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 11 August 2025, Claim(s) 1 is/are amended. The currently pending claims are Claims 1-20.
Based on applicants’ remarks and amendments (e.g. the specific terpinolene component), the 102 and 103 rejections are withdrawn. However, 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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi (US-20150225588-A1).
Claims 1-3 and 6-10: Iguchi discloses a composition comprising Ag nanoparticles with a diameter range of 1-100 nm, various solvents such as limonene and terpinolene and an acrylic dispersant (abs, ¶84, 123-162 and examples). The Iguchi reference discloses the EMI shielding and electronic implementations (¶162 and examples). The Iguchi reference discloses the claimed invention with the Ag nanoparticles, limonene and dispersant components but does not disclose the composition with the claimed features with enough specificity to anticipate the claimed invention. Nevertheless, given that Iguchi discloses all the components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Iguchi teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success. It is also noted that the fact that many components are disclosed would not have made any of them, such as the Ag particles and the limonene solvent, less obvious. Here, Iguchi discloses each of the claimed components and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 4, 5 and 11-20: The Iguchi reference discloses the claimed invention but does not explicitly disclose the claimed loading ranges for the solvent and the diameter size for the silver particles. It is noted that Iguchi discloses a diameter range of 1-100 nm and optimizing the amounts to gain the benefit of high dispersion, stability and conductivity (abs, ¶151-155 and examples) – thus the claimed ranges are construed as result-effective variables. 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 components having 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 variables with the benefit gain of high dispersion, stability and conductivity parameters of the composition and the resulting end-products. 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 would be repugnant to a skilled artisan.
Claim(s) 1-8 and 9-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shingai (WO2017195491A, previously cited with a translation provided).
Claims 1-3 and 6-10: Shingai discloses a composition comprising Ag nanoparticles with a diameter range of 1-70 nm, various solvents such as limonene and terpinolene and a phosphoric acid dispersant (abs, pg. 3-8 and examples). The Shingai reference discloses the claimed invention with the Ag nanoparticles, limonene, terpinolene and dispersant components but does not disclose the composition with the claimed features with enough specificity to anticipate the claimed invention. Nevertheless, given that Shingai discloses all the components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Shingai teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success. It is also noted that the fact that many components are disclosed would not have made any of them, such as the Ag particles and the limonene solvent, less obvious. Here, Shingai discloses each of the claimed components and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 4, 5 and 11-20: The Shingai reference discloses the claimed invention but does not explicitly disclose the claimed loading ranges for the solvent and the diameter size for the silver particles. It is noted that Shingai discloses a diameter range of 1-70 nm and optimizing the amounts to gain the benefit of high dispersion, stability and conductivity (abs, pg. 3-8 and examples) – thus the claimed ranges are construed as result-effective variables. 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 components having 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 variables with the benefit gain of high dispersion, stability and conductivity parameters of the composition and the resulting end-products. 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 would be repugnant to a skilled artisan.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Furusawa (US-20060210815-A1) in view of Iguchi or Shingai .
Claims 1-3, 6, 9, 10: Furusawa discloses a composition comprising silver particles, a dispersing medium and a dispersant (abs and examples). In particular, Furusawa discloses the EMI shielding feature and an example with Ag nanoparticles, limonene as a dispersing medium and TMA as a dispersant (¶4, examples and Table 1 with accompanying text). The difference between the Furusawa reference and the claimed subject matter is that the Furusawa reference does not disclose the terpinolene component. The Furusawa reference teaches limonene and the claim calls for terpinolene. The secondary reference of Iguchi or Shingai discloses a dispersion with silver particles with limonene and terpinolene and the substitution of art-recognized equivalents (see above). Thus, it would have been well within the purview of a skilled artisan at the time of the invention to substitute the terpinolene of Iguchi or Shingai in the composition of Furusawa since they are recognized in the art as both known solvents for silver particles and there is no evidence nor teaching that the selection and substitution of the claimed components would be repugnant to a skilled artisan. See MPEP 2144.
Claims 4, 5 and 11-20: The Furusawa and Iguchi or Shingai references disclose the claimed invention but do not explicitly disclose the claimed loading ranges for the solvent and the diameter size for the silver particles. Similarly to Iguchi or Shingai (see above), it is noted that Furusawa discloses a diameter range of 1-100 nm and optimizing the amounts based to gain the benefit of high dispersion, stability and conductivity (abs, ¶46-63, 78-80 and examples) – thus the claimed ranges are construed as result-effective variables. 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 components having 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 variables with the benefit gain of high dispersion, stability and conductivity parameters of the composition and the resulting end-products. 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 would be repugnant to a skilled artisan.
Claims 7 and 8: Furusawa and Iguchi or Shingai disclose the additional solvent and the dispersant (¶83 et seq. and examples).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito (JP2018051526A, cited in the IDS – a machine translation is provided) in view of Iguchi or Shingai
Claims 1-3 and 6-10: Saito discloses a composition comprising Ag nanoparticles with a diameter range of 1-100 nm, various solvents such as limonene and a phosphoric acid monoester dispersant (abs, pg. 4-6 and Tables with accompanying text). The Saito reference discloses the EMI shielding and electronic implementations (pg. 3 and examples). The difference between the Saito reference and the claimed subject matter is that the Saito reference does not disclose the terpinolene component. The Saito reference teaches limonene and the claim calls for terpinolene. The secondary reference of Iguchi or Shingai discloses a dispersion with silver particles with limonene and terpinolene and the substitution of art-recognized equivalents (see above). Thus, it would have been well within the purview of a skilled artisan at the time of the invention to substitute the terpinolene of Iguchi or Shingai in the composition of Saito since they are recognized in the art as both known solvents for silver particles and there is no evidence nor teaching that the selection and substitution of the claimed components would be repugnant to a skilled artisan. See MPEP 2144.
Claims 4, 5 and 11-20: The Saito and Iguchi or Shingai references disclose the claimed invention but do not explicitly disclose the claimed loading ranges for the solvent and the diameter size for the silver particles. It is noted that Saito discloses a diameter range of 1-100 nm and optimizing the amounts to gain the benefit of high dispersion, stability and conductivity (abs, pg. 3-6 and examples) – thus the claimed ranges are construed as result-effective variables. 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 components having 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 variables with the benefit gain of high dispersion, stability and conductivity parameters of the composition and the resulting end-products. 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 would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 7 and 8, filed 11 August 2025, with respect to the Furusawa and Saito references have been fully considered and are persuasive. The 102 and 103 rejections have been withdrawn.
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In particular, it is noted that Iguchi or Shingai is relied upon to the terpinolene component.
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.
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/TRI V NGUYEN/ Primary Examiner, Art Unit 1764
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