The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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 1-9 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.
Claims 1-9 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of rubber alternatives and broad conductive alternatives is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: One acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being "selected from the group consisting of A, B and C." See Ex parte Markush, 1925 C.D. 126 (Comm' r Pat. 1925). Suitable language to include would be {“wherein the X are selected from the group consisting of”.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 7-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over KR 101791645 B1 (Song et al.) in view of TWI613262 B (Kohno et al.).
Re claims 7-9, Song teaches a glove of flexible resin (rubber, same as [69], spec.) with electrically conductive portions on the finger as claimed shown in the Figure below having overlapping ranges of surface resistance (Abstract).
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See page 3, under “Conductive Coated Gloves” to an electric conductive carbon black, overlapping claimed surface resistance (0025) surface resistance of 1 x 10^5-10^6 (overlapping applicant’s range of 10^3 to 10^8) and Song discloses a coating made from 20 parts conductive material dispersion and 100 parts polyurethane (page 8, first paragraph) where the conductive dispersion comprises 8% carbon black (page 8, second paragraph). Therefore, the coating comprises 1.6 parts (0.08*20) carbon black per 100 parts polyurethane which falls within the scope of the present claims. Song also discloses that if the amount is too low, surface defects occurs while if the amount is too high, the touch/display deteriorates, and surface smoothness is inferior (page 3, lines 8th paragraph).
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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of amount of claimed carbon black and surface resistance for improving the display taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Further, “in the case that” is considered suggestive language in a claim and not a positive recitation; further, carbon black embraces a pigment.
Further to claim 7, Song fails to disclose the oil absorption and volatile content of the carbon black.
However, Kohno discloses carbon black [23] that has overlapping ranges of DBP oil absorption of 270-340 cm3 (or mL)/g [27] (falling within the claimed range of 250-600 ml/100 g) and volatile content of 0.8 wt% or less [52]. The carbon black has good dispersibility and conductivity [49, 52].
In light of the above, since the prior art would then meet all the claim limitations, the new limitation of a modulus of the electrically conductive portion at 30% elongation is considered inherent. The same overlapping range rationale above applies here.
Therefore, it would have been obvious to one of ordinary skill in the art to control the conductive content of the carbon black dispersion to rubber values, including that presently claimed in order to produce a coating with no delamination, good form, and desired surface smoothness.
Re claim 8, the glove is knitted on page 4, first – second paragraphs and the conductive material (see 4, 20, ) of glove 10 are the outermost portions.
Re claim 9, given the conductive glove materials and amounts are the same, the volume resistance is deemed inherent.
Response to Arguments
Applicant's arguments filed 09/12/2025 have been fully considered but they are not persuasive. Applicant arguments are moot in view of the fact that the claimed rubber is the same as [69], spec. See action above.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
TAMRA L. DICUS
Primary Examiner
Art Unit 1787