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 .
Response to Amendment
Upon entry of the amendment filed on 03 November 2025, Claim(s) 1 is/are amended; Claim(s) 9-11 is/are withdrawn; Claim(s) 19-22 is/are added and Claim(s) 2, 3, 5, 6 and 8 is/are cancelled. The currently pending claims are Claims 1,4,7-8 and 12-22.
Based on applicants’ remarks and amendments (e.g. the specific ligand chemical composition), the 102 rejections based on Jacobson, Reiser or Eleta are withdrawn. However, they are found persuasive regarding the 103 rejections and new grounds of rejections are provided necessitated by the amendments.
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, 4, 7, 12-19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reiser.
Claims 1, 4, 6, 17-19 and 21: Reiser discloses a composition comprising a gold or silver nanoparticle coated with a thiophene ligand on the surface and a solvent having a COOH functional group (abs, ¶12-40, 87-106 and Fig 1 with accompanying text). The Reiser reference discloses the claimed invention but does not explicitly disclose the claimed 3-8 carbons side chain. Reiser discloses a range of 1 to 10 carbons (¶32-34). Given that the Reiser reference discloses a range that overlaps with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught carbon atoms numbers, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the carbon side chain variables with the benefit gain of enhancing the dispersibility of the composition. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components/steps would be repugnant to a skilled artisan.
Claim 7: Reiser discloses a volatile organic solvent having a BP less than 120 0C (¶55-65).
Claims 12-16: Reiser discloses the process of making the composition via providing a dispersion, adding the conductive ligand, substituting the ligand by ligand exchange and purifying with a CTAB surfactant and centrifugation (¶87-92, 107-140).
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reiser as applied to claim 12 above, and further in view of Garone "Gold nanoparticle shape dependence of colloidal stability domains." Nanoscale Adv., 2023, 5, 2017.
Remark: the instant rejection is provided for compact prosecution purposes.
The Reiser reference discloses the claimed invention but does not explicitly disclose the feature of the addition of a 0.02-0.1 % of a surfactant and the centrifugation in the purification step. It is noted that the Reiser reference discloses a synthetic route with the purification step and the claim(s) call(s) for a specific purification step. In an analogous art, the Garone reference discloses the addition of a surfactant at various levels and centrifuging in the purification of Au nanoparticles is well known in the art to gain the benefit of enhanced stability (abs, pg. 2018-2022). One of ordinary skill in the art would have recognized that applying the known technique of Garone to the teachings of Reiser would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced stability. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution would be repugnant to a skilled artisan.
Claim(s) 20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reiser as applied to claim 1 above, and further in view of Kim (WO-2012165670-A1, a machine translation is provided).
The Reiser reference discloses the claimed invention but does not explicitly disclose the feature of the addition the potassium butanoate/pentanoate/hexanoate/heptanoate thiophene component. It is noted that the Reiser reference discloses thiophene with aliphatic side chain having 1-10 carbons and the claim(s) call(s) for a specific potassium butanoate/pentanoate/hexanoate/heptanoate thiophene. In an analogous art, the Kim reference discloses conductive polythiophenes such as (poly [3- (potassium-6-hexanoate) thiophene-2,5-diyl]) is well known in the art (abs, pg. 5). One of ordinary skill in the art would have recognized that applying the known conductive thiophene of Kim to the teachings of Reiser would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced conductivity. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 5 and 6, filed 03 November 2025, with respect to the 102 rejections based on Reiser, Jacobson and Eleta have been fully considered and are persuasive. The 102 rejections have been withdrawn.
Applicant’s arguments with respect to the claim(s) have been considered but are not found persuasive regarding the updated rejections as necessitated by the amendment. In particular, the relevant arguments are addressed:
Applicant argues that it would not be obvious to arrive at the claimed chemical and structural thiophene based on the unexpected results as disclosed in [0118] of the specification and exhibited in Table 1 (pg. 6).
The examiner respectfully disagrees and notes that, in order to overcome the prima facie case of obviousness, the applicant may show (1) criticality or unexpected result of the composition, (2) the prior art teaches away from the claim or (3) a pertinent secondary factors to rebut the rejection under 35 USC 103. MPEP 2144.05. Here, the applicant intends to show the criticality or unexpected result of the specific thiophene ligand. However, it is noted that the Showing in applicant’s specification is not commensurate with the instant claims. In particular, it is noted that the cited section is merely a statement without any specific relevant data and/or comparative examples/results and the Showing in applicant’s specification are directed to specific and distinct components and values (e.g. the specific potassium thiophene, the specific AuNPs, and the specific MW) and differ from the instant claims which are directed to a broad and generic thiophene, generic semiconductive/conductive nanostructures and are silent regarding any quantitative features. After a careful evaluation and consideration of the Showing, it is the examiner’s position there seems to be no critical results and/or that the specific limitations presented in the Showing would not inexorably extrapolate to the instant broader limitations. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-obviousness fails to outweigh the evidence of obviousness and the rejections are maintained.
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 TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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, Arrie Lanee Reuthers can be reached at 571.272.7026. 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.
/TRI V NGUYEN/Primary Examiner, Art Unit 1764