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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-8, in the reply filed on 20 May 2026 is acknowledged.
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 May 2026.
Claim Objections
Claims 1, 4 and 7 are objected to because of the following informalities:
Claim 1, L6-7: nanoparticles mixed in the resin, said nanoparticles comprising one of the following materials:
Claim 4, L3-4: a hard mold with a surface on which [[the]] a plurality of concave portions and [[the]] a plurality of convex portions
Claim 7, L3: a nano base forming [[the]] a base of the nanostructure
Appropriate correction is required.
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yoon et al. “Single-step manufacturing of hierarchical dielectric metalens in the visible” (NPL, referred to as Yoon) (of record).
Regard claim 1, Yoon discloses a meta surface manufacturing apparatus comprising a soft mold (Fig 3, “soft mold”) with a surface on which a plurality of embossed portions and engraved portions are formed (Fig 3).
Additionally, while Yoon discloses a nanocomposite applied on the surface of the soft mold (p.2, Fig 3), wherein the nanocomposite comprises: resin formed from thermosetting material (Fig 3, “UV-curable resin”); and nanoparticles mixed in the resin, said nanoparticles comprising titanium dioxide (p.2, Fig 3), examiner notes that the claims are directed towards an apparatus. The claim's recitation of the product composition is directed towards the material worked upon by the apparatus and has little patentable weight. The "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (see MPEP 2115). The apparatus of Yoon is considered to be capable of having the nanocomposite applied to it.
Regarding claim 2, Yoon discloses all limitations of claim 1 as set forth above. Additionally, Yoon discloses that the soft mold comprises: a first layer which forms the surface and where the nanocomposite is applied (Fig 3, p.4 regarding the layer of h-PDMS); and a second layer coupled to the first layer and disposed opposite to the surface (Fig 3, p.4 regarding the layer of PDMS); wherein a material forming the first layer is less viscous and more rigid than a material forming the second layer (p.4).
Regarding claim 3, Yoon discloses all limitations of claim 2 as set forth above. Additionally, Yoon discloses that the first layer is formed with h-PDMS (hard polydimethylsiloxane) material, and the second layer is formed with polydimethylsiloxane (PDMS) material (Fig 3, p.4).
Regarding claim 4, Yoon discloses all limitations of claim 1 as set forth above. Additionally, Yoon discloses that the apparatus further comprises: a hard mold with a surface on which a plurality of concave portions and a plurality of convex portions disposed complementary to the plurality of embossed portions and engraved portions are formed (Fig 3, “master mold”); and the plurality of embossed portions and engraved portions formed on the surface of the soft mold are formed by the plurality of convex portions and concave portions formed on the surface of the hard mold through replicating (Fig 3).
Regarding claim 5, Yoon discloses all limitations of claim 1 as set forth above. While Yoon discloses that the apparatus further comprises a support layer which is in contact with the surface of the soft mold and in which the nanocomposite applied on the surface of the soft mold is seated (Fig 3, “substrate”), examiner notes that the claims are directed towards an apparatus. The claim's recitation of the product structure is directed towards the material worked upon by the apparatus and had little patentable weight. The "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (see MPEP 2115). The apparatus comprising the support layer of Yoon is considered to be capable of having the nanocomposite seated thereon.
Regarding claim 6, examiner notes that the current claim limitation of “a meta surface manufactured according to claim 1” (underline for emphasis) is not given patentable weight since claim 1 is not a method but rather an apparatus. Additionally, the examiner notes that the claim limitation “a meta surface manufactured according to claim 1, comprising a nanostructure formed by curing the nanocomposite” (underline for emphasis) are a product-by-process limitations wherein determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production (see MPEP 2113). In this case, the claim limitations do not require process steps, but rather the structure that is implied by the steps (i.e. a meta surface comprising a nanostructure). Moreover, case law holds that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01). The structure that is implied by the step (i.e. a meta surface comprising a nanostructure) is clearly present in Yoon as discussed above because Yoon discloses the apparatus and the corresponding nanostructure as set forth above in the 102 rejection of claim 1.
Regarding claim 7, Yoon discloses all limitations of claim 6 as set forth above. Additionally, Yoon discloses that the nano structure comprises a nano base forming the base of the nanostructure and formed in a plate-like form (Fig 3); and nano columns protruding from the nano base (Fig 3, 4).
Regarding claim 8, Yoon discloses all limitations of claim 7 as set forth above. Additionally, Yoon discloses that nano columns are provided in a plurality, and the plurality of the nano columns are spaced apart from each other (Fig 3, 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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, Katelyn Smith can be reached at 571-270-5545. 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.
/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
Prosecution Insights