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
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on February 11, 2026. In particular, claim 1 which has been amended to limiting the cured polymer to only a silyl-terminated hybrid polymer. This combination of limitations was not present at the time of the previous office action. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2, 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al (US 2014/0094541) in view of Mahdi et al (US 2015/0068661).
Regarding claim 1, Shah teaches a polymer composite (Claim 15) comprising a polymer matrix and fractured carbon nanotubes (Abstract) which are derived from carbon nanostructures and are branched and share common walls with one another (claims 14-15).
Shah teaches that the polymer matrix is a silicone rubber ([0059]), however, fails to teach that it is a cured siloxane polymer.
Mahdi teaches a cured polymer ([0064]) comprising a cured silyl-terminated hybrid polymer (Abstract). The hybrid polymer of Mahdi teaches that carbon-based fillers are appropriate additives ([0045]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the silicone rubber of Shah be the cured silyl-terminated hybrid polymer of Mahdi. One would have been motivated to do so in order to receive the expected benefit of using a polymer matrix which is useful as an adhesive (Mahdi, [0065]).
Regarding claim 2, Shah teaches that the composition contains 0.1 to 15 % by weight of the fractured carbon nanotubes (claim 19).
Regarding claim 4, modified Shah teaches that the silyl-terminated hybrid polymer comprising an alkoxysilane terminated polyurethane (Mahdi, Abstract).
Regarding claim 9, Shah teaches that the composition future comprises an additive such as glass or organic fibers (aramid) ([0063]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al (US 2014/0094541) in view of Mahdi et al (US 2015/0068661) and Huang et al (US 2010/0317796).
The discussion regarding Shah and Mahdi in paragraph 4 above is incorporated here by reference.
Regarding claim 5, Shah teaches a cured polymer composite has a volume resistivity of less than 105 ohm-cm (Figure 2).
However, it fails to teach the recited tensile strength and elongation at break.
Huang teaches a resin composition which has silyl groups (Abstract) and used as an adhesive (Abstract). Huang teaches that the resin composition is a trimethoxysilyl-terminated polypropylene oxide-based polyurethanes ([0071]). Huang teaches that the elongation at break is from 50 to 90 percent ([0148]) and that the tensile strength overlaps the claimed range (Table 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the polymer composite of modified Shah have the elongation at break and tensile strength as taught by Huang. One would have been motivated to do so in order to have a composition with the physical properties that performs well as an adhesive (Huang, [0003], [0007]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al (US 2014/0094541) in view of Mahdi et al (US 2015/0068661) and Megaridis et al (US 2012/0261182).
The discussion regarding Shah and Mahdi in paragraph 4 above is incorporated here by reference.
Regarding claim 7, modified Shah fails to explicitly teach the shielding efficiency equivalent as presently recited.
Megaridis teaches that polymer composites with carbon nanofibers at 15 MHz to 75 GHz have a maximum shielding efficiency of 30-50 dB for 1- 3 mm thick samples ([0006]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the polymer material of modified Shah have the shielding efficiency as taught by Megaridis. One would have been motivated to do so in order to receive the expected benefit of using an attractive choice for EMI shielding applications (Megaridis, [0006]).
Response to Arguments
The 35 USC 112 rejection set forth in paragraph 4 of the office action mailed on December 16, 2025 is withdrawn in light of Applicant’s amendment filed on February 11, 2026.
Applicant's arguments filed February 11, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: Claim 1 is now required to have a silyl-terminated hybrid polymer which Shah, Takashi and Megaridis do not teach.
Examiner’s response: This is remedied by the use of a new secondary reference, Mahdi et al (US 2015/0068661), which teaches the recited silyl-terminated hybrid polymer.
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 DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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