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 .
Election/Restrictions
Applicant's election with traverse of claims 1-8 in the reply filed on 7/15/2026 is acknowledged. The traversal is on the ground(s) that the claims do not lack unity of invention. Applicant’s arguments have been fully considered and are persuasive. Examiner has withdrawn the restriction requirement dated 7/7/2026.
Claims 1-14 are currently pending and being examined.
Claim Objections
Claims 1, 4 and 9 are objected to because of the following informalities:
Claims 1, 4 and 9 recite the limitation “series of periodically troughs”. It appears the word “spaced” should be inserted between the words “periodically” and “throughs” to make the limitation clear.
Appropriate correction is required.
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 4-8 is 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.
The term “provide a micrometer to sub-millimeter variation” in claim 4 is a relative term which renders the claim indefinite. The term “provide a micrometer to sub-millimeter variation” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 5-8 are concurrently rejected because claims 5-8 depend from rejected claim 4.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karim et al. (US 2018/0086885 A1), herein referred to as Karim.
Regarding claim 1, Karim teaches (Figure 1 and [0030-0036]) a nanoparticle assembly-containing film 14 comprising a polymer matrix (polymer film) 18 which is then formed into a patterned nanoparticle-containing material 12 having a plurality of mesas 32 (periodically spaced peaks) and trenches 34 (periodically spaced troughs). As seen in Figure 1 of Karim, nanoparticles are present in a higher concentration in mesas 32 (which are non-planar surfaces) than trenches 34.
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Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watkins et al. (US 2014/0072720 A1), herein referred to as Watkins.
Regarding claim 9, Watkins teaches (Figure 1A and [0063 and 0085]) an ultraviolet nanoimprint lithography process directed to applying a photocrosslinkable resin comprising a nanoparticle composition (polymer precursor) on a substrate such as glass (transparent substrate), exposing the photocrosslinkable resin to ultraviolet radiation based on the pattern of a transparent mold (periodic light field) such that the photocrosslinkable resin undergoes crosslinking (polymer precursor is polymerized) thereby resulting in a patterned structure with periodically spaced peak and trough portions (Figure 1A, label 4) wherein the nanoparticle concentration is greater in the spaced peak portions than the trough portion.
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Regarding claim 10, Watkins teaches [0136] the exposure of the photocrosslinkable resin may be performed with a lithographic mask (photomask) that is irradiated with ultraviolet light to induce a crosslinking reaction in the exposed regions of the resin to produce a patterned nanoparticle composition.
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.
Claims 2, 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Karim et al. (US 2018/0086885 A1), herein referred to as Karim.
In view of claim 2, Karim teaches [0070] the amount of nanoparticles present in the nanoparticle assembly-containing film 14 may be 10 weight percent or more. The weight percentage of nanoparticles taught by Karim overlaps the range of one to sixteen percent recited in claim 2. In view of MPEP Chapter 2144.05 Section I, which states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. 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)”, a prima facie case of obviousness has been established because the weight percent of nanoparticles taught by Karim overlaps the weight percentage range recited in claim 2. Therefore, claim 2 is obvious in view of Karim.
In view of claim 3, Karim teaches [0067] the film thickness of the nanoparticle assembly-containing film 14 may be configured to be 100 nm or less. Therefore, claim 3 is obvious in view of Karim.
In view of claim 4, Karim teaches [0044] the nanoparticle assemblies 16 (periodically spaced peaks and troughs)
In view of claim 5, Karim teaches [0048] the nanoparticles can be made from TiO2 (titania) and SiO2 (silicon dioxide). Therefore, claim 5 is obvious in view of Karim.
In view of claim 6, Karim teaches [0048] the nanoparticles can additionally include nanoparticles made from metal oxide or clay (a ceramic material). Therefore, claim 6 is obvious in view of Karim.
In view of claim 7, Karim teaches [0065] the polymer matrix (polymer film) 18 for the nanoparticle assembly-containing film 14 can include materials such a poly(methyl methacrylate) and polyvinylpyrrolidone (vinyl compound). Therefore, claim 7 is obvious in view of Karim.
Allowable Subject Matter
Claims 8 and 11-14 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
The prior art does not teach or suggest the limitations of claim 8, which depends on intervening claims 2-7, wherein the polymer is trimethylolpropane.
The prior art also does not teach or suggest the limitations of claim 11, which depends on intervening claims 9 and 10, wherein each of the plurality of apertures (of the photomask of claim 10) comprises a circular hole having a diameter of between one and fifty micrometers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEWART A FRASER whose telephone number is (571)270-5126. The examiner can normally be reached M-F, 7am-4pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEWART A FRASER/Primary Examiner, Art Unit 1724
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