DETAILED ACTION
Examiner’s Notes
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
Claim 1 is amended.
Claims 5-6 are cancelled.
Claims 13-14, and 16-32 are withdrawn from further consideration.
Claims 1-4 and 7-33 are pending.
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and the fee set forth in 37 CFR 1.1 7(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/22/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112:
(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 2-3 and 8 are 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 pre-AIA the applicant regards as the invention.
Claim 2 recites “the emission properties” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this office action, the recitation will be treated as if it recites “the target emission properties”. Appropriate correction is required.
Claim 3 recites “the emission properties” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this office action, the recitation will be treated as if it recites “the target emission properties”. Appropriate correction is required.
Claim 8 recites “the emission properties” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this office action, the recitation will be treated as if it recites “the target emission properties”. Appropriate correction is required.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-4, 7-12, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over MARTINSON (US 20190288636 A1).
Regarding claim 1, MARTINSON teaches a thermal absorber/emitter (see the absorber/emitter; see All Figs, Title, Abstract), comprising:
a substrate layer (see the optically-thick W in Fig. 3B) comprising a first material (see W material) having first optical properties and a first thermal property (The W material has first optical properties (refractive index, reflectance, transmittance, absorption, etc) and a first thermal property), wherein the first optical properties include a first refractive index of the substrate layer (see the refractive index of the optically-thick W) and wherein the first material of the substrate layer is selected based on target emission properties for an application (Regarding the recitation “selected based on target emission properties for an application”, the recitation is directed to the process of selection rather than a specific structural difference in the product claim and it is noted that said limitations are not given patentable weight in the product claim; However, Fig. 13B shows the target emission properties for an application. Therefore, the W material of the optically-thick W is selected based on target emission properties for an application); and
a thin-film layer having a thickness (see the 150 nm TiO2 layer in Fig. 3B) disposed over the substrate layer (see Fig. 3B), wherein the thin-film layer is composed of a second material (see TiO2 material) having second optical properties and a second thermal property (The TiO2 material has second optical properties (refractive index, reflectance, transmittance, absorption, etc) and a second thermal property), wherein the second optical properties include a second refractive index of the thin-film layer (see the second refractive index of the 150 nm TiO2 layer), and wherein the second material of the thin-film layer is selected based on the target emission properties for the application (Regarding the recitation “selected based on target emission properties for the application”, the recitation is directed to the process of selection rather than a specific structural difference in the product claim and it is noted that said limitations are not given patentable weight in the product claim; However, Fig. 13B shows the target thermal emission properties for an application. Therefore, the TiO2 material of the 150 nm TiO2 layer is selected based on target emission properties for the application), and wherein the first material of the substrate layer having the first thermal property and the second material of the thin-film layer having the second thermal property is a pair of thermally matched candidate materials (Since the W material and the TiO2 material properly work as a thermal absorber/emitter under the various target operating temperature (see Figs. 3, 4, 13), the W material and the TiO2 material is a pair of thermally matched candidate materials) selected from a thermal mismatch pixel map in which each pixel represents a thermal mismatch value between two candidate materials at a target operating temperature (Regarding the claimed “selected from a thermal mismatch pixel map in which each pixel represents a thermal mismatch value between two candidate materials at a target operating temperature”, the recitation is directed to the process of selection rather than a specific structural difference in the product claim and it is noted that said limitations are not given patentable weight in the product claim);
wherein the substrate layer has a minimum thickness of 1 µm and a maximum thickness of is no thicker than 1 mm (MARTINSON teaches the substrate layer (see the optically-thick W). One of ordinary skill in the art would appreciate that when the thickness of W is too thin, the W layer becomes optically transparent, and when the thickness of W is too thick, the fabrication cost becomes high. As the optical transparency and the fabrication cost are variables that can be modified by adjusting said thickness of the W layer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the thickness of the W layer in MARTINSON to obtain the desired balance between he optical transparency and the fabrication cost (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).);
wherein the thickness of the thin-film layer is no thicker than 1 µm (see 150nm in the 150 nm TiO2 layer);
wherein the thermal absorber/emitter is operative to absorb heat energy from the substrate layer of the thermal absorber/emitter and, upon the absorbed heat energy reaching the target operating temperature, to emit, from the thin-film layer of the thermal absorber/emitter and towards a photovoltaic cell, thermal radiation with specifically tuned the target emission properties (see [0007] a photonic system comprises an absorber in thermal contact with an emitter; the emitter paired with a photovoltaic cell and configured to have a controllable temperature, and see Figs. 1, 3, 4, 13; MARTINSON’s thermal absorber/emitter has this function).
Regarding the claimed “derived from optical phase accumulation resulting from and a phase shift at an interface between the substrate layer and the thin-film layer; and wherein the optical phase accumulation is determined at least in part by the first refractive index of the first material, the second refractive index of the second material optical properties, and the thickness of the thin-film layer”, since MARTINSON meets all the composition requirements of the claimed product (MARTINSON teaches the absorber/emitter (optically-thick W with 1 µm - 1 mm thickness / 150 nm TiO2 layer) (see the discussion above); Applicant’s Specification discloses a absorber/emitter (W/TiO2) ([079] the first material for substrate 102 is a single element (pure) metal selected from the following group of refractory metals: W, [081] one or both materials comprise a metal oxide that includes a metal element selected from the following group: Ti, [063] thickness d of the thin-film coating can have a value selected between 5nm to1um, but no thicker than 1 um and thickness h of the substrate can be between a few microns and ~1 mm), the property regarding “derived from optical phase accumulation resulting from and a phase shift at an interface between the substrate layer and the thin-film layer; and wherein the optical phase accumulation is determined at least in part by the first refractive index of the first material, the second refractive index of the second material optical properties, and the thickness of the thin-film layer” would obviously have been present in MARTINSON’s absorber/emitter. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
Regarding claim 2, Applicant is directed above for a full discussion as applied to claim 1.
MARTINSON teaches wherein the emission properties of the thermal radiation include an emission spectrum, and wherein the emission spectrum is tunable by varying the thickness of the thin-film layer (see the thermal emission spectrum and the thermal emission spectrum has a capability of being tunable by varying the thickness of the emitter layer; see Figs. 1, 3, 4, 13).
Regarding claim 3, Applicant is directed above for a full discussion as applied to claim 1.
MARTINSON teaches wherein the emission properties include one or more of: peak emission wavelength of the thermal radiation; a bandwidth of the thermal radiation; and an emission angle of the thermal radiation (see the peak emission wavelength of the thermal emission and a bandwidth of the thermal emission in Figs. 3, 4, 13).
Regarding claim 4, Applicant is directed above for a full discussion as applied to claim 1.
MARTINSON teaches wherein the thermal absorber/emitter operates in an environment featuring a temperature greater than 1500 oC ([0014] FIGS. 5A-5B. Comparison of possible values for P and ηs plotted against degree of critical coupling for emitters at temperatures between 1200K and 2200K; Given the teachings above, it would have been obvious to have selected temperature within the disclosed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (see MPEP § 2144.05, I.).)
Regarding claim 7, Applicant is directed above for a full discussion as applied to claim 1.
MARTINSON teaches wherein the first material and the second material are different materials (see W material and TiO2 material).
Regarding claim 8, Applicant is directed above for a full discussion as applied to claim 7.
MARTINSON teaches wherein the emission properties of the thermal absorber/emitter are tunable by selecting the second material from a plurality of materials having different optical properties (The MARTINSON’s absorber/emitter has a capability of this function).
Regarding claim 9, Applicant is directed above for a full discussion as applied to claim 7.
MARTINSON teaches wherein the first material and the second material have different optical properties (W material and TiO2 material have different optical properties).
Regarding claim 10, Applicant is directed above for a full discussion as applied to claim 7.
MARTINSON teaches wherein the first material and the second material are high melt-point materials for operating temperatures exceeding 1500 oC (The melting point of W is 3422 oC and the melting point of TiO2 is 1843 oC for operating temperatures exceeding 1500 oC).
Regarding claim 11, Applicant is directed above for a full discussion as applied to claim 7.
MARTINSON teaches wherein the first material and the second material are thermally matched materials at operating temperatures exceeding 1500 oC ([0014] FIGS. 5A-5B. Comparison of possible values for P and ηs plotted against degree of critical coupling for emitters at temperatures between 1200K and 2200K; Since the W material and the TiO2 material properly work as a thermal absorber/emitter at operating temperatures exceeding 1500 oC, the W material and the TiO2 material are thermally matched materials at operating temperatures exceeding 1500 oC).
Regarding claim 12, Applicant is directed above for a full discussion as applied to claim 7.
MARTINSON teaches wherein the second material is selected so that the thin-film layer functions as a protective barrier for the thermal absorber/emitter ([0080] the oxide layers of BR protect the W surface from oxidation relaxes the requirements on working atmosphere for stable operation; The TiO2 material functions as a protective barrier).
Regarding claim 33, Applicant is directed above for a full discussion as applied to claim 1.
MARTINSON teaches wherein the substrate layer is one order of magnitude thicker than the thin-film layer (see the rejection of claim 1; When the optically-thick W is 1.5 µm in thickness and TiO2 layer is 150 nm in thickness, the optically-thick W is one order of magnitude thicker than the TiO2 layer).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over MARTINSON (US 20190288636 A1) as applied in claim 7 above, further in view of JIANG (Refractory material based frequency selective emitters/absorbers for high efficiency and thermal stable thermophotovoltaics).
Regarding claim 15, Applicant is directed above for a full discussion as applied to claim 7.
Regarding the claimed “wherein at least one of the first material and the second material comprises a metal nitride that includes a metal element selected from the following group of elements: Al, B, Sc, Hf, Nb, Ti, V, and Zr”, MARTINSON teaches the first material and the second material (see W material and TiO2 material), but does not explicitly disclose the claimed “a metal element selected from the following group of elements: Al, B, Sc, Hf, Nb, Ti, V, and Zr”. However, JIANG discloses refractory material based frequency selective emitters/absorbers, wherein the developed TiN based dielectrics encapsulated nanocavity structure was proved to be favorable in serving as frequency selective emitter/absorber and provides high emissivity/absorptivity at the desired short wavelength range (see Abstract and Conclusion). It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to employ the TiN material for W material in MARTINSON as taught by JIANG, because the TiN material provides high emissivity/absorptivity at the desired short wavelength range and because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144).
Response to Arguments
Applicant's arguments filed on 01/22/2026 have been fully considered, but they are moot in view of the new ground(s) of rejection.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE-SIK KANG whose telephone number is 571-272-3190. The examiner can normally be reached on 9:00am – 5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew T. Martin can be reached on 571-270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE-SIK KANG/
Primary Examiner, Art Unit 1728