DETAILED ACTION
An amendment, amending claim 1, was entered on 8/14/26.
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 .
Response to Arguments
Applicant argues that the amendment to claim 1 is not taught by O’Connell. This is persuasive and this rejection is withdrawn. A new rejection is presented below in response to this amendment.
Claim Rejections - 35 USC § 112
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.
Claim 4 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. Claim 4 contains a range of diameter sizes which is outside the range claimed in claim 1, from which claim 4 depends. 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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hunyadi Murph et al. (US 2021/0380405) in light of Mirkin et al. (US 2002/0122873).
Claims 1, 5-8 and 11: Hunyadi Murph teaches a deposition system (Abst.), comprising: a first capillary having a first end and a second end and an inner diameter of 1500 µm or less (¶¶ 0036-0040; Fig. 1); a second capillary (¶¶ 0036-0040; Fig. 1); a first mixing region (¶¶ 0036-0040; Fig. 1); a first pump configured to pump fluid through the first capillary (¶¶ 0036-0040, 0050; Fig. 1); a second pump configured to pump fluid through the second capillary (¶¶ 0036-0040, 0050; Fig. 1); ad a print head comprising a suitable needle to deposit nano-scale material on a substrate (¶¶ 0070-0071, 0079).
While Hunyadi Murph teaches that any suitable needle or other similar structure can be attached to the print head to deposit the nano-scale material (¶ 0079), Hunyadi Murph does not expressly teach an atomic force microscope. Mirkin teaches that, in a deposition process like Hunyadi Murph, atomic force microscopes are suitable tips to be used for depositing features with a resolution of 0.2-100 nm (¶¶ 0024-0026). Mirkin explains that these tips feature a capillary with an internal diameter of less than 200 nm (¶ 0025). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, because Hunyadi Murph teaches that any suitable tip may be utilized and because Mirkin teaches that an AFM tip is a suitable tip, it would have been obvious to one of ordinary skill at the time of filing to have selected the AFM tip of Mirkin, having an opening diameter of 125-200 nm, as the tip in Hunyadi Murph with the predictable expectation of success.
Claims 2 and 3: Mirkin teaches that the AFM tip is made of silicon nitride (¶ 0025).
Claim 4: Mirkin does not expressly teach an opening of more than 200 nm, but explains that the diameter of the opening is consistent with the resolution of features deposited (¶ 0025). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a wider opening, such as 300-500 nm, depending on the desired deposition resolution with the predictable expectation of success.
Claims 9 and 10: Hunyadi Murph further teaches that the print head and a print bed are moved relative to one another and that the system is controlled by a controller (¶¶ 0070-0073).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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