The arguments and amendments submitted 04/02/2026 have been considered. In light of amendments made, the prior USC § 112(b) rejection(s) are hereby withdrawn. The merits of the claims, however, remain unpatentable as set forth below.
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.
Claim 5 is 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.
Claim 5 recites “two or more metal electrodes”. It is unclear if these electrodes are the same or different than the ones recited in parent claim 3. For the purpose of examination, claim 5 reads on “the two or more metal electrodes”.
Claim Rejections - 35 USC § 102
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 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 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 3-5, 7-9, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boulos (US PG Pub 2008/0145553), previously made of record.
Regarding claim 3, Boulos teaches an apparatus for printing electronic materials on three dimensional substrates (Fig. 1c and other sections cited below) comprising,
a plasma jet print head (DBD torch) made of dielectric tube (paras. 0077-0078) having two or more metal electrodes (para. 0082 and claim 22) disposed on said dielectric tube (claim 16 or 17) in which a non-thermal plasma is generated by dielectric barrier discharge between said electrodes (paras. 0032 and 0078) and a material to be printed on a three dimensional substrate (paras. 0007 and 0021) passes entirely through a plasma region within said dielectric tube (para. 0083 and as shown in Fig. 1c wherein the material to be printed passes through the entirety of the DBD torch portion of the dielectric tube which contains the plasma region),
an ink inlet connected to one end of the dielectric tube through which an aerosolized material (as shown in Fig. 1c, coating precursor and/or powder combined with plasma gas forms aerosolized material) to be printed is introduced (inlet at the top of DBD torch functions as an ink inlet since the combination of powder and liquid monomer/coating precursor per para. 0091 is an ink),
a nozzle present on the other end of the dielectric tube through which the ink that is exposed to the plasma is directed towards the three dimensional substrate to form a film by dielectric barrier discharge (exit of the DBD torch as shown in Fig. 1c, see also para. 0094).
Regarding the feature of printing on a three dimensional substrate at a temperature of 35°C to 200°C, this feature merely recites one of the materials worked upon and a manner of operating the claimed apparatus. The courts have held that these types of recitations do not limit the claimed apparatus and cannot provide a basis for patentabilty. See MPEP § 2115. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Additionally, the courts have held that the manner of operating the device does not differentiate apparatus claims from the prior art. "[A]pparatus claims cover what a device is, not what a device does." See MPEP §2114.II and Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Notwithstanding the above considerations, Boulos teaches that the non-thermal plasma generated by DBD is a cold plasma (paras. 0078 and 0098), and therefore, Boulos’ DBD plasma apparatus clearly has the capability to be operated in the claimed manner.
Regarding claim 4, Boulos teaches the plasma jet print head is made of dielectric materials comprising of ceramic, quartz, glass or a combination thereof (para. 0080).
Regarding claim 5, Boulos teaches the two or more metal electrodes are embedded on an outer surface of said dielectric tube (para. 0030).
Regarding claim 7, Boulos teaches said ink inlet of said plasma jet print head is a source of the electronic material (materials of para. 0076 are various types of electronic materials) to be printed by said plasma printer jet (see Figs. 1c, 1d and paras. 0089-0090 and 0097).
Regarding claims 8-9, Boulos teaches the electronic material comprises conducting metal material particles (metallic particles of para. 0033), dielectric material particles (nitride particles of para. 0033), electronic conducting material particles (metallic particles of para. 0033), thermally conducting material particles (metallic particles of para. 0033), insulating material particles (nitride particles of para. 0033).
Regarding claim 17, Boulos teaches the plasma from the nozzle is directed towards the three dimensional substrate so that the film is formed on the three dimensional substrate (per para. 0022 and as shown in Fig. 1c).
Regarding claim 18, Boulos teaches the plasma from the dielectric barrier discharge accelerates the material to be printed through the nozzle and towards the substrate, enabling non-gravity-based directional printing in any direction including upward (as shown in Fig. 1c).
Regarding claim 19, Boulos teaches the entirety of the material to be printed passes through the plasma region within the dielectric tube before being directed through the nozzle towards the substrate (para. 0083 and as shown in Fig. 1c wherein the material to be printed passes through the entirety of the DBD torch portion of the dielectric tube which contains the plasma region).
Regarding claim 20, Boulos teaches the three dimensional substrate comprises a plastic, biomaterial, ceramic, or other material having a glass transition temperature within the range of 35°C to 200°C (paras. 0006-0007).
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 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 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Boulos (US PG Pub 2008/0145553), as applied to claim 3 above, in view of Gandhiraman (Gandhiraman, R.P, et. al., “Plasma Jet Printing of Electronic Materials on Flexible and Nonconformal Objects”, ACS Appl. Mater. Interfaces 2014, 6, pp. 20860-20867, made of record in the parent application).
Regarding claim 6, Boulos is silent regarding the diameter of the orifice of the print head nozzle.
However, Gandhiraman teaches a plasma printer jet wherein the diameter of the orifice of the print head nozzle is 30 or 150/190 microns (Fig. 6a caption and 1st full para. on pg. 20865), thus falling within and anticipating the claimed range. Gandhiraman teaches that nozzle diameter is one parameter used to control printing resolution (last sentence in 1st full para. on pg. 20865) and that the use of nozzles in this range provides print features having widths of 120-240 microns.
The courts have held that “[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”, that involves only routine skill in the art. See MPEP § 2144.05.II and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Thus, in view of Gandhiraman’s teachings and the above consideration, it would have been obvious to one of ordinary skill in the art at the time of filing to select one of Gandhiraman’s orifice diameters when optimizing the apparatus of Boulos for printing features with widths of the order of 120-240 microns.
Response to Arguments
Applicant's arguments filed 04/02/2026 have been fully considered but are moot for the reason(s) set forth below.
In response to the present amendments to claim 3, a new ground(s) of rejection is made over Boulos, as presented above, which was necessitated by applicant’s amendment to the claim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
Prosecution Insights