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 .
Information Disclosure Statement
The listing of references in the specification 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.
Election/Restrictions
Applicant’s election without traverse of claims 1-23 in the reply filed on 2/19/26 is acknowledged.
Claims 24-33 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/19/26.
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 4, 5, & 17-23 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 4,: The term “relatively” in claim 4 is a relative term which renders the claim indefinite. The term “relatively” 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. It is unclear how high or low the value needs to be to be “relatively” higher or lower.
Claims 17 & 19: The term “relatively high” in claims 17 & 19 is a relative term which renders the claim indefinite. The term “relatively high” 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. It is unclear how high the value needs to be to be “relatively high”.
Claims 5 & 18-23: Claims 5 & 18-23 are rejected as being indefinite because they depend from claims 4, 17, and/or 19 and do not remedy the issues of the claim from which they depend from.
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 1-3, 7-9, 11, 12, 17, & 19-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu & Chiarot (Zhu & Chiarot, Directed assembly of nanomaterials using electrospray deposition and substrate-level patterning, Powder Technology 364 (2020) 845–850; hereafter Zhu).
Claim 1: Zhu discloses a method (title), comprising:
establishing an electric field in an electrospray deposition device and within the electric field emitting a spray of medium comprising payload materials from an emitter towards a conductive target disposed on an insulated conductive body (see Annotated Fig. 1(a); the first layer of deposit reads on the target disposed on the silicon substrate (conductive) which is patterned with photoresist (insulated layer on the conductive body); and
disposing charged payload materials on the insulated conductive body (charged payload is deposited on the photoresist layer; see Annotated Fig. 1(a)).
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Zhu does not explicitly teach that field lines in the electric field between the emitter and the charged payload materials on the insulated conductive body are established or that said field lines stabilize the electric field between the emitter and target.
However, given that an electric field exists between the insulated conductive body coated with the charged payload materials and the emitter in Zhu it is apparent that said field lines in the electric field would be present between the emitter and the charged payload materials on the insulated conductive body and the presence of said lines would stabilize the electric field between the emitter and target because the same structure and process is performed by the same apparatus as applicant.
Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 2: Zhu teaches disposing the charged payload materials on the insulated conductive body by causing an initial overspray of the medium comprising the charged payload materials to reach the insulated conductive body (Fig. 1(a) and §2, pgs 845-46).
Claim 3: Zhu ensured that insulation on the insulated conductive body permits filed lines form between the charged payload materials on the insulated conductive body and the conductive body of the insulated conductive body when the electric field is present (see pg 847).
Claim 7: Zhu teaches directing the spray of the medium with the field lines between the emitter and the target (abstract & Fig. 1(a)).
Claim 8: The insulating layer on the conductive body masks a portion of the target during the process.
Claim 9: Zhu further discloses that the spray of the medium is aligned by the field lines between the emitter and the target and ensures that the field lines between the charged payload materials on the insulated conductive body to isolate the field lines between the emitter and an unmasked portion of the target from other field lines, aid in concentrating the spray of the medium within the field lines between the emitter and the unmasked portion of the target and thereby focusing the spray of the medium on the unmasked portion of the target (the photoresist thickness and shape controls the shape of the deposited material; pg 847).
Claim 11: Zhu discloses a method (title), comprising:
establishing an electric field in an electrospray deposition apparatus between an emitter and an insulated conductive body (see abstract and annotated Fig. 1(a));
disposing a target on the insulated conductive body (see annotated Fig. 1(a));
emitting a spray of medium toward the target (see abstract & annotated Fig. 1(a)); and
causing an initial overspray of the spray to reach the insulated conductive body (see annotated Fig. 1(a)).
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Claim 12: The insulating layer on the conductive body masks a portion of the target during the process.
Claim 17: Zhu teaches a method (title), comprising:
subjecting a flow of a medium from a capillary to a relatively high electric field to form a spray of droplets of the medium (abstract & annotated Fig. 1(a));
directing the spray toward a target disposed on an insulated surface that is disposed on a conductive body that is held at an electrical potential difference with the medium in the capillary (abstract & annotated Fig. 1(a));
causing initial overspray of the spray (abstract & annotated Fig. 1(a)); and
ensuring the initial overspray lands on the insulated surface adjacent the target (abstract & annotated Fig. 1(a)).
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Claim 19: The initial overspray is disposed in the electric field generated by the relatively high potential difference (abstract & annotated Fig. 1(a)).
Claim 20: The potential difference results from a grounded body (abstract & annotated Fig. 1(a)).
Claim 21: Zhu teaches applying an insulating mask to a portion of the target (the photoresist masks a portion of the target, annotated Fig. 1(a)).
Claim 22: Zhu applies a prespray to the target and the insulated surface to dissipate or apply a charge (each layer can be termed a spray and thus it is apparent that the second layer after the first layer is formed to form the target can be termed the prespray).
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 6, 10, 13-16, 18, & 23 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu.
Claim 6, 10: Zhu does not teach the specific claimed limitations.
However, changes in shape and size are prima facie obvious. See MPEP §2144.04(IV).
Claims 13-15 & 16: Zhu discloses that the insulated conductive body establishes an insulated body profile as seen by the emitter (see annotated Fig. 1(a)).
Zhu does not teach the shape or size of the photoresist pattern relative to the target or that it fully encompasses the target.
However, changes in shape and size are prima facie obvious. See MPEP §2144.04(IV).
Claim 18: Zhu discloses that the insulated conductive body establishes an insulated body profile as seen by the emitter (see annotated Fig. 1(a)).
Zhu does not teach the shape or size of the photoresist pattern relative to the target or that it fully encompasses the target.
However, changes in shape and size are prima facie obvious. See MPEP §2144.04(IV).
Claim 23: The photoresist mask focuses the deposition (pg 848).
Zhu does not teach that the shape of the photoresist mask is a ring.
However, changes in shape is prima facie obvious. See MPEP §2144.04(IV).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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