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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 in the reply filed on June 26, 2026 is acknowledged.
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 26, 2026.
Therefore, after the election, claims 9-14 are withdrawn, and claims 1-8 are pending for examination as filed with the election of June 26, 2026.
Please Note: In future amendments, claims 9-14 should be provided with the proper status identifier of “Withdrawn”.
Specification
The disclosure is objected to because of the following informalities: [69] of the specification refers to figures 4(a) and 4(b), however, the drawings do not have marking in figure 4 to indicates a 4(a) and a 4(b).
Appropriate correction is required.
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 2-3 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.
Claims 2 and 3, “thin” is vague and indefinite as to how thick the metal film needs to be to be considered “thin” as opposed to “average” or “thick”. For the purpose of examination, any thickness is understood to meet the claimed requirements, but applicant should clarify what is intended, without adding new matter.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung, “Three-dimensional Nanoprinting with Charged Aerosols Focused by Electric Field” (hereinafter Jung article).
Claim 1: Jung article teaches a method of manufacturing a three dimensional structure (note page 93). The method includes a step S1 of disposing a lower substrate and a conductive mask provided with a plurality of holes to be spaced apart within a grounded reactor (note figure 3.3, page 101). A step S2 is provided of forming an electrostatic lens around the holes of the mask by generating electric fields of different sizes in the conductive mask and lower substrate respectively (note pages 98-99, 104). A step S3 is provided of introducing charged nanoparticles through an upper inlet of the reactor to induce passage through the mask hole by the electrostatic lens and deposition on the lower substrate (note figure 3.3, page 101). As well, there would be a step S4 of adjusting an electric field intensity between the mask and substrate to induce a change in size of a structure (note figures 3.3, 3.6, pages 101, 104, 107, with increased potential difference, narrower and higher nanopillars are formed, where the change in potential with different adjusted electric field within the set distance between the mask and substrate would adjust the electric field intensity between the substrate and mask).
Claim 2: As to the use of a thin metal film, this would be indicated by Jung article, which indicates providing a thin (100 nm) Cr layer and thin (100 nm) Au layer on a side of the mask (note page 95, figure 3.1).
Claim 3: As to the use of the metal coating layer comprising Cr, Au or a mixture, this can be considered the case for Jung article as discussed for claim 2 above.
Claim 4: As to the use of an Si substrate, this would be indicated by Jung article (note page 95, figure 3.3).
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jung, “Three-dimensional Nanoprinting with Charged Aerosols Focused by Electric Field” (hereinafter Jung article).
The features of claim 1 are taught by Jung article as discussed in the 35 USC 102 rejection above using Jung article.
Claims 5-7: As to the specific electric field intensity and the equation of claim 7, Jung article indicates adjusting the voltage (potential difference) applied to the substrate/mask, with differing potential difference between the two to adjust the height and width of nanostructures produced (note pages 98, 104, 107, figure 3.6), and the distance between the substrate and mask is also controlled (note pages 99, 104), and 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 Jung article to optimize these conditions to get the desired structure, giving an intensity as in claim 7 that is based on potential of the substrate V/moving distance of charged particles in microns, and electric field intensity between the mask and substrate in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 8: Further as to also considering the moving distance as that between an upper inlet of the reactor and the substrate, such a distance would also be present in Jung article (note figure 3.3) and there would still be a change in potential for the substrate for optimizing as discussed for claim 7 above, and thus, it would have been obvious that adjustment using the moving distance for claim 8 would also be predictable and acceptable.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Choi, et al “Controlled electrostatic focusing of charged aerosol nanoparticles via an electrified mask” (hereinafter Choi article) in view of Choi et al (US 2014/0212641, hereinafter Choi ‘641).
Claim 1: Choi article teaches a method of manufacturing a three dimensional structure (note the build up of nanoparticles/nanoparticle clusters in a three dimensional pattern on the substrate surface, figure 1, and section 3.2). The method includes a step S1 of disposing a lower substrate and a conductive mask provided with a plurality of holes to be spaced apart in a reactor (note figure 1, abstract, section 2.1, with the metal/platinum coated mask). A step S2 is provided of forming an electrostatic lens around the holes of the mask by generating electric fields of different sizes in the conductive mask and lower substrate respectively (note sections 3.1, 3.2). A step S3 is provided of introducing charged nanoparticles through an upper inlet of the reactor to induce passage through the mask hole by the electrostatic lens and deposition on the lower substrate (note figure 1, sections 3.2, 3.3). As well, there would be a step S4 of adjusting an electric field intensity between the mask and substrate to induce a change in size of a structure (note sections 3.2, figure 3, with a set distance between substrate and mask, increased potential, the electric field below the mask (so between mask and substrate, note figure 1) gets stronger, that is the electric field intensity would be adjusted, causing a change in the pattern width/size).
Choi article does not specifically teach that the a grounded reactor is used in step S1, however, Choi ‘641 describes a similar process, where a three dimensional nanostructure is formed by the depositing of nanoparticles through a mask (note figure 2, 0033, abstract), where in a step S1 a lower substrate is disposed and a mask provided with a plurality of holes above a lower substrate to be spaced apart in a grounded reactor (note figure 2, 0034), where further in a step S2, an electrostatic lens is formed around the hole of the mask by generating electric fields of different sizes in the mask and lower substrate, respectively (note that lens is formed and understood to be electrostatic as the same process claimed for forming the lens is provided, where the voltage and be applied only to the mask, so understood to result in a larger electric field at the mask, than the substate, note 0034, 0038, and alternatively, different electric field sizes would be provided over time to both the substate and mask when the overall voltage provided changed, note 0042). There is a step S3 of introducing charged nanoparticles through the mask holes to induce passage through the lens and deposition on the lower substrate (note figure 2, claim 1). There can be a step S4 of adjusting electric field intensity between the mask and substate to induce change in size of a structure (note 0047-0048, 0038). Additionally, Choi ‘641 notes that there can be a step of controlling a shape of a growing three dimensional nanostructure while transporting the mask (note figure 5, 0043).
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 specifically provide the step S1 disposing of the lower substate and conductive mask in a grounded reactor as suggested by Choi ‘641 with an expectation of predictably acceptable results, since Choi article provides placement of a mask and lower substrate in a reactor where charged particles are passed through the mask to deposit on the substrate, and Choi ‘641 indicates that in a similar depositing, the reactor can be grounded. Choi ‘641 would further additionally suggest that the nanoparticle deposition process of Choi article would be desirably for forming three dimensional nanostructures, as Choi ‘641 indicates how the build up of the nanoparticles gives three dimensional structures. Additionally as to optionally providing step S5, Choi article allows movement of the mask (section 3.4), and Choi ‘641 indicates that there can be movement between the mask and substrate in a vertical direction (note 0046-0048 with spacing change, 0035, which affects pattern size, note figures 7, 8) and also mask movement in a horizontal direction (note figure 5, 0043, which controls a shape of the growing nanostructure), thus allowing and suggesting relative three dimensional movement between the substrate and mask to allow control of the shape of the growing nanostructure, and as to providing the movement by transporting the lower substrate in three dimensions, this would have been an obvious article to move to get the relative movement desired, since the mask and/or substrate would need to be moved for the relative positioning/movement, and as indicated by MPEP 2144.04(VI)(A), as discussed in In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) (Prior art disclosed a clock fixed to the stationary steering wheel column of an automobile while the gear for winding the clock moves with steering wheel; mere reversal of such movement, so the clock moves with wheel, was held to be an obvious modification.), such that by moving the mask or the substrate, the desired relative movement would be predictably and acceptably provided.
Claim 2: As to the use of a thin metal film, this would be suggested by Choi article, which indicates providing a thin (100 nm) Pt film on as side of the mask (note section 2.1).
Claim 4: As to the use of an Si substrate, this would be suggested by Choi article (note section 2.1, figure 1). Choi ‘641 also notes using a Si substrate (note 0045).
Claims 5-7: As to the specific electric field intensity and the equation of claim 7, Choi article notes optimizing the voltage (potential) applied to the substrate/mask, with differing potential difference between the two to adjust the focusing ratio/pattern size produced (note sections 3.1-3.3), and Cho ‘641 further notes adjusting distance between the substrate and mask (note 0034-0035, figures 7, 8), and therefore one would optimize these conditions to get the desired structure, giving an intensity as in claim 7 that is based on potential of the substrate V/moving distance of charged particles in microns, and electric field intensity between the mask and substrate in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 8: Further as to also considering the moving distance as that between an upper inlet of the reactor and the substrate, such a distance would also be present in Choi article (note figure 1) and there would still be a change in potential for the substrate for optimizing as discussed for claim 7 above, and thus, it would have been obvious that adjustment using the moving distance for claim 8 would also be predictable and acceptable.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Choi article in view of Choi ‘641 as applied to claims 1-2 and 4-8 above, and further in view of Khaselev et al (US 2006/0260943).
Claim 3: As to the use of a mask with a layer of Cr, for example, Choi article broadly teaches a metal coated mask/stencil (abstract), and describes using Pt as the metal (section 2.1).
Khaselev further describes using a mask for depositing charged particles to a substrate 20 through holes in a mask (figure 5, 0038-0040), where the mask has a metal/conductive layer coated on the mask and can be metals such as chromium (note 0034-0035).
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 Choi ‘641 to use a metal layer of Cr instead of Pt on the mask as suggested by Khaselev with an expectation of predictably acceptable results, since Choi article indicates using a metal plated mask through which particles pass, and Khaselev teaches that masks for such use can be metal plated with chromium to provide an acceptable conductive layer.
Note as to Jung article, the publication date of August 2021 (note the cover page), is before the foreign priority date of KR 10-2022-0010066, and more than 1 year before the PCT filing date of this case. Applicant cannot rely upon the certified copy of the foreign priority application as part of overcoming a rejection, because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Note that Choi ‘641 was initially listed on the PTO-892 of May 6, 2026.
Conclusion
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
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