DETAILED CORRESPONDENCE
This Office action is in response to the amendment filed April 8, 2026.
The rejection under 35 U.S.C. 103 as obvious over SAWAI et al (2015/0140492) is withdrawn in view of the amendment to claims 1, 3, 5, and 13 by defining the surfactant as non-ionic and has main chain hydrophilic portion having nitrogen containing functional groups and terminals hydrophobic groups.
Bolded text is new to the office action.
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 is/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 FUKUDA et al (2018/0174698) and as evidence by UZAWA et al (JP-2002-226721A).
The claimed invention now recites the following:
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472
658
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250
652
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FUKUDA et al report a conductive resin compositions in Table 1 that anticipates the claimed conductive composite on page 31, para, [0586], see Examples 1A through 5A below:
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274
378
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(A-1) is a defined as a conductive polymer having sulfonic acid groups and is the same or similar to the conductive polymer recited in claim 1, see para. [0573], below:
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282
382
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(C-1) is a surfactant that is the same or similar to the claimed non-ionic surfactant having a hydrophilic group with nitrogen and hydrophobic end groups, see para. [0581], below:
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428
384
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The parts by weight of the nonionic surfactant to the conductive polymer in Example 1A is 1 to 1, meeting claims 1 and 2.
With respect to the critical micelle concentration, the identical surfactant as reported as Polymer (C-1) would have the same critical micelle concentration as claimed; thus, the rejection is inherent as the actual property is not disclosed in FUKUDA et al.
The nonionic surfactant also preferred are the ones disclosed in UZAWA et al (JP-2002-226721A) as disclosed in Production Example 6 having hydrophobic-group terminated water-soluble polymer, dodecyl-terminated N-vinylpyrrolidone. ( reported in para. [0397] of FUKUDA et al.)
Claims 2 to the content of the surfactant with respect to the conductive polymer is met in the Examples 1A through 5A of Table 1.
Claims 3 and 4 for the content of the surfactant to the conductive polymer is met by the disclosure in para. [0364] wherein the mass % of the conductive polymer is 0.1 5 to 20% while the surfactant content can be 0.01 % to 50% demonstrating that more of the surfactant polymer is in the conductive composition.
Claims 5 and 13 are reported in Polymer (C-1) above for the hydrophobic terminal group.
Claims 6 and 7, 14, and 15 are reported on page 22, para. [0389] wherein the acid dissociation constant, the molecular weight and the content is inherent based on the same or similar basic compounds disclosed in Table 5.
Claims 8 and 16 to the conductive polymer having an acid group is found in the para. [0573] above.
Claims 9 and 17 recites a surface resistivity which is less than 1 x 1010 Ω/□ which is disclosed in Tables 2,5 and 6 of FUKUDA et al, see below:
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206
522
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312
632
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332
564
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Claims 10, 11, 18 and 19 are disclosed in Table 1 wherein the Examples form a coating material.
Claims 12 and 20 to the method is found in para. [0431].
It would have been prima facie obvious to one of ordinary skill in the art of conductive composition to duplicate the conductive film of FUKUDA 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.
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 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
June 22, 2026
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