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 May 25, 2026 was received. Claims 1, 6 and 10-11 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 March 26, 2026.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 17, 2026 has been entered.
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.
The claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claims 6-10 were withdrawn, because the claims have been amended.
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 6-10 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.
Regarding claim 6, instant specification and original claims do not provide support for the limitation of “spontaneously and selectively infiltrates and saturates”. There is not description or use of such terms in the original disclosure.
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.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Hirsch (EP3462462A1) and Lee (KR20160068083) on claims 1-5 and 11 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 Tavakoli1(WO2019055680).
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 coating of the microstructure metal substate with the liquid metal is performed by an acid vapor treatment of the liquid metal after the liquid metal is disposed on the microstructure metal substrate. However, Tavakoli1 teaches a method of coating a printed trace (circuit) of metal on a polymer substrate a thin layer of eutectic gallium indium (liquid metal) (abstract, paragraphs 0030-0031). Tavakoli1 teaches the liquid metal coating is formed by applying the liquid metal coating on the circuits and removing excess by hydrocholoride acid vapor, which dewets the liquid metal from the rest of the circuit, except where circuits were previously printed (paragraph 0032). The step of acid vapor treatment reads on the claimed limitation of coating the metal substrate as it is part of process of forming the finished patterned circuit through depositing of the liquid metal and it is performed on the liquid metal after the liquid metal is disposed on the metal substrate (paragraph 0032). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform an acid vapor treatment of the liquid metal after the liquid metal is disposed on the metal substate as suggested by Tavakoli1 in the method of Hirsch because Tavakoli1 teaches such acid treatment dewets the liquid metal from the rest of the circuit, except where circuits were previously printed (paragraph 0032), which allows forming of the circuit trace.
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, Tavakoli1 teaches the acid is hydrochloric acid (paragraph 0032).
Claims 6-10 rejected under 35 U.S.C. 103 as being unpatentable over Hirsch (EP3462462A1) in view of Tavakoli2(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). Hirsch teaches to form grooves defined by a plurality of protrusions (micropillar) 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). Regarding the limitation of forming the “nano-microstructure”, Hirsch teaches the micropillar has a size of 0.5-100 µm (paragraph 0049), which is inside of the size range of the nano-microstructure of the claimed invention. Thus, with the combination of Tavakoli2 nanoparticles (see below), Hirsch’s microstructure metal substrate (combined with Tavakoli2’s nanoparticles) reads on the claimed limitation of the nano-microstructure. Hirsch teaches the coating the liquid metal is deposited by spraying, and the coating infiltrates and saturates the whole volume between the microstructures by imbibition, which indicates the deposition is spontaneously (paragraphs 0053, 0056,0058). Hirsch teaches the whole volume between the pillars are is imbibed by the liquid material based on the selection of the pillar dimension (selectively flows along the nano-microstructure) (paragraphs 0070 and 0058). 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.
Hirsch does not explicitly teach the substrate is coated with metal nanoparticles. However, Tavakoli2 teaches a method of coating traces of silver nanoparticles ink with a thin layer of eutectic gallium indium (abstract). Tavakoli2 teaches the silver nanoparticles is applied to wide range of substate including polymeric films (page 2, right column). Thus, the combination Hirsch and Tavakoli2 teaches to form the silver nanoparticles on the microstructure metal substrate to form the nano-microstructure.
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 Tavakoli2 in the method of Hirsch because Tavakoli2 teaches the silver nanoparticles interact with the liquid alloy to form a heterogenous substance composed of AgNP-In-Ga clusters surrounded by a Ga-rich film, which produces traces maintain high electrical conductivity and low electromechanically coupling for axial strain up to 80% and can withstand strains above 110% prior to complete electrical or mechanical failure (page 2 right column).
Hirsch in view of Tavakoli2 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 Tavakoli2 because Zheng teaches spray coating exhibits higher printing speed and easier control of the deposited film morphology (page 1 right column).
Regarding claim 7, Hirsch teaches to deposit a metal film on the of the substrate (paragraphs 0015-0016, figure 1), and Tavakoli2 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 Tavakoli2.
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). Tavakoli2 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. Tavakoli2 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 nanoparticles on 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 nanparticles. 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.Tavakoli2 teaches the silver nanoparticles is 100nm (abstract), 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 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 with respect to claim(s) 1-5 and 11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed on May 25, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Hirsch clearly discloses a flux-driven, geometry-confined deposition process in which liquid metal condenses from a vapor phase and fills all the groove volume uniformly until saturation, which is not a process in which a liquid metal droplet spontaneously infiltrates and saturates the nano-microstructure.
Tavakoli2 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.
Zheng does not cure deficiencies of Hirsch and Tavokoli2.
In response to Applicant’s arguments, please consider the following comments:
As discussed in the 112 rejections above, the original disclosure does not include “spontaneously infiltrates and saturates”, thus, it is unclear what is unknow how spontaneously does the infiltration and saturation are required. In addition, the claim does not specify the liquid metal is applied as droplet as argued or limit the liquid metal being deposited by vapor phase. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the liquid metal is being applied as droplet) are not recited in the rejected claim(s). 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). Thus, Hirsch teaching of vapor phase liquid metal to infuriate and situates the microstructure reads on the claimed limitations. In addition, Hirsch further teaches the infiltration by imbibition of liquid phase can be done by spraying and condensation (pargraph 0053), as Hirsch merely teaches filling the roughness of the patterned support by imbibition would not happen only a large amount of liquid material (paragraph 0013), which indicates that Hirsch teaches infiltration by imbibition would happen as long as the amount of deposition is small enough. Regarding applicant’s argument about PVD based filling is not spontaneous nor selective, Hirsch clearly teaches the infiltration by imbibition of liquid phase can be done by spraying and condensation (pargraph 0053) and the imbibition is selective based on the dimension of the microstructure (pargraph 0070); Applicant has also not defined spontaneously infiltrates and saturates.
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 fills between microstructure (paragraph 0070), with Tavakoli2’s teaching of adding the nanoparticle to the microstructure for the gallium coating. Thus, Tavakoli2’s deposition which requires the rubbing (and removal) does not replace Hirsch’s vapor coating, and the combination of Hirsch and Tavakoli2 would still result in the liquid metal spontaneously and selectively infiltrates and saturates 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). Regarding the limitation of forming the “nano-microstructure”, Hirsch teaches the micropillar has a size of 0.5-100 µm (paragraph 0049), which is inside of the size range of the nano-microstructure of the claimed invention. Thus, with the combination of Tavakoli2 nanoparticles (see below), Hirsch’s microstructure metal substrate (combined with Tavakoli2’s nanoparticles) reads on the claimed limitation of the nano-microstructure. Hirsch teaches the coating the liquid metal is deposited by spraying, and the coating infiltrates and saturates the whole volume between the microstructures by imbibition, which indicates the deposition is spontaneously (paragraphs 0053, 0056,0058). Hirsch teaches the whole volume between the pillars are is imbibed by the liquid material based on the selection of the pillar dimension (selectively flows along the nano-microstructure) (paragraphs 0070 and 0058).
There are no deficiencies in Hirsch and Tavokoli2 as discussed above.
Conclusion
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/NGA LEUNG V LAW/Examiner, Art Unit 1717
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