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 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 15-16 is 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.
Claims 15-16 recite the limitation "the photocatalyic oxidation" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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) 1-2, 6-8, 12, and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watkins et al. (US Serial No. 2020/0020461).
Regarding claims 1-2, 6-8, and 12; Watkins et al. teaches, in a preferred embodiment, 13.2 wt% TiO2 in a 50:50 mixture of NMP (N-methyl pyrrolidone, bp 202-204°C) and MeOH (methanol, bp 65°C) was added to 13.2 wt% solution of NOA60 (polyacrylic acid) in NMP in varying amounts [Ex1-2]. Watkins et al. teaches the nanoparticles in the preferred embodiment have particle sizes of less than 40nm [0102].
Regarding claims 17-19; Watkins et al. teaches patterned nanoparticle composites prepared from 13.2 wt% TiO2 in a 50:50 mixture of NMP (N-methyl pyrrolidone, bp 202-204°C) and MeOH (methanol, bp 65°C) [Ex1-2, and 5; 0120-0121]. Watkins et al. teaches the nanoparticle composition is optically transparent [clm12], and the structured nanoparticle composite comprises triangular gratings [0116; Fig4].
Claim(s) 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watkins et al. (US Serial No. 2020/0020461).
Regarding claim 13; Watkins et al. teaches, in a preferred embodiment, 13.2 wt% TiO2 in a 50:50 mixture of NMP (N-methyl pyrrolidone, bp 202-204°C) and MeOH (methanol, bp 65°C) was added to 13.2 wt% solution of NOA60 (polyacrylic acid) in NMP in varying amounts [Ex1-2]. Watkins et al. teaches the nanoparticles in the preferred embodiment have particle sizes of less than 40nm [0102].
Claim(s) 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watkins et al. (US Serial No. 2020/0020461).
Regarding claim 20; Watkins teaches, in a preferred embodiment, 13.2 wt% TiO2 in a 50:50 mixture (binder acts as solvent) of NMP (N-methyl pyrrolidone, bp 202-204°C) and MeOH (methanol, bp 65°C) was added to 13.2 wt% solution of NOA60 (polyacrylic acid) in NMP in varying amounts [Ex1-2]. Watkins et al. teaches the nanoparticles in the preferred embodiment have particle sizes of less than 40nm [0102].
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.
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) 3-4, 9-11, and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al. (US Serial No. 2020/0020461), as applied to claim 1.
Watkins et al. teaches the basic claimed formulation, as set forth above, with respect to claim 1.
Regarding claims 3-4; Watkins et al. teaches the nanoparticles may further comprise reactive media provided as functional groups or as ligands bound to the nanoparticles [0061]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add functional groups or ligands to the nanoparticles, and would have been motivated to do so in order to induce regioselective reaction of the nanoparticles or the binder material such as certain regions of the composition can be removed by subsequent steps including photolithographic development in water or other solvent, as suggested by Watkins et al. [0061].
Regarding claims 9-10; although Watkins et al. teaches a mixture of NMP and MeOH in the preferred embodiment, other solvents are contemplated for use in the present invention, such as dimethylformamide (DMF, bp~ 153). In the instance DMF and NMP are used in combination, it meets the claimed limitation. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
It is the Examiner’s position that since the instant specification teaches NMP suitable for use as the solvent [0066], it necessarily possess the property of being degradable by photooxidation. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition can not have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 11; Watkins eta l. teaches the nanoparticles are catalytic [0058], and would necessarily possess the ability to be catalytic for photooxidation. Furthermore, “for photooxidation” is an intended use limitation. 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; see MPEP §2111.02, 7.37.09.
Regarding claim 14-16; Watkins et al. teaches a method of forming a structured nanoparticle composite comprising applying a nanoparticle composition to a surface of a substate, and using electromagnetic radiation in cooperation with a patterned mold and/or mask to manipulate the nanoparticle composition and form the patterned nanostructure below 5 microns (e.g. below 1 micron [0047, 0053]) [0009]. Watkins et al. teaches suitable methods to employ the electromagnetic radiation include ultraviolet light (UV) [0048] with an intensity of 12 mW/cm2 [0109].
Watkins et al. fails to explicitly teach photocatalytically oxidizing the patterned formulation to produce a patterned structure that is substantially free or organic material. However, Watkins et al. teaches the same claimed components and same method steps of subjecting the composition to UV light above 5 mW/cm2, thus it is the Examiner’s position that photocatalytic oxidation would necessarily occur in the same process.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watkins et al. (US Serial No. 2020/0020461), as applied to claim 1, and further in view of Watkins et al. (US Serial No. 2011/0086985), herein referred to as US’985.
Watkins et al. teaches the basic claimed formulation, as set forth above, with respect to claim 1.
Regarding claim 5; Watkins et al. fails to teach the composition comprises a surfactant. US’985 teaches compositions for producing nanostructures in block copolymers and surfactants by certain additives such as nanoparticles [abs]. Watkins et al. and US’985 are analogous art because they are both concerned with the same field of endeavor, namely formulations for achieve nanostructured composites. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the surfactant of US’985 to the formulation of Watkins et al., and would have been motivated to do so in order to introduce or enhance the degree of orders in the nanostructure composites, as suggested by US’985 [0010].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
