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 .
The amendment of October 6, 2025 has been received and entered. With the entry of the amendment, claims 1-19 are pending for examination.
Specification
The substitute specification filed September 25, 2024 has been accepted.
The objection to the disclosure because Figures 5d and 15 need to be discussed in the Detailed Description section of the specification is withdrawn due to the amendment of October 6, 2025 providing this discussion in the Detailed Description section.
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 1-19 are 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.
Claim 1, the preamble to the claim at line 1 indicates the method is “applying a texture to a metal surface”, however, there is no limit as to what is intended by “texture”. Would it be adding roughness? Would it be forming a shape of some sort? Something else? For the purpose of examination, any of the options discussed in above is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter. In the amendment of October 6, 2025, it is argued that applying to the metal surface has now been provided, however, it is not clarified what to what is intended by texture, and therefore the rejection is maintained.
Claim 3, line 2, “texturing metal” is indefinite as to what is intended. Does any metal meet the claim requirements or does the metal have to have a specific action? For the purpose of examination, any of the options is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter. In the amendment of October 6, 2025, it is argued that “texturing metal” is defined at 0069 of the specification, however, while 0069 gives examples of texturing metal, it is not limited to these examples. Similarly, 0070 and 0077 of the specification still do not provide a limiting definition of what is encompassed by “texturing metal”. Therefore, the rejection is maintained.
Claim 7, line 1, “thin” is indefinite as to what would be “thin” as opposed to “thick” or “average”. For the purpose of examination, any thickness of a film is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter. In the amendment of October 6, 2025, it is argued that this term “thin film” is well understood in the art with no need to define the dimensions of the thin metal film. The Examiner is of the position that no showing has been made as to what would be understood in the art, and therefore, the rejection is maintained. Note MPEP 2145(I), “Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.")”.
Claim 16, line 3, “critical micelle concentration” is indefinite and unclear as there is no limit as to when the “critical” concentration is reached, and furthermore, as worded it is unclear if the critical concentration as before or after it is mixed. For the purpose of examination, any concentration, before or after mixing, is understood to meet the requirements of the claim as could be above a possible CMC, but applicant should clarify what is intended, without adding new matter. In the amendment of October 6, 2025, it is argued that that CMC is a well understood term of the art, however, even if this is the case, this does not address in the problem indicated in claim 16, where it is unclear when CMC determined – note the claim has mixing a cationic surfactant above a CMC with liquid, and thus the point of CMC could be before the mixing occurs (that is, the surfactant is above a CMC and then mixed), if the surfactant is, at this point, 100% surfactant, it would appear to be above any possible CMC. Or the surfactant could be provided in a further solution, etc. Therefore the rejection is maintained.
The dependent claims do not cure the defects of the claims from which they depend and are therefore also rejected.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-11, 13, 14, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2007/058173 (hereinafter ‘173).
Claim 1: ‘173 provides a method of supplying a texture to a metal surface (such as providing a substrate that can be metal and applying nanoplates to the surface, which give texture) (note abstract, figure 26, 0028). A cationic surfactant solution can be provided (note 0086, CTAB solution) and an aqueous metal salt solution can be added to generate a reaction mixture (note 0086). Alternatively, note for 35 USC 103, it at least would have been obvious to optimize the adding of the materials together to have obtaining a cationic surfactant solution, then adding an aqueous metal salt solution to the surfactant solution to generate a reaction mixture, where as noted by In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). Then ascorbic acid is added to the reaction mixture to prepare a growth solution and the substrate added to the growth solution so the combination of the ascorbic acid and reaction mixture is applied to the metal surface of the substrate to generate a textured deposit which on the metal surface will generate a textured metal (note 0086, 0057-0059).
Claims 3-6: ‘173 also provides that a texturing metal can be added after the reaction mixture generated, where the texturing metal can be metal seeds, that is the same type of metal as the metal used in the metal salt (that is, gold) (note the providing of the metal nuclides on the substrate, which is added to the reaction mixture, so the seeds added to the formed reaction mixture as well. (note claims 1, 2, 0008-0010, abstract).
Claims 7-8: ‘173 further describes a substrate that can be a film/sheet can be provided, where the substrate can be metal and the substrate can be of any dimensions (note oo28-0031), where in examples an electrode substrate can be used with thickness of several tens of nms can be used (thin) (note 0066), and where the substrate would be cleaned before use (note 0066), then the substrate is brought into contact with a seed solution to deposit seeds (which can be gold) on the substrate, and then the sheet with seeds is contacted with growth solution to further grow gold on the seed (note 0008-0010, abstract), where the growth solution/added into the reaction mixture can contain ascorbic acid, CTAB, metal salt, etc. (note 0051-0058, 0086), resulting in a textured surface on the film (note figure 26).
Claim 9: By depositing on the substate, the textured metal would be collected by the substrate.
Claim 10: the collected textured metal is washed (note 0060).
Claim 11: ‘173 would also indicate adjusting the temperature of the reaction mixture to a predetermined temperature (note 0058).
Claim 13: ‘173 provides an aqueous solution of CTAB (note 0086), so understood that an aqueous stock solution for use would have to be provided mixing water with the CTAB. Alternatively, this would at least have been obvious to provide under 35 USC 103, since a solution of CTAB and water needs to be provided, and mixing water with CTAB would provide such a solution. Note In Re Gibson as discussed for claim 1 above.
Claim 14: ‘173 provides synthesizing the texturing metal (metal seed) before adding the texturing metal to the reaction mixture (note claims 1, 2, 0008-0010, abstract).
Claim 16: As there is no limit as to the CMC concentration amount, since ‘173 article gives a certain amount of CTAB in the cationic surfactant solution, this can be considered over the CMC amount to the extent claimed (note 0086).
Claim 17: Choi article comprising mixing a co-surfactant into the cationic surfactant solution (note how polyvinylpyrorolidone (a surfactant) solution also mixed in with the CTAB solution) (note 0052, 0086), or at the least under 35 USC 103, under In Re Gibson as discussed for claim 1 above, any order of mixing is obvious, so the polyvinylpyrrolidone and CTAB solutions would be acceptably mixed together forming a two surfactant solution and then mixing this with the other materials would be considered predictably acceptable).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over ‘173 as applied to claims 1, 3-11, 13, 14, 16 and 17 above, and further in view of CN 104437549 (hereinafter ‘549).
Claim 2: As to the pH of the cationic surfactant solution, ‘549 notes using a similar combination of gold nanoparticles (seed) with CTAB solution, ascorbic acid, metal salt solution, where it is noted to provide a controlled pH for the solution for use (note pH 10), when forming particles (note age 4, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘173 to also adjust the pH to use a controlled pH for the solution as suggested by ‘549 with an expectation of predictably acceptable results, where ‘549 indicates that in similar particle forming solutions, it is known to control the pH. As to adjusting/controlling the pH of the CTAB solution specifically, as discussed for claim 1 above, any order of mixing is obvious, providing the pH control in the CTAB solution and then mixing this with the other materials would be considered predictably acceptable.
Claims 1 and 3-19 are rejected under 35 U.S.C. 103 as being unpatentable over Choi, et al, “Finely tunable fabrication and catalytic activity of gold multipod nanoparticles” (hereinafter Choi article) in view of WO 2007/058173 (hereinafter ‘173).
Claim 1, 3-8: Choi article provides a method for forming textured metal (gold multipod nanoparticles, which would have a metal surface with texture, noting the shape/protrusions/branches on the surface, which even can be considered as forming grooves between the protrusions, and also roughness on tips/branches, note figure 1, abstract). A cationic surfactant solution is obtained (note 1 ml of aqueous CTAB solution, for example, with CTAB being a surfactant as in present claim 13), an aqueous metal salt solution is added to the cationic surfactant solution (note mixing CTAB solution with aqueous HAuCl4 (gold salt), so the two solutions added together to form a reaction mixture) (note forming of growth solution A, section 2.2). Ascorbic acid is added to the reaction mixture to generate a textured metal (the formed mulitpod nanoparticles) (note ascorbic acid in growth solution B, would be added to growth solution A, the reaction mixture, when solution A added to solution B forming a combined mixture with the two mixtures added together, section 2.2). Alternatively, it at least would have been obvious to optimize the adding of the materials together to have obtaining a cationic surfactant solution, then adding an aqueous metal salt solution to the surfactant solution to generate a reaction mixture, then adding ascorbic acid to the reaction mixture, since the materials have to be combined in an aqueous solution to form the multipod nanoparticles (Au multipod NPs), and as noted by In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) (so this would include combining solutions A and B, or the use of the ascorbic acid in solution A of Choi article). The method includes forming metal seeds of gold that are to be added to the reaction mixture (with the cationic surfactant solution/aqueous metal salt solution of solution A) after it is formed (meeting the requirements of claims 3, 4, 5, 6) (note section 2.2 where the Au seed nanoparticles are added to growth solution A (reaction mixture)).
As to also adding a thin metal film/metal surface to the reaction mixture/ascorbic acid and applying a combination of the ascorbic acid and the reaction mixture to the metal surface (claims 1, 7), and cleaning the thin film before adding combination of ascorbic acid and reaction mixture (claim 8), Choi article indicates how it can be desired to have the resulting nanoparticles placed on a substrate surface (describing a glassy carbon electrode surface) that is polished and cleaned (with ethanol and water) before the NPs applied (note section 2.3).
‘173 further describes that it is desired to place nanoparticles on a sensing device, etc. (abstract), where a substrate that can be a film/sheet can be provided, where the substrate can be metal or glassy carbon and the substrate can be of any dimensions (note oo28-0031, note also for claim 1, the substrate can be a granular shape, spherical shape, etc.), where in examples an electrode substrate can be used with thickness of several tens of nms can be used (thin) (note 0066), and where the substrate would be cleaned before use (note 0066), then the substrate is brought into contact with a seed solution to deposit seeds (which can be gold) on the substrate, and then the sheet with seeds is contacted with growth solution to further grow gold on the seed (note 0008-0010, abstract), where the growth solution can contain ascorbic acid, CTAB, metal salt, etc. (note 0051-0058, 0086), resulting in a textured surface on the film (note figure 26).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi article to further provide a thin metal film/metal surface, clean the film, and add it to the reaction mixture along with providing metal seeds as suggested by ‘173 to further provide desired nanomaterial coatings on the metal thin film, since Choi article indicates that it can be desired to have the resulting nanoparticles on a surface, and ‘173 indicates how using similar materials to Choi article, and using metal seeding, a thin metal film can also be contacted/added with the metal seeds and reaction mixture with ascorbic acid to deposit nanomaterial on the thin film, and ‘173 also provides the known cleaning of the film before coating/contacting with the reaction mixture/ascorbic acid, where Choi article would also note cleaning the substrate surface before applying nanoparticles.
Claim 9: Choi article has collecting and washing the textured metal (Au multipod NPs) (note section 2.2 purify mixture by centrifugation, and redispersing, and also note section 2.3, where NPs on disk and dried, or section 2.4, samples prepared with the NPs), so obvious to do the same in the combination of Choi article in view of ‘173 to also get a clean product.
Claim 10: Choi article as washing the collected textured metal, note the purified (collected) mixture redispersed three times in nanopure water, which would wash (section 2.2), so obvious to do the same in the combination of Choi article in view of ‘173.
Claim 11: when providing the process for claims 7-8 as discussed above, ‘173 would also indicate adjusting the temperature of the reaction mixture to a predetermined temperature (note 0058).
Claim 12: Choi article has agitating the reaction mixture (growth solution A) for a predetermined period of time (note shaking 30 seconds, for example) (section 2.2).
Claim 13: Choi article as that the CTAB was obtained in 99+% form (section 2.1), and stock solutions freshly prepared before use (section 2.1), and the CTAB used in the reaction mixture forming as a specific 1 mL aqueous CTAB (section 2.2), so understood that an aqueous stock solution for use would have to be provided mixing water with the CTAB. Alternatively, this would at least have been obvious to provide, since a solution of CTAB and water needs to be provided, and mixing water with CTAB would provide such a solution. Note In Re Gibson as discussed for claim 1 above.
Claim 14: Choi article provides synthesizing the texturing metal (metal seed) before adding the texturing metal to the reaction mixture (note section 2.2).
Claim 15: Choi article provides that the aqueous metal salt solution can comprise two salts (note that growth mixture A contains HAuCl4 and also AgNO3 is present in the materials/solution mixed with CTAB solution, section 2.2), or at the least, under In Re Gibson as discussed for claim 1 above, any order of mixing is obvious, so the HAuCl4 and AgNO3 would be acceptably mixed together forming a two metal salt solution and then mixing this with the CTAB solution would be considered predictably acceptable).
Claim 16: As there is no limit as to the CMC concentration amount, since Choi article gives a certain amount of CTAB in the cationic surfactant solution, this can be considered over the CMC amount to the extent claimed (note section 2.2).
Claim 17: Choi article comprising mixing a co-surfactant into the cationic surfactant solution (note how Brij35 (a surfactant) solution also mixed in with the CTAB solution) (note section 2.2, and page 272, column 2 as to Brij35 as a surfactant), or at the least, under In Re Gibson as discussed for claim 1 above, any order of mixing is obvious, so the Brij35 and CTAB solutions would be acceptably mixed together forming a two surfactant solution and then mixing this with the other materials would be considered predictably acceptable).
Claim 18: Choi article comprises mixing NaSaI into the cationic surfactant solution (note section 2.2), or at the least, under In Re Gibson as discussed for claim 1 above, any order of mixing is obvious, so the NaSaI would be acceptably mixed with the cationic surfactant solution and then mixing this with the other materials would be considered predictably acceptable).
Claim 19: Choi article comprises centrifuging the reaction mixture to separate the textured metal from the reaction mixture (note section 2.2), so obvious to do the same in the combination of Choi article in view of ‘173, noting for claim 1 the substate can be granular or spherical, for example
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Choi article in view of ‘173 as applied to claims 1 and 3-19 above, and further in view of CN 104437549 (hereinafter ‘549).
Claim 2: As to the pH of the cationic surfactant solution, ‘549 notes using a similar combination of gold nanoparticles (seed) with CTAB solution, ascorbic acid, silver nitrate (metal salt) solution, where it is noted to provide a controlled pH for the solution for use (note pH 10), when forming particles (note age 4, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi article in view of ‘173 to also use a controlled pH and adjusting the pH to get the desired controlled pH for the solution as suggested by ‘549 with an expectation of predictably acceptable results, where ‘549 indicates that in similar metal forming solutions, it is known to control the pH. As to adjusting/controlling the pH of the CTAB solution specifically, as discussed for claim 1 above, any order of mixing is obvious, so providing the pH control in the CTAB solution and then mixing this with the other materials would be considered predictably acceptable.
Klinkova, et al “Large-Scale Synthesis of Metal Nanocrystals in Aqueous Suspensions” also notes forming textured nanoparticles using a cationic surfactant solution, with metal salt solution and adding ascorbic acid (note pages 3197-3198). CN 104308179 notes forming nanomaterials using a cationic surfactant solution with metal salt and ascorbic acid and with control of pH (abstract).
Response to Arguments
Applicant's arguments filed October 6, 2025 have been fully considered.
Note the adjustment to the rejections due to the amendments to the claims.
Note that the arguments as to the 35 USC 112 rejections have been addressed in the 35 USC 112 section above.
As to the arguments as to the use of Choi article as the primary reference, it is argued that Choi article is silent as to the use of the application to the metal surface, and there is no suggestion or teaching with respect to the use of the gold nanoparticles. The Examiner notes that Choi article has been modified with the use of ‘173 as previously provided for claims 7-8, where Choi indicates how it can be desired to have the resulting nanoparticles placed a substrate surface, and ‘173 provides the suggestion of adding a metal substrate on which to deposit to the reaction solution/ascorbic acid. There have been no specific arguments as to the combination of Choi article and ‘173, and thus the rejection is maintained.
As to the arguments as to the use of ‘173 as a primary reference, it is argued that ‘173 is applying a nanoplate to a surface of a substrate, and it is submitted that replacing a surface of a substrate (by using a nanoplate) is not the same as applying a texture (or pattern) to the metal surface. The Examiner has reviewed these arguments, however, the rejection is maintained. As to the “nanoplate” formed, as indicated by ‘173 it can be uniform or non-uniform, and have pores (for example), note paragraph 0012 (area of 0012-0016) on page 3 of the translation, indicating that at the least, with the non-uniform deposition a relatively textured coating is provided, where currently there are no limits as to what can be provided by “texture”. Also note figure 3, 0049, indicating providing texture, including in the form of particles (see 12, 13) on the substrate 10. Thus, the features of the claims are suggested.
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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718