DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Election/Restrictions
Applicant’s election of Group I claims 1, 5-6, 9-11, 14, 19, 23-26, 29-30, 36 and 58, in the reply filed on 12/03/2025, is acknowledged.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
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.
Claim 14 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 14 is depend from canceled claim 13. For the purpose of examination, the claim 14 dependency is considered to depend on claim 1. An appropriated correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5-6, 9-11, 14, 19, 23-24, 26, 29-30, 36 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. (ACS Omega, 2020, 5, 32203-32215), and evidenced by Aliev et al. (Scientific Reports, 2016, 6, 27689, entirely incorporated by reference through Aliev et al., reference #26).
Regarding claim 1, Khan et al. teach zinc oxide nanoparticles (the claimed ZnO stem) with thorn-like morphology (the claimed ZnO nano-porcupines and nanospikes) and hexagonal wurtzite crystalline structure (pages 32203-32205).
The thorn-like nanoparticles ZnO is known as being an elongated ZnO nanostructure and plurality of nano-thorn attached to and extending away from the surface of the nanoparticles, and nano-thorn (the claimed nanospikes) are spread along the length and the circumference of the nanoparticles ZnO (Aliev et al., pages 27689-27689, Fig. 2):
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Regarding claim 5, as discussed above, the nanospikes ZnO taught by the references of Khan et al. and Aliev et al. are wurtzite hexagonal crystal structure, grown along the longitudinal axis of the ZnO particles as shown above (Aliev et al. page 27692).
Regarding claims 6, 14 and 26, as discussed above, the average aspect ratios of length by diameter (L/D) of the nanospike ZnO taught by the references of Khan et al. and Aliev et al.is about 9 nm (Aliev et al., page 27695).And the nano-diameter is 20 nm Aliev et al. page 27694). As such, the length is 180 nm which reads on the instant claimed ranges.
Regarding claim 9, as discussed above, the nanospike ZnO taught by the references of Khan et al. and Aliev et al. is hexagonal crystal structure therefore it has a hexagonal cross-section as the instant claim (FIG.5 on page 27696, Aliev et al.):
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Regarding claims 10-11, as discussed above, the nanospike ZnO taught by the references of Khan et al. and Aliev et al.is nanoneedle and is tapered as the instant claims (FIG.5 page 27696, and page 27697, Aliev et al. ):
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Regarding claim 19, as discussed above, the nanospikes ZnO taught by the references of Khan et al. and Aliev et al. are nanoneedle and are non-tapered as the instant claims (FIG.2 (A) on page 27696, and FIG. 5 and page 27697, Aliev et al. ):
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Regarding claim 23, as discussed above, the nanoparticles ZnO taught by the references of Khan et al. and Aliev et al. are nanospikes spread the whole surface of the nanoneedle as the instant claim.
Regarding claim 24, as discussed above, the nanospikes ZnO taught by the references of Khan et al. and Aliev et al have a wurtzite crystal structure grown perpendicular to the longitudinal axis of the nanospikes.
Regarding claims 29-30, the phrase of "wherein the nano-porcupines are densely packed on the surface of the substrate..” recites in claims 29-30 are interpreted as intended use.
Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the references of Khan et al. and Aliev et al. and et al. teach the same composition as the instant claim, the resulting ZnO nano-porcupines would expect to be capable of densely packed on the surface of a substrate per applicant claims 29-30. Therefore it meets the claim limitations.
Regarding claim 36, since the references of Khan et al. and Aliev et al. teach all of the claimed ZnO nanospikes, the physical properties of the resulting composition (i.e., a contact angle) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 58, ZnO nanospikes taught by the references of Khan et al. and Aliev et al. growth along the length (c-axis) (page 27695). As such, the angle is between 00 and 900 as the instant claim.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. and Aliev et al. as applied to claim1 above, and further in view of Shinde et al. (Applied Surface Science, 307, 2014, 495-502, entirely incorporated by reference through Aliev et al., reference #38).
Regarding claim 25, although Khan et al. and Aliev et al. do not specifically disclose the nanospikes having a spheroidal cross-section as per applicant claim 25.
Khan et al. and Aliev et al. develop reaction parameter for controlling growth shape of ZnO nanoparticles.
Shinde et al. teach making microsphere ZnO (pages 495-498). As such, the results ZnO microsphere has a spheroidal cross-section.
A particular reaction parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, evidenced by Shinde et al. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).