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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/22/26 has been entered.
Election/Restrictions
Claims withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/22/25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8, 10, 12-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amendment to claim 8, in whole, is found to be new matter. The cited support of Fig. 3A-3C and associated text describe forming the optical device (3A) by applying the first and second nanoparticles (3B) and stamping (3C). There is no description of a superposed optical coating over the optical device structure or third and fourth nanoparticles. The remaining claims are merely rejected for depending from claim 8.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8, 10, 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watkins (US 2020/0020461 A1).
Watkins teaches a method for forming patterned nanostructures made up of nanoparticles (abstract). A nanoparticle coating is applied on a rigid substrate [0090], imprinted with a patterned mold [0090], and cured [0091]. The nanoparticle coating comprises any combination of nanoparticles including of dissimilar compositions [0085]. The applications for this structure include optically transparent conductive oxide structures [0098] and optically transparent AR structures [0101], both of which are optical device structures.
Watkins does not teach the optically transparent nanoparticles comprise greater than 95% of a first plurality of nanoparticles and a second plurality of nanoparticles.
However, Watkins does teach using combinations of nanoparticles including optically transparent nanoparticles having different compositions [0085; 0098; 0101]. Watkins does teach using combinations of 2 nanoparticles specifically [0085], but also the selection of nanoparticles and their amounts in the combination would have been obvious based on the desired properties in the resulting layer, such as transparency, conductivity, refractive index [0098; 0101].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Watkins and have the first and second plurality of nanoparticles comprise greater than 95% of optically transparent nanoparticles in the layer. Watkins does teach using combinations of 2 nanoparticles specifically [0085], but also the selection of nanoparticles and their amounts in the combination would have been obvious based on the desired properties in the resulting layer, such as transparency, conductivity, refractive index [0098; 0101].
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watkins (US 2020/0020461 A1) in view of Zhang (US 2022/0204790).
Watkins does not teach applying the nanoparticle composition by inkjet. However, Zhang teaches a method for inkjet printing a nanoparticle formulation (abstract). The nanoparticle formulation is an inkjet ink comprising a curable base resin [0079], solvent [0082], and the nanoparticles [0085]. The nanoparticles include TiO, NbO, ZrO, and combinations thereof [0085]. The listed nanoparticles are known to be optically transparent. The process includes inkjetting the nanoparticle formulation [0112-0113] and then curing the nanoparticle formulation [0121].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Watkins and apply the nanoparticle composition by inkjet. Zhang teaches a substantially similar composition is applied by the inkjet method, and there is no technical barrier to merely selecting inkjet for supplying the composition to the surface of the substrate.
Response to Arguments
Applicant's arguments filed 4/22/26 have been fully considered but they are not persuasive.
In addition to the new matter issue addressed above, Watkins does teach stacked layers of the nanoparticles [0086-0087].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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