DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
As previously set forth: Applicant's election with traverse of group I, polybutadiene-fluorine (taken as the BF species 4 of page 11 of the appendix to the specification), semiconductor, p type donor (taken as DPPTT, the example of page 22 of the appendix of the specification), light, in the reply filed on 11/4/25 is acknowledged. The traversal is on the ground(s) that it is not considered unduly burdensome to examine all species together. This is not found persuasive because the base polymer of the semiconductor vs. dielectric is different and has different mechanical/physical properties wherein the choice of blended rubber and endgroups thereof depends on the base polymer. Further, not all endgroups would react the same and/or give the same semiconductor or dielectric properties. See also the explanation of the Office Action dated 4/21/25.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/4/25
Response to amendment/arguments
Applicant argues there is no covalent bonding between the semiconductor polymer and the rubber matrix in Chung, as is now required by the claims.
The Examiner disagrees. The covalent bonding is not required in any of the claims. Applicant has elected to use future intended use language such as “configured to”. The polymers of Chung are capable of crosslinking together since they have unsaturation on the backbone and/or endgroups. Arguments herein are thusly not persuasive.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Rejection over Claims 1-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention are overcome by amendment
Claim 4, and its dependents, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 depends from claim 2 which has been cancelled, thus the claim is indefinite. It will be treated as dependent from claim 1
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 does not make sense. Claim 9 requires the precursor of claim 1 to be formed by covalent crosslinking while crosslinking it with semiconductive or dielectric polymer. The secondary rubber matrix precursor of claim 1 and 6 are met, and the claim will thusly be treated as future intended use.
It is unclear if Applicant desires this to be drawn to a secondary rubber matrix. If so, the Examiner recommends the following:
9. (currently amended) The method of claim 1 wherein a secondary rubber matrix the semiconductor or dielectric polymer
Claim Rejections - 35 USC § 102
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) 1-9 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chung (US 2017/0331045).
Elements of this rejection are as set forth previously, reiterated below in its entirety in italics. Regarding the amendments to claim 1: this merely requires mixing and the capability of crosslinking. The semiconductor polymer of [0146] and those of [0147] and [0149] are all capable of crosslinking via the thiophene or unsaturated bonds therein. This is mixed with a SEBS polymer, and as below using unsaturated (nonhydrogenated) SEBS is prima facie obvious. This is capable of crosslinking with the semiconductor polymer and meets the configured to crosslink requirements of claim 1. Claims 3, 4, 5 are still drawn to future capabilities of crosslinking. While unclear what claim 9 is requiring, it is treated consistent with the other claims (as future intended use) and/or product by process since the rubber matrix precursor of claims 1, 6 are met.
Chung discloses semiconductor thin film compositions. See the semiconductor polymer of [0146]. This is very similar to DPPTT (and thus the p doped semiconductor polymer elected) except the R groups are C10H21 and C8H17 vs. C12H25 and C10H21 (of the appendix to the instant specification). Both R groups are saturated, thus would have very similar reactivity/electroconductivity. See the semiconductor polymer of [0147], this has an unsaturated group, and, is also very similar to the DPPTT.
These semiconductor polymers are mixed with polymers such as SEBS or polyethylene-butylene [0152]. The mixed in polymer may be any of those of [0103] including polybutadiene, polystyrene-butadiene, etc.
Chung is not explicit as to the crosslinkable groups of these polymers. However, all those of [0103] and [0152] can implicitly either be hydrogenated (thus no unsaturation) or unhydrogenated (thus saturation found internal and endcaps).
See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Picking unhydrogenated (e.g. unsaturated) species of those polymers of [0103] or [0152] is prima facie obvious. These unhydrogenated species would implicitly have endgroups and/or internal unsaturation available for crosslinking.
Picking one thing (unhydrogenated species) for any of those rubbers of [0103] is anticipated. Alternatively, such is prima facie obvious. Though picked from a laundry list, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Thus, the method for obtaining a semiconductor of claim 1 is met and anticipated. Claims 2-9 are drawn to future intended use, e.g. ‘configured’ of claim 2 is met by the structure above, claim 3 is drawn to future crosslinking, claim 4 is drawn to future crosslinking (wherein the unsaturation of the SEBS would react with the thiol of DPPTT, a thio-ene reaction), claim 5 is drawn to initiation of crosslinking which, as written, is future intended use, claim 6 is met by those species of [0103] of Chung and/or the SEBS or polyethylene-butylene exemplified.
Although claim 1 does not require semiconductor polymers, Chung does disclose such to be mixed with the rubbers (as discussed above). The MW of the semiconductor polymers of Chung may be 50k or more [0117], rendering claim 7 prima facie obvious. The above DPPTT being a polythiophene, as required by claim 8, though, claims 7 and 8 are also rejected as being drawn to future intended use since these polymers are not seemingly mixed/included in the final product of claim 1. Claim 9 is drawn to the future intended use, and is rejected as above.
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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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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