CONDUCTIVE POLYMER CONDUCTOR AND METHOD FOR MANUFACTURING THE SAME

DETAILED ACTION Summary The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Applicant’s arguments filed on September 10, 2026 have been entered into the file. Currently claim 4 is withdrawn, resulting in claims 1-3 and 5 pending for examination. 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. Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torimitsu (US 2017/0296079)1,2 in view of Dichtel (WO 2017/031062)2. With respect to claim 1, Torimitsu teaches an electrically conductive material which includes: a base, which is beneficially a silk fiber, and poly(3,4-ethylene-dioxythiophene)-p-toluenesulfonate (PEDOT-pTS) applied to the base (paragraphs [0012], [0015]). Silk has high adhesiveness and good affinity for PEDOT-pTS (paragraph [0015]). The oxidant component preferably includes ferric ions, in the form of ferric chloride, which enable efficient formation of PEDOT-pTS (paragraphs [0032], [0057]). The ratio of the amount of pTS solution (pTS + iron ion oxidant) to EDOT in terms of volume ratio ranges from 10:1 to 100:1, and suitable from 20:1 to 40:1 (paragraph [0060]). The ratio of the amount of pTS solution to EDOT range of Torimitsu substantially overlaps the claimed range in the instant claim 1. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Torimitsu, because overlapping ranges have been held to establish prima facie obviousness. Torimitsu is silent as to the PEDOT being amorphous. Dichtel discloses conducting-polymer modified covalent organic frameworks (paragraph [0009]). An example of a suitable conductive polymer includes poly(3,4-ethylenedioxythiophene) and it may be amorphous (paragraph [0079]). Since both Torimitsu and Dichtel are directed to conductive polymers comprising PEDOT, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the PEDOT of Okano to be amorphous because it is known in the art that amorphous PEDOT produces a conductive polymer. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B). In the instant case, a conductive PEDOT polymer is the predictable result achieved. With respect to claim 5, Torimitsu in view of Dichtel teach all the limitations of claim 1 above. Torimitsu further teaches a suitable organic solvent for pTS may be ethanol (paragraph [0054]). Additionally, the oxidant component is suitably blended at a ratio of 1-10% by mass of the pTS solution and the pTS dopant is suitable 0.1-10% by mass of the solution (paragraphs [0057]-[0058]). This results in the iron salt of pTS being 1.1-20 mass% of the iron salt of pTS and ethanol solution. With respect to amount of iron salt of pTS in the pTS solution range of Torimitsu, it has been held that 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. See MPEP 2144.05(I). In the instant case the teachings of Torimitsu have touching endpoints (20 mass%). One skilled in the art would have expected the claimed and prior art polymers to have the same properties (conductivity) because both teach that the polymer resulting from the claimed and disclosed proportion of iron salt of pTS to iron salt of pTS and ethanol solution produces a conductive polymer. Additionally, the instant specification discloses that a mass of 12-60 mass% may be used (paragraph [0041]), which significantly overlaps the teachings of Torimitsu. Therefore one skilled in the art would have expected the prior art and the claimed invention have the same properties. Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Torimitsu (US 2017/0296079)3,4 in view of Dichtel (WO 2017/031062)2 as applied to claim 1 above, and further in view of Seul-Gi ("Highly conductive PEDOT:PTS films interfacially polymerized using electro spray deposition and enhanced plasma doping")1,2. With respect to claims 2-3, Torimitsu in view of Dichtel teach all the limitations of claim 1 above. Torimitsu further teaches the electrically conductive material can be used in a bioelectrode (paragraph [0033]). Torimitsu in view of Dichtel is silent as to the electrical conductivity being not less than 0.3 S/cm, preferably not less than 1.0 S/cm. Seul-Gi teaches highly transparent and conductive poly(3,4-ehylenedioxythiopene)-p-toluene sulfonate (PEDOT-PTS) films prepared by using interfacial polymerization using electro spray disposition and treating with oxygen plasma (abstract). The PEDOT:PTS films manufactured in this way exhibited significantly increased conductivities by up to 15% relative to the author’s previously reported conductivity of VPP-PEDOT films (2000 S/cm and 1000 S/cm) (1. Introduction; third and fourth paragraphs). The treated films exhibited sheet resistance values of 130 and 50 Ω/sq and were suitable for use as an alternative to ITO for transparent electrodes in flexible electronic devices (1. Introduction; fourth paragraph). Torimitsu in view of Dichtel and Seul-Gi both teach PEDOT-pTS conductive polymers for use in electrodes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conductive polymer conductor of Torimitsu in view of Dichtel to have resistance values of 130 or 50 Ω/sq in order to being suitable for use as transparent electrodes in flexible electronic devices. Torimitsu in view of Dichtel and Seul-Gi teach resistance values, but do not explicitly teach conductivities. The instant specification at paragraph [0030] acknowledges that the sheet resistances of the instant invention was measured and the electrical conductivities were calculated from the sheet resistance values. Looking at the instant figures (FIGs. 3, 5, 7, 8, 9, 10), the sheet resistances of Torimitsu in view of Dichtel and Seul-Gi are within the same range as the instant sheet resistances. Therefore, due to the similarity in sheet resistances and materials used, it is expected that the electrical conductivity of Torimitsu in view of Dichtel and Seul-Gi will be within the claimed ranges. Additionally, Seul-Gi teaches that the invention exhibited significantly increased conductivities by up to 15% relative to the author’s previously reported conductivity of VPP-PEDOT films (2000 S/cm and 1000 S/cm) (1. Introduction; third and fourth paragraphs). Therefore it is also reasonable to presume that the conductivity of Torimitsu in view of Dichtel and Seul-Gi have a conductivity of at least greater than 1000 S/cm, and thus reads on the claimed ranges. Response to Arguments Response – Claim Rejections 35 USC §103 Applicant’s arguments and declaration filed September 10, 2026 have been fully considered and are not persuasive. On page 2 of the response Applicant submits that the selection of amorphous PEDOT from the list of conducting polymers in Dichtel is hindsight and does not identify why a skilled artisan would have selected amorphous PEDOT for Torimitsu’s silk conductor with a reasonable expectation of preserving Torimitsu’s function. These arguments are not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As discussed previously, Dichtel discloses conducting-polymer modified covalent organic frameworks (paragraph [0009]) such as poly(3,4-ethylenedioxythiopene) which may be amorphous (paragraph [0079]). Therefore, Dichtel teaches that both PEDOT and amorphous PEDOT are conductive polymers and only knowledge which was within the level of ordinary skill at the time the claimed invention was made was relied on. Since both PEDOT and amorphous PEDOT are recognized by the prior art as conductive, the ordinary artisan would expect the substitution of PEDOT with amorphous PEDOT to result in an electrically conductive material. On page 3 of the response Applicant submits the substitution of PEDOT with amorphous PEDOT is does not lead to a predictable result of success because the amorphous PEDOT provides a smooth uniform coating whereas the crystalline PEDOT provides an uneven surface. These arguments are not persuasive. Neither Torimitsu nor Dichtel provide any expectation as to the surface roughness of the applied polymer coating. As discussed above, both are concerned with the conductivity of the polymer. Therefore, based on the knowledge provided by the prior art, a predictable result (conductive coating) is achieved by the substitution of PEDOT with amorphous PEDOT. On page 3 of the response Applicant submits that the pTS solution:EDOT ratio is not equivalent to the claimed ratio as it includes multiple components such as pTS and an iron ion oxidant. These arguments are not persuasive. The claimed ratio is directed to an iron salt of p-toluenesulfonic acid. Torimitsu discloses a pTS solution which is p-toluenesulfonate and an iron ion oxidant (paragraphs [0032], [0057]), i.e., an iron salt of p-toluenesulfonic acid. Therefore the pTS solution of Torimitsu is equivalent to the claimed iron salt of p-toluenesulfonic acid. On page 4 of the response Applicant submits that the combination with Seul-Gil does not explain that the combined substrate is shown to have Seul-Gil’s film thickness, morphology, or plasma-treated film structure. These arguments are not persuasive. It is well-established that a determination of obviousness based on teachings from multiple references does not required an actual, physical substitution of elements. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference….Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. See MPEP 2145(III). As discussed in the rejections previously and above, Seul-Gil teaches resistances for PEDOT-PTS films which are suitable for electrodes, such as Torimitsu. Therefore, since both Torimitsu in view of Dichtel and Seul-Gil both teach PEDOT-pTS conductive polymers for use in electrodes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the conductive polymer conductor of Torimitsu in view of Dichtel to have resistance values of 130 or 50 Ω/sq in order to provide an electrode suitable for use as transparent electrodes in flexible electronic devices. It is noted that the resistance is considered as reading on the claimed conductivity for the reasons presented in the rejection above. Conclusion THIS ACTION IS MADE FINAL. 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 Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST. 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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. LARISSA ROWE EMRICH Examiner Art Unit 1789 /LARISSA ROWE EMRICH/Examiner, Art Unit 1789 1 Cited in IDS 2 Previously presented 3 Cited in IDS 4 Previously presented