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 .
Claim Interpretation
In the interest of compact prosecution, Examiner uses the following interpretations of selected claims discussed below.
Examiner will treat Claim 12 as being dependent from Claim 11 for purposes of examination (see the rejection of Claim 12 under 35 USC 112 below; Claim 11 is the first claim to contain the term that causes the antecedent basis issue in Claim 12).
Examiner will treat “the undulations” of Claim 13 as reading on “periodic undulations” of Claim 11. If this is not commensurate with Applicant’s intended interpretation, a clarifying amendment is required; if this is commensurate, an amendment to read “the periodic undulations” is recommended for additional clarity.
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 7 and 12 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 7 recites the limitation “the at least one noble metal or transition metal from columns 8 to 11 of the periodic classification of elements” at Lines 2-3 thereof. The portion of this limitation “from columns 8-11 of the periodic classification of elements” does not have proper antecedent basis (this part of the limitation was removed from Claim 5 by amendment). As the present rejection of Claim 7 relies on silver, which is simultaneously a noble metal, a transition metal, and a column 11 element, no special interpretation is presently required for compact prosecution.
Claim 12 recites the limitation "the periodic undulations" in Line 2 thereof. There is insufficient antecedent basis for this limitation in the claim. (See Claim Interpretation, above).
Election/Restrictions
Examiner has considered the arguments presented by Applicant in the most recent response. The restriction requirement between inventions I and II, as set forth in the Office action mailed on 18 FEB 2026, is hereby withdrawn and claims 5-15 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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(s) 5-10 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mohan (Mohan et al, “AgI nanostructure development in sputter-disordered and Al-doped Ag films probed by XRD, SEM, optical absorption and photoluminescence”; Appl. Phys. A 86, 73-82 (2007); of record in the application).
Claim 5 – Mohan teaches a part including at least one substrate (Page 74, Experimental Methods; glass substrate with silver or silver/aluminum film deposited thereon) made of a material having a chemical composition including at least:
- one element from columns 4, 5, 13 or 14 of the periodic classification of elements (Page 74, Experimental Methods; glass substrate; common glass is silicon (di)oxide which contains silicon; additionally, composite silver/aluminum film thermally evaporated or sputtered onto the glass substrate; aluminum reads on a column 13 element), and
- one noble metal or one transition metal (Page 74, Experimental Methods, silver or silver/aluminum film thermally evaporated or sputtered onto the glass substrate; silver reads on a noble metal and a transition metal),
and the substrate having a surface of which at least a part has a nanostructure (a flat surface is a uniform nanostructure) including at least one nanoparticle, the at least one nanoparticle including at least the noble metal or the transition metal, and having a different chemical composition from that of the substrate (Page 74, iodization of the silver-containing film to form AgI clusters, analogous to nanoparticles; Page 76, 30-500 nm gamma-AgI nanoparticles formed; as no iodine is present on the substrate before the iodization treatment, the nanoparticles derived from iodization have a different composition from that of the substrate).
Claim 6 – Mohan teaches the part according to claim 5, wherein the at least one element from columns 4, 5, 13 or 14 of the periodic classification of elements is selected from among Al (aluminum) or Si (silicon) (Page 74, Experimental Methods, as cited above in the rejection of Claim 1; aluminum is column 13, silicon is column 14).
Claim 7 – Mohan teaches the part according to claim 5, wherein the at least one noble metal or transition metal from columns 8 to 11 of the periodic classification of elements is selected from Ag (silver) (Page 74, Experimental Methods, as cited above in the rejection of Claim 1; silver is both a noble metal and a transition metal and is a column 11 element).
Claim 8 – Mohan teaches the part according to claim 5, wherein the at least one nanoparticle has a characteristic size between 1 nm and 200 nm (Page 76, 30 +/- 2 nm AgI nanoparticles cited).
Claim 9 – Mohan teaches the part according to claim 5, wherein the at least one nanoparticle including the at least one noble metal or transition metal includes one from among Ag (Page 76, AgI nanoparticles cited).
Claim 10 – Mohan teaches the part according to claim 5, wherein the at least one nanoparticle is crystallized (Pages 76-77, hexagonal and cubic structures of AgI; hexagonal and cubic structures are held as analogous to crystalline structures).
Claim 15 – Mohan teaches the part according to claim 5, wherein the at least one element from columns 4, 5, 13 and 14 forms a layer of oxide on the surface of the treated material (Page 74, Experimental Methods, glass substrate; common glass is silicon (di)oxide; the surface of a common glass substrate is silicon (di)oxide absent treatment).
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.
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.
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mohan.
Claim 11 – Mohan teaches the part according to claim 5, but does not fairly teach or suggest wherein the nanostructure furthermore includes periodic undulations. It is well settled that mere changes to the shape of a part (e.g. the periodic undulations versus a flat surface) may be held as prima facie obvious in the absence of persuasive evidence that the particular shape of the part is significant.
Claim 12 – Mohan teaches the part according to claim 5 [Examiner’s note – treated as “according to claim 11”], but does not fairly teach or suggest wherein the periodic undulations are repeated periodically on the surface according to a spatial periodicity between 200 nm and 1000 nm. It is well settled that mere changes to the shape of a part (e.g. the particular spacing of periodic undulations) may be held as prima facie obvious in the absence of persuasive evidence that the particular shape of the part is significant.
Claim 13 – Mohan teaches the part according to claim 11, wherein the at least one nanoparticle is formed on a ridge of one of the undulations (Page 74, Experimental Methods; the metal films are applied across the entire surface; Page 76-77, nanoparticles are uniformly generated across the metal films).
Claim 14 – Mohan teaches the part according to claim 5, but does not fairly teach or suggest wherein only a part of the surface of the substrate has the nanostructure. It is well settled that mere changes to the shape of a part (e.g. a uniform surface versus a variable topology surface) may be held as prima facie obvious in the absence of persuasive evidence that the particular shape of the part is significant.
Allowable Subject Matter
Claims 1-4 and 16-17 are allowed.
The following is an examiner’s statement of reasons for allowance:
US ‘226 (US PGPub 2015/0136226), which is considered to be the prior art closest to the subject matter of claim 1, discloses [(paragraph [0114]; claim 19)]:
a method for modifying, by (femtosecond) laser, the surface of a metal or metal alloy (e.g. Cu, Al, Ti, Au) in order to produce a periodic nanostructure (e.g. nanospheres), for example to increase hydrophobicity in the context of medical applications. Specific laser pulse properties include a 65 femtosecond duration (paragraph [0100]), a central wavelength of 800nm (paragraph [0100]), a fluence of below about 25 J/cm2 (paragraph [0103]), and a description that renders obvious selection of number and location of laser shots commensurate with the claims to control shaping (paragraphs [0105]-[0107])
Consequently, the subject matter of claim 1 differs from US ‘226 in that the chemical composition of the substrate differs from that of the nanoparticles created; it is therefore novel.
The problem addressed by the present invention can be considered that of allowing straightforward and specific functionalization (e.g. hydrophobicity, hydrophilicity, etc. depending on the material of the nanostructures created) of various parts having various metal surfaces (various solid materials or possible PVD surface treatment), while retaining excellent adhesion of the nanoparticles created.
The laser method disclosed in the present application allows the segregation, and therefore extraction, of one of the specific metals from the alloy of the substrate or from the surface layer thereof and thereby the secure anchoring thereof to the surface. No document proposes this type of extraction of a single specific element which is different in composition from the substrate, thereby affording the method great diversity and versatility. Therefore, Claim 1 is allowed on the basis of the cited limitation, in combination with all other elements of the claim.
Claims 2-4 and 16-17 are dependent on Claim 1, the subject matter of which, as indicated above, is considered novel and inventive. As such, said dependent claims are allowed on the same basis as Claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL G MILLER whose telephone number is (571)270-1861. The examiner can normally be reached M-F 9:00-5:30 EST.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL G MILLER/ Primary Examiner, Art Unit 1712
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