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 .
This Office Action is in response to Applicant’s response to a restriction requirement filed April 17, 2026.
Applicant’s election without traverse of Group IV, claims 24 and 26 in the reply filed on April 17, 2026 is acknowledged.
Claims 1-23 are cancelled due to Applicant’s amendments filed April 17, 2026.
Claims 24 and 26-44 are pending.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Figure 6, page 23, line 2. Drawings refer to a Figure 6A and Figure 6B. Applicant may amend the specification to delete or replace the reference sign from the description. Otherwise, corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 37 is objected to because of the following informalities:
Claim 37, lines 1-2, recites “the conductive nanomaterial material”. The claim should instead read “the conductive nanomaterial”.
Appropriate correction is required.
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.
Claims 29, 32-38, 40, and 42 are 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.
Regarding claim 29, the recitation of “the electrothermic composition has a resistivity” causes confusion. It is unclear how the resistivity of the electrothermic composition is measured.
The recitation of “nanomaterial” in claims 32-37, “nanowire” in claim 34, 37, 38, and 40, “nanotubes” in claim 34 and 42, “nanoflakes” in claim 34 and 42, “nanoparticles” in claim 34, and “nano-graphite” in claim 42 is considered indefinite. It is unclear what the range “nano” includes. For instance, would 1000 nanometers or 0.1 nanometers both be considered within the nanometer range? The examiner invites the applicant to clarify. For the purposes of examination, nanomaterial is interpreted as between 0.1 nm to 1000 nm.
The term “about” in claim 40 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The average diameter and average length of claim 40 are rendered indefinite.
Claim Analysis
Summary of Claim 1:
A method of preparing a surface for heating with an electrothermic composition, the method comprising the steps of:
(a) providing a mold composed of non-electrically conductive material with one or more heat transferring surfaces;
(b) applying a layer of the electrothermic composition to the one or more heat transferring surfaces; and
(c)applying electrodes to the layer of the electrothermic composition;
wherein the electrothermic composition comprises a heat capacity sufficient to melt plastic within the mold; and wherein the electrothermic composition is flexible and pliable allowing it to suit different shapes upon application to the mold.
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.
Claims 24, 27, 28, 30, 31, 41, 42, and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Steinberger et al. (US 20070063370).
The method of claim 24 is incorporated herein by reference.
Regarding claim 24, Steinberger et al. disclose a method of providing a mold manufactured from a nonconductive material, coating a mold wall with an electrothermic layer or coating, and electrodes are applied on the electrothermic layer [0027-0035], thereby reading on steps a, b, and c as recited in the instant claim.
Steinberger et al. is silent on the heat capacity of the electrothermic layer and whether the electrothermic layer is flexible and pliable as recited in the instant claim.
However, Steinberg et al. teach the electrothermic layer is arranged to contact a material being processed with heat transfer, and is capable of assisting to shape or maintaining the shape of the material being processed (claim 26). Therefore, it would have been obvious to one of ordinary skill in the art to use an electrothermic composition that comprises a heat capacity sufficient to melt plastic within the mold and is flexible and pliable allowing it to suit different shapes upon application to the mold as taught by Steinberg et al.
Regarding claim 27, Steinberger et al. disclose the mold used in the method is a rotational molding machine [0030], thereby reading on the instant claim.
Regarding claim 28, Steinberger et al. disclose the heat transferring surface of the mold can operate to form distinct heat zones for the mold [0035], thereby reading on the instant claim.
Regarding claim 30, Steinberger et al. disclose in the method comprises the step of the temperature of the electrothermic layer may be controlled by an electric power supply [0027], thereby reading on step (d) of applying a current to the layer of the electrothermic composition as recited in the instant claim.
Regarding claim 31, Steinberger et al. do not teach the method comprises one or more heat transferring surfaces is heated to a temperature of at least 350°C.
However, Steinberger et al. broadly disclose the mold used in the method may be heated to a temperature of up to 2300°F, equivalent to 1260°C and thereby overlapping the claimed range. In the case where the claimed ranges “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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Steinberger et al..
Regarding claims 41 and 42 , Steinberg et al. disclose the electrothermic layer composition can be formed by the coating described in Miller (US 6086791) incorporated by reference [0027]. Miller (‘679) discloses an electrically conductive coating composition comprising a binder and an electrically conductive carbon black (claim 1), thereby reading on the instant claim.
Regarding claim 44, Steinberger et al. teach the electrodes may be positioned on the mold in any manner and under, inside or outside the electrothermic layer [0027-0035], thereby reading on the electrodes are arranged in a pattern as recited in the instant claim.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Steinberger et al. (US 20070063370) in view of Jeon et al. (KR 20190002113 U as listed on IDS dated July 10, 2025).
The method of claim 24 is incorporated herein by reference.
The examiner refers to the English translation of Jeon et al. provided by the Applicant.
Regarding claim 26, Steinberg et al. is silent on the electrothermic composition comprises silver nanomaterial as recited in the instant claim.
Jeon et al. teach an electric heating sheet consisting of metal nanowire, wherein the metal nanowire includes silver nanowires (page 8), thereby reading on the silver nanomaterial of the instant claim. Jeon et al. offer the motivation that silver nanowires provide excellent electrical conductivity and excellent heat transfer performance [0006]. Steinberg et al. is also concerned with an electrothermic layer adapted to conduct heat substantially evenly over the area of the mold [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to add the silver nanowires of Jeon et al. to the method comprising the electrothermic composition of Steinberg et al. with reasonable expectation that the electrical conductivity and heat transfer performance would improve.
Claims 29-36 are rejected under 35 U.S.C. 103 as being unpatentable over Steinberger et al. (US 20070063370) in view of Miller (US 20190382588 as listed on IDS dated May 31, 2023).
The method of claim 24 is incorporated herein by reference.
Regarding claim 29, Steinberger et al. is silent on the conductivity of the electrothermic composition as recited in the instant claim.
Miller (‘588) teaches an electrothermic composition having a resistance of less than 400 Ω per square cm[0068], thereby overlapping the claimed range. Miller (‘588) offers the motivation that the electrothermic composition can be used to make heating elements of all shapes and sizes [0068]. Steinberger et al. is also concerned an electrothermic layer adapted to conduct heat [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to use the composition of Miller (‘588) with the method of Steinberg et al. since both are related to electrothermic composition used for heating elements.
Regarding claim 32, Steinberger et al. disclose the electrothermic layer composition can be formed by the coating described in Miller (US 6086791) incorporated by reference [0027]. Miller teaches an electrically conductive coating composition comprising a binder and an electrically conductive carbon black (claim 1).
Steinberger et al. and Miller (‘679) do not teach an electrothermic composition comprising a network of conductive nanomaterial as recited in the instant claim.
Miller (‘588) teach an electrothermic composition comprising a first conductive carbon component having an average particle size of about 10 to about 50 nm (claim 1), thereby reading on a conductive nanomaterial as defined as a material having a particle size between 0.1 nm to 1000 nm. Miller (‘588) offer the motivation that a smaller particle size results in increased electrical conductivity [0088]. Steinberger et al. is also concerned an electrothermic layer adapted to conduct heat [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to add the conductive nanomaterial of Miller (‘588) with the method of Steinberg et al. with reasonable expectation that the conductivity of the electrothermic layer would improve.
Regarding claim 33, Steinberger et al. disclose the electrothermic layer composition can be formed by the coating described in Miller (US 6086791) incorporated by reference [0027]. Miller discloses the binding component is a silicone resin (claim 6), thereby reading on the instant claim.
Regarding claim 34, Steinberger et al. do not disclose an electrothermic composition comprising a network of conductive nanomaterial as recited in the instant claim.
Miller (‘588) teach an electrothermic composition comprising a first conductive carbon component having an average particle size of about 10 to about 50 nm (claim 1), thereby reading on a nanoparticle as recited in the instant claim, nanoparticle is defined as a particle size between 0.1 nm to 1000 nm. Miller (‘588) offer the motivation that a smaller particle size results in increased electrical conductivity [0088]. Steinberger et al. is also concerned an electrothermic layer adapted to conduct heat [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to add the conductive nanomaterial of Miller (‘588) with the method of Steinberg et al. with reasonable expectation that the conductivity of the electrothermic layer would improve.
Regarding claim 35 and 36, Steinberger et al. do not disclose an electrothermic composition comprising a network of conductive nanomaterial in the amount as recited in the instant claim.
Miller (‘588) teaches the amount of conductive material in the electrothermic composition is between 1 and 65 wt% of the total composition [0114], thereby overlapping the claimed range. Miller (‘588) offers the motivation that the electrothermic composition can be used to make heating elements of all shapes and sizes [0068]. Steinberger et al. is also concerned an electrothermic layer adapted to conduct heat [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to use the composition of Miller (‘588) with the method of Steinberg et al. since both are related to electrothermic composition used for heating elements.
Claims 37 and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Steinberger et al. (US 20070063370) in view of Miller (US 20190382588 as listed on IDS dated May 31, 2023) in further view of Jeon et al. (KR 20190002113 U as listed on IDS dated July 10, 2025).
The method of claim 32 is incorporated herein by reference.
The examiner refers to the English translation of Jeon et al. provided by the Applicant.
Regarding claim 37 and 40, Steinberger et al. do not disclose a conductive nanomaterial comprises interconnected strands as recited in the instant claim.
Jeon et al. teach an electric heating sheet consisting of metal nanowire, wherein the metal nanowire includes silver nanowires and forms a silver nanowire network (page 8, [0006]), thereby reading on the conductive nanomaterial comprises interconnect strands as recited in instant claim 37 and the interconnected strands comprise silver as recited in instant claim 40. Jeon et al. offer the motivation that silver nanowires provide excellent electrical conductivity and excellent heat transfer performance [0006]. Steinberg et al. is also concerned with an electrothermic layer adapted to conduct heat substantially evenly over the area of the mold [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to add the silver nanowires of Jeon et al. to the method comprising the electrothermic composition of Steinberg et al. with reasonable expectation that the electrical conductivity and heat transfer performance would improve.
Regarding claim 39, Steinberger et al. do not disclose a conductive nanomaterial comprises interconnected strands as recited in the instant claim.
Jeon et al. teach silver nanowires have a thickness of 30 nm to 200 nm and a length of 5 µm to 100 µm [0005], thereby overlapping the claimed range. Jeon et al. offer the motivation that silver nanowires provide excellent electrical conductivity and excellent heat transfer performance [0006]. Steinberg et al. is also concerned with an electrothermic layer adapted to conduct heat substantially evenly over the area of the mold [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to add the silver nanowires of Jeon et al. to the method comprising the electrothermic composition of Steinberg et al. with reasonable expectation that the electrical conductivity and heat transfer performance would improve.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Steinberger et al. (US 20070063370) in view of Miller (US 20190382588 as listed on IDS dated May 31, 2023) in further view of Jeon et al. (KR 20190002113 U as listed on IDS dated July 10, 2025) and in further view of Jones et al. (US 8018563 B2).
The method of claim 37 is incorporated herein by reference.
Regarding claim 38, Steinberger et al. and Jeon do not disclose the interconnected strands of the nanowires form a network mesh having an average mesh size as recited in the instant claim.
Jones teaches metal nanowires forming a conductive network [col 5, line 5-67; col 6, line 1-14]. Jones et al. further teach the mesh size correlates to the conductivity of the network. A smaller mesh size results in more densely distributed nanowires and results in higher conductivity. A greater mesh size results in lower conductivity. Therefore, one of ordinary skill in the art would have considered the mesh size to be a result effective variable at the time the invention was made. As such, without showing unexpected results, the claimed network mesh size cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the average network mesh size present in the conductive nanomaterial in the method of Steinberger et al. in view of Jeon et al. to reach the desired conductivity, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Steinberger et al. (US 20070063370) in view of Miyata (US 6486447 B2).
The method of claim 24 is incorporated herein by reference.
Regarding claim 43, Steinberger et al. do not teach the panel further comprising an electrically insulating material as recited in the instant claim.
Miyata teaches a method for manufacturing an electric heating element comprising forming a film on a preformed electric insulating substrate (claim 1). Steinberger et al. is also concerned an electrothermic layer adapted to conduct heat [0005]. Therefore, it would have been obvious to one of ordinary skill in the art to use the insulating layer of Miyata with the method of Steinberg et al. since both are related to electrothermic composition used for heating elements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights