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
Claims 1-23 are pending. claims 1-16, 18-23 are rejected under prior art. Claim 17 is objected.
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 (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 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.
Claim(s) 1-6, 8-11, 13, 16, 18, 19, 21, 22, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (WO 2012/015277A2) in view of Liang et al. (Self.Assembly of Colloidal Spheres toward Fabrication of Hierarchical and Periodic Nanostructures for Technological Applications).
With respect to claims 1, 8, 19 Song describes a method for forming a micro/nano semiconductor structure comprising: providing a substrate having a plate 100 and at least a protrusion 105 on a first side of the plate ended in a tip
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; nanotexturizing the outer surface of the plate including the protrusion to from nanotextured surface 130 (fig. 3d)
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; wherein the nanotexturizing steps include covering the surface with metal particles or metal grains using method such as thermal evaporation; etching the surface in a direction perpendicular to the plate 100 to remove a portion of the substrate not protected by the particles. This would provide claimed a low-relief etched surface with nanowires since it is a nanostructure 130 (abs., pages 6, 7).
Unlike claimed invention, Song doesn’t describe using a suspension comprising a carrier fluid and particles including polymer and SiO2, removing the carrier fluid leaving behind a mask comprising a plurality of particles partially protecting the surface. However, a method of using nano-particles including polymer and SiO2 particles as mask for etching of a substrate to form nanostructure is known and practiced by one skilled in the art as shown here by Liang, who teaches a method of self-assembly of colloidal spheres/particles such as PS and SiO2 spheres in a solvent, wherein the solvent is evaporated to form a particle mask for the etching of a substrate to form nanostructures (page 1, fig. 1).
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. It would have been obvious for one skilled in the art before the effective filing date of the invention to form a particle mask, in view of Liang, because they both teaches evaporating methods of forming particle masks and Laing further teaches a more detail of known steps and method of using a suspension of colloidal particles such as PS and SiO2 that would provide the same type of particle mask to facilitate Song’s etching method in manufacturing nanostructures with expected results.
With respect to the preamble of a method for manufacturing an emitter for electrospray generators, when reading the preamble in the context of the entire claim, the recitation in the preamble is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
With respect to claim 2, fig. 3d shows the whole surface is nanotextured including the region connected to the protrusion
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With respect to claim 3, Liang teaches using a suspension of colloidal particles (page 1, 2).
With respect to claim 4, Liang teaches nanostructures are formed with the colloidal spheres with diameters from several microns all the way down to ten of nanometers (page 1).
With respect to claims 5 and 6, Song further teaches providing a buffer layer 107 made of SiO2 or SiN or claimed a first covering layer before forming the particle mask 120 and etching the buffer 107 using the particle mask 120 to transfer a pattern to the buffer layer (fig. 6)
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.
With respect to claim 9, Liang teaches “the charged nanospheres would move toward the electrodes under direct current fields or alternating current fields, leading to the self-assembly of colloidal spheres on the electrode surface” (page 3), which provide claimed charged particles in order to ease the attachment and distribution of the particles on the first covering layer of SiO2 or SiN.
With respect to claim 10, it is expected that the charged particles of PS or SiO2 to homogeneously distribute on the buffer layer 107 because the particles of PS and SiO2 for the mask are the same as that of the claimed inventions. Liang also describes “these highly ordered and uniform nanosphere monolayers can be obtained via the spreading of colloidal suspension onto a liquid surface, and then these floating monolayers are readily transferred onto varied substrates. After the evaporation of solvent in the suspension, the dense nanosphere existed in a single monolayer format without any variation in its thickness would remain on the substrate surface” (page 3). Figure 13 in Liang shows the particles are uniformly distributed on the surface
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.
With respect to claim 11, Liang further teaches that “the substrates were first pretreated with mild oxygen plasma to induce hydrophilic surfaces for the facilitation of uniform nanospbere coating” (page 7), which would provide a surface charge.
With respect to claim 13, Song teaches anisotropic etching of the substrate or plate with a plasma etching (page 7, 8).
With respect to claim 16, Liang describes examples of the colloidal particles size include 500, 700, 900 and 1100nm and 700/800 and 500/600 diameter/pitch nm (page 12, 13).
With respect to claim 18, Liang teaches providing the particles in water or a polar solvent (page 4, 5).
With respect to claim 21, Song teaches the method for texturing of optical device including a transparent glass (page 2).
With respect to claim 22, Song shows in the fig 3a above that the microstructures 105, which provide pyramid, edge, pointy or needle shape.
With respect to claim 23, even though Song doesn’t describe that the tip is a structure adapted for electric field concentration, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The tip of the microstructures 105 by Song would be capable of adapted for any electric filed concentration.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song and Liang as applied to claim 5 above, and further in view of Akiyama (US 2023/0207307A1).
With respect to claim 7, Song doesn’t teach using physical vapor deposition (PVD) to deposit the buffer SiO2 107. He teaches of using CVD or thermal-CVD (page 7). However, physical vapor deposition is a known process and equivalent to that of CVD to deposit a variety of materials as shown here by Akiyama, who teaches CVD or PVD can be used to deposit a SiO2 (para 27). It would have been obvious for one skilled in the art before the effective filing date of the invention to use known process including PVD in the deposition of SiO2, in light of Akiyama, because using known process without changes in their respective functions, in this case using PVD to deposit a SiO2 layer, would provide the layer with expected results.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song and Liang as applied to claim 1 above, and further in view of Syms (US 2011/0000986A1).
With respect to claim 12, Song teaches etching the buffer SiO2 107 with a plasma using RIE or ICP (page 8). Song doesn’t teach etching the buffer SiO2 107 layer with a Ar plasma. However, such process for etching SiO2 is known to one skilled in the art as shown here by Syms, who teaches using RIE with a plasma containing Ar to anisotropically etch, or a direction perpendicular to the substrate, the SiO2 based layer (para 50). It would have been obvious for one skilled in the art before the effective filing date of the invention to use known process including an Ar plasma for etching of the SiO2 layer, in light of Syms, because using known process without changes in their respective functions, in this case using Ar plasma to anisotropically etch the SiO2 layer, would provide the layer with expected results.
Claim(s) 14, 15, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song and Liang as applied to claim 1 above, and further in view Pearson et al. (US 2008/0240654A1).
With respect to claims 14 and 15, Song doesn’t teach etching the substrate (eg. A GaAs or InP) with SF6 and/or C4F8 gases. However, etching optical substrate such as InP using SF6 and C4F8 is known and practiced by one skilled in the art as shown here by Pearson, who teaches known DRIE process using SF6 and C4F8 to vertically etching the InP optical grating substrate (abs., para 52). It would have been obvious for one skilled in the art before the effective filing date of the invention to use known process including a SF6 and C4F8 plasma for etching of the substrate, in light of Pearson, because using known process without changes in their respective functions, in this case using SF6/C4F8 plasma to provide vertically etching of the substrate, would provide the nanostructures with expected results.
With respect to claim 20, even though Song doesn’t teach the substrate is Si. However, Pearson further teaches that either Si or InP substrate, which is also taught by Song (page 5), is used in the process of making grating chip of an optical device (abs.; para 52). Therefore, in the absent of unexpected results, one skilled in the art before the effective filing date of the invention to use either Si or InP substrate in order to provide a desired optical device with expected results.
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With respect to claim 17, neither Song nor Liang teach the surface density of the particles deposited on the first covering layer or substrate are in the range 0.001-50 particles per square micron, most preferably in the range 0.05-10 particles per square micron.
Response to Arguments
The amendment and remarks have overcome the 112 rejections.
With respect to applicant’s remark that Song is directed to optical antireflective structure, not electrospray emitters, the claim 1 cites a method for manufacturing an emitter for electrospray generations, which is an intended use recitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the steps cited by Song and Liang provide the same steps as that of claim 1; therefore, these steps would be capable of providing claimed intended use for manufacturing an emitter for electrospray generators. Furthermore, Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1. When reading the preamble in the context of the entire claim, the recitation “Method for manufacturing an emitter for electrospray generators” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. There are no other steps for making an emitter for electrospray generators in claim 1 that are different than those taught by the combined method of Song and Liang.
Applicant’s remark that Song’s nanostructures are not the same as claimed nanowires therefore does not disclose claimed nanowire forest emerging from an etched substrate surface and in a direction perpendicular to the plate on the protrusions are found unpersuasive. Under the broadest reasonable interpretation, MPEP 2111, any nanostructures formed by the same method would read on claimed nanowires. Furthermore, the claim 1 doesn’t require that ALL of the nanowires emerging from the low-relief surface in a direction perpendicular to the plate. Figure 3 D shows some of the nanostructures 130 including those on the protrusions, which provides claimed nanowires because they are formed with nano-size all over the protrusions above the substrate 100, points upward and perpendicular to the plane of the substrate 100 or claimed nanowires emerging in a direction perpendicular to the plate even in those located on the protrusions.
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Conclusion
THIS ACTION IS MADE FINAL. 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 DUY VU NGUYEN DEO whose telephone number is (571)272-1462. The examiner can normally be reached 9-5 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 571-272-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUY VU N DEO/Primary Examiner, Art Unit 1713
10/8/2026
