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 .
Claim Objections
Claim 17 is objected to because of the following informalities:
The word “shear” is misspelled in line 2.
Appropriate correction is required.
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.
Claims 1-13 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (WO 2020/063799).
Regarding claim 1, Chen teaches a conductive liquid silicone rubber (Abstract), containing between 0.05 and 1 wt% of single walled carbon nanotubes and a organosiloxanes ([0006]). The range of single-walled carbon nanotubes falls within and therefore anticipates the claimed range of “up to 5% (w/w). The organosiloxanes cure into a silicone elastomeric material ([0001]), which reads on the claimed “dielectric polymeric matrix material” because the instant application contemplates that the elastomer may be a polysiloxane elastomer (c.f. claim 5). Chen teaches the formation of a homogeneous product (c.f. [0024]).
Regarding claim 2, the liquid silicone rubber of Chen contains no water. Furthermore, the composition of Chen optionally incorporates water as a processing aid ([0026]), and therefore Chen includes compositions which are substantially free of water. The composition of Chen therefore reads on the claimed limitation “(I).”
Regarding claim 3, Chen teaches that the liquid silicone rubber cures into an elastic material ([0001]), and therefore reads on the claimed “thermoset.”
Regarding claims 4-5, Chen teaches that the cured liquid silicone is elastomeric and rubber (Abstract).
Regarding claims 6-8, Chen teaches the incorporation of graphite ([0047]), which reads on the claimed “filler,” “conductive filler,” and “graphite” because claim 8 contemplates that graphite is a conductive filler.
Regarding claims 9-11, Chen is silent regarding the claimed adhesiveness, transmission, or diffusion-increasing characteristics. Nevertheless, Chen as applied above teaches a composition which is structurally identical to the claimed composition, which contains all of the same components in all of the claimed amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed adhesiveness, transmission, or diffusion-increasing characteristics will therefore necessarily be present in Chen, as applied above.
Regarding claims 12-13, the claims are recognized as reflecting intended uses of the claimed composition. If a claim fully and intrinsically sets forth all limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.II. In this case, claims 12-13 require the claimed composition of claim 1 and merely indicate intended uses thereof. Therefore, the composition of Chen meets the limitations of claims 12-13 because it meets all of the compositional limitations of claim 1, as described above.
Regarding claim 15, Chen teaches the mixing of the components of the inventive composition (c.f. p. 31, claim 10), and teaches the formation of a homogeneous product (c.f. [0024]).
Regarding claim 16, as described above, Chen teaches that the cured liquid silicone is elastomeric and rubber (Abstract).
Regarding claim 17, Chen teaches the single-walled carbon nanotubes may be provided in solvent ([0038]) and, as described above, teaches the mixing of the inventive components in forming the elastomeric composition (c.f. p. 31, claim 10). Mixing the single-walled carbon nanotubes and the associated solvent with the resin components reads on the claimed “dilution of the dielectric polymeric binder with a volatile fluid” because the solvent will dilute said resin components upon mixing.
Furthermore, Chen teaches the incorporation of a processing aid ([0026]), which would likewise be incorporated with the rest of the composition’s ingredients upon mixing. This incorporation therefore reads on the claimed “combining a processing aid with the single walled carbon nanotube and the dielectric matrix material.”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (WO 2020/063799) in view of Sridharan (WO 2018/027117).
Regarding claims 14 and 18, Chen teaches all of the limitations of claim 1, as described above. Chen differs from claim 1 because it is silent with regard to the formation of an electrode from the claimed composition.
In the same field of endeavor, Sridharan teaches a soft, conductive composition including a crosslinked silicone and single-walled carbon nanotubes, and teaches that a neural probe or other implant can include the inventive composition as a portion of the body thereof (Abstract). Furthermore, Sridharan teaches an electrode implant having the inventive conductive material (e.g., [014]). Finally, Sridharan teaches that the inventive composition can be implanted, and helps to improve the long-term electrical performance of an electrode implant at the neural surface (]032]).
The instant Specification directly states that one having ordinary skill in the art would know how to form an electrically conductive composition into an electrode (see instant Specification at [0042]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose. It therefore would have been obvious to one having ordinary skill in the art to utilize the composition of Chen in the formation of an electrode implant, as taught by Sridharan, as Sridharan recognizes silicone-based single-walled carbon nanotube-containing compositions as suitable for the formation of an electrode. This reads on the method step requiring “formation of an electrode” of claim 18. The resulting electrode reads on the “device” of claim 14.
Conclusion
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762