DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on September 2, 2025 was received. Claims 1, 4, 6 and 10 were amended. No claim was canceled. Claim 11 was added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued June 3, 2025.
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 6-10 were 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 recites the limitation "the nano-microstructure" in line 3. There is insufficient antecedent basis for this limitation in the claim. The claim also does not define how such nano-microstructure is formed or how does it relate to the substate. For purpose of examination, “the nano microstructure” is interpreted as formed by the metal nanoparticle coated substrate. However, applicant should clarify what is intended, without adding new matter. In addition, claim 10 should be corrected also for the sake of clarity.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as being anticipated by Hirsch (EP3462462A1) on claims 1-2 are withdrawn, because the claims have been amended.
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 claim rejections under 35 U.S.C. 103 as being unpatentable over Hirsch (EP3462462A1) on claims 3 and 5 are withdrawn, because the claims have been amended.
Claims 1-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirsch (EP3462462A1) and Lee (KR20160068083).
Regarding claim 1, Hirsch teaches a method of making an electrical conductor with a liquid metal film (abstract, paragraph 0015). Hirsch teaches to form grooves defined by a plurality of protrusions on a substrate (paragraphs 0016-0017), wherein the grooves are in microscale (microstructure) (paragraph 0049) and the substrate is polymer (paragraph 0047). Hirsch teaches to deposit a metal film on the microstructure of the substrate (microstructured metal substrate) (paragraphs 0015-0016, figure 1). Hirsch teaches to coat the microstructured metal coated substrate with liquid metal (paragraphs 0015-0016, figure 1).
Hirsch does not explicitly teach the liquid metal is coated by acid vapor treatment. However, Lee teaches a method of spraying liquid metal (paragraph 0001). Lee teaches to inject acid gas to the gallium alloy during the coating, wherein the acid is hydrochloric acid (paragraphs 0011-0013). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply acid vapor treatment during the coating of the liquid metal as suggested by Lee in the method of Hirsch because Lee teaches the acid prevent oxidation of the liquid metal (paragraph 0009).
Regarding claim 2, Hirsch teaches the polymer substrate comprises PDMS, polystyrene, polyesters etc (paragraph 0047). Hirsch teaches the metal comprises gold, platinum etc (paragraph 0052). Hirsch teaches the liquid metal is gallium or gallium alloy (pargraph 0053).
Regarding claim 3, Hirsch teaches the forming of microstructure is performed by soft lithography (paragraphs 0046 and 0070). Hirsch teaches the microstructure comprises at least one structure selected from polygonal, cylinder etc (paragraph 0048). Hirsch teaches the microstructure has height, width and pitch of 0.5 to 100µm (paragraph 0049), which overlaps the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 4, Hirsch teaches to deposit the metal by physical vapor deposition and chemical vapor deposition, which reads on the limitations of vacuum deposition (paragraph 0052).
Regarding claim 5, Hirsch teaches the coating the liquid metal is deposit by spraying and saturate the whole volume between the microstructures, which indicates the deposition is spontaneously (paragraphs 0053,0058). Hirsch teaches the liquid metal is flow between microstructure (selectively flows along the microstructure) (paragraph 0070). Hirsch teaches the liquid metal applied onto the microstructure metal substate with the thickness set by the height of the micro pillars (microstructure) (paragraph 0070), and the height is 0.5 to 100µm (paragraph 0049), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 11, Lee teaches the acid is hydrochloric acid (paragraphs 0011-0013).
Claims 6-10 rejected under 35 U.S.C. 103 as being unpatentable over Hirsch (EP3462462A1) in view of Tavakoli (EGaIn-Assisted room-temperature sintering of silver nanoparticles for stretchable, inkjet-printed, thin-film electronics) and Zhang (Sprayed-coated nanoscale conductive patterns based on in situ sintered silver nanoparticle inks).
Regarding claim 6, Hirsch teaches a method of making an electrical conductor with a liquid metal film (abstract, paragraph 0015). and the substrate is polymer (paragraph 0047). Hirsch teaches to deposit a metal film on the polymer substrate (microstructured metal substrate) (paragraphs 0015-0016 and 0047, figure 1). Hirsch teaches to coat the metal coated substrate with liquid metal (paragraphs 0015-0016, figure 1).
Hirsch does not explicitly teach the substrate is coated with metal nanoparticles. However, Tavakoli teaches a method of coating traces of silver nanoparticles ink with a thin layer of eutectic gallium indium (abstract). Tavakoli teaches the silver nanoparticles is applied to wide range of substate including polymeric films (page 2, right column). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply silver nanoparticles to the substrate before depositing gallium alloy as suggested by Tavakoli in the method of Hirsch because Tavakoli teaches such circuit is highly stretchable, and leads increase in volumetric conductivity and highly flexible (page 3 right column).
Hirsch in view of Tavakoli does not explicitly teach to spray the metal nanoparticle. However, Zheng teaches nanoscale conductive patterns is formed by spraying silver nanoparticles inks (page 1 right column). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the silver nanoparticle ink by spraying as suggested by Zheng in the method of Hirsch in view of Tavakoli because Zheng teaches spray coating exhibits higher printing speed and easier control of the deposited film morphology (page 1 right column).
Hirsch teaches to form grooves defined by a plurality of protrusions on a substrate (paragraphs 0016-0017), wherein the grooves are in microscale (microstructure) (paragraph 0049) and the substrate is polymer (paragraph 0047). Tavakoli teaches the nanoparticles is formed on the surface, which is expected to be nano structure, thus the combination of Hirsh and Tavakoli teaches to form a meal surface with a nano-microstructure. Hirsch teaches the microstructure has height, width and pitch of 0.5 to 100µm (paragraph 0049), which overlaps the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Hirsch teaches the coating the liquid metal is deposit by spraying and saturate the whole volume between the microstructures, which indicates the deposition is spontaneously (paragraphs 0053,0058). Hirsch teaches the liquid metal is flow between microstructure (selectively flows along the nano-microstructure) (paragraph 0070). Hirsch teaches the liquid metal applied onto the microstructure metal substate with the thickness set by the height of the micro pillars (microstructure) (paragraph 0070), and the height is 0.5 to 100µm (paragraph 0049), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 7, Hirsch teaches to deposit a metal film on the of the substrate (paragraphs 0015-0016, figure 1), and Tavakoli teaches the silver nanoparticles is applied to wide range of substate including polymeric films (page 2, right column). Thus, it would be obvious to form the silver nanoparticle on the metal film in light of the teaching of Hirsch and Tavakoli.
Regarding claim 8, Hirsch teaches the polymer substrate comprises PDMS, polystyrene, polyesters etc (paragraph 0047). Hirsch teaches the metal comprises gold, platinum etc (paragraph 0052). Hirsch teaches the liquid metal is gallium or gallium alloy (pargraph 0053). Tavakoli teaches the nanoparticles are silver (abstract).
Regarding claim 9, Zheng teaches the spraying coating comprises solvent of 1-2 dicholrobezene (page 2 left column). Zheng teaches the spray coating is performed at a distance of 20 cm or 18cm, and velocity of 0.3 or 0.35ml/min, which is inside of the claimed range. Tavakoli teaches the silver nanoparticles is used to form continuous metallic film with the liquid metal (page 3). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of the silver nanoparticles in the solution in the process to yield the desired amount of silver in the final metallic film. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been within the skill of the ordinary artisan to adjust and optimize the duration of the spraying in the process to yield the desired thickness and amount of silver. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Tavakoli teaches the silver nanoparticles is in nanoscale, which overlaps with the claimed range of 100nm to 500µm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. In addition, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Regarding claim 10, Hirsch teaches to form grooves defined by a plurality of protrusions on a substrate (paragraphs 0016-0017), wherein the grooves are in microscale (microstructure) (paragraph 0049) and the substrate is polymer (paragraph 0047). Tavakoli teaches the nanoparticles is formed on the surface, which is expected to be nano structure, thus the combination of Hirsh and Tavakoli teaches to form a meal surface with a nano-microstructure. Hirsch teaches the microstructure has height, width and pitch of 0.5 to 100µm (paragraph 0049), which overlaps the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed on September 2, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Hirsch indicates that maintaining the formed metal oxide is advantageous in such patterning context. Removal of the metal oxide is neither taught in nor favored by Hirsch and would be inconsistent with its disclosure that these patterning techniques rely on the oxide for stabilization.
Lees acid vapor step is a conditioning step for transport/ejection, not an on-substate acrid vapor coating of a liquid metal disposed on a receiving metal surface during a coating operation as claimed.
Does not promote coating on the channel/surface with the liquid metal, but rather prevent it in order to promote the flow of the liquid metal on the surface of the channel. And Lee does not disclose that the channel is metal, thus Lee is not a manner of coating a deposited liquid metal film, nor is it coating a receiving metal surface.
Removing the oxide, per Lee, would operate in the opposite direction of Hirsch’s intended use.
Tavakoli does not teach that a liquid metal could or would spontaneously and selectively flow along a nano-microstructure during its coverage of the metal nanoparticle coated substate as claimed. Tavakoli does not teach the claimed thickness of the liquid metal film. There is no reasonable expectation of success by combining the reference.
Zheng does not cure deficiencies of Hirsch and Tavokoli.
In response to Applicant’s arguments, please consider the following comments:
Applicant’s argument is based on the “background” of Hirsch, which directed to a technique of forming gallium directly on the polymer or glass without the metal coating (paragraph 0004), which is different from Hirsch’s disclosure. The background further indicates the oxide layer is not formed in the oxygen free environment, which indicates that Hirsch’s method does not include the oxide layer as the gallium layer is formed by physical vapor deposition and chemical vapor deposition and not in oxygen environment (paragraph 0052). Hirsch further teaches the problem with the oxide layer approach is the absence of fine control on the thickness and roughness (paragraph 0004) and the presence of oxide of the gallium changes its rheology (paragraph 0007), thus, further indicating Hirsch does not desire to form the metal oxide and forming the metal oxide is not Hirsch’s intended purpose.
The claim recited “the coating of the microstructure metal substate with the liquid metal is performed by an acid vapor treatment of the liquid metal on the microstructure metal substrate”, which does not specify how and when does the “acid vapor treatment” is being performed during this coating process. Thus, Lee’s method of treating the liquid metal (that are being coated on the microstructure metal substate) with acid vapor during in part of the coating process reads on the claimed limitation.
As discussed above, the combination of reference does not rely on depositing the gallium on the channel, it merely teaches to acid vapor treat the gallium during the coating process.
As discussed above, Hirsch does not desire to form the metal oxide and forming the metal oxide is not Hirsch’s intended purpose/use.
The rejection is based on the Hirsch teaching of the coating the liquid metal is deposit by vapor and saturate the whole volume between the microstructures, which indicates the deposition is spontaneously (paragraphs 0053,0058). Hirsch teaches the liquid metal is flow between microstructure (selectively flows along the nano-microstructure) (paragraph 0070), with Tavakoli’s teaching of adding the nanoparticle to the microstructure for the gallium coating. Thus, Tavakoli’s deposition which requires the rubbing (and removal) does not replace Hirsch’s vapor coating, and the combination of Hirsch and Tavakoli would still result in the liquid metal spontaneously and selectively flows along the nano-microstructure as required by Hirsch by Hirsch’s vapor deposition technique. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In addition, the claim only requires the liquid metal “flows along” the nano-microstructure, which does not require it to be infiltrate or saturate the nano-microstructure. The combination of reference teaches the claimed thickness (see rejection above). Tavakoli teaches to include the nanoparticle to increase the volumetric conductivity of the finished circuits, which appears to be applicable to Hirsch’s method, thus there’s a reasonably expectation of success.
There is no deficiencies in Hirsch and Tavokoli as discussed above.
Conclusion
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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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717