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 .
Response to Amendment
The amendments filed 07 July 2026 have been entered. Claims 1 and 11 are amended. Claim 10 is amended. Claims 1-9 and 11-13 are pending and have been fully considered.
The previously set forth objection of claim 1 is withdrawn in view of the amendments to the claim.
Response to Arguments
Applicants’ arguments filed 07 July, 2026, have been fully considered.
With respect to the rejections of independent claim 1 under 35 U.S.C. 102, the applicant alleges that the cited prior art—Natan et al. (US 2001/0029752 A1) and Lee et al. (US 2017/0260347 A1)—does not teach all limitations of claim 1 as amended, especially with respect to the limitation indicating that “the metallic nanoparticles form a grain boundary themselves or with molecules of ambient substances, and the metallic nanoparticles are combined with the grain boundary to form the doped structure”; the applicant further argues that there is insufficient basis to conclude that the feature[s] set forth in said limitation necessarily and inevitably results from the process of Natan or Lee (applicant’s response filed 07 July, 2026, pages 6-11).
Particularly, the applicant’s arguments sets forth that a “grain boundary is an interface separating two individual crystal (grains) with different crystallographic orientations within a polycrystalline material”, and that the claimed grain boundary refers to “a structure located at particular microscopic locations formed at the metallic nanoparticles themselves, at the joint boundary around the metallic nanoparticles, or at the creased deformation position of the ambient substance molecules doped with and compressed by the metallic nanoparticles” (page 8, bottom paragraph). The applicant’s arguments further attempt to distinguish the claimed boundary, which is indicated to result from “microscopic stress and compressive deformation generated when the particles penetrate into the substrate” (page 9, lines 1-2), from the structures formed in Natan and Lee. With respect to Natan, the applicant alleges that the structural relaxation described by Natan (at [0019]) would release and eliminate microscopic stresses, and thus render it “physically impossible” to form the claimed grain boundary which is formed by a strong compressive effect resulting from particles doping and compression (page 9, final two paragraphs); the applicant also alleges the office has not provided sufficient scientific evidence or technical reasoning to establish that the process of Natan would necessarily and inevitably produce the claimed grain boundary (page 10, lines 3-17). With respect to Lee, the applicant emphasizes that Lee does not disclose or discuss a grain boundary as claimed (pages 10-11).
Additionally, with respect to the rejections under 35 U.S.C. 103 relying on the combination of Natan and Tsung (US 2022/0152252), the applicant alleges there is not suitable or proper motivation for combination of Natan and Tsung, that Natan and Tsung relate to completely different technical fields, and combination of these teachings are contradictory and conflictive (page 13, 2nd to last paragraph). Particularly, the applicant essentially argues that Natan is incompatible with Tsung because Natan is intended for developing a flat optical reference standard, whereas Tsung is interested in a substrate with an uneven surface morphology to achieve haze removal and antibacterial effects (pages 13-15). The applicant further asserts that Natan and Tsung fail to explicitly disclose the claimed “Tamm plasmon polariton” and “optical Tamm state”, alleging that the multi-layer structure of Tsung generates composite surface plasmon waves which are distinct form an optical Tamm state (pages 16-17).
In response to the applicant’s arguments with respect to claim 1, it is first emphasized that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As originally filed, claim 1 only clearly required forming a metallic nanoparticle layer (S2) on a light-transmitting substrate (S1), heating the substrate so that the substrate softens and the metallic nanoparticles permeate the light-transmitting substrate (S3), and cooling the substrate doped with the metallic nanoparticles to room temperature (S4). As indicated in the previously set forth rejection of claim 1 under 35 U.S.C. 102, Natan fairly teaches steps consistent with the actual manipulative steps laid out in the method (e.g., see Natan at claim 1, [0021]). As amended, claim 1 further recites that the metallic nanoparticles form a grain boundary themselves or with molecules of ambient substances, and the metallic nanoparticles are combined with the grain boundary to form the doped structure.
The broadest reasonable interpretation of this limitation requires that the method results in a grain boundary existing within the metallic nanoparticles of the doped structure, between metallic nanoparticles of the doped structure, or between the nanoparticles and ambient substances (e.g., the substrate material), wherein a grain boundary is an interface between two crystallites (grains) in a polycrystalline material. Consequently, it is understood that the metallic nanoparticles (optionally in combination with the substrate/ambient substances) must have or define a polycrystalline structure after the cooling step of the claimed method.
The applicant’s arguments emphasize one type of grain boundary referred to in the specification, which is formed at a creased deformation portion of ambient substance molecules doped and compressed by metallic nanoparticles (instant specification at [0033]), and alleges that such a grain boundary cannot exist in the structure formed by the method of Natan because the substrate of Natan is heated to a relaxation point which would eliminate a compressive effect of the nanoparticles so that creased deformation portion could not form (applicant’s response at pages 8-9). Regardless of the veracity of this argument, the argument only addresses one example of a grain boundary that can be present in the doped structure formed by the instant claim. The language of claim 1 as currently presented also encompasses any grain boundary which may exist within or between metallic nanoparticles, and claim 1 does not limit or require the grain boundary as being formed at a creased deformation portion. Therefore, the applicant’s allegation that Natan does not teach a creased deformation portion is not sufficient to establish that Natan does not teach each limitation of claim 1, because claim 1 does not require a creased deformation portion.
Additionally, as indicated in the original rejection of claim 10 under 35 U.S.C. 102, there is a reasonable presumption that the method of Natan must result in the metallic nanoparticles form[ing] a grain boundary themselves or with molecules of ambient substances because the steps of the process of Natan are identical/indistinguishable from the actual manipulative steps set forth by claim 1; i.e., since the steps are not distinguishable, it is presumed they must achieve the same result. The examiner holds that this reasoning constitutes a rationale as required by MPEP 2112(IV.) to support the presumption of inherency, and that the applicant has not met the requirement of MPEP 2112(V.) to show that the claimed feature is necessarily not present in the prior art (at least because the applicant’s argument focused on a particular type of grain boundary and failed to establish that none of the types of grain boundary encompassed by the broadest reasonable interpretation of the claim are present in the prior art).
Furthermore, if the limitation added by amendment to claim 1 with respect to a grain boundary is construed to require an explicit teaching of a grain boundary, it is noted that in the analogous art of nanostructures (nanocrystalline photocatalyst—abstract), Ho et al. (US 2014/0147377 A1) indicates that a greater density or amount of atoms located at a grain boundary of a nanocrystalline photocatalyst is associated with a greater degree photocatalytic activity (see abstract, [0008], [0021], [0065],[0098], claim 41). Also, the method of Natan is directed at immobilizing nanoparticles within a glass surface (abstract) while maintaining certain properties of the nanoparticles ([0016]), wherein Natan contemplates non-spherical nanoparticle shapes ([0013]) and encourages adaptation of the method by different selections of metal, nanoparticle size and number, glass, and annealing conditions to achieve desired optical properties ([0025], [0027]). Combining these teachings, it would be obvious to a person having ordinary skill in the art to adapt the method of Natan such that the nanoparticles of Ho [which include increased grain boundary density] are selected for use in the method of Natan, and/or the method of Natan is adapted to incorporate techniques of Ho to yield nanoparticle structures with increased grain boundary densities, for the benefit of yielding a composite structure with a photocatalytic property (see Ho at abstract, [0008], [0021], [0065],[0098], claim 41).
Accordingly, the rejection of claim 1 under 35 U.S.C. 102 as being unpatentable over Natan is maintained and set forth alongside an alternative rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over the combination of Natan and Ho; the grounds of rejection are as set forth below.
In response to applicant’s arguments with respect to Lee, the previously set forth rejections under 35 U.S.C. 102 over Lee are withdrawn in view the amendments to the claims, and the claims are instead rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lee and Ho for similar reasons as discussed with respect to the combination of Natan and Ho above; the grounds of rejection are as set forth below.
In response to the applicant’s arguments with respect to the rejection of claim 11 under 35 U.S.C. 103 over the combination of Natan and Tsung, the examiner does not find the arguments persuasive. The applicant’s arguments rely on an interpretation of the disclosure of Natan as being limited to the technical field of Near-Field Scanning Optical Microscopy (NSOM) and primarily concerned with forming a flat reference surface for NSOM (see applicant’s response at page 13, final paragraph, page 14, paragraph 4, and page 15, paragraphs 1 and 3-4). The examiner does not find this interpretation of Natan to be reasonable. Although Natan discloses NSOM as an exemplary use case of composite structure formed by the method of Natan (see [0025]: Because the nanoparticles are annealed to the glass, the resulting composite is stable and can be used as a reference for standardizing NSOM measurements…selecting conditions so that the particles are entirely submerged in the glass results in…little or no associated surface topography), it is clear that the disclosure of Natan as a whole is directed toward a broader method of embedding nanoparticles (either partially or entirely) in a glass substrate with tunable parameters which can be adjusted to form a composite nanoparticle glass structure which achieves desired optical properties (see [0027]: “Methods using some or all of the advantageous principles of the present invention may be applied in a wide variety of specific systems. The methods and examples disclosed herein are typical and illustrative, and are not to be regarded as limiting the scope of the invention or manner in which it may be practiced”; Abstract: “a method for the preparation of colloidal metal nanoparticles imbedded in a glass surface is disclosed”; [0025]: “Using the methods described above, a composite can be made that has well-defined optical properties. Indeed, by selecting the metal, nanoparticle size and number, glass used, and annealing conditions, the optical properties can be varied or "tuned" as desired for a particular purpose”). It is emphasized that Natan discloses various heating conditions which achieve different extents of embedding ([0008]-[0010], [0022]-[0024])—including embodiments wherein nanoparticles are not fully embedded beneath the glass surface (twelve nm features can still be observed on the surface after annealing…smaller features present a few nanometers above the surface of the glass—[0022])—and Natan encourages tuning process parameters to achieve desired optical properties ([0025], [0027]).
Accordingly, applicant’s arguments against the combination of Natan and Tsung on the basis that the references lack compatibility is not persuasive because the argument relies on an inappropriately narrow interpretation of the disclosure of Natan in order to construct an alleged incompatibility between the flat surfaces of Natan and the textured surface of Tsung. Instead, the examiner holds that the disclosure of Tsung—which includes the formation of a bacteriostatic film (Fig. 7) by coating nanoparticles (24) onto the surface of a light-transmitting ([0026]) substrate material layer (10) and subjecting the structure to heat so that the nanoparticle (24) infiltrate or diffuse into the substrate material layer 10 ([0041])—clearly corresponds and is compatible with Natan’s method of embedding nanoparticles in a glass surface (discussed above).
Also, to the extent that the applicant’s arguments seek to establish non-analogousness between Natan and Tsung, it is emphasized that, as per MPEP 2141.01(a): When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023). Thus, the applicant’s allegations that Natan and Tsung are in different technical fields—alone—is not sufficient to preclude their combination.
Instead, the test for analogousness requires a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). As is evident from the discussion of Natan above, Natan is clearly analogous with the claimed invention because they are both in the field of nanoparticle-glass composite structures (e.g., see instant claims 1 and 3, and Natan at abstract, claim 1) and are reasonably pertinent to the problem of achieving desired optical properties within such composites. Tsung is similarly analogous to the instant claims (see Tsung at [0041] discussing heating a substrate coated with nanoparticles such that the nanoparticles permeate into the substrate). Thus, both Natan and Tsung are analogous to the instant invention and appropriately combined.
With respect to the applicant’s argument that the combined teachings of Natan and Tsung cannot achieve the claimed Tamm Plasmon Polariton or Optical Tamm State because the references do not teach the claimed grain boundary, the examiner disagrees. As indicated above, it can reasonably be inferred that the method of Natan yields a grain boundary consistent with the claim; accordingly, when modifying Natan in view of Tsung as set forth in rejection of claim 11 above, the modified method yields a set of manipulative steps indistinguishable from the claimed steps such that it can fairly be presumed that the modified method yields the claimed Tamm Plasmon Polaritons and Optical Tamm State. Alternatively, it would be obvious to modify the method of Natan in view of Ho to ensure that the formed composite structure comprises a high density of grain boundaries (as discussed above), and to further modify said method in view of Tsung to yield a set of manipulative steps indistinguishable from the claimed steps, such that it can fairly be presumed that the modified method yields the claimed Tamm Plasmon Polaritons and Optical Tamm State. Accordingly, the previously set forth rejection of claim 11 is substantially maintained with modification to address the amendments to the claims; the ground of rejection are set forth below.
It is suggested that the independent claim(s) be adjusted to clearly set forth the actual manipulative steps and conditions thereof which yield the desirable optical and self-cleaning properties of the instant invention (e.g., a composition, size, and/or shape of the metallic nanoparticle, a substrate material, a range of softening temperatures, a duration of the heating step); such amendments would help to to better establish the scope of the claim and potentially provide a clear basis for distinction from the prior art. Clarifying the structural limitations on the end product (such as an extent of nanoparticle permeation, or an arrangement or degree of agglomeration of nanoparticles within the substrate) may also provide some distinction from the prior art, but such structural limitations should be clearly tied to a difference in how the method is performed relative to the prior art.
Claim Rejections - 35 USC § 102 and 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1&2) as being anticipated by Natan et al. (US 2001/0029752 A1), or, in the alternative, under 35 U.S.C. 103 as obvious over Natan et al. (US 2001/0029752 A1) in view of Ho et al. (US 20140147377 A1).
Regarding claim 1, Natan teaches methods for the preparation of metal nanoparticle and glass composites, wherein the nanoparticles are imbedded in a glass surface (abstract). The method of Natan comprises:
[Step S1] providing a light-transmitting substrate having a surface (BK7 glass slide—[0014]; the glass may be of any type, with other suitable glasses including SF11 glass slides, and glass coverslips—[0013]);
[Step S2] forming a nanoparticle layer having a plurality of metallic nanoparticles on the surface (slides were immersed in a solution of 12 nm colloidal Au particles for 60 minutes—[0014]; slides were dried and placed colloid side up in a furnace on mica sheets—[0015]; monolayer of colloidal metal nanoparticles attached to glass surface—[0013]),
[Step S3] heating the light-transmitting substrate to a softening temperature and keep heating for a heating time allowing the light-transmitting substrate to enter a softened status, so that the metallic nanoparticles permeate the light-transmitting substrate; and (slides were heated for various amounts of time at either the softening point or the transformation temperature of the glass—[0015]; formation of aggregates of particles as they sink into the glass—[0016]; particles sink into the glass surface—[0021]; metal nanoparticles are immobilized in a glass matrix by thermally annealing a monolayer of colloidal metal nanoparticles that are attached to a glass surface—[0013]; the nanoparticles of Natan ‘sinking’ into the glass matrix constitutes the nanoparticles permeating the substrate).
[Step S4]: cooling the light-transmitting substrate doped with the metallic nanoparticles to a room temperature for the metallic nanoparticles to form a doped structure in the light-transmitting substrate (claims 1 and 11: cooling the glass surface, whereby a composite of glass and colloidal metal nanoparticles is created; cooling—[0026]).
With respect to the cooling step of Natan, it is noted that Natan does not indicate that the doped substate is stored at an elevated or refrigerated temperature and Natan does indicate the heating step is for a finite number of minutes. Thus, it is evident to a person having ordinary skill in the art that the composite structure formed by the method of Natan will necessarily cool back down to an ambient room temperature after the heating.
As the steps of Natan outlined above are indistinguishable from the claimed steps, the method of Natan is presumed to necessarily yield a light-triggered light-transmitting cleaning structure consistent with claim 1, wherein the metallic nanoparticles form a grain boundary themselves or with molecules of the ambient substances, and the metallic nanoparticles are combined with the grain boundary to form the doped structure.
Alternatively, if the language of “the metallic nanoparticles form a grain boundary themselves or with molecules of the ambient substances” is interpreted to require explicit disclosure of a grain boundary, then Natan does not clearly teach this feature of the claim.
However, in the analogous art of nanostructures (nanocrystalline photocatalyst—abstract), Ho et al. (US 2014/0147377 A1) indicates that a greater density or amount of atoms located at a grain boundary of a nanocrystalline photocatalyst is associated with a greater degree of photocatalytic activity (see abstract, [0008], [0021], [0065],[0098], claim 41). The nano structures of Ho may comprise various metal oxides (metal oxide—[0016]—comprising titanium, zinc, tungsten, iron, or other metal oxides—[0088]; TiO2 or ZnO—[0092]) and metals (nickel, copper, molybdenum, silver, platinum, gold, cerium, erbium, europium, and other transition or lanthanide metals—[0020]; [0105]). Ho also suggests attaching the photocatalyst structure toa surface (photocatalyst applied as an attachment toa surface—[0112]).
Additionally, the method of Natan is directed at immobilizing nanoparticles within a glass surface (abstract) while maintaining certain properties of the nanoparticles ([0016]), wherein Natan contemplates non-spherical nanoparticle shapes ([0013]) and encourages adaptation of the method for various purposes by different selections of metal, nanoparticle size and number, glass, and annealing conditions to achieve desired optical properties ([0025], [0027]).
Combining these teachings, it would be obvious to a person having ordinary skill in the art to adapt the method of Natan such that the nanoparticles of Ho [which include increased grain boundary density] are selected for use in the method of Natan, and/or the method of Natan is adapted to incorporate techniques of Ho to yield nanoparticle structures with increased grain boundary densities, for the benefit of yielding a composite structure with an enhanced photocatalytic property (see Ho at abstract, [0008], [0021], [0065],[0098], claim 41).
Regarding claim 2, Natan [or Natan in view of Ho] teaches the manufacturing method of claim 1. Natan further teaches the light-transmitting substrate is formed of an insulating material (glass of any type, such as SF11 glass slides, BK7 microscope slides, and glass coverslips—[0013]; glass is an insulating material, which is supported by the instant specification at page 8, lines 6-9).
Regarding claim 3, Natan [or Natan in view of Ho] teaches the manufacturing method of claim 2. Natan further teaches the light-transmitting substrate is formed of glass (glass of any type, such as SF11 glass slides, BK7 microscope slides, and glass coverslips—[0013]).
Regarding claim 4, Natan [or Natan in view of Ho] teaches the manufacturing method of claim 3. Natan further teaches the metallic nanoparticles are nanometer-sized metal materials (Many of the examples and embodiments herein describe the use of colloidal Au nanoparticles, but it is to be understood that any other metal is also contemplated…For example, metals include but are not limited to Ag, Cu, Al, or alloys comprised of two or more of Au, Al, Ag, and Cu—[0013]; 12 nm Au particles—[0014]).
Regarding claim 5, Natan [or Natan in view of Ho] teaches the manufacturing method of claim 3. Natan further teaches the softening temperature is a softening point temperature of the glass (the slides were heated for various amount of time at the softening point temperature of the glass…for BK7 glass, this is 557°C—[0015]).
Claims 1-2 and 7-9 are rejected under 35 U.S.C. 103as being unpatentable over Lee et al. (US 2017/0260347 A1) in view of Ho et al. (US 20140147377 A1).
Regarding claim 1, Lee teaches a method for producing a nanocomposite film, the method comprising generating a bilayer film including a first layer of nanoparticles and a second layer of a material, and annealing (claim 1). The method of Lee includes embodiments wherein the nanoparticles are oxide nanoparticles or metal nanoparticles (claim 15; oxide nanoparticles, e.g. SIO2, TiO2, Al2O3, or metal nanoparticles, e.g., gold, silver—[0060]) and the second layer material is an amorphous material such as polystyrene, polymethylmethacrylate, polysulfone, polyetherimide, polyvinyl chloride, or polycarbonate (claim 12; [0063]), with a particular embodiment requiring a first layer of oxide nanoparticles and a second layer of polystyrene material ([0067]) wherein the annealing comprises heating the film above the glass transition temperature of polystyrene (claim 16; [0071], [0074]).
See Figs. 5-6 of Lee below, showing the process (100) of providing a bilayer comprising titanium dioxide nanoparticles (510) arranged on a surface of a polystyrene layer (520) and annealing by heating ([0089]-[0091]).
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Thus, Lee teaches a method comprising steps of:
[Step S1]: providing a light-transmitting substrate having a surface (e.g., polystyrene layer 520 defines a substrate having a surface—see Figs. 5-6, [0089]);
[Step S2]: forming a nanoparticle layer (510) having a plurality of metallic nanoparticles on the surface (layer of titanium dioxide nanoparticles 510 provided on surface of polystyrene layer 520—see Figs. 5-6, [0089]—thus implying a step of forming said layer);
[Step S3]: heating the light-transmitting substrate to a softening temperature and keep heating for a heating time allowing the light-transmitting substrate to enter a softened status, so that the metallic nanoparticles permeate the light-transmitting substrate (bilayer structure is annealed at a temperature above the glass transition temperature of polystyrene, so that the polystyrene at the heightened temperature infiltrates the voids 515 between nanoparticles 510—[0089]-[0090]; viewing Figs. 5-6, the infiltration of the softened polystyrene into the nanoparticle layer can also fairly be described as the nanoparticles falling or permeating into the softened polystyrene); and
[Step S4]: cooling the light-transmitting substrate doped with the metallic nanoparticles to a room temperature for the metallic nanoparticles to form a doped structure in the light-transmitting substrate (Reducing the temperature to below the glass transition temperature of polystyrene causes the infiltrated polystyrene polymer to solidify, yielding a polymer nanocomposite film of polystyrene and titanium dioxide—[0090]; a related embodiment cools to room temperature—[0082]—and it is otherwise fairly implied that the film is used and stored at ambient conditions, such that the film necessarily will cool to an ambient room temperature).
As the steps of Lee outlined above appear identical to the claimed steps, it may be presumed that they result in the forming of a light-triggered light-transmitting cleaning structure, wherein the metallic nanoparticles form a grain boundary themselves or with molecules of ambient substances, and the metallic nanoparticles are combined with the grain boundary to form the doped structure; nonetheless, these features are not explicitly disclosed by Lee.
However, in the analogous art of nanostructures (nanocrystalline photocatalyst—abstract), Ho et al. (US 2014/0147377 A1) indicates that a greater density or amount of atoms located at a grain boundary of a nanocrystalline photocatalyst is associated with a greater degree of photocatalytic activity (see abstract, [0008], [0021], [0065],[0098], claim 41). The nano structures of Ho may comprise various metal oxides (metal oxide—[0016]—comprising titanium, zinc, tungsten, iron, or other metal oxides—[0088]; TiO2 or ZnO—[0092]) and metals (nickel, copper, molybdenum, silver, platinum, gold, cerium, erbium, europium, and other transition or lanthanide metals—[0020]; [0105]). Ho also suggests attaching the photocatalyst structure to a surface (photocatalyst applied as an attachment toa surface—[0112]).
Also, it is emphasized that the process of Lee is intended to develop nanocomposite films having surfaces of nanoparticles that are robust and structurally stable while maintaining their functional properties ([0109]), Lee discloses the use of catalytic nanoparticles (claim 15), and that Lee suggests embodiments wherein the method is tuned to form structures comprising voids such that surfaces of the nanoparticle remain exposed ([0077]-[0079], [0084]).
Therefore, it would be obvious to a person having ordinary skill in the art to adapt the process of Lee such that the nanoparticles of Ho [which include increased grain boundary density] are selected for use in the method of Lee, and/or the method of Lee is adapted to incorporate techniques of Ho to yield nanoparticle structures with increased grain boundary densities, for the benefit of yielding a structurally stable nanocomposite film (see Lee at [0109]) with an enhanced photocatalytic property (see Ho at abstract, [0008], [0021], [0065],[0098], claim 41). As modified, the process of Lee necessarily yields a structure comprising metallic nanoparticles which define grain boundaries, thus yielding the claimed light-trigger cleaning structure.
Regarding claim 2, Lee in view of Ho teaches the manufacturing method of claim 1. Lee further teaches that the light-transmitting substrate is formed of an insulating material (polystyrene 520—[0089]; the instant specification at page 8, lines 6-8 and 11-12 recognizes polystyrene as a suitable light-transmitting and insulating material for the claimed substrate).
Regarding claim 7, Lee in view of Ho teaches the manufacturing method of claim 2. Lee further teaches the light-transmitting substrate is formed of an amorphous polymer (amorphous polystyrene—[0063], [0071], claim 12).
Regarding claim 8, Lee in view of Ho teaches the manufacturing method of claim 7, and further teaches the metallic nanoparticles are nanometer-sized metal oxide materials (titanium dioxide nanoparticles 510—[0089]; titanium dioxide is a metal oxide, and a nanoparticle is definitionally sized at the nanometer scale).
Regarding claim 9, Lee in view of Ho teaches the manufacturing method of claim 7. Lee teaches that the softening temperature is above a glass transition temperature (Tg) of the amorphous polymer (bilayer structure annealed at a temperature above the glass transition temperature of polystyrene—[0090]—e.g., 130 °C—[0091]; Tg of polystyrene with an average molecular weight of 8000 g/mol is 87°C—[0092]).
Lee does not particularly indicate that the softening temperature is also less than a viscous flow temperature (Tf) of the amorphous polymer. Ho does not disclose the claimed softening temperature.
However, Lee recognized that the amorphous polymer has a lower viscosity at higher temperatures, which affects the speed of a capillary affect that embeds the nanoparticles within the amorphous polymer (As the annealing temperature is increased above Tg, the CaRI of the polystyrene is accelerated significantly. The plotted curves indicate that the behavior of the liquid PS is consistent with the behavior of common liquids undergoing capillary rise into porous media, such as the TiO2 layer. At the highest temperature, 130° C., the height of the composite polystyrene/TiO.sub.2 layer increases the fastest over time, indicating a faster capillary rise at higher temperatures above Tg. At the lower temperatures, 125° C. and 120° C., the capillary rise action still occurs, but at successively slower rates—[0094]). Also, it is noted that Lee contemplates different types of amorphous polymer materials ([0063]). Additionally, the range of “above the glass transition temperature” ([0071]) disclosed by Lee overlaps with the claimed range of between a glass transition temperature and a viscous flow temperature (Tf) of the amorphous polymer.
Therefore, it would be obvious to a person having ordinary skill in the art to select a temperature within the overlapping portion of the claimed and prior art range (i.e., a temperature between a glass transition temperature and a viscous flow temperature of the amorphous polymer) for the benefit of controlling the extent of the imbedding of the nanoparticles in the amorphous polymer (e.g., a temperature only just above the glass transition temperature would slow the imbedding of the nanoparticles due to the higher polymer viscosity at said temperature [relative to lower viscosities at higher temperatures]—see Lee at [0063]). Additionally, for materials with viscous flow temperatures that are significantly higher than their glass transition temperature, heating to a temperature between the glass transition temperature and viscous flow temperature can advantageously reduce energy expenditure (i.e., by avoiding excessive heating above the viscous flow temperature) while remaining sufficient to facilitate the imbedding of the nanoparticles.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Natan et al. (US 2001/0029752 A1), or alternatively, Natan et al. (US 2001/0029752 A1) in view of Ho et al. (US 20140147377 A1).
Regarding claim 6, Natan [or Natan in view of Ho] discloses the manufacturing method of claim 3. Natan indicates that various heating times may be utilized in the method (the slides were heated for various amounts of time at either the softening point or the transformation temperature of the glass—[0015]), although the only exemplary heating time disclosed by Natan is thirty minutes (thirty minutes—[0006], [0009], [0012], [0017], [0022], and [0026]). Thus, Natan [or the combination of Natan and Ho] does not particularly teach the heating time ranges from 3 to 20 minutes.
However, as per MPEP 2144.05(II.)(A.), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, Natan indicates various heating times may be suitable ([0015]), and Natan indicates that adjusting the annealing conditions can allow for tuning of the structure’s optical properties for a desired purpose ([0025]). Therefore, it would be obvious to a person having ordinary skill in the art to modify [or further modify] the method of Natan such that the heating period lasts for a time within the claimed range of 3 to 20 minutes by way of routine optimization of the annealing conditions for the benefit of achieving desired optical properties (see Natan at [0025]).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Natan et al. (US 2001/0029752 A1) in view of Tsung (US 2022/0152252 A1), or alternatively, Natan et al. (US 2001/0029752 A1) in view of Ho et al. (US 20140147377 A1) and further in view of Tsung (US 2022/0152252 A1).
Regarding claim 11, Natan [or Natan in view of Ho] teaches the light triggered light-transmitting cleaning structure generated by the method of claim 1. Natan does not teach a method of using the structure comprising: [Step S5]: irradiating the light-triggered light-transmitting cleaning structure with a light source, such that the light source causes a surface plasmon polariton to be formed on a surface of the metallic nanoparticles of the doped structure, and a Tamm plasmon polariton is formed at the grain boundary of the doped structure, whereby the surface plasmon polariton and the Tamm plasmon polariton resonate with each other to form an optical Tamm state; and [Step S6]: performing an interactive oscillation between the optical Tamm state and the ambient substances of the light-triggered light-transmitting cleaning structure to form a cleaning substance, which spreads outward from a periphery of the light-triggered light-transmitting cleaning structure to remove a pollutant around the light-triggered light-transmitting cleaning structure.
Alternatively, the combination of Natan and Ho does not teach all features of steps S5 and S6 of claim 11 (although Ho does generally discuss using a nanostructured photocatalyst by irradiating the photocatalyst with light, especially visible light—see claim 63, [0083]).
However, Tsung, in the analogous art of inhibiting bacteria with surface plasmon wave effects (abstract), teaches an embodiment of a bacteriostatic film (Fig. 7) comprising a particle suspension layer (11), the particle suspension layer formed by coating nanoparticles (24) onto the surface of a substrate material layer (10) to form a particle stacked film layer (21) and subjecting the structure to high heat or other conditions so that the nanoparticle (24) infiltrate or diffuse into the substrate material layer 10 ([0041]). Tsung further indicates that the substrate material layer (10) is a light-transmitting material ([0026]), and from related embodiments it is evident that the suspension layer (11) of Tseung is configured to generate localized surface plasmon resonance ([0025]) and the stacked film layer (21) generates surface plasmon resonances, the layers together generating a composite surface plasmon wave ([0032]). Tsung further teaches exciting the bacteriostatic film by irradiating the bacteriostatic film with visible light, which causes the resonance of and multiple different types of surface plasmon waves imbedded in the structure, thus yielding a composite surface plasmon wave ([0034]). The composite surface plasmon wave is capable of ionizing humidity to form hydroxide ions which have a bactericidal effect ([0034]). Tseung further discusses how the excitation mechanism includes generating electron oscillations ([0034]).
From the above, it is evident that the bacteriostatic film (Fig. 7) of Tsung corresponds to the structure (glass with at least partially embedded nanoparticles) formed by the method of Natan (see rejection of claims 1 and 10 above). To the extent that there may be any differences between the bacteriostatic film (Fig. 7) of Tsung and the structure of Natan, it would be obvious to a person having ordinary skill in the art to adapt the technique of Natan (which comprises depositing nanoparticles on a glass substrate surface and heating the glass to a softening temperature in order to imbed nanoparticles within the glass—see Natan at, e.g., claim 1, and the rejection of instant claim 1 above) to form the bacteriostatic film of Tsung (Fig. 7) for the benefit of driving nanoparticles to infiltrate into the substrate material (see Tsung at [0041] discussing how a nanoparticle layer 21 is coated on a surface of a substrate material 10 and the nanoparticles 24 are made to infiltrate or diffuse into the substrate material 10; the method of Natan is a known method for driving nanoparticles to infiltrate into a substrate, consider Natan at [0016], [0021], and [0026] discussing how particles sink into the surface of the glass as a result of the method of Natan). That is, it would be obvious to improve the known device of Tsung (bacteriostatic film of Fig. 7) by forming the device of Tsung using the known technique of Natan (coating a substate with nanoparticles and heating to a softening temperature—see. e.g., claim 1 of Natan, and the rejection of instant claim 1 above) for the benefit of enabling the fine tuning of the optical properties of the device (Natan at [0025] indicates that by selection of annealing conditions and other properties such as nanoparticle size and number, optical properties can be varied or tuned for a particular purpose); see MPEP 2143(D.) regarding the obviousness of applying a known technique to a known device to yield predictable results.
Furthermore, it would be obvious to a person having ordinary skill in the art to irradiate the structure of Natan (or the structure of the combination of Natan and Tsung) with visible light for the benefit of generating bactericidal ions (see Tsung at [0064] discussing how visible light interacting with the bacteriostatic film leads to the formation of bactericidal hydroxide ions; also see the above paragraph discussing how the structure of Natan is consistent with the bacteriostatic film of Fig. 7 of Tsung, and how it would otherwise be obvious to form the structure of Fig. 7 of Tsung using the process of Natan).
Thus modified, the combination of Natan and Tsung teaches irradiating the light-triggered light-transmitting cleaning structure of claim 10 with a light source. As best understood, the further language of claim 11 refers to effects resulting from the irradiation of the structure of claim 10 with the light source, and claim 11 does not clearly set forth any further active steps for performing the claimed cleaning method. Accordingly, the irradiation of the structure of Natan (or the structure of the combination of Natan and Tsung) with visible light as set forth above is presumed to result in: a surface plasmon polariton being formed on a surface of the metallic nanoparticles of the doped structure, and a Tamm plasmon polariton being formed at the grain boundary of the doped structure, whereby the surface plasmon polariton and the Tamm plasmon polariton resonate with each other to form an optical Tamm state; and the prior art (combination of Natan and Tsung) cleaning method is further presumed to encompasses a step S6 of performing an interactive oscillation between the optical Tamm state and the ambient substances of the light-triggered light-transmitting cleaning structure to form a cleaning substance, which spreads outward from a periphery of the light-triggered light-transmitting cleaning structure to remove a pollutant around the light-triggered light-transmitting cleaning structure.
This finding is supported by Tseung describing the bacteriostatic film operating by a bactericidal mechanism which corresponds to the language of instant claim 11, said bactericidal mechanism including emitting visible light to generate electron oscillations which are enhanced by different types of plasmon resonance effect and which lead to the ionization of substances in air, especially water molecules ([0034], [0035]), which can propagate to fill an entire space or area ([0036]); ionized water vapor and oxygen inhibit the growth of bacteria and decompose dirt ([0034], [0035]).
Alternatively, the proposed combination of Natan and Tsung set forth above can further include the modification of Natan in view of Ho set forth with respect to claim 1 above; such combination arrives at the claimed invention by substantially the same reasoning as set forth above.
Regarding claim 12, the combination of Natan and Tsung [or Natan, Ho, and Tsung] teaches the cleaning method of claim 11, and Tsung further teaches that wavelength of the light source is within the claimed range of 100 to 1000 nanometers (Tsung: visible light—[0034]; visible light lays entirely within the claimed range).
Regarding claim 13, the combination of Natan and Tsung [or Natan, Ho, and Tsung] teaches the cleaning method of claim 11. Natan teaches that the light-transmitting substrate is formed of glass (glass of any type, such as SF11 glass slides, BK7 microscope slides, and glass coverslips—[0013]). Furthermore, As discussed with respect to claim 11 above, it would be obvious to irradiate the structure of Natan with visible light as suggested by Tsung ([0034]; see rejection of claim 11 above), wherein visible light overlaps with the claimed range of 320 to 570 nanometers (visible light is typically defined as having a wavelength ranging from about 380 to 700 nanometers). Therefore, it would be obvious to a person having ordinary skill in the art, when irradiating the structure of Natan (or the structure of the combination of Natan and Tsung, or the structure of the combination of Natan, Ho, and Tsung) with visible light (see rejection of claim 11 above), to select a wavelength of irradiating light within the overlapping portion (380-570 nm) of the claimed range (320-570 nm) and prior art range (380-700 nm) for the benefit of providing a wavelength of light suitable for exciting the structure to generate bactericidal ionized species (consider Tsung at [0034]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Geng et al. (“Grain-Boundary-Rich Noble Metal Nanoparticle Assemblies: Synthesis, Characterization, and Reactivity”, Advanced Functional Materials, Vol. 32, No. 34, Aug 2022) teaches grain-boundary-rich noble metal nanoparticle assemblies (title), indicating that high catalytic activity is correlated with the density of grain boundaries (see Geng at page 2, last paragraph of “Introduction” section) and forming the grain-boundary-rich nanostructures by agglomerating nanoparticles within solution (see section 2.1 “Electrosynthesis of GB-Rich Pt NP Assemblies” on page 2, and Fig. 1 on page 3).
Bosman et al. (“Encapsulated Annealing: Enhancing the Plasmon Quality Factor in Lithographically-Defined Nanostructures”, Scientific Reports, Vol. 4, 5537, Jul 2014) suggests that annealing nanostructures may typically be expected to reduce grain boundaries in the nanostructures (see page 2, 2nd body paragraph of “Results” section and Fig. 1, establishing how a step (c) of thermal annealing reduces grain boundaries in a gold nanostructure due to grain-boundary migration and Ostwald ripening at elevated temperatures).
Alekseeva et al. (“Grain boundary mediated hydriding phase transformations in individual polycrystalline metal nanoparticles”, Nature Communications, Vol. 8, 1084, Oct 2017) indicates that very small nanoparticles tend to relax to a single-crystal state (page 2, left column, lines 14-17).
Tang et al. (“Tailoring properties and functionalities of metal nanoparticles through crystallinity engineering”, Nature Materials, Vol. 6, pp. 754-759, Aug 2007) indicates that it is difficult to avoid twinning planar defects (which defects are a type of grain boundary) when nucleating and growing noble metal nanoparticles (page 754, left column, second paragraph) and discloses a method to develop single crystalline nanoparticles.
Zheng et al. (US 2011/0111518 A1) teaches nanoparticles having desired optical properties (bright fluorescence and giant Raman enhancements—title), wherein the nanoparticles contain grain boundaries delineating neighboring crystallites ([0043]), and greater number of crystallites/highly granular nanoparticle structures were associated with more fluorescence ([0080], [0082]-[0083], [0094]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/BRADY C PILSBURY/Examiner, Art Unit 1799
/JENNIFER WECKER/Primary Examiner, Art Unit 1797
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