DETAILED CORRESPONDENCE
This Office action is in response to the application filed June 13, 2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over SAWAI et al (2015/0140492).
The claimed invention recites the following:
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SAWAI et al report a conductive resin composition comprising a π-conjugated conductive polymer disclosed in para. [0043]. SAWAI et al discloses in the formulation a gemini surfactant which contain a hydrophilic head and a hydrophobic tail which in turn forms a micelle in water. Para. [0084] disclose the content of the gemini surfactant to be preferably 30 parts by mass to 300 parts by mass of the composite. This teaching falls within the claimed scope of the surfactant as recited in claim 1.
The exact content of the micelles is not disclosed in SAWAI et al, however based on the same or similar mass content of the disclosed gemini surfactant in SAWAI et al it asserted by inherency that there would form micelles from the hydrophilic and hydrophobic structure of the surfactant.
The rejection is asserted by inherency based on the same or similar presence of the gemini surfactant to the claimed micelles which are disclosed to be in a very low critical concentration and high surface tension-decreasing performance, see para. [0075].
It would have been prima facie obvious to one of ordinary skill in the art of conductive composition to duplicate the conductive film of SAWAI et al with the reasonable expectation of same or similar results for excellent antistatic performance and excellent application properties, does not adversely affect a resist and is suitable for electron beam lithography.
Applicants are directed to para. [0058] to [0060] wherein the dissolving or dispersing the polyanion with the conductive polymer to form a composite by adding a monomer to carry out oxidation polymerization form a polymer which can be dissolved in a solvent and not be a dispersion which is seen when the conductive polymer is doped with the anionic polymer as disclosed in the Example 4.
Thus, the polymerized product of the conductive polymer copolymerized with a monomer of an anionic group can be dissolve in a solution to form a conductive composite as claimed.
With respect to claim 3 the CMC would inherently be present based on the content of the surfactant as disclosed in para. [0084] at 100 parts by mass to 100 parts by mass of the composite as taught for the gemini surfactant content parts by mass range of preferably 3 to 300 parts by mass to 100 parts by mass of the composite.
THIS ACTION IS MADE FINAL. 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 JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff, can be reached at telephone number 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 20, 2025