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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Instant claim 1 is directed to an elastomer composition comprising an elastomer, carbon nanotubes and a compound A. Compound A has to have vapor pressure at 25oC of 1.0kPa or less and includes an aromatic ring. The composition has to meet following:
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Pertinent paragraphs of the instant specification include:
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Following paragraphs disclose properties of the CNT: [0026-0027] diameter; [0029] length; [0030] aspect ratio; [0031] BET; [0032, 0034, 0037] t-plot from adsorption isotherm; [0033] molecule adsorption; [0035] bending point; [0036] specific surface area and ratio S2/S1, S1 being total specific surface area and S2 being the internal specific surface area; [0038] radial breathing mode; [0039] Raman spectrum; [0040] CNT synthesis.
[0041] compound A
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In [0042] discloses that aromatic ring has excellent affinity with the CNTs, promotes disentanglement, results in better dispersion.
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[0044] provides few examples which include methyl benzoate, benzyl benzoate, phenyl benzoate, alkyl 3-phenyl propionate such as methyl 3-phenyl propionate.
[0048-0054] discusses Hansen solubility parameters including equation that is utilized to calculate R1 and R2. The variables in the Hansen solubility parameters present in the equation include dispersion term of elastomer or CNT; dispersion term of compound A, polarity of elastomer or CNT, polarity of compound A, hydrogen bonding term of elastomer or CNT and hydrogen bonding of compound A.
Examples: Table 1, discloses use of following:
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The elastomer is limited to vinylidene fluoride rubber (FKM Viton GBL 600S) [0072] .
CNT utilized is SGCNT is a SWNT product name ZEONANO SG101 having very specific properties as depicted in [0072], that include specific solubility parameters:
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and
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ANALYSIS:
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
With respect to Hansen Solubility Parameters:
What is disclosed: Hansen solubility parameters as claimed. Instant specification provides examples with very specific elastomer, specific carbon nanotube and specific compound A. No other parameters using different compounds, elastomers or CNTs have been disclosed.
What is known: In Hansen solubility parameter system R1 and R2 are an interaction radius of a substances which defines the size of its sphere in the 3D system:
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It represents the range of solubilities for that substance, meaning other molecules with Hansen parameters that fall within its sphere are likely to be compatible or soluble. The R value is utilized in calculations to determine the “distance between the Hansen Parameters of two substances, in this case CNT and compound A or elastomer and compound A. Hansen parameter depends on three factors that describe substance’s cohesive energy. These include dispersion, polarity and hydrogen bonding intermolecular forces. Compounds solubility of predicted by comparing its Hansen Solubility Parameters, to the parameters of for example solvent. As such, chemical structure of the two substances directly affects the Hansen solubility because the parameters are based on its molecular structure, resulting dispersion, polarity and hydrogen bonding.
In summary, the claimed parameters between compound A and CNT or elastomer are highly dependent upon the specific type of compound A, the specific type of elastomer and specific type of CNT. Other than identifying compound A as having aromatic ring, there is nothing in the specification that would allow one of ordinary skill in the art to easily select components to arrive at the claimed parameters. The limitation of compound A having vapor pressure of 1 kPa or less at 25oC does little to contribute. The amount of aromatic compounds that have claimed vapor pressure because the amount of compounds that meet this limitation is extensive. It starts with phenyl or benzene compounds to compounds such as naphthalenes, phenanthrenes, polycyclic aromatic compounds such as anthracenes, benxopyrenes, or even antioxidants such as Irganox series. Generally, as the molecular weight and boiling point of the aromatic compound increases, the vapor pressure will decrease.
Applying Wand’s factors to claim 1, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any of the claimed components other than what is disclosed in Table 1.
In view of the breadth of claim 1 (cf. factor (a)) which encompasses innumerable elastomers compounds A and CNT, etc., all of which are mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Analysis with respect to CNT and Hanson solubility parameter:
What is disclosed: CNT as per paragraphs included above, having very specific properties. CNTs can be SWNT and MWNT. Additionally, generic disclosure of compound A, with specific examples in Table 1.
What is known: as disclosed in the Hansen solubility parameters discussion, the solubility parameters and the R value will not only depend on the type of monomer but also on the type of CNT. Instant claims are so broad with respect to the type of the CNT, that it includes not only pristine CNTs formed in a manner known but also those that are functionalized. Since functionality incorporates additional character to the CNT, and therefore changes the chemical structure and properties of the CNT, the Hensen parameters will be directly affected.
Applying Wand’s factors to claim 1, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any CNT or compound A other than those in Table 1.
Furthermore, in view of the breadth of claim 1 (cf. factor (a)) which encompasses innumerable CNTs and aromatic compounds A (see discussion on Hensen solubility parameters), etc., all of which are mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment (R1 value) would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Analysis with respect to elastomer and Hanson solubility parameter:
What is disclosed: The list of elastomers in instant specification is not exhaustive but covers major types of elastomers and/or rubbers. Having said that each elastomer has different functionalities which will have different solubility parameters.
Utilized in the example FKM Viton GBL 600S is a very specific fluoroelastomer having fluorine content of 68% comprising HFP, VDF and TFE. This is the only rubber, for which parameters required for Hansen solubility equation are disclosed. Please also refer to Hansen solubility parameters discussion above). At the same time the limitations directed at the aromatic ring containing compound A recite vapor pressure and value of R2 that is greater than value of R1.
Based on the discussion of Hansen parameters above, the R2 value depends on both the specific elastomer and specific compound A.
What is known in the art: Diene rubbers such as listed in applicants specification SBR, BR, IR have very different functionality which is C=C and aromatic styrene. Instant specification further discloses hydrogenated derivative of the diene rubbers, silicone rubbers as well as fluororesin (not necessarily a rubber). As all these rubbers will have different parameters and different affinities to the compound A because the Hensen solubility parameters are highly dependent on the chemical structure of the elastomer (see discussion above) and aromatic compound A.
Applying Wand’s factors to claim 1, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any polymer other than fluoroelastomer and compound A as summarized in Table 1.
Furthermore, in view of the breadth of claim 1 (cf. factor (a)) which encompasses wide range of elastomers all of which are structurally and chemically distinct from one another as well as innumerable possibilities for aromatic compound A all of which are also mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Note: All dependent claims inherit the deficiencies of independent claim.
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.
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 1-6, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nozomi (WO 2018/174014), US 2020/0136061 is used as English translation.
With respect to claims 1, 4, 5, Nozomi discloses composition comprising semiconductor compound, insulating compound and solvent system.
The semiconducting compound includes carbon nanotubes such as SWNT [0063].
Insulating compound comprises rubbers and thermoplastic elastomers [0093].
For insulating compounds such as rubber that have styrene as one of the monomers, solvent B includes butyl benzoate, methyl benzoate, benzyl benzoate and phenyl acetate all of which have claimed vapor pressure. Methyl benzoate and benzyl benzoate are also disclosed in instant specification Table 1 as compound A. Therefore the three components will inherently meet the Hensen solubility parameters regardless of other components included which are encompassed by the term comprising.
With respect to claim 2, the content of solvent (compound A) is preferably 0.1 or less but it is a preferred embodiment, which does not exclude amounts slightly higher than 0.1parts [0107]
With respect to claim 3, content of the semiconducting compound is in a range of 0.3-10 parts by mass [0091]
With respect to claims 6, 8 and 9, Nozomi teaches that crosslinking of the organic component can be performed
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that teachings of Nozomi encompass all components required by the rejected claims.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kint (US 2009/0014691).
With respect to claims 1 and 5, Kint discloses dispersions, film and coating compositions as well as composites [0016]. The composition comprises include carbon nanotubes [0026, 0029, 0109]; an organic solvent (compound A) which is methyl benzoate [0051] and elastomer [0070] such as fluoroelastomers. Since Kint teaches all three claimed ingredients including exemplified compound A all Hensen parameters are inherent.
With respect to claims 2 and 3, total solids content is 1-3% [0066] while the content of CNTs is not explicitly recited the examples show amounts of not greater than 2% in a dispersion with another inorganic filler such as organoclay. Solvent (compound A) can be utilized in amount of at least 50% [0020].
With respect to claim 4, carbon nanotubes can be SWNT [0029].
With respect to claims 6, 8 and 9, Kint teaches use of curing agents [0026]which meets the limitation of crosslinking, wherein mentioned above composite is considered a shaped article.
With respect to claim 7, the composite is formed by mixing the polymer (elastomer) with a dispersion comprising CNTs forming a dispersion with the elastomer.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that the teachings of Kint encompass instant claims 1-9.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 October 16, 2025