RESPONSE TO AMENDMENT
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/31/2025 has been entered.
Claims 1-4, 7 and 11-12 are pending in the application, claims 12 are withdrawn due to Applicant’s election.
WITHDRAWN REJECTIONS
The 35 U.S.C. §102 and §103 rejections of the claims made of record in the office action mailed on 07/01/2025 have been withdrawn due to Applicant’s amendment in the response filed 10/31/2025.
REJECTIONS
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 Rejections - 35 USC § 103
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara (U.S. App. Pub. No. 2016/0229695) (cited in the IDS filed on 07/31/2024) in view of Takehana et al. (U.S. Pat. No. 5,756,261).
Regarding claim 1, Yoshiwara discloses carbon nanotubes which may be included in a resin material for use as a coating on a base material. (Abstract, par. [0087], par. [0109]). Yoshiwara discloses a material for including the carbon nanotubes may be a thermoplastic resin (par. [0109]) and the base material may include polymers that are thermoplastics such as polypropylene, polyethylene, polyvinyl chloride, polycarbonate, polymethyl methacrylate, among others. (par. [0087]). The coating including the carbon nanotubes would meet the limitation of an “antistatic layer” as presently claimed, due to the presence of the carbon nanotubes. Furthermore, Yoshiwara discloses that the layer may include an antistatic agent (par. [0111]) and therefore the coating would be described as an “antistatic layer” as claimed.
Yoshiwara et al. teaches that the carbon nanotubes may be single-walled carbon or multi-walled nanotubes. (par. [0038]). With respect to the surface area of the carbon nanotubes, Yoshiwara discloses that suitable surface areas are in the range of at least 800 m2/g (par. [0067]). The ranges of Yoshiwara et al. for the specific surface area teach with sufficient specificity the presently claimed open-ended surface area limitations and anticipate the claims based on the disclosure in par. [0038] that the nanotubes may be either single or multi-walled.
Yoshiwara et al. does not disclose that the resin material used as a coating including the carbon nanotubes is an acrylic resin having a molecular weight of 68,000 or less or is a copolymer of an acrylic and styrene resin. Yoshiwara et al. does disclose that the resin material is not particularly limited and includes, for example, methacrylic resins, styrene, acrylic resins and polyurethane resins. (par. [0109]).
Takehana et al. teaches a photosensitive resin composition used as a resist material against sandblasting in photo-lithography which includes a urethane compound having a (meth)acrylate group at the end. (i.e. an acrylic resin as claimed). (Abstract). Takehana et al. teaches that the resin composition is designed to be insusceptible to static electricity to avoid issues associated with electric discharge during sandblasting. (i.e. anti-static properties) (see col. 1, lines 5-61). Takehana et al. further discloses that the molecular weight of the urethane polymer containing a methacrylate group should fall in the range of 1,000 to 30,000 from the standpoint of controlling the pliability to withstand mechanical attack while not decreasing the bonding strength of the resin layer. (col. 4, lines 10-20).
It would have been obvious to one of ordinary skill in the art to use an acrylic resin material, as taught by Yoshiwara et al., having a molecular weight lying in the range disclosed in Takehana et al. which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to use a molecular weight in the range disclosed in Takehana et al. in order to adjust the mechanical and bonding strength properties of the antistatic layer of Yoshiwara et al. Alternatively, one of ordinary skill in the art would have it obvious to use the composition of Yoshiwara et al. in a sandblasting resist for photo-lithography as taught by the secondary reference and would have used a similar range in order to yield a layer having improved properties as disclosed in Takehana et al.
Regarding claim 2, Yoshiwara discloses that the thickness of the carbon nanotube containing film is in the range of 100 nm to 1 mm (par. [0092]) which encompasses and overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 3 and 7, Yoshiwara discloses that the carbon nanotubes have an average diameter of 0.5 nm to 15 nm and a length of 0.1 micrometers (i.e. 100 nm) to 1 cm. (par. [0102]). The aspect ratio of the carbon nanotubes would therefore be 6 or greater (100 nm / 0.5 nm) but may be significantly larger including over 2000 as claimed.
Regarding claim 4, Yoshiwara discloses a film containing carbon nanotubes in an amount of 2% by weight. (par. [0156]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara (U.S. App. Pub. No. 2016/0229695) (cited in the IDS filed on 07/31/2024) in view of Takehana et al. (U.S. Pat. No. 5,756,261)., further in view of Juni et al. (U.S. App. Pub. No. 2008/0152573)
Yoshiwara in view of Takehana et al. is relied upon as described in the rejection of claim 1, above.
Regarding claim 11, the limitation “obtained by thermoforming the laminated body according to claim 1 at a forming ratio of 10 times or less” refers to process limitations applied to a claimed product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113.
Yoshiwara does not disclose the ratio of surface resistivity from a product after thermoforming to before thermoforming as claimed. Yoshiwara et al. discloses adjusting the content of the carbon nanotubes in the film material. (par. [0092]).
Juni et al. discloses single walled carbon nanotubes having good dispersibility (Abstract). which may be included in a film composition for optical products and has a surface resistivity of 1.0 x1010 Ω/square or less to provide antistatic properties to the coating. (par. [0049]).
It would have been obvious to one of ordinary skill in the art to optimize the relative amount of carbon nanotubes in the film composition of Yoshiwara to obtain a surface resistivity within the range disclosed in Juni et al.
One of ordinary skill in the art would have found it obvious to optimize the content of the carbon nanotubes in the film composition in order to impart antistatic properties to the film composition for use in applications sensitive to unwanted static discharge. While the combination of references does not explicitly disclose the ration of surface resistivity before and after thermoforming as claimed, the method of forming the product is not germane to the issue of patentability of the product itself, as discussed above. It would be obvious that the surface resistivity of the coating be significantly lower prior to forming into a layer composition, which one of ordinary skill in the art would have recognized would be related to the relative dimensions of the film and the loading of carbon nanotubes, which is art recognized in Juni et al. as affecting the surface resistivity of the film composite.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 10/31/2025 regarding the rejections of record have been considered but are moot due to the new grounds of rejection.
Conclusion
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/24/2026