DETAILED ACTION
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 21-36, drawn to method, classified in C23C16/52.
II. Claims 37-40, drawn to apparatus, classified in C23C16/45544.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus is usable for a different process, such as forming an OLED display, rather than for combinatorial screening.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
- the inventions have acquired a separate status in the art in view of their different classification,
- the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and
- the inventions require a different field of search (e.g. different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mr. Todd Rattray January 13, 2026 a provisional election was made without traverse to prosecute the invention of Group 1, claims 21-36. Affirmation of this election must be made by applicant in replying to this Office action. Claims 37-40 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
Claims 22-36 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The claims all require “a method” but this is an open-ended statement and the dependent claims should read “the method”.
Claim 31 requires a number of characteristics including “suitability” for various processes – the range of characteristics implied by these are overly broad and unclear how they would be determined. The specification offers no further insight on what these characteristics encompass.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21-23, 26, 27, 31, and 33-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haubs (2004/0132103).
Haubs teaches a method of combinatorial screening comprising:
- initially the method is useful for combinatorial chemistry [0003-05, 0095] and includes testing of properties of the mixtures [0003], thereby teaching combinatorial screening,
- causing at least a first and second volume to travel through channels to a mixing channel – see Fig. 1 and related text, wherein different amounts of materials are mixed together to form a first mixture, particularly see [0060-64, 82-85] and claim 1,
– and the teachings also include forming “film strips” which meets the requirement of depositing the mixture to form a thin film [0096], the pattern is not particularly limited and any “strip” would constitute such pattern,
- in regard to the requirement of third and fourth volumes, the teachings include forming a number of different mixtures, see particularly [0014] – thereby teaching forming at least a second thin film from a second mixture as claimed. The teachings also include mixing components in varying concentrations in order to generate a library [0062].
In regard to comparing properties, [0003] includes rapid testing of one or more properties (characteristics) as a result of the combinatorial methods.
Regarding claim 22, the different compounds are metered [0062] – as such each of the volumes flow rate is controlled as claimed (also claim 2, conveying rate).
Regarding claim 23, the flushing step does not require any particular action beyond another material moving through the mixing channel – as such, by carrying out further processes, the mixing channel is flushed.
Regarding claim 26, the teachings include varying concentration [0062].
Regarding claim 27, as per above, the steps are not limited to form any certain number of mixtures – the teachings include forming a substance library [0062] and a large number of samples [0003] therefore would reasonably include the claimed fifth and sixth volumes including different precursors as claimed.
Regarding claim 31, the teachings include materials with different hardness [0104] so it would follow that hardness would be one attribute measured.
Additionally/alternatively, the teachings discuss polymerization [0007, 09] and extensively as noted on the use of polymers, therefore it would follow from the teachings to compare such a characteristic.
Regarding claims 33 and 34, the teachings include applying a mixing device that is defined as either a static mixer or a screw extruder (claims 12 and 13) thereby meeting the requirements of agitating and/or non-contact mixing (static mixer is understood to be non-contact as by definition it does not include moving parts).
Regarding claim 35, the teachings include polymers as noted – since the claim is drawn to inorganic and/or organic polymers, even though Haubs is not specific, the limitation is met (Haubs teaches organic and inorganic materials [0056-60, 0101-02].
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.
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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Haubs in view of Teichler (Adv. Energy Matls).
The teachings of Haubs are described above – Haubs teaches mixing polymers (see [0101-134]) but does not teach any method of depositing, such as the claimed inkjet printing. Teichler teaches thought that it is known and useful to deposit polymers using inkjet printing, and such a method is useful within the scope of combinatorial screening, see particularly abstract and section 2.3. It would have been obvious at the effective date of the invention to apply the (polymeric) mixtures of Haubs using the inkjet printing method of Teichler as Haubs teaches forming mixtures that are used in combinatorial screening but does not explicitly teach a method of depositing (i.e. forming the strips (or pellets) and Teichler teaches that inkjet printing is useful for applying such materials. In combining the methods, one would, for example use the mixture of Haubs to feed the inkjet printer of Teichler as Haubs forms various polymeric materials useful for combinatorial screening, which is also the intent of Teichler.
Claims 25 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Haubs.
Regarding claim 25, the teachings of Haubs are not limited on the timing of applying the materials – as materials are applied and concentrations are adjusted, the step of part of a depositing step overlapping with causing additional volumes to be prepared would have been obvious in order to expedite processing. Further, as per MPEP 2144.04 IV. C. a change in sequence of adding ingredients is obvious without a showing of criticality. In this case, as noted, temporal overlap of steps would improve the time of production as opposed to not overlapping such steps.
Regarding claim 32, the teachings are silent on where or how the material is deposited (formed into a strip) it would not be novel or unique to overlap the strips. While not specifically the same as the control of the sequence of adding ingredients as above, it follows within the same concept as a routine manner of controlling the process.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Haubs in view of McFarland (6,468,806).
Regarding claims 28 and 29, the teachings of Haubs are described above, including forming a large number of materials for combinatorial screening, but not teaching that the substate comprises a plurality of electrodes in the manner claimed. McFarland, however, teaches a combinatorial screening process (abstract), the method includes making materials that are formed on different electrodes and then measuring electrical properties (see particularly claim 1). It would have been obvious at the effective date of the invention to combine the methods of Haubs and McFarland as Haubs is not limited on the usable of the formed material in the process of combinatorial screening and McFarland teaches that an effective process of forming a combinatorial library includes depositing the materials on electrode substrates in order to measure electrical properties. Further to claim 29 the resistance is measured and to measure the resistance between any of a number of the thin layers would be obvious based on the combined teachings.
Regarding claim 30, even though claim 30 does not actually depend on claim 28, the methods are combined as per claim 28. In regard to the characteristics, wherein the suitability for depositing by piezoelectric triggered drop-on-demand printing is extremely broad/indefinite, the testing of McFarland is interpreted to meet such a requirement as such printers would require a certain measure of electrical charges.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Haubs in view of Mansky (2003/0037601).
The teachings of Haubs are described above, the teachings include various additives [0102-09], but Haubs, while teaching any number of additives including flame retardants and pigments, does not teach any of the claimed additives, while the general teachings appear open to any known additive. Mansky teaches that in forming a polymer material, it is useful to include additives such surfactants, cosolvents and colorants (i.e. pigments) [0044]. It would have been obvious at the effective date of the invention to apply any of the additives of Mansky, such as the claimed surfactants and/or cosolvents as Haubs generally teaches additives and Mansky teaches that the claimed additives are useful in polymer compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/ Primary Examiner, Art Unit 1712