DETAILED ACTION
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 amendment filed 07/07/2026 has been entered. Claims 1, 4-12, and 14-20 remain pending in the application. Claims 2, 3, and 13 are canceled by Applicant, and claims 16-20 remain withdrawn as pertaining to a nonelected invention. The Examiner notes that the Remarks indicate (page 6) that claim 12 has been canceled but this appears to be a typographic error. Applicant's amendments to the claims have overcome the objection to the specification, and each 112(b) rejection previously set forth in the non-final office action, thus the objection and each and every 112(b) rejection are withdrawn by the Examiner.
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 14-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 is dependent upon claim 13 which has been canceled by applicant. It is therefore indefinite in scope since the claim does not clearly incorporate the limitations of an independent claim. Claim 15 is dependent upon claim 14 and does not rectify the issue so it is similarly rejected. To proceed with examination, the Examiner has interpreted these claims as being dependent upon claim 1.
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 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.
Claims 1-3, 10-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Stellacci et al. 2009, US 20090246285 A1 (of record), in view of Janjua et al 2023, US 11613472 B2 (of record), non-patent literature Loaldi et al. 2020, Micromachines 2020, 11, 509 (of record), and Shemelya et al. 2021 (US 20210023750 A1), referred to herein as Stellacci, Janjua, Loaldi, and Shemelya, respectively.
Regarding claim 1, Stellacci teaches a process for the preparation of monodispersed, organic-monolayer coated, calcium-containing nanoparticles (0004) comprising:
Obtaining a bio-waste source of CaCO3 (a biological source of calcium-containing material being egg shell, obtaining calcium carbonate, 0040) and calcium oxide (0041);
Subjecting the CaO to a graining process to form a plurality of nano-sized particles having a particle size up to 20 nm (subjected to an analogous coating process to control the size of nanoparticles within a diameter of 5 nm-10 nm, 0032, 0045, 0077-0080); and
Ejecting a solution containing the plurality of nano-sized particles to a first substrate to form a positive pattern (0126).
Wherein the solution includes a solvent, and the method further comprises evaporating the solvent spontaneously (0126).
Stellacci does not teach decomposing the egg shell to obtain CaO directly. However, Janjua teaches that the calcination of egg shells converts the source into calcium oxide (C16/L44). It would be obvious to one skilled in the art before the effective filing date of the claimed invention to decompose egg shell via calcination as Janjua teaches; one would be motivated to do so in order to obtain CaO as Janjua teaches for the procedure taught by Stellacci, from the egg shell source taught by Stellacci.
Stellacci and Janjua do not teach placing the first substrate including the plurality of nano-sized particles into a mold, injecting a polymeric resin into the mold to form a molded article including a coating layer that includes the plurality of nano-sized particles, and after ejecting the solution containing the plurality of nano-sized particles to the first substrate and evaporating the solvent, inspecting the nano-sized particles to confirm formation of a photonic crystal structure including the plurality of nano-sized particles. However, Loaldi teaches a process chain for the combination of ink dispensing technologies with plastic injection molding (p. 2 pp. 4) comprising:
ejecting a solution (Figure 1) containing a plurality of nano-sized particles (silver nanoparticle ink, p. 3 Section 3.2) to a first substrate (coating, Figure 1);
placing the first substrate including the plurality of nano-sized particles into a mold (Figure 1, “Injection Molding”);
injecting a polymeric resin into the mold to form a molded article (Figure 1, Polymer melt) including a coating layer that includes the plurality of nano-sized particles (Figure 1, Ejection); and
after ejecting the solution containing the plurality of nano-sized particles to the first substrate and evaporating the solvent, inspecting the nano-sized particles to confirm formation of a photonic crystal structure including the plurality of nano-sized particles (3.4 ‘Imaging and Topography Characterization,’ p. 4).
It would be obvious to one skilled in the art to further modify the invention taught by Stellacci modified by Janjua with the steps taught by Loaldi; one would be motivated to do so in order to obtain injection-molded plastic parts containing nanoparticle traces with custom surface roughness, as Loaldi teaches (p. 10 pp. 1), with optical properties particular to the nanoparticles taught by Stellacci (the nanoparticles having optical phenomena of photonic crystals, 0146; nanoparticles enhancing color gamut of ink/paint, 0151). The integration of nanoparticle properties into plastic articles would benefit from Loaldi’s controllable plastic/ink and mold/ink interfacial strengths introduced by this method (p. 2 pp. 2) such that one would appreciate the benefit of the controllable interfacial strengths.
Stellacci, Janjua, and Loaldi do not teach, after conducting the inspecting, conducting another step of ejecting the solution including the plurality of nano-sized particles to fill in the gaps or voids in the positive pattern.
However, Shemelya teaches a method of additive manufacturing using releasable inks on a substrate mold (abstract), which is analogous to the process of Loaldi because Shemelya teaches embedded ink traces (Fig. 3), wherein additional layers of ink may be deposited (0044). It would be obvious to combine the teachings of Stellacci, Janjua, Loaldi, and Shemelya, to arrive at the claimed invention wherein another step of ejecting solution to deposit additional patterns is conducted; one would be motivated to do so because Shemelya discloses that more complex structures can be achieved (0044) which Loaldi motivates as a pursuit of the field (“Future work will focus on the integration of additional additive techniques and the integration of more complex structures,” p. 10 ‘Conclusions’). Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function; see MPEP 2111.02(II). In the present case, the step of depositing the solution additional times, taught by Shemelya, is capable of filling in gaps or voids in the positive pattern, as recited in claim 1, since the present disclosure defines the process of filling in gaps or voids as being performed by another printing step ([0049]). Thus the recited intended use of the ejecting of solution, to fill in gaps or voids, is met by the teachings of the prior art. Therefore, one skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 10, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. Loaldi further teaches a molding melt temperature of 260 degrees C (p. 4 pp. 3); barring evidence of criticality of the range of temperatures between the taught range and the claimed range, this is interpreted to meet the limitation of “about 240 degrees C” required by the instant claim, since the instant specification does not define a range of values regarding the use of the term “about.” The courts have generally held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close; see MPEP Section 2144.05(I), Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 11, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. Stellacci further teaches that the source of calcium can be a sea shell (marine animal shell) or egg shell, 0040.
Claims 4-7, 12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Stellacci, Janjua, Loaldi, and Shemelya, as applied to claim 1 above, and in further view of non-patent literature Kim et al. 2019, ACS Appl. Mater. Interfaces 2019, 11, 14485−14509, referred to herein as Kim.
Regarding claim 4, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. They do not teach ejecting the solution containing the plurality of nano-sized particles to a second substrate; and placing the second substrate including the plurality of nano-sized particles into the mold.
However, Kim teaches inkjet printing of colloidal nanoparticle dispersions onto a substrate (p. 14490, Figure 5a) using a positive photoresist (Figure 5c; p. 14491 column 1). It would be obvious to one skilled in the art to modify Stellacci, Janjua, Loaldi, and Shemelya to additionally perform a step of ejecting onto a second substrate, as taught by Kim, and placing the second substrate including the plurality of nanoparticles into the mold; one would be motivated to do so to obtain a micropattern of an opal structure for photonic structures and optical properties, as Kim teaches (Sections 2.1, 3.1; p. 14491 column 1). One of ordinary skill in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 5, Stellacci, Loaldi, Janjua, Shemelya, and Kim teach the method as applied to claim 4 above. Kim additionally teaches a depositing by forming a negative pattern (Figure 5c-e; alternatively, the inverse opal structure, Figure 6a-c, Figure 7a-d), which is interpreted to meet the limitation of a background since the specification discloses an area that surrounds a positive pattern as an equivalent of a background [0045].
Regarding claim 6, Stellacci, Loaldi, Janjua, Shemelya, and Kim teach the method as applied to claim 4 above. Kim additionally teaches a plurality of layers in the nanoparticles forming a negative pattern (Figure 5c; alternatively, the inverse opal structure, Figure 6a-c, Figure 7a-d). Stellacci is silent on how many layers of nanoparticles comprise the positive pattern. However, Kim teaches the same method of inkjet printing in Figure 5 (Figure 5a) and specifies that this method is capable of forming three-dimensional, therefore multiple-layered, crystal structures (Figure 1, Opal structures, Regioselective deposition (inkjet printing)). Therefore it would be obvious to one skilled in the art before the effective filing date of the invention that the formation of both the positive pattern, as taught by Stellacci, and the negative pattern, as taught by Kim, include a plurality of layers of nanoparticles, because Kim teaches that the layer thickness is a parameter that directly affects the color shift of the photonic pattern (p. 14503 column 1, Section 7.4).
Regarding claim 7, Stellacci, Loaldi, Janjua, Shemelya and Kim teach the method as applied to claim 4 above. They do not teach a cumulative thickness of the plurality of layers of the pattern(s) being between 50 and 750 nm. However, Kim teaches that the layer thickness is a parameter that directly affects the color shift of the photonic pattern (p. 14503 column 1, Section 7.4). As the color of the photonic pattern is a variable that can be modified, among others, by adjusting the cumulative size of the layers, with color shift both increasing/decreasing as the lattice is deformed to increase or decrease in thickness, the precise cumulative thickness of the layers of the photonic patterns would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed range of cumulative thickness of layers cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the thickness of layers as taught by Kim to obtain the desired balance between the layer height and the color shift as taught by Kim (p. 14503 column 1, Section 7.4) (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). “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. They do not specifically teach that the solution does not contain a pigment or heavy metals: Loaldi teaches an ink containing silver nanoparticles, but the silver nanoparticles themselves are not the basis of the rejection of claim 1 above. However, Kim teaches methods analogous to the method of modified Stellacci, of forming nanoparticles onto substrates (Figures 1, 5) wherein Kim teaches that the structure of photonic nanocrystals is able to achieve colors and optical and mechanical properties unlike and without pigments (p. 14487 column 1, Section 2; abstract; introduction; conclusion), and does not teach the presence of heavy metals (silica (p. 14493), polystyrene (p. 14492), PMMA (p. 14493), azobenzene (p. 14494) are taught). It would be obvious to one skilled in the art to implement the invention of modified Stellacci without pigments and without heavy metals, thereby arriving at the claimed invention before the effective filing date; one would be motivated to do so in order to decrease the toxicity of the created product, as Kim teaches (“colors can be purely developed by structures without the use of chemical pigments, low toxicity can be achieved…,” p. 14485 column 1).
Regarding claim 14, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. They do not teach further depositing structural patterns on the molded article.
However, Kim teaches inkjet printing of colloidal nanoparticle dispersions onto a substrate (p. 14490, Figure 5a) using a positive photoresist (Figure 5c; p. 14491 column 1). It would be obvious to one skilled in the art to modify Stellacci, Janjua, Loaldi and Shemelya to additionally perform a step of depositing further structural patterns onto a substrate, as taught by Kim, where the substrate is the molded article; one would be motivated to do so to obtain a micropattern of an opal structure for photonic structures and optical properties, as Kim teaches (Sections 2.1, 3.1; p. 14491 column 1). One of ordinary skill in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 15, Loaldi modifying Stellacci teaches the first substrate as applied to claim 1 (coating, Figure 1) and further teaches removing the first substrate via polishing from the molded product (p. 5 pp. 1; Figure 3a-b).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Stellacci, Loaldi, Janjua, and Shemelya, as applied to claim 1, and in further view of Maruyama et al. 2004, JP 2004238554 A. A machine English translation of the specification of Maruyama, as provided with this office action, is cited herein.
Regarding claim 8, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. They do not teach the first substrate being formed of a material including polyetheretherketone (PEEK). However, Maruyama teaches a process of applying an ink to a substrate via an analogous ink printing process (0085) wherein Maruyama teaches PEEK (0090) as a substrate equivalent to the substrate of acrylonitrile butadiene styrene (ABS) taught by Loaldi (p. 3 Section 3.1). It would therefore be obvious to one skilled in the art before the effective filing date of the invention to use a substrate formed of a material including PEEK in the invention of Stellacci, Loaldi, Janjua, and Shemelya; see MPEP Section 2143 for discussions regarding the prima facie obviousness of the combination of elements known in the art to yield predictable results (2143(I)(A)); and the prima facie obviousness of substitution of known elements in the art (2143(I)(B)).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Stellacci, Janjua, Loaldi, and Shemelya, as applied to claim 1 above, and in further view of Dellock et al. 2018, US 10077012 B2.
Regarding claim 9, Stellacci, Janjua, Loaldi and Shemelya teach the invention as applied to claim 1. They do not teach the polymeric resin including polymethylmethacrylate (PMMA). However, Dellock teaches a thermoplastic polymer being used for an injection molding of an extension dash panel (C3/L51-54), which is analogous to the injection molding taught by Loaldi (plastic injection molding, p. 1 pp. 1), wherein Dellock teaches PMMA as a thermoplastic that is equivalent (C3/L57) to the ABS taught by Loaldi (p. 4 Section 3.3). It would therefore be obvious to one skilled in the art before the effective filing date of the invention to use a thermoplastic polymeric resin formed of a material including PMMA in the invention of Stellacci, Loaldi, Janjua, and Shemelya; see MPEP Section 2143 for discussions regarding the prima facie obviousness of the combination of elements known in the art to yield predictable results (2143(I)(A)); and the prima facie obviousness of substitution of known elements in the art (2143(I)(B)).
Response to Arguments
Applicant's arguments filed 7/7/2026 have been fully considered but they are not persuasive.
Applicant has asserted (Remarks page 8) that the prior art fails to disclose a step of “after conducting the inspecting, conducting another step of electing the solution including the plurality of nano-sized particles to fill in gaps or voids in the positive pattern.” This argument is not found persuasive, since the analogous art of Shemelya discloses such an iterative step as discussed above. New grounds of rejection, based on the disclosure of Shemelya, are set forth in this Office action as necessitated by amendments made to the claims.
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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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
