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 amendment filed on 11/18/2025 has been entered. Claims 1-18 are pending in the application.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant argues on pg. 8 par. 3 Okamoto discloses different components in the carbon nanotube dispersion than the claimed dispersion.
However, Okamoto discloses a carbon nanotube dispersion comprising 100 parts by weight of carbon nanotubes and 250 parts by weight to 2000 parts by weight of a dispersant… and an aqueous solvent (Pg. 2 par. 6). The aqueous solvent used in the present invention is not limited… and water… can be used (Pg. 4 last paragraph). Therefore, the claimed carbon nanotube aqueous dispersion liquid comprising carbon nanotubes and deionized water is disclosed by Okamoto.
Applicant argues on pg. 8 par. 3 that the claimed contents of the components of the carbon nanotube aqueous dispersion liquid are different from the contents of the components of the dispersion of carbon nanotubes of Okamoto.
However, Okamoto discloses the content of carbon nanotubes with respect to the entire dispersion is preferably 0.01% by weight or more and 20% by weight or less (Pg. 4 par. 9). The dispersant is preferably 250 parts by weight or more and 2000 parts by weight or less with respect to 100 parts by weight of the carbon nanotubes (claim 8). The following table shows the minimum and maximum ratios of carbon nanotubes to aqueous solvent i.e. water using the ranges disclosed by Okamoto.
Carbon nanotubes
0.01%
20%
Dispersant
0.025%
50%
Water
99.965%
30%
Carbon nanotube : water
1:9997
1:1.5
Therefore, the range disclosed by Okamoto of the ratio between carbon nanotube to water is from 1:9997 to 1:1.5.
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). In the instant case, the range taught by Okamoto (1:9997 to 1:1.5) overlaps with the claimed ratio (1:100). Therefore, the range in Okamoto renders obvious the claimed range.
Regarding Applicant’s argument on Pg. 9 par. 2 about the carbon nanotube dispersion liquid is able to attain unexpected results, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Morita et al (JP 2019210173 A, cited in IDS 12/19/2022, English equivalent US 20210214229 A1 used for citations) in view of Okamoto et al (JP 2013199419 A, machine translation used for citations, cited in IDS 12/19/2022).
Regarding claim 1, Morita discloses a carbon nanotube ([0001]). A fiber length of the carbon nanotube (A) of the present embodiment is preferably 0.1 to 150 µm ([0044]). A Brunauer-Emmett-Teller (BET) specific surface area of the carbon nanotube (A) of the present embodiment is preferably 100 to 800 m2/g ([0061]). The disclosed length and specific surface area fulfills the parameter relating to BET specific surface area and fiber length specified in the present application.
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). In the instant case, the range taught by Morita (100 to 800 m2/g) overlaps with the claimed range (200 to 800 m2/g). Therefore, the range in Morita renders obvious the claimed range.
Morita does not disclose “a pH of a carbon nanotube aqueous dispersion liquid is 8.0 to 10.0… wherein the pH of the carbon nanotube aqueous dispersion liquid is a value obtained by measuring the pH of the carbon nanotube aqueous dispersion liquid comprising 1 part by mass of the carbon nanotubes to 100 parts by mass of deionized water”.
Okamoto discloses a carbon nanotube dispersion comprising 100 parts by weight of carbon nanotubes and 250 parts by weight to 2000 parts by weight of a dispersant… and an aqueous solvent (Pg. 2 par. 6). The aqueous solvent used in the present invention is not limited… and water… can be used (Pg. 4 last paragraph). Okamoto discloses the content of carbon nanotubes with respect to the entire dispersion is preferably 0.01% by weight or more and 20% by weight or less (Pg. 4 par. 9). The dispersant is preferably 250 parts by weight or more and 2000 parts by weight or less with respect to 100 parts by weight of the carbon nanotubes (claim 8). The following table shows the minimum and maximum ratios of carbon nanotubes to aqueous solvent i.e. water using the ranges disclosed by Okamoto.
Carbon nanotubes
0.01%
20%
Dispersant
0.025%
50%
Water
99.965%
30%
Carbon nanotube : water
1:9997
1:1.5
Therefore, the range disclosed by Okamoto of the ratio between carbon nanotube to water is from 1:9997 to 1:1.5.
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). In the instant case, the range taught by Okamoto (1:9997 to 1:1.5) overlaps with the claimed ratio (1:100). Therefore, the range in Okamoto renders obvious the claimed range.
Okamoto discloses a dispersion of carbon nanotubes...and an aqueous solvent...wherein the pH of the dispersion is 8 to 12 (claim 1). Okamoto further discloses the carbon nanotube dispersion liquid excellent in stability with respect to a high shear force (Pg. 2 paragraph 7).
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). In the instant case, the range taught by Okamoto (8 to 12) overlaps with the claimed range (8.0 to 10.0). Therefore, the range in Okamoto renders obvious the claimed range.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for the pH of a carbon nanotube aqueous dispersion liquid to be 8.0 to 10.0 wherein the pH of the carbon nanotube aqueous dispersion liquid is a value obtained by measuring the pH of the carbon nanotube aqueous dispersion liquid comprising 1 part by mass of the carbon nanotubes to 100 parts by mass of deionized water in the method of Morita in order for the carbon nanotube dispersion liquid to be excellent in stability with respect to a high shear force as taught by Okamoto.
Regarding claim 2, Morita in view of Okamoto discloses all the limitations in the claims as set forth above and further discloses the present invention relates to carbon nanotubes that satisfy the following (1) and (2): (1) In powder X-ray diffraction analysis, a peak is present at a diffraction angle 2θ=25°±2°, and the half-value width of the peak is 2° or more and less than 3° ([0012]). (2) In the Raman spectrum of the carbon nanotube (A), the G/D ratio is 1.5 to 5.0, where G is the maximum peak intensity in the range of 1560 to 1600 cm NER1 and D is the maximum peak intensity in the range of 1310 to 1350 cm NER2 ([0012]).
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). In the instant case, the range taught by Morita (1.5 to 5.0) overlaps with the claimed range (0.5 to 4.5). Therefore, the range in Morita renders obvious the claimed range.
Regarding claim 3, Morita in view of Okamoto discloses all the limitations in the claims as set forth above and Morita further discloses an outer diameter of the carbon nanotube (A) of the present embodiment is… more preferably 8 to 20 nm ([0041]) which is within the claimed range.
Regarding claim 4, Morita in view of Okamoto discloses all the limitations in the claims as set forth above and further discloses the volume resistivity of the carbon nanotubes (A) of this embodiment is preferably 1.5×10 -2 to 2.5×10 -2 Ω·cm ([0044]), which is within the claimed range of 1.0x10-2 Ω.cm to 3.Ox 10-2 Ω.cm.
Conclusion
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.
/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738