like regions adjacent each one of the rods where the additional quantity of metallic material is absent due to each said rod blocking deposition of the metallic material at the non-normal angle” (emphasis added). The claimed feature “a plurality of linear, dash-like regions adjacent each one of the rods where the additional quantity of metallic material is absent” appears to be directed to a product-by-process. Accordingly, a method of forming such feature has little patentable weight; therefore, as long as a feature in a prior art matches the claimed feature, it is considered to read on the claimed feature.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7, 9, 12-13, 16 and 18-19 rejected under 35 U.S.C. 103 as obvious over Hart et al. (U.S. PGPub. No. 20150174625), hereinafter “Hart”:--Claims 1, 7, 12: Hart teaches a method of texturize a substrate, comprising(i) providing a transparent substrate 50, such as silicate, silicon carbide,… (abstract, [0063-0067]);(ii) forming a mask 61 on the substrate 50, the mask comprises a plurality of particles (Fig. 1A);(iii) etching the substrate through the mask 61 to form a textured surface comprising a plurality of micro-textured hillocks having lateral dimension about 10-1000 nm on the surface (Fig. 1B);(iv) depositing an ultrathin metal film 62, such as a film of copper, Au, Ag,…having a thickness 1-15 nm, on the textured surface by using sputtering technique ([0053]), then heating the substrate to dewet the substrate and form a plurality of nano-size islands 71a ([0055-0058], Fig. 1D and 1E) that are randomly or semi-randomly distributed on the surface ([0036, 0057, 0059]);(v) etching the substrate using the islands 71a as a mask to form a plurality of nano-structures having lateral dimension about 10-500 nm on the surface ([0060-0061], Fig. 1F-1G). Hart further teaches that the micro-textured hillocks may have a variety of shapes, such as cones, pyramids, cylinders, tapered cylinders, bumps, mesas, peaks and other similarly-shaped features; and the nano-structure may have a variety of shapes, such as cones, pyramids, cylinders, helices, tapered cylinders, toroids, and the like ([0040]), and that “while the various schematic illustrations of FIGS. 1C and 1G depict one set of nano-textured topographical features disposed on one set of micro-textured topographical features, it is possible for multiple sets of nano-textured and/or micro-textured topographical features to be disposed on the substrate and/or on each other” ([0041]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to repeat steps (iv) and (v) a plurality of times to further texturize the substrate. Thus the texturing method may further comprise(vi) optionally forming a second mask comprises a plurality of particles on the substrate;(vii) optionally etching the substrate through the second mask to form a second set of micro-textured hillocks on the substrate;(viii) optionally depositing a second ultrathin metal film on the textured surface then heating the substrate to dewet the substrate and form a second set of plurality of nano-size islands.(ix) optionally etching the substrate using the second set of islands as a mask to form a second set of plurality of nano-structures on the surface. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform the etching in step (v) at an angle different than the forming the second ultrathin metal film in step (viii) and the etching the substrate using the second set of islands as a mask in step (ix). The nano-structures impart birefringence to the substrate, as taught by Applicant in claim 1. It is noted that steps (iv), (v), (viii) and (ix) read on the four steps recited in claim 1, respectively. It is noted that in the sputtering technique the sputtered materials arrive to the substrate in a direction normal to the substrate; however, due to the local hillocks on the surface, at least some sputtered material arrive to the side of the hillocks at an oblique angle. It is further noted that although Hart does not disclose that the deposition of each of the nano-size island 71a in step (iv) is at a different angle than an angle of each of the repeating etching in step (iii), since the hillocks resulting from repeating etching steps would have random size, shape, and location, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform an etching to the surface of the substrate while using a nanoparticle or a nano-size island as a mask (step (iii) or (v)) at a different angle to the surface of the substrate than performing the deposition a nanoparticle or a nano-size island (step (ii) or (iv)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform an etching to the surface of the substrate in one of a plurality of repeated step (iii) at a different angle to the surface of the substrate than an etching to the surface of the substrate in one of a plurality of repeated step (v). It is further noted that Fig. 1E shows that the deposition to form the plurality of nano-size islands generates regions adjacent to each one of the surface feature where the metal film is absent, and Fig. 1F shows that the etching in step (v) creates a plurality of voids adjacent to each of the plurality of nano-size islands, wherein the voids impart birefringence to the substrate, as taught by Applicant in claim 1.--Claim 3: Since the depositing a second ultrathin metal film in step (viii) is on a surface that have convex and concave features, at least a portion of the deposition is at an angle that is on a sidewall of the features.--Claims 5, 6: It is noted that the nano-structures form convex and concave features, thus would form linear, dash-like voids, as taught by Applicant.--Claims 9, 13: Hart teaches that the etching may be an RIE etching, such as using high-energy ions ([0060, 0083]).--Claims 2, 4, 16, 18: It is noted that the Fig. 1B indicates the etching in step (iii) is at an angle normal to the surface of the substrate. Hart further teaches that the micro-textured hillocks may have a variety of shapes, such as cones, pyramids, cylinders, tapered cylinders, bumps, mesas, peaks and other similarly-shaped features; and the nano-structure may have a variety of shapes, such as cones, pyramids, cylinders, helices, tapered cylinders, toroids, and the like ([0040]), and that “while the various schematic illustrations of FIGS. 1C and 1G depict one set of nano-textured topographical features disposed on one set of micro-textured topographical features, it is possible for multiple sets of nano-textured and/or micro-textured topographical features to be disposed on the substrate and/or on each other” ([0041]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform the etching to form a vertical rods at the site of the particle in step (iii). It is noted that the deweting step would cause the deposition to form in a direction parallel, i.e. non-normal, to the surface. Fig. 1E shows that the areas adjacent to the micro-textured hillocks are devoid of the deposition materials. It is noted that the hillocks and valleys in Fig. 1E are randomly located, and have different shapes and sizes. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to form at least a liner, dash-like segment of such devoid area adjacent to a hillock.--Claim 19: It is noted that step (vii) and (ix) would remove at least a portion of the hillocks formed in step (iii) or (v).
Claim 8, 11, 17 rejected under 35 U.S.C. 103 as obvious over Hart, as applied to claim 1 above, and further in view of Chen et al. (U.S. PGPub. No. 20130295712), hereinafter “Chen”:--Claims 8, 11, 17: Hart teaches the invention as above. Hart further teaches that multiple sets of nano-textured and/or micro-textured topographical features may be disposed on the substrate and/or on each other ([0041]), and that the ultrathin metal film 62 may be other metals such as Ni, Ag, Au, etc. ([0053]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to also use the metal for the particles of the mask 61. Fig. 1B and 1D show that the etching the substrate through the mask 61 to form a textured surface comprising a plurality of hillocks is in a different angle than the depositing an ultrathin metal film 62, especially on the side of the hillocks, and at different angle than the etching the substrate using the islands 71a as a mask to form a plurality of convex and concave features. It is also noted that since the forming a mask 61 on the substrate 50, etching the substrate through the mask 61, depositing an ultrathin metal film 62 then heating the substrate to dewet the substrate and form a plurality of nano-size islands 71a, and the etching the substrate using the islands 71a are the same as taught by Applicant in claim 1 and Hart fails to teach the feature the particles are metallic nanoparticles. Chen, also directed to a method of texturing a surface, teaches that the texturing may comprise depositing metal nanoparticles on the surface by spin coating ([0076]), then etching the surface using the nanoparticle as a mask ([0071]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to also use metal nanoparticles for the particles of the mask 61 in the invention of Hart because Chen teaches that it would be effective. It is noted that in this section, steps (i), (ii), (iii) and (iv) read on the four steps recited in claim 1, respectively.
Claims 10 and 14-15 rejected under 35 U.S.C. 103 as obvious over Hart as applied to claim 1 above, and further in view of Reichmann et al. (U.S. PGPub. No. 20240347697), hereinafter “Reichmann”:--Claims 10, 14, 15: Hart teaches the invention as above. Hart further teaches that the etching may be an RIE etching, such as using high-energy ions ([0060, 0083]). Hart fails to teach that the etching may use a reactive ion beam. Reichmann, also directed to a method of texturing a substrate, teaches that the texturing may be performed by using plasma etching or reactive ion beam etching ([0015]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a reactive ion beam as an equivalent substitution for the reactive ion etching, as taught by Reichmann, for the etching in the invention of Hart.
Response to Arguments
Applicant's arguments filed June 5, 2026 have been fully considered as follows:--Regarding Applicant’s argument that Hart does not teach depositing metallic material at an oblique angle, this argument is not persuasive. It is noted that the deposition of metallic material in step (iv) above comprising 2 steps, first depositing a metal layer by using a sputtering technique, then deweting the metal layer to form a plurality of islands. It is noted that in the sputtering technique the sputtered materials arrive to the substrate in a direction normal to the substrate; however, due to the local hillocks on the surface, at least some sputtered material arrive to the side of the hillocks at an oblique angle. Since Hart further teaches that the micro-textured hillocks may have a variety of shapes, such as cones, pyramids, cylinders, tapered cylinders, bumps, mesas, peaks and other similarly-shaped features; and the nano-structure may have a variety of shapes, such as cones, pyramids, cylinders, helices, tapered cylinders, toroids, and the like ([0040]), and that “while the various schematic illustrations of FIGS. 1C and 1G depict one set of nano-textured topographical features disposed on one set of micro-textured topographical features, it is possible for multiple sets of nano-textured and/or micro-textured topographical features to be disposed on the substrate and/or on each other” ([0041]), it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform the deposition such that at least some hillocks block at least some sputter materials from arriving to an area adjacent to the hillocks. Fig. 1E clearly show at least some area that do not have the deposition adjacent to a hillock. It is noted that this reads on all claimed features recited in claim 1. It is further noted that since the method may be repeated a plurality of time on the substrate surface, the hillocks resulting from repeating etching steps would have random size, shape, and location, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform an etching to the surface of the substrate while using a nanoparticle or a nano-size island as a mask (step (iii) or (v)) at a different angle to the surface of the substrate than performing the deposition a nanoparticle or a nano-size island (step (ii) or (iv)). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to perform an etching to the surface of the substrate in one of a plurality of repeated step (iii) at a different angle to the surface of the substrate than an etching to the surface of the substrate in one of a plurality of repeated step (v).- Regarding Applicant’s argument that Hart's process does not produce, and is not directed toward, anisotropic void dashes designed to impart birefringence, since Hart teaches that the micro-textured hillocks may have a variety of shapes, such as cones, pyramids, cylinders, tapered cylinders, bumps, mesas, peaks and other similarly-shaped features; and the nano-structure may have a variety of shapes, such as cones, pyramids, cylinders, helices, tapered cylinders, toroids, and the like ([0040]), it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to produce at least some surface features in an area that would cause birefringence within that area.
- According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”.-- It has been established that where an examiner has reason to believe that a characteristic or functional limitation in a claim may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic the applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An examiner’s belief is reasonable where starting materials and processing of the prior art are so similar to those disclosed by the applicant that it appears that the claimed function or property would naturally result when conducting the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255. “Inherency may supply a missing claim limitation in an obviousness analysis’ where the limitation at issue is ‘the natural result of the combination of prior art elements'.'''’ Id. (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014).
Conclusion
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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
