DETAILED ACTION
This is an Office action based on application number 18/453,737 filed 22 August 2023. Claims 1-20 are pending.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, in the reply filed on 22 June 2026 is acknowledged. The traversal is on the ground(s) that restriction is only proper if the claims of the restricted groups are independent or patentably distinct.
Applicant argues that no reasons and/or examples have been provided to support the Office’s conclusion that the groups are unpersuasive in the restriction between groups I and III/IV and III and I/II. This is not found persuasive because Invention I is drawn to a silver nanoparticle decorated polymer substrate whereas Inventions III/IV are drawn to a tungsten oxide decorated polymer substrate. As the inventions are drawn to different compositions (i.e., silver vs. tungsten oxide) the inventions have different designs of effects. Said difference in composition is the reason to support the Office’s conclusion that the groups are unrelated.
Applicant further traverses the restriction between Groups I and II and between Groups III and IV. The Office maintains that the structure of the claims can be made by another and materially different process such as selective etching.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 22 June 2026.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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. 103 as being unpatentable over Greer et al. (US Patent Application Publication No. US 2012/0181346 A1) (Greer) in view of Chopra et al. (US Patent Application Publication No. US 2018/0371190 A1) (Chopra) and Allain et al. (US Patent Application Publication No. US 2021/0115211 A1) (Allain).
Regarding instant claims 1-5:
Greer relates to a nanotextured surface and related methods, systems and uses. In particular, Greer relates to surfaces configured to control fluidic properties of a fluid on the surface (paragraph [0003]).
Greer further discloses that the nanotextured surfaces are formed on polycarbonate substrates (paragraph [0147]).
Greer further discloses that the presence of nanostructures influences, in part, the wetting or lack thereof of the surface (paragraph [0051]).
Greer further teaches that the nanostructural features may have circular bases (paragraph [0047]).
Greer further discloses that such nanostructures can range in size from 5 nm to 100 microns (paragraph [0052]).
Greer further discloses that the nanostructured surfaces can have a water contact angle 90-150°C (e.g., a hydrophobic surface) (paragraph [0054]). It is noted that the water contact angle range of Greer includes those ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Greer does not disclose the claimed nano-flowers. Greer does not disclose the claimed silver nanoparticles.
However, Chopra similarly discloses a nanostructured polymer surface wherein said nanostructures are inclusive of flower-like shapes (paragraph [0014]), which are construed to include elongated petals
Chopra further discloses that the polymer surface is composed of polycarbonate (paragraph [0062]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the flower-like nanostructures into the structure of Greer. The motivation for doing so would have been that flower-like nanostructures are art-recognized nanostructures capable of incorporation into polycarbonate surfaces. Furthermore, the incorporation of further nanostructures would further influence the desired fluid interaction properties.
The disclosure of nanostructures having a circular base, flower-like nanostructures, and nanostructures ranging in size from 5 nm to 100 microns meet the claimed shapes recited by the claims and include the size ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Allain further discloses nanostructured polymer-based compositions (Title). Allain further discloses that said polymer surface has a substrate characterized by a surface geometry and comprises a plurality of metal nanoparticles disposed on the surface (Claim 1).
Allain further discloses that said polymers are inclusive of synthetic polymers (paragraph [0009]).
Allain further discloses that the nanoparticles are inclusive of silver nanoparticles (claim 19).
Allain further discloses that the nanoparticles have a diameter between 10 nm and about 500 nm (paragraph [0021]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Allain teaches that silver nanoparticles provide antibacterial properties (paragraph [0002]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the silver nanoparticles of Allain to the substrate of Greer. The motivation for doing so would have been that such silver nanoparticles are art-recognized as combinable with nanostructured polymer surfaces that can also provide an antibacterial property.
Therefore, it would have been obvious to combine Chopra and Allain with Greer to obtain the invention as specified by the claims.
Claims 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khaled (US Patent Application Publication No. US 2017/0141244 A1) (Khaled) in view of Chopra and Allain.
Regarding instant claims 1-5:
Khaled discloses a method of treating a glass surface comprising polycarbonate to form a textured glass surface with a directed hierarchical patterned nanoporous structure and increased hydrophobicity (paragraph [0003]).
Khaled further discloses that the hierarchical patterned structure comprises spherules on the scale of μm, and the spherules themselves contain an ordered texture on the scale of nm (paragraph [0087]).
Khaled further discloses that the that the spherules have an average width of 5-20 μm (paragraph [0022]). Said spherules meet the claimed circular shaped base structures. It is noted that the spherule width range disclosed by Khaled overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Khaled further discloses that the surface of the spherules are textured and comprises those structures having an average height of 20-200 nm (paragraph [0023]).
Khaled further discloses that the textured glass surface has an average water droplet contact angle of greater than 75° (paragraph [0094]), which includes the claimed ranges. However, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Khaled does not disclose the claimed nano-flowers. Khaled does not disclose the claimed silver nanoparticles.
However, Chopra similarly discloses a nanostructured polymer surface wherein said nanostructures are inclusive of flower-like shapes (paragraph [0014]), which are construed to include elongated petals
Chopra further discloses that the polymer surface is composed of polycarbonate (paragraph [0062]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the flower-like nanostructures onto the spherules of Khaled. The motivation for doing so would have been that flower-like nanostructures are art-recognized nanostructures capable of incorporation into polycarbonate surfaces. Furthermore, the incorporation of further nanostructures would meet the desired surface texturing of the spherules.
Given the disclosure of nano-flowers and textured structures having an average height of 20-200 nm, the prior art is construed to encompass an embodiment of nano-flowers with elongated petals having a size that includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Allain further discloses nanostructured polymer-based compositions (Title). Allain further discloses that said polymer surface has a substrate characterized by a surface geometry and comprises a plurality of metal nanoparticles disposed on the surface (Claim 1).
Allain further discloses that said polymers are inclusive of synthetic polymers (paragraph [0009]).
Allain further discloses that the nanoparticles are inclusive of silver nanoparticles (claim 19).
Allain further discloses that the nanoparticles have a diameter between 10 nm and about 500 nm (paragraph [0021]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Allain teaches that silver nanoparticles provide antibacterial properties (paragraph [0002]).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the silver nanoparticles of Allain to the surface of Khaled. The motivation for doing so would have been that such silver nanoparticles are art-recognized as combinable with nanostructured polymer surfaces that can also provide an antibacterial property.
Therefore, it would have been obvious to combine Chopra and Allain with Khaled to obtain the invention as specified by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 09/01/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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