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 of Group 1 in the reply filed on 10/4/2023 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/4/2023.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-10, and 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 has been amended to require a fiber fill factor and network fill factor as a result of the step of applying a first dispersion containing a metal nanowire on a substrate to form a nanowire network. While the original disclosure teaches “in step a), a nanowire fill factor which is a ratio of an area covered by the metal nanowire is 3 to 11%”, the original disclosure does not teach a fiber fill factor or network fill factor of step a. The dependent claims do not cure the deficiency.
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 1-3, 5-10, and 15-20 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. The dependent claims do not cure the deficiency.
Claim 1 recites the limitation "the metallic fiber" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination the limitation “a fiber fill factor which is a ratio of an area covered by the metallic fiber is 3 to 10% with respect to an area of the substrate” will be treated as being subsequent to step b-1) of the claim.
Claim 1 recites the limitation "the fiber-nanowire network" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination the limitation “a network fill factor which is a ratio of an area covered by the fiber-nanowire network is 9 to 13% with respect to an area of the substrate” will be treated as being subsequent to step b-2) of the claim.
Claim 20 recites “a sheet resistant increase rate” in lines 2. The term “sheet resistant increase rate” is unclear because it does not have an accepted meaning in the art. The term is indefinite because the term is not defined. For the purpose of examination, the limitation will be treated as “a sheet resistance increase rate” which is a term of art defined as “sheet resistance after bending test/sheet resistance before bending test”.
Claim 20 recites “when a bending test is performed 100000 times with a bending radius of 3 mm”. It is unclear if this limitation is defining a case under which a property of the material exists OR is requiring a manipulative process step to be performed. For the purpose of examination, the limitation will be treated as defining a case under which a property of the material exists and not requiring a manipulative process step to be performed.
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.
Claim(s) 1-3, 5, 7, 9-10, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu (US 2015/0056435) in view of Qi (US 2015/0086805), Huizing (US 2014/0319706), and Reneker (CN 1886537).
Regarding Claims 1, 3, and 10, Hsu teaches a method of producing a transparent electrode (abstract), the method comprising: a) applying a first dispersion containing a silver nanowire on a substrate to form a nanowire network ([0085]); b1) forming copper mesoscale wires by polymer electrospinning and metal deposition ([0076-0084]); b2) depositing copper mesoscale wires onto the silver nanowire transparent electrode ([0085]); and c) sintering the fiber-nanowire network ([0095]).
Hsu is silent as to the fill factor of the wires; however, Hsu teaches it will be clear to one skilled in the art how to specify, make, and use alternative embodiments comprising arrangements that comprise any practical number, length, and inter-wire spacing of each of the macroscale wires, mesoscale wires, and nanoscale wires ([0036]). Hsu teaches sheet resistance and transmittance as a function of wire width and inter-wire spacing ([0038-0051]). Variation of number, length, and interwire spacing of the wires necessarily correlates to a change in fill factor. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include an optimized fill factor of macroscale, mesoscale, and nanoscale wires, as suggested by Hsu, in order to achieve the desired transmittance and sheet resistance and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed fill factors.
Hsu does not explicitly teach electrospinning a second dispersion containing metal nanoparticles on the nanowire network to form a fiber-nanowire network in which a metallic fiber of the metal nanoparticles being agglomerated is incorporated into the nanowire network; however, Qi teaches a method of forming a copper ([0020]) mesoscale ([0029]) wire by coaxial electrospinning a dispersion of nanoparticles and a transient polymer solution (abstract). Qi teaches coaxial double nozzle including an inner nozzle and an outer nozzle surrounding the inner nozzle is used at the time of electrospinning to spin the second dispersion through the inner nozzle and to spin a polymer solution through the outer nozzle, thereby forming a composite fiber in which the metallic fiber is wrapped by a polymer sheath (Fig. 2, [0007]). Qi teaches removing the polymer shell by baking ([0033]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Hsu to include coaxial electrospinning, as taught in Qi, because it is a known method of forming a copper mesoscale wire in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the wire of Hsu with a method as in Qi.
The combined references do not explicitly teach the electrospinning process onto the nanowire network; however, Huizing teaches a fibrous coating layer formed by electrospinning directly onto an under layer (abstract). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include electrospinning onto the nanowire network, as taught in Huizing, because it is a known method of forming a coating layer by electrospinning and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the layer of the combined references with coating directly onto the under layer, as in Huizing.
Qi teaches an example of a 40 wt.% nanoparticle dispersion. Qi does not explicitly teach wherein a content of the metal nanoparticles in the second dispersion is 60-85 wt.%; however, Reneker teaches a metal electrospinning solution wherein the concentration of the metal component is determined based on the desired concentration of the metal component in the fiber generated ([59]). Reneker suggests the amount of the metal component in the solution in the range of about 80-1% ([62]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include a concentration, as suggested in Reneker, including the claimed concentrations, selected in order to achieve the desired concentration of the metal component in the fiber generated.
Regarding Claim 2, Hsu teaches the polymer dissolved from the copper wires on the silver electrode and subsequent annealing to fuse the wires at junctions (i.e. a heat treatment). Qi teaches removing the polymer by baking ([0033]).
Regarding Claim 5, Hsu teaches the polymer dissolved from the copper wires on the silver electrode and subsequent annealing to fuse the wires at junctions (i.e. a heat treatment). Qi teaches removing the polymer by baking ([0033]).
Regarding Claim 7, Qi teaches baking at temperatures less than 350C ([0027]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include any of the temperatures of Qi, including those within the claimed range, because Qi teaches they are all suitable baking temperatures.
Regarding Claim 9, Hsu teaches nanowires have a diameter of 50 nm and mesoscale wires have a diameter of 5 microns ([0049-0051]).
Regarding Claim 15, Hsu teaches the metal nanowire has an average diameter of 1 to 300 nm ([0031]). Hsu teaches each wire used to provide electrical conductivity over a length suitable for its width wherein one of ordinary skill in the art would understand how to make alternative embodiments comprising practical lengths of nanoscale wires ([0035-0036]). Hsu is silent as to the aspect ratio and does not explicitly disclose 100 to 10,000; however, "[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). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the aspect ratio of Hsu, as suggested by the reference, in order to achieve electrical conductivity suitable for the width, and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed aspect ratio.
Regarding Claim 16, Qi teaches the metal fibers having widths in the range of 40 nm to 500nm ([0029]). Qi is silent as to the diameter of the nanoparticles; however, "[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).” MPEP 2144.05 II A. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the nanoparticles of the combined references to include an optimized size, as suggested in Qi, in order to achieve a desirable fiber diameter, and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed diameter.
Regarding Claim 17, Qi teaches any suitable transient polymer that facilitates fiber formation and can be removed by thermal degradation is suitable ([0023]). In the background section, Qi teaches PVA is a transient polymer that facilitates fiber formation and is removed by thermal degradation ([0005]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include any known transient polymer including PVA, as suggested by Qi, because it is a known polymer for this use in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the fibers of the combined references with the PVA suggested by Qi.
Regarding Claim 18, Hsu teaches the metal nanowire has an average diameter of 1 to 300 nm ([0031]). Hsu teaches the diameter of the metallic fiber is 1-10 microns ([0031]).
Regarding Claim 20, Hsu is silent as to the sheet resistance increase rate when a bending test is performed 100000 times with a bending radius of 3 mm. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established, In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to the sheet resistance increase rate limitation, when the structure recited in the prior art is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112. In this situation, the prior art exemplifies the applicant's claimed structure and composition, so the claimed sheet resistance increase rate relating to the structure and composition are present in the prior art. Absent an objective evidentiary showing to the contrary, the addition of the physical properties to the claim language fail to provide patentable distinction over the prior art of record.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu (US 2015/0056435) in view of Qi (US 2015/0086805), Huizing (US 2014/0319706), and Reneker (CN 1886537) as applied to claims 1-3, 5, 7, 9-10, 15-18, and 20 above, and further in view of Kim (US 20160322133).
Regarding Claim 8, Hsu teaches annealing ([0062]) and teaches known methods of annealing in the art including thermochemical, electrochemical, and/or nano-plasmonic welding ([0009]). Hsu does not explicitly teach photonic sintering is performed by irradiation of a pulsed white light having an intensity of 800 to 1600 J/cm2; however, Kim teaches photonic sintering of a silver nanowire coating in order to achieve welding between the nanowires ([0148]). Kim teaches a pulsed white light in the photonic sintering ([0141]) and teaches irradiation at an intensity at which fusion of the contact regions are generated without undesired melting ([0096]). "[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).” MPEP 2144.05 II A. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of the combined references to include photonic sintering, as taught in Kim, because Kim teaches it is a suitable method of sintering to achieve welding between nanowires and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the welding of the combined references with photonic sintering as taught in Kim. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the intensity of the irradiation of the combined references, as suggested by Kim, in order to achieve welding without undesired melting, and in such an optimization one of ordinary skill in the art would have arrived at applicant’s claimed intensity.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hsu (US 2015/0056435) in view of Qi (US 2015/0086805), Huizing (US 2014/0319706), and Reneker (CN 1886537) as applied to claims 1-3, 5, 7, 9-10, 15-18, and 20 above, and further in view of Park (KR 10-2017-0104027).
Regarding Claim 19, The combined references teach thermal degradation of the polymer and do not explicitly teach wet removal using an organic solvent, dry removal using reactive ion etching (RIE), or a combination thereof; however, Park teaches polymer removal by organic solvent or reactive ion etching (pg. 8 para. 5). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the removal of the combined references to include organic solvent or reactive ion etching, as suggested in Park, because it is a known method of polymer removal in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the fibers of the combined references with an organic solvent or reactive ion etching as in Park.
Response to Arguments
Applicant's arguments filed 7/31/2025 have been fully considered but they are not persuasive.
Applicant argues none of the cited references, combined as set forth in the Office Action, discloses or suggests a method as claimed; however, this is not convincing as discussed in the Rejection above.
Applicant argues Hsu does not suggest the particular and multiple fill factor variables recited in the amended claim 1, which lead to unexpected and advantageous results as shown in the following Table 1 of the present specification. Applicant argues Hsu is silent about a recognition of optimizing multiple fill factor variables related to nanowires and fibers during production of a transparent electrode to simultaneously and effectively achieve both excellent transmittance and sheet resistance. In response to applicant’s argument, Hsu teaches it will be clear to one skilled in the art how to specify, make, and use alternative embodiments comprising arrangements that comprise any practical number, length, and inter-wire spacing of each of the macroscale wires, mesoscale wires, and nanoscale wires ([0036]). Hsu teaches sheet resistance and transmittance as a function of wire width and inter-wire spacing ([0038-0051]). Variation of number, length, and interwire spacing of the wires necessarily correlates to a change in fill factor and these teachings of Hsu provide motivation to one of ordinary skill in the art to optimized fill factor of macroscale, mesoscale, and nanoscale wires in order to achieve the desired transmittance and sheet resistance. It is not unexpected or advantageous to achieve a desirable transmittance and sheet resistance from such an optimization, because Hsu recognizes this as a result. Contrary to Applicant’s argument, Table 1 of the specification does not show an unexpected result. Hsu teaches an embodiment of the invention includes a composition having a sheet resistance less than or equal to 1 ohm/square and a transmittance equal to or greater than 90% (Claim 13).
Applicant argues the other references do not cure these deficiencies and the rejections of the dependent claims have the same deficiencies; however this is not convincing as discussed above.
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Hsu, P.-C. et al. Performance enhancement of metal nanowire transparent conducting electrodes by mesoscale metal wires, Nat. Commun., 4:2522 (2013).
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.
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712