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 .
Election/Restriction
Applicant’s election without traverse of Group I, claim(s) 1, 3-12 and species polythiophene monomer units of structure (Ia)
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in the reply filed on 04/17/2025 is acknowledged.
Claims 13-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/17/2025.
Terminal Disclaimer
The terminal disclaimer filed on 02/26/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/572,605 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The previous rejection of Claims 1, 3-4, 6, 7, and 9-12, provisionally on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/572,605 (App. No. 18/572,605) is/are withdrawn in light of the Applicant’s filed terminal disclaimer.
The previous rejection of Claim(s) 1, 3, 5, 9-12, under 35 U.S.C. 102(a)(1) as being anticipated by JP 2014-031433 A to Kita et al. (hereinafter Kita) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 4, 6-8 under 35 U.S.C. 103 as being unpatentable over Kita, as applied to claim 1 above, and further in view of US 2013/0056074 A1 to Isobe et al. (hereinafter Isobe’074) is/are withdrawn in light of the Applicant’s amendments.
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, 3-12, 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.
Claim 1 recites in line 11-13, wherein the polythiophene is “a copolymer consisting of 3,4-ethylenedioxythiophene and/or monomer units of structure (Ia) or (Ib)…” However, a copolymer is known in the art to contain more than one type of monomer units and the transitional phase of “consisting of” is close-end and excludes additional components. The phrase “copolymer consisting of 3,4-ethylenedioxythiophene…” broadly implies that the copolymer contains a 3,4-ethylenedioxythiophene unit and an additional different monomer. For the reasons recited above, it is unclear if the copolymer may contain a 3,4-ethylenedioxythiophene with an additional different monomer, or a 3,4- ethylenedioxythiophene with only units of (Ia) or (Ib), and if the additional monomer units other than (Ia) or (Ib) are excluded.
It appears that claim 1 should read, “wherein the polythiophene…is a copolymer consisting of 3,4-ethylenedioxythiophene and monomer units of structure (Ia) or (Ib)…”
Claims 3-12 are dependent claims which fail to alleviate the issues above.
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.
Claims 4-8 are 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.
Claims 4-6 recites, “wherein the polythiophene is a homopolymer or copolymer comprising…” However, claim 1 recites “wherein the polythiophene is a homopolymer or copolymer consisting of…” which is a narrower transitional phrase. Thus, claims 4-6 broaden claim 1 and fails to further limit the claim.
Claims 7-8 are dependent claims which fail to alleviate the issues above.
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.
Allowable Subject Matter
Claims 1, and 3-12, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is JP 2014-031433 A to Kita et al. (hereinafter Kita). Kita teaches a pi-conjugated polymer having the compound
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(para 16 and 22). Specifically, in Example 2, a toluene dispersion comprising a dodecylbenzenesulfonic acid-doped conductive polymer is obtained by mixing
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(CPT),
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, dodecylbenzenesulfonic acid, iron (III) chloride, and toluene. (para 142-143). Kita further teaches the dispersion is stored for 7 days at 40 deg C and shows no precipitate or gel (See Table 1, para 162 and 166). In Example 11 and 12, a coating composition is further obtained by mixing the above conductive polymer dispersion of Example 2 with a urethane acrylate (UV-7605B), or polyester acrylate (PS420), in a solvent methyl ethyl ketone or toluene.
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(para 168-170).
Kita does not teach the polythiophene as a copolymer consisting of monomers units (Ia) or (Ib).
The next closest prior art is US 2012/0018662 A1 to Sugihara et al. (hereinafter Sugihara). Sugihara teaches a conductive polymer specifically obtained by mixing and polymerizing a mixture of ethylenedioxythiophene and an alkylated ethylenedioxythiophene such as ethylated or propylated ethylenedioxythiophene, and a para-toluenesulfonic acid and iron in butanol solution, (para 104), to produce a conductive polymer that contains a para-toluenesulfonic acid dopant. (para 104).
Sugihara does not teach wherein the composition is a homogeneous dispersion with a formed complex.
The next closest prior art is US 2006/0071200 A1 to Nordquist et al. (hereinafter Nordquist). Nordquist teaches a composition comprising a homopolymer of
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, wherein R is isopropyl or tert-butyl (para 19) which may be in a dispersion of a organic solvent (para 32).
Nordquist does not teach wherein the composition is a homogeneous dispersion with a formed complex.
Conclusion
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/HA S NGUYEN/Primary Examiner, Art Unit 1766