DETAILED ACTION
This is in response to communication received on 10/16/25.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 3/20/25 and 7/18/25.
Claim Rejections - 35 USC § 102
The claim rejection(s) under 35. U.S.C. 102(a)(1) as being anticipated by Gin et al. US Patent Number 5,849,215 hereinafter GIN on claim 1-2, 7, 9, 11 and 12 are maintained. The rejection is repeated below for convenience.
As for claim 1, GIN teaches "A method for synthesizing composites with architectural control on the nanometer scale is described" (abstract, lines 1-2), "The matrix comprises polymerized inverse hexagonal phase-forming lyotropic liquid crystalline monomers and defines a hexagonally-packed array of tubular channels" (column 2, lines 1-3), "The polymerized material will typically contain a regular, hexagonal array of channels, each of the channels having a diameter of about 2 to about 10 nanometers" (column 9, lines 62-65) and "These composites can be formed into a variety of structures including fibers and films" (column 2, lines 14-15) i.e. a method of aligning nanopores in a polymeric film.
GIN further teaches "combining a quantity of polymerizable inverse hexagonal-forming monomers, an aqueous or polar organic solvent... to form a pre-polymer mixture in which the polymerizable monomers adopt an inverse hexagonal phase around the aqueous or polar organic solution" (column 2, lines 21-25) and "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" (column 19, lines 49-57), wherein the Examiner notes that the monomer mixture must inherently be placed between the glass slides in order to be pressed i.e. depositing a solution of at least one monomer in a solvent onto a surface of a first substrate to form a mesophase comprised of nanopores ... applying a second substrate onto a surface of the mesophase, such that the mesophase in contact with both the first and second substrate ... polymerizing the mesophase to form a polymeric film containing at least partially aligned nanopores.
GIN is silent on thereby causing the nanopores to at least partially align in response to the second substrate.
It is has been amended to include the limitation of thereby causing the nanopores.
The use of the term “thereby” in the aforementioned claims is improper. It is noted that the courts have held that functional “whereby” statements do not define any structure, and accordingly cannot serve to distinguish over the prior art. See In re Mason, 114 USPQ 127, 44 CCPA 937 (1957). Appropriate corrections are required.
In the interest of compact prosecution, it is the position of the Examiner that it is inherent that the nanopores at least partially align in response to the second substrate within GIN. Firstly, how the second substrate causes at least partial alignment nor what kind of partial alignment the second substrate causes to take place is not limited by the claim. Nor is the degree to which the alignment is caused by the second substrate limited. Therefore, any alignment of any degree caused even accidentally by the glass slides, one of which is analogous to the second substrate, would fall within the scope of the claim. Further, as the glass slides, i.e. the first and second substrate, are pressing the fluid into a film they are applying pressure onto the fluid and causing the inverse hexagonal phase, i.e. mesophase, to realign to form a thinner aligned film. There, it is the position of the Examiner that the second substrate is necessarily causing the fluid, and thereby the nanopores therein, to at least partially align into a horizontal film-like structure in response to the force applied by the second substrate. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. lnherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
As for claim 2, GIN teaches "sodium 3,4,5-tris(11 'acryloyloxyundecyloxy) benzoate as a second example of a polymerizable inverse hexagonal phase-forming liquid-crystalline monomer" (column 2, line 66 - column 3, line 2), i.e. wherein the monomer is sodium 3,4,5-tris(11' -acryloyloxyundecyloxy)benzoate (Na-GA3C 11 ).
As for claim 7, GIN teaches "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" (column 19, lines 49-57; emphasis added for clarity), i.e. wherein the first substrate is a ... glass substrate.
As for claim 9, GIN teaches "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" (column 19, lines 49-57; Emphasis added for clarity), i.e. wherein the second substrate is a ... glass substrate.
As for claim 11, GIN Teaches "The optical texture of this mixture under the polarized light microscope should be consistent with that of a lyotropic inverse hexagonal mesophase" (column 7, lines 32-35) and "Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, 55 pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization ... When ground up, the films exhibit the x-ray diffraction pattern for a hexagonal phase which is consistent with overall homeotropic alignment" (column 19, lines 52-62), i.e. further comprising the steps of: raising the temperature of the mesophase such that the mesophase is in a disordered state; and controlling the rate of cooling of the mesophase as it returns to an ordered state.
As for claim 27, GIN teaches "In terms of processing, the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization. The films are almost uniformly dark under crossed polarizers but appear bright around areas of applied stress" (paragraph 19, lines 50-57), wherein 'free standing' is understood to mean not on a substrate. Thereby, GIN teaches the removal of the glass slides after the photopolymerization i.e. wherein the method further comprises removing at least one of the substrates from the composite material after the polymerizing step.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Gin et al. US Patent Number 5,849,215 hereinafter GIN as applied to claim 1 above, and further in view of Elimelech et al. US PGPub 2015/0047968 hereinafter ELIMELECH on claim 3 is maintained. The rejection is repeated below convenience.
As for claim 3, GIN teaches "In order to facilitate the polymerization processes which form the matrix and, in some embodiments, the channel filler, a radical initiator will optionally be present in the pre-polymer mixture. Suitable radical initiators or those which will form radical species upon exposure to light... " (column 9, lines 16-20), i.e. wherein the solvent further comprises a photoinitiator.
GIN teaches "Examples of radical photoinitiators include 2- hydroxy-2- methylpropiophenone ..." (column 9, lines 21-23).
GIN is silent on wherein the photoinitiator is 2,4,6- trimethylbenzoyldiphenylphosphine oxide.
ELIMELECH teaches "The present invention relates to the development and fabrication of thin-film polymer nanocomposites ... In certain embodiments, the mesophase may be a stable, single-phase material containing monomers that can be polymerized after nanotube alignment to form the nanocomposite polymer" (abstract). ELIMELECH further teaches "The present invention relates to a nanocomposite that includes at least one nanomaterial, at least one amphiphilic compound, at least one monomer, and at least one initiator" (paragraph 5, lines 1-4) and "In another embodiment, the at least one monomer is sodium 3,4,5-tris (1 'acryloyloxyundecyloxy) benzoate" (paragraph 7, lines 10-12).
ELIMELECH further teaches "As used herein, the term "Darocur TPO" refers to 2,4,6-trimethylbenzoyl-diphenylphosphine oxide" (paragraph 34).
ELIMELECH further teaches "The mesophase may also include one or more crosslinkers and/or initiators, depending on the mechanism and the amount of polymerization and crosslinking desired" (paragraph 47, lines 1-3) and "the photoinitiator Darocur TPO. In another embodiment, the initiator is (2-hydroxy-2- methylpropiophenone )" (paragraph 47, Lines 18-19), i.e. wherein the photoinitiator is 2,4,6-trimethylbenzoyldiphenylphosphine oxide is a known equivalent to the 2-hydroxy- 2-methylpropiophenone taught by GIN in the photopolymerization of the mesophase/aligning monomers like and including sodium 3,4,5-tris (1 'acryloyloxyundecyloxy) benzoate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have wherein the photoinitiator is 2,4,6-trimethylbenzoyldiphenylphosphine oxide in the process of GIN because ELIM ELECH teaches that such a photoinitiator was a known equivalent to one taught by GIN in the photopolymerization of aligned mesophase/ordered structures. It is a prima facie case of obviousness to substitute one known element for another to obtain predictable results.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Gin et al. US Patent Number 5,849,215 hereinafter GIN as applied to claim 1 above, and further in view of Iverson et al. US Patent Number 7,625,497 hereinafter IVERSON on claim 20 is maintained. The rejection is repeated below convenience.
As for claim 20, GIN further teaches "combining a quantity of polymerizable inverse hexagonal-forming monomers, an aqueous or polar organic solvent... to form a pre-polymer mixture in which the polymerizable monomers adopt an inverse hexagonal phase around the aqueous or polar organic solution" (column 2, lines 21-25) and "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" (column 19, lines 49-57), i.e. wherein the step of depositing a solution of at least one monomer in a solvent onto a surface of a first substrate to form a mesophase comprised of nanopores, and the step of applying a second substrate onto a surface of the mesophase, wherein the mesophase is in contact with both the first substrate and the second substrate, and wherein the nanopores at least partially align in response to the second substrate further comprises the step of raising the temperature of the mesophase such that the mesophase is in a disordered state and controlling the rate of cooling of the mesophase as it returns to an ordered state
GIN is silent on further comprises the step of removing the solvent.
IVERSON teaches "The invention provides materials and methods for making anisotropic solids which may be in the form of films, layers, shaped elements, and other shaped articles" (abstract, lines 1-3) and "This invention relates to methods for controlling the self-organization of organic compounds, particularly into a lyotropic (solvent- and concentration-dependent) liquid-crystalline phase, in order to prepare micro-patterned organic solids in which molecular orientation and anisotropic (direction dependent) properties are controlled or selected" (column 1, lines 26-33).
IVERSON further teaches "The rate of solvent removal from the solution is selectively controlled to allow and not disrupt orientation of the ionic organic and/or organometallic components of the solution. Dependent upon the concentration of the solutions and the solvent used, solvent may be removed over a time period of minutes to hours. Additionally, the temperature of the template may be selectively controlled during solvent removal to facilitate orientation of the mesogens" (column 7, lines 22-29), i.e. wherein further comprises the step of removing the solvent.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include further comprises the step of removing the solvent in the lyotropic phase forming process of GIN because IVERSON teaches that a process combining both temperature control and the removal of solvent can control the phase formed by polymers in a process.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Gin et al. US Patent Number 5,849,215 hereinafter GIN further in view of Phillip et al US PGPub 2019/0016909 hereinafter PHILLIP on claim 28, 29, 30, 33, 36, and 39 are maintained. The rejection is repeated below convenience.
As for claim 28, GIN teaches "A method for synthesizing composites with architectural control on the nanometer scale is described" (abstract, lines 1-2), "The matrix comprises polymerized inverse hexagonal phase-forming lyotropic liquid crystalline monomers and defines a hexagonally-packed array of tubular channels" (column 2, lines 1-3), "The polymerized material will typically contain a regular, hexagonal array of channels, each of the channels having a diameter of about 2 to about 10 nanometers" (column 9, lines 62-65) and "These composites can be formed into a variety of structures including fibers and films" (column 2, lines 14-15) i.e. A method of fabricating a polymeric film of aligned nanopores.
GIN further teaches "combining a quantity of polymerizable inverse hexagonal forming monomers, an aqueous or polar organic solvent... to form a pre-polymer mixture in which the polymerizable monomers adopt an inverse hexagonal phase around the aqueous or polar organic solution" (column 2, lines 21-25) and "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" (column 19, lines 49-57), wherein the Examiner notes that the monomer mixture must inherently be placed between the glass slides in order to be pressed i.e. depositing a mixture of at least one monomer and at least one template compound onto a surface of a first substrate to form a mesophase, polymerizing the mesophase to form a polymeric film.
GIN further teaches "For example, derivatization of the hydrophilic head groups with appropriate functionality can provide a matrix or membrane with specificity for the removal of undesired materials from water ( e.g., as ultrafiltration and electrodialysis membranes)" (paragraph 10, lines 40-44), wherein the filter is wetted with water to filter i.e. wetting the polymeric film with water to form aligned nanopores.
GIN is silent on rinsing the polymeric film with NaOH in DMSO to remove the template compound.
GIN does teach "In another group of embodiments, the channels fillers are compositions which add other beneficial properties to the composite. Illustrative of such fillers are semiconductors, metal salts, metal particles and conjugated organic polymers" ( column 8, lines 11-15).
PHILLIP teaches "A method for fabricating nanostructured polymeric materials based on a com bi nation of inkjet printing and tern plate synthesis" ( abstract, lines 1-3) and "The solvent for dissolving the sacrificial template can be any suitable inorganic or inorganic solvent. In embodiments, the solvent can be an ester, ketone, alcohol, ether, acid or base. Examples include ... dimethyl sulfoxide ... sodium hydroxide" (paragraph 52), i.e. rinsing the polymeric film with NaOH and DMSO to remove the template compound.
It would have been obvious to have rinsing the polymeric film with NaOH and DMSO to remove the template compound in the process of GIN because PHILLIPS teaches that doing so can remove a template/channel filler to produce empty nanopores.
As for claim 29, GIN teaches "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolym erization" ( column 19, lines 49-57), i.e. further comprising the step of applying a second substrate prior to polymerization.
As for claim 30, GIN teaches "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" ( column 19, lines 49-57), i.e. wherein the first substrate and second substrate are glass substrates.
As for claim 33, GIN teaches "As noted, additional components (e.g., crosslinkers and radical initiators) can be present in the pre-polymer mixture. The use of a crosslinker is preferred for those embodiments in which the inverse hexagonal phase forming monomer contains a single polymerizable group" (column 9, lines 8-12) and "In order to facilitate the polymerization processes which form the matrix and, in some embodiments, the channel filler, a radical initiator will optionally be present in the prepolymer mixture. Suitable radical initiators or those which will form radical species upon exposure to light or heat" (column 9, lines 16-21), i.e. wherein the mixture further comprises at least one cross/inker and at least one photoinitiator.
As for claim 36, GIN teaches "In particular, other suitable starting materials (unsaturated fatty acids) could be used in place of methyl oleate" (column 6, lines 30- 32), i.e. wherein the monomer is an unsaturated fatty acid.
As for claim 39, GIN teaches "the amount of inverse hexagonal-forming monomers in the pre-polymer mixture will be on the order of 60 to 95weight % (wt%)" (column 9, lines 34-36), and "The aqueous or polar organic solution will optionally contain an amount of a channel filler precursor material which is sufficient to produce the desired nanocomposite" (column 9, lines 40-43).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the ratio of monomer and template compound such that the desired nanocomposite is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Gin et al. US Patent Number 5,849,215 hereinafter GIN and Phillip et al US PGPub 2019/0016909 hereinafter PHILLIP as applied to claims 29 above, and further in view of Takahashi et al. US PGPub 2006/0262401 hereinafter TAKAHASHI on claim 31 is maintained. The rejection is repeated below convenience.
As for claim 31, GIN is silent on wherein the first and second substrate are coated with ... octadecyltrimethoxysilane.
TAKAHASHI teaches "without taking the above-mentioned thickness conditions into consideration, for example, suitable conventional sheet materials that is coated, if necessary, with release agents, such as silicone type, long chain alkyl type, fluorine type release agents, and molybdenum sulfide may be used" (paragraph 153, lines 5-10) and "The coating liquid was applied with a wire bar to a PET film having a thin precoating of a (re)lease treatment agent (octadecyltrimethoxysilane) so as to provide a post-drying coating thickness of 3 μm (paragraph 162, lines 7-10)
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the first and second substrate are coated with ... octadecyltrimethoxysilane in the process of GIN because TAKAHASHI teaches that such an application to a substrate serves as a release agent.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Gin et al. US Patent Number 5,849,215 hereinafter GIN further in view of Phillip et al US PGPub 2019/0016909 hereinafter PHILLIP as applied to claim 28 above, and further in view of Elimelech et al. US PGPub 2015/0047968 hereinafter ELIMELECH on claim 41 is maintained. The rejection is repeated below convenience.
As for claim 41, GIN further teaches "the nanocomposite can be easily fabricated into highly aligned free-standing thin films and fibers. Thin films several square centimeters in area with the aqueous channels almost uniformly aligned perpendicular to the film surfaces were produced by heating the monomer mixture into a fluid, isotropic state between glass slides, pressing the fluid into a film, and allowing the mixture to slowly cool between the plates before photopolymerization" (column 19, lines 49-57), i.e. heating the mesophase and gradually cooling the mesophase to room temperature.
GIN is silent on a magnetic field.
GIN does teach "wherein said filler component is an inorganic material selected from the group consisting of magnetic ceramic particles, semiconductors, metal particles, alumina, silica, and metal salts" ( claim 10).
ELIMELECH teaches "The present invention also relates to a method of aligning a nanomaterial in a polymeric film. The method includes the steps of adding at least one nanomaterial into a mesophase comprising at least one amphiphilic compound and at least one monomer, applying a magnetic field to the mesophase, wherein the at least one amphiphilic compound and at least one nanomaterial at least partially align in response to the magnetic field, and polymerizing the mesophase to form a film containing the at least partially aligned amphiphilic compound and nanomaterial" (paragraph 6), and see further Fig. 1 i.e. applying a magnetic field to the mesophase, rotating the mesophase about the normal of the first substrate.
ELIMELECH teaches "The temperature of the mesophase system in the magnetic field may be manipulated during all or any portion of the application of the magnetic field. In certain embodiments, control of temperature may be automated through a programmable temperature controller (Omega, Stamford, Conn.) that provides temperature control within 0.1 ° C. of set points, for example" (paragraph 66, lines 1-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include applying a magnetic field to the mesophase, rotating the mesophase about the normal of the first substrate in the orientation process of GIN because ELIMELECH teaches that a magnetic field can bused to orient magnetic materials to form ordered structures in a mesophase.
Allowable Subject Matter
Claim 39 and 43 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The claim 39, contains the following limitation which is not taught nor suggested by the prior art on record:
Wherein the template compound is 1,3,5-tris(t H-benzo[d]imidazole-2- yl)benzene.
The closest prior art on record of GIN fails to teach this compound as a useful template material.
The claim 43, contains the following limitation which is not taught nor suggested by the prior art on record:
2-[3,5-bis(IHbenzimidazol-2-yl)cyclohexyl]-IH-benzimidazole, 2,2',2"-(la,3a,5a -Cyclohexanetriyl )tris(l-azonia-lH-benzoimidazole ), 2-[3,5-bis( 6-methyl-lHbenzimidazol-2-y l )pheny l]-6-methyl- U-I-benzimidazole, 2,2'-(2-( ( lH-benzo[d]imi dazol-2-yl )methyl )propane-1,3-diyl )bis( lH-benzo[ d]imidazole), N,N-bis(IH-benzimidazol-2-ylmethyl)-3-phenylpropan-l-amine, 2-[2-(lH-benzimidazol-2-ylmethyl)phenyl]-lHbenzimidazole, 2-[2,4,5-tris(lH-benzimidazol-2-yl)phenyl]-lH-benzimidazole, N,Nbis(lH-benzimidazol-2-ylmethyl)-1-phenylmethanamine, N,N-bis( lH-benzimidazol-2-ylmethyl )-2-phenyl ethanamine, 2-[3-[2-amino-1,3-bi s( IH-benzimidazol-2-yl)propan-2- yl ]phenyl ]-1,3-bis( lH-benzimidazol-2-yl)propan-2-amine, 4-phenyl-2-( 4-phenyl-lHbenzimidazol-2-yl)-lH-benzirnidazole, 2-[[3-(lH-benzirnidazol-2-ylmethyl)-ladamantyl]methyl ]-lH-benzimidazole, 6-methyl-N,N-bis(6-methyl-1H-benzimidazol-2- yl)-l H-benzimidazol-2-amine, 2-[2,4,5-tris(l H-benzimidazol-2-yl)phenyl]-lHbenzimidazole, N,N,N',N'-tetrakis(lH-benzimidazol-2-ylmethyl)propane-1,3-diamine, 2- [3-( lH-benzimidazol-2-yl)-5-[3 ,5-bis(l H-benzimidazol-2-yl)phenyl]pheny l ]-1 Hbenzimidazole, N,N,N' ,N'-tetrakis(lH-benzimidazol-2-ylmethyl )butane- I, 4-diamine, 2-[ 1,2-bis( lH-benzimidazol-2-y 1)-2-( 1,3-dihydrobenzimidazol-2- ylidene )ethylidene ]benzimidazole, N,N,N' ,N'-tetrakis(lH-benzimidazol-2-yl)ethane-1,2- diamine, N,N,N',N'-tetrakis(lH-benzimidazol-2-yl)ethane-1,2-diamine, 2-[2-(1Hbenzimidazol- 2-yl)propan-2-yl]-1H-benzimidazole, or 2-[3-(lH-benzimidazol-2-yl)-5- [3,5-bis(lH-benzimidazol-2-yl)phenyl]phenyl]-lH-benzimidazole.
The closest prior art on record of GIN fails to teach these compounds are template materials.
Response to Arguments
Applicant's arguments filed 10/16/25 have been fully considered but they are not persuasive.
Applicant’s principal arguments are summarized and addressed below:
(a) Applicant argues that GIN uses an entirely different mechanism to induce alignment in the thin films than the claims, so therefore the inherency argument is not valid.
Examiner respectfully points out that the language of the claim is open-ended and includes that the application of the substrate 'thereby caus[es] the nanopores to at least partially align in response to the second substrate'. This language does not exclude alternate mechanisms of nanopores aligning. It only requires that it 'at least partially aligns' in response to the second substrate.
The key here is 'partially'.
The fact that GIN uses both a chemical means of organization alongside the use of two substrates to align the pores does fall within the scope of the claim. The nanopores only need to partially align in response to the substrate, meaning that any degree of alignment caused by the substrate falls within the scope of the claim, even if the lion's share of that alignment is happening in response to another stimulus. As the mesophase of GIN is sandwiched between the substrates as it is chemically aligning, it is perfectly reasonable to point out that some of that alignment, no matter how small, is happening in response to the application of the substrate.
Applicant is not necessarily wrong that GIN's teachings are different from the invention described in the specification, but the claims aren't describing a process exclusive of GIN. There is nothing that requires that the alignment take place exclusively from the substrates, in fact that claim makes clear that only a portion of the alignment takes place in response to the substrate.
To illustrate the broadness of the claim, Examiner points out that the claims read on an embodiment wherein the nanopores only partially align in response to the substrate, meaning that their alignment is complete, and an embodiment wherein the nanopores partially align in response to the substrate while also aligning in response to another stimulus such that they perfectly aligned. There are other embodiments that fall within the claim, these are examples, but Examiner hopes they illustrate why the rejection under GIN is maintained.
Applicant's arguments are not persuasive as they are not germane with the scope of the claim and do not consider the breadth of the teachings.
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.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717