DETAILED ACTION
As of the Response to Restriction Requirement filed on June 12, 2026, claims 1 – 17 are pending. Claims 17 has been withdrawn from consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Invention Group I, claims 1 – 16 in the reply filed on June 12, 2026 is acknowledged.
Information Disclosure Statement
The listing of references in the specification (particularly the reference to "Method for Preparing Metal Nanocubes with Controlled Corner Sharpness Index") is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Analysis
Regarding claim 6:
The Examiner notes that the term “ 412 ” is the number 41 squared. For ease of appraisal by one of ordinary skill in the art and by the public, the Examiner suggests that the number be fully expanded to “1681”.
Regarding claim 9:
While the term “high humidity” is a relative term, a percentage is provided afterwards. Based on the presentation of the term as a percentage, the Examiner interprets the claim to refer to a relative humidity, which in turn is a function of the temperature of environment during aging.
Regarding Claim 16:
Size is considered synonymous with diameter, a characteristic dimension, or the largest dimension of the self-assembly.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 – 16 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.
Regarding claim 1:
As a preliminary matter, the Examiner identifies the following claim limitations of interest:
“a two-dimensional or three-dimensional self-assembly” (hereinafter “Object A”)
“a self-assembly formation substrate” (hereinafter “Object B”)
“a nanocube self-assembly” (hereinafter “Object C”)
“a two-dimensional or three-dimensional nanocube self-assembly” (hereinafter “Object D”)
“self-assembly formation substrate-unit” (hereinafter “Claim Concept A”)
Claim 1 recites Claim Concept A. There is insufficient antecedent basis for this limitation in the claim.
The Examiner notes that no self-assembly formation substrate-unit is established. It is also unclear whether the self-assembly formation is of the earlier established Object A. As a result there is a lack of charity of what or which depletion force is being controlled, how it relates to the preparation of Object A, or if the phrase is indicating an intended function of the method.
Furthermore, because no special definition is set forth for a self-assembly formation substrate-unit, so under plain meaning there is a lack of clarity as to whether or not what depletion force is being controlled.
In addition as a result, it is also unclear whether the claim requires that the self-assembly attaches to a substrate as part of an overal “unit” or if the term “self-assembly formation substrate-unit” refers to a structural limitation of Object B. In other words, it is unclear whether Object A must be attached to any “self-assembly formation substrate”, or if it merely needs to interact with a “self-assembly formation substrate”.
Additionally regarding claim 1:
There is a lack of clarity as to the meaning of “preparing a [Object A], wherein the dimension and structure of [Object C] formed by controlling the depletion force of the Object B” because there is no apparent connection between Object A and Object C. There appears to be a missing linking verb between “[Object C]” and “formed by”, presuming that Object C is a further characterization of Object A. In general, as presented the links between Object A, Object B, Object C and Object D remain vague.
Finally, the Examiner notes that the preamble of the recited method is not commensurate in scope with the body of the recited method as enumerated under clauses (a) and (b). The recited clauses in the body of the method result in Object D. Object D is not necessarily the same object as Object A, much less Object C.
Regarding claims 2, 3:
The present wherein clause is written in passive voice and renders unclear whether the wherein clause is directed to a property of the self-assembly formation substrate, a functionality, intention or end result of the particular manipulative act “step(a)” positively recited by the claimed method, or a contingent limitation of what is to be formed on such a self-assembly formation substrate having the recited surface roughness. The lack of clarity is aggravated by the conditional nature of the wherein clause, which phrases its limitation as “wherein … when …”. Claim 3 contains a similar lack of clarity, mutatis mutandis.
Regarding claim 6:
Present claim 6 recites “… CR denotes the corner radius defined as / of a circle that perfectly matches the corner curvature.” There is a lack of clarity to what is the intended meaning of the “/” within the recited phrase. The instant specification has a similar recitation as follows:
Particularly, EL and CR may be defined as the shortest distance from one point on one flat surface of the metal nanocube to the other surface parallel thereto and as the
radius of a circle that perfectly matches the corner curvature, respectively.
Based on the recitation in the instant specification, the deficiency is likely a typo. For the purposes of art rejections, the Examiner interprets the claim according to the recitation in the instant specification.
Additionally, the recited concentration values in the mathematical expressions “((412 /A2) x 55) x 0.7 mM” and “((412/A2) x 55) x 1.3 mM” are indefinite due to dimensional mismatching. In particular, A is defined as EL-2CR in nanometers , a unit of length
[
L
]
. The term “mM” is understood to refer to molarity, which has a dimensional identity of
10
-
3
×
[
mole]
/
[
L
]
3
. As presented, the terms 412 , 55, 0.7 and 1.3 are dimensionless quantities. Therefore the term “((412 /A2)” has a dimensional identity of
1
/
10
-
9
×
[
L
]
2
. If the quantities are expressed in the mathematical expressions are fully condensed, the resultant dimensions of the mathematical expressions would be essentially
1
/
[
L
]
2
, not a unit concentration having an essential identity of
[
mole]
/
[
L
]
3
, in addition to the mismatch of orders of magnitude and that more specifically molarity refers to an amount of moles solution in a solution volume of 1 liter, i.e. 10-3 meters. It then becomes unclear whether there are intended units for the other numbers, whether the expression EL-2CR is to be treated as dimensionless in the calculation of the concentration values (functionally equivalent to listing the term 412 as having a unit of nm2 ), or if concentration is meant to refer to a different dimensional identity.
Regarding claim 14:
The term “high crystallinity” in claim 14 is a relative term which renders the claim indefinite. The term “high crystallinity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Dependent claims not enumerated above are rejected on the basis of their parent claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 12:
Claim 12 generally adds a further limitation regarding the timing between the application of a first solution and a solution. However, the further limitation includes all possible timings of applying the recited first solution and second solution. Present claim 12 thus fails to further limit the subject matter upon which it depends. Contrast with claim 8, which does not include timing permutations where the second solution is applied first followed by the first solution.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 2 – 5, 6, 13 – 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 103
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.
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 1, 7, 8, 10, 11, 12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markovich et al. US 20190166699 A1 (hereinafter “A1”) in view of Nam et al. WO 2019147056 A1 (of record, with US 2021/0161952 A1 acting as the official translation thereof, hereinafter “Nam”).
Regarding claims 1, 7, 8, 11, 12, 14:
Markovich is directed to a printing process for fabricating ultrathin nanowires and patterns on a substrate [Object B] (Abstract). As exemplified in Fig. 1, Markovich’s method comprises ([0024] – [0059]):
providing a substrate such as a clean glass slide [Object B] (Fig. 1; [0193], [0204]);
preparing a first growth solution [first solution] comprising at least one surfactant [surfactant and depletant], e.g. a mixture of hexadecyltrimethylammonium chloride (CTAC) [surfactant] and benzyldimethylhexadecylammonium chloride (BDAC) [depletant] or hexadecyltrimethylammonium bromide (CTAB) and BDAC ([0091], [0093], [0105], [0106], [0224] – [0233]);
preparing a seed solution [second solution] comprising metal e.g. gold or silver seeds/nanoparticles [related to metal nanocube units] and optionally one or more surfactants ([0011], [0060], [0070], [0086] – [0087], [0110] – [0111], [0233], [0246], [0256]);
applying either the first growth solution first or the seed solution first to the substrate followed by the corresponding seed solution or first growth solution respectively at different times ([0024] – [0059], [0130] – [0132]); and
drying/aging the applied solutions in ambient conditions or heated conditions for e.g. 5 to 40 minutes ([0021], [0134], [0138], [0226]), and thereby self-assemble metal nanowire films [Object A] from the interaction between the first growth solution and seed solution.
Markovich does not expressly teach that the metal seeds/nanoparticles are metal nanocubes, i.e. the second solution comprises metal nanocube units.
Nam is directed to methods of preparing metal nanocubes with controlled corner sharpness index (Abstract, [0001]). Nam discloses that their method [meeting claim 11] comprises (claim 1): providing a mixed aqueous solution comprising a first surfactant [depletant] and metal nanoparticles; and adding a metal ion precursor and reducing agent in a manner to form metal nanocubes. Nam discloses that such metal nanocubes, especially gold nanocubes, show enhanced plasmonic properties due to their shape and can be useful for applications in various areas due to the optical properties of the cubes ([0002] – [0003]).
Markovich discloses that the seed nanoparticles may be of any shape or size ([0072] – [0073]), suggests that the substrate may be for optical applications ([0118]), and discloses that the metal nanowire formed from their methods can be used in plasmonic or optical applications such as surface-enhanced [recognized to involve surface plasmons] raman scattering, sub-wavelength optical waveguiding and biosensing.
Therefore, in view of the prior art as a whole it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have combined the methods of Markovich with Nam such that the seed solution comprises metal nanocube units because Nam teaches that metal nanocube units have an advantageous morphology for applications involving optimized surface plasmon interactions, Markovich teaches that patterned metal nanowires formed from the seed solution with other reagents would be useful for applications involving surface plasmons such as surface-enhanced raman scattering, and one of ordinary skill in the art would have a reasonable expectation of success that the advantages discussed by Nam would confer to the applications discussed in Markovich.
Regarding claim 9, 10:
Markovich in view of Nam does not expressly teach the time of aging being between 2 hours or more and 12 hours or less. However, Markovich discloses that the duration of solution drying [agent] is not limited. And discloses example drying times depending on drying temperature and environment, e.g. ambient conditions ( [0021], [0131], [0134]), effectively encompassing an overlapping range with the claimed durations and encompassing environments that commonly include indoor and outdoor humidity in a majority of climates one of ordinary skill in the art would practice their art. Absent a showing of unexpected results, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Mason et al. US 2010/0233436 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
Prosecution Insights