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 .
Status of Claims
Claim(s) 1-8 are currently pending.
Claim(s) 1-8 have been amended.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 0, 1, 3 and 303.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 304.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-8 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
Claim 1 is indefinite for the following reasons:
The limitation “ZnO nanoparticles in a concentration greater than or different from 6% and less than or equal to 7.5% by weight, the value of 6% not being included” is unclear and therefore renders the claim indefinite. The phrase “greater than or different from 6%” encompasses concentrations both greater than and less than 6%. The upper limit of the range appears to define only an upper range ending at 7.5% while excluding 6%. It is not clear if the range encompasses both values lower and higher than 6%. Accordingly, one of ordinary skill in the art cannot reasonably ascertain the claimed concentration range.
The phrases “silver nanoparticles in a concentration greater than 0.2 % of the total” and “silver nanorods in a concentration greater than 0.2 % of the total” is unclear and therefore renders the claim indefinite. There is no prior recitation of “a total”. Furthermore, it is not clear whether “the total” refers to the total weight of the composition, the total amount of nanoparticles, the liquid crystal polymer, or another quantity. Accordingly, the limitation lacks antecedent basis. Furthermore, one of ordinary skill in the art cannot reasonably ascertain what value or quantity corresponds to the claimed “total”.
The limitation “provided that when doped with carbon black in a concentration comprised between 0.03% and 2% the at least one monomer and/or oligomer of liquid crystals may not have an azobenzene moiety” is unclear and therefore renders the claim indefinite. It is not clear if the recited clause is required by the claim. The recitation “may not have” merely expresses a possibility and does not positively recite whether the claimed monomer and/or oligomer is required to lack an azobenzene moiety or whether the absence of the moiety is merely optional. Accordingly, the metes and bounds of the claim cannot be determined.
The limitation “b. depositing the doped polymer obtained at the end of step a) onto a suitable substrate provided that no rubbing process takes place in step b)” is unclear and therefore renders the claim indefinite. It is not clear if the claim excludes a substrate that was rubbed at any time before the claimed process, only before the depositing step, or only during the claimed process. Accordingly, one cannot reasonably ascertain the scope of the claim.
Regarding claim 2
Claim 2 is indefinite for the following reasons:
Claim 2 initially requires the photomobile polymer to comprise “at least one monomer and/or oligomer of liquid crystals having an azobenzene moiety,” thereby requiring the presence of an azobenzene containing monomer and/or oligomer. However, the claim subsequently recites “carbon black in a concentration comprised between 0.03% and 2%, provided that when the doping is with carbon black in a concentration comprised between 0.03% and 2% the at least one monomer and/or oligomer of liquid crystals may not have an azobenzene moiety.” It is not clear if the azobenzene moiety is required by the claim. Accordingly, one cannot reasonably ascertain the scope of the claim.
The limitation “ZnO nanoparticles in a concentration greater than or different from 6% and less than or equal to 7.5% by weight, the value of 6% not being included” is unclear and therefore renders the claim indefinite. The phrase “greater than or different from 6%” encompasses concentrations both greater than and less than 6%. The upper limit of the range appears to define only an upper range ending at 7.5% while excluding 6%. It is not clear if the range encompasses both values lower and higher than 6%. Accordingly, one of ordinary skill in the art cannot reasonably ascertain the claimed concentration range.
The phrases “silver nanoparticles in a concentration greater than 0.2 % of the total” and “silver nanorods in a concentration greater than 0.2 % of the total” is unclear and therefore renders the claim indefinite. There is no prior recitation of “a total”. Furthermore, it is not clear whether “the total” refers to the total weight of the composition, the total amount of nanoparticles, the liquid crystal polymer, or another quantity. Accordingly, the limitation lacks antecedent basis. Furthermore, one of ordinary skill in the art cannot reasonably ascertain what value or quantity corresponds to the claimed “total”.
The limitation “provided that when doped with carbon black in a concentration comprised between 0.03% and 2% the at least one monomer and/or oligomer of liquid crystals may not have an azobenzene moiety” is unclear and therefore renders the claim indefinite. It is not clear if the recited clause is required by the claim. The recitation “may not have” merely expresses a possibility and does not positively recite whether the claimed monomer and/or oligomer is required to lack an azobenzene moiety or whether the absence of the moiety is merely optional. Accordingly, the metes and bounds of the claim cannot be determined.
The limitation “b. depositing the doped polymer obtained at the end of step a) onto a suitable substrate provided that no rubbing process takes place in step b)” is unclear and therefore renders the claim indefinite. It is not clear if the claim excludes a substrate that was rubbed at any time before the claimed process, only before the depositing step, or only during the claimed process. Accordingly, one cannot reasonably ascertain the scope of the claim.
Regarding claim 3
Claim 3 is indefinite for the following reasons:
Claim 3 initially requires a non-cross-linked resin to comprise “at least one monomer and/or oligomer of liquid crystals having an azobenzene moiety in a concentration comprised between 6 and 10 mol%,” thereby requiring the presence of an azobenzene containing monomer and/or oligomer. However, the claim subsequently recites “provided that when doped with carbon black in a concentration comprised between 0.03% and 2% the at least one monomer and/or oligomer of liquid crystals may not have an azobenzene moiety.” It is not clear if the azobenzene moiety is required by the claim. Accordingly, one cannot reasonably ascertain the scope of the claim.
The limitation “ZnO nanoparticles in a concentration greater than or different from 6% and less than or equal to 7.5% by weight, the value of 6% not being included” is unclear and therefore renders the claim indefinite. The phrase “greater than or different from 6%” encompasses concentrations both greater than and less than 6%. The upper limit of the range appears to define only an upper range ending at 7.5% while excluding 6%. It is not clear if the range encompasses both values lower and higher than 6%. Accordingly, one of ordinary skill in the art cannot reasonably ascertain the claimed concentration range.
The phrases “silver nanoparticles in a concentration greater than 0.2 % of the total” and “silver nanorods in a concentration greater than 0.2 % of the total” is unclear and therefore renders the claim indefinite. There is no prior recitation of “a total”. Furthermore, it is not clear whether “the total” refers to the total weight of the composition, the total amount of nanoparticles, the liquid crystal polymer, or another quantity. Accordingly, the limitation lacks antecedent basis. Furthermore, one of ordinary skill in the art cannot reasonably ascertain what value or quantity corresponds to the claimed “total”.
The limitation “carbon black in a concentration of 0.03% to 2%, provided that when doped with carbon black in a concentration comprised between 0.03% and 2% the at least one monomer and/or oligomer of liquid crystals may not have an azobenzene moiety” is unclear and therefore renders the claim indefinite. It is not clear if the recited clause is required by the claim. The recitation “may not have” merely expresses a possibility and does not positively recite whether the claimed monomer and/or oligomer is required to lack an azobenzene moiety or whether the absence of the moiety is merely optional. Accordingly, the metes and bounds of the claim cannot be determined.
Regarding claims 4-8
Claim 4-8 are rejected at least for their dependency on claim 2.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Photo-Responsivity Improvement of Photo-Mobile Polymers Actuators Based on a Novel LCs/Azobenzene Copolymer and ZnO Nanoparticles Network” (2021), Sagnelli et al.* (hereinafter “Sagnelli”).
*Cited in the IDS.
Regarding claims 1-3
Sagnelli teaches a process for preparing a photomobile polymer (PMP) comprising a non-cross-linked resin (Azo-LC-PMP) comprising at least one monomer and/or oligomer of liquid crystals having an azobenzene moiety (Azo) in a concentration comprised between 6 and 10 mol% (6 mol% of azo crosslinker 4,4-Bis[9-(acryloyloxy) nonyloxy]azobenzene) [Page 4, section 2.2.5], the process comprising the following steps:
a. doping by incorporation into a liquid crystal polymer (addition of nanoparticles to introduce distinct features to the liquid crystal) [Pages 2 and 4]:
of ZnO nanoparticles [Page 4, section 2.2.5]; and
b. depositing the doped polymer (Azo-LC-PMP(6%_Z)) obtained at the end of step a) onto a suitable substrate provided that no rubbing process takes place in step b) [section 2.2.4, Page 4].
Sagnelli does not expressly disclose a concentration of ZnO nanoparticles of greater than or different from 6% and less than or equal to 7.5% by weight, the value of 6% not being included.
Sagnelli however discloses a concentration of ZnO nanoparticles of 6% [Page 4]. The claimed lower limit (>6 wt.%) lies immediately adjacent to the disclosed value. One of ordinary skill in the art would reasonably have expected compositions containing ZnO concentrations only slightly above 6 wt.% (e.g., 6.01-7.5wt.%) to exhibit substantially the same properties as the 6 wt.% composition disclosed in Sagnelli.
The court has held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2144.05 (I)
Moreover, Sagnelli teaches that ZnO nanoparticles exhibit a wide band-gap, emission peaks in both UV and VIS regions and good heat conductivity, and increase the thermal conductivity of the polymers, maintaining their mechanical properties at the same time [Page 2, fifth paragraph].
However, one major limitation is the aggregation of nanoparticles in the matrix which results in phase separation [Page 2, fifth paragraph].
Accordingly, Sagnelli demonstrates that ZnO concentration affects numerous material properties, including thermal conductivity, optical behavior, and mechanical performance, while also recognizing nanoparticle aggregation as a limitation. Therefore, ZnO concentration constitutes a result-effective variable.
Absent a showing of criticality or unexpected results with respect to the concentration of ZnO nanoparticles (a result-effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to optimize said parameter through routine experimentation in order to achieve the desired mechanical properties of the material while avoiding aggregation of the nanoparticles in the matrix. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0036210 A1, Castagna et al. teaches an energy conversion device (100) comprising a substantially planar actuator element (50) which has at least an activable portion (30) comprising a photomobile polymeric material based on liquid-crystalline azobenzenes [paras. 0032-0039].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at (303)297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
Prosecution Insights