DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
This office action is in response to the papers as filed 2/22/2023.
Claim(s) 1-20 is/are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on:
9/13/2023 (8 pages)
9/13/2023 (8 pages)
9/12/2023 (9 pages)
are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC §§ 102-103
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.
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.
I. Claim(s) 1-3 and 9-11 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Pan, et al., Preparation and Thermoelectric Properties Study of Bipyridine-Containing Polyfluorene Derivative/SWCNT Composites, Polymers 2019; 11: 278, pp. 1-10 with Supporting Information (hereinafter “Pan at __”).
With respect to Claim 1, this claim requires “a carbon nanotube.” Nanotubes are taught. (Pan at 2 – 2.1 Raw Materials).
Claim 1 further requires “a conjugated polymer non-covalently bound to the carbon nanotube, the conjugated polymer having alternating aromatic (Ar) units and bipyridine (BPy) units.” A conjugated polymer with alternating aromatic and bipyridine units is taught. (Pan at 3 – 2.2 Preparation of F8bpy; 4 - Fig. 1(a)).
Claim 1 further requires “metal nanoparticles, each having a size between about 0.3 nm and about 5 nm, bound to the conjugated polymer at respective BPy units thereof.” Various transition metals are chelated. See (Pan at 3 – 2.4 Preparation of F8bpy/Metal Complex/SWNCT Composite Films, and at 8: “The bipyridine ligand attached to the polymer backbone has the ability to chelate several transition metals, thus a variety of composites with different transition metals could be obtained.). Pan teaches that “metal ions were well dispersed in the composites,” and depicts X-ray spectroscopy of films with various metal ions. (Pan at 6, Fig. 4). Pan does not literally recite the size of metal particles chelated. Likewise, the Office does not have the ability to recreate the experiments of Pan and then measure the resulting nanoparticle sizes. However, Pan teaches metal salt / polymer / nanotube ratios the same as or overlapping those taught in the Specification. Compare (Pan at 2 – Preparation of F8bpy/Metal Complex/SWNCT Composite Films, 7 – Fig. 5, note all nanotube content levels). As such, it is expected that the particle sizes are necessarily present. This is the rationale to show inherency. The rejection is made under 102/103, per the practice set forth in MPEP 2112 III. Any difference – to the extent there is any – would be viewed as obvious based on the close structural similarity. MPEP 2144.09.
As to Claim 2, SWCNTs are taught. (Pan at 2 – 2.1 Raw Materials).
As to Claim 3, the discussion accompanying Claim 1 is relied upon.
With respect to Claim 9, this claim requires “non-covalently binding a conjugated polymer to a carbon nanotube to form a polymer-wrapped composite, the conjugated polymer comprising alternating aromatic (Ar) units and bipyridine (BPy) units.” The discussions above are relied upon for addressing the conjugated polymer limitations. Polymer wrapping (common in the art) is discussed. (Pan at 4 - 3.2. Morphology of the F8bpy/SWCNT Composite Films). This is interpreted as non-covalent binding.
Claim 9 further requires “in a solution, adding metal ions to bind with the BPy units of the conjugated polymer.” Metal ions – via the salts – are added. (Pan at 3 - 2.4. Preparation of F8bpy/Metal Complex/SWCNT Composite Films).
Claim 9 further requires “irradiating the solution with light to reduce the metal ions and form seed locations for nanoparticle growth at the BPy units.” The Specification describes this “irradiating … with light” to merely be exposure to daylight. (S. 5: [0076]). Presumably Pan et al. did not carry out their process in a darkroom. But if for some reason they did, Pan teaches analysis with a photospectrometer, which is understood to involve irradiation with light. (Pan at 3 - 2.5. Characterization of F8bpy and F8byp/Metal Complex and Their Composites Films).
Claim 9 further requires “growing nanoparticles at the seed locations to a size in the range between about 0.3 nm and about 5 nm.” Various transition metals are chelated. See (Pan at 3 – 2.4 Preparation of F8bpy/Metal Complex/SWNCT Composite Films, and at 8: “The bipyridine ligand attached to the polymer backbone has the ability to chelate several transition metals, thus a variety of composites with different transition metals could be obtained.). Pan teaches that “metal ions were well dispersed in the composites,” and depicts X-ray spectroscopy of films with various metal ions. (Pan at 6, Fig. 4). Pan does not literally recite the size of metal particles chelated. Likewise, the Office does not have the ability to recreate the experiments of Pan and then measure the resulting nanoparticle sizes. However, Pan teaches metal salt / polymer / nanotube ratios the same as or overlapping those taught in the Specification. Compare (Pan at 2 – Preparation of F8bpy/Metal Complex/SWNCT Composite Films, 7 – Fig. 5, note all nanotube content levels). As such, it is expected that the particle sizes are necessarily present. This is the rationale to show inherency. The rejection is made under 102/103, per the practice set forth in MPEP 2112 III. Any difference – to the extent there is any – would be viewed as obvious based on the close structural similarity. MPEP 2144.09.
As to Claim 10, SWCNTs are taught. (Pan at 2 – 2.1 Raw Materials).
As to Claim 11, the discussion accompanying Claim 9 is relied upon.
II. Claim(s) 4-8 and 12-20 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan, et al., Preparation and Thermoelectric Properties Study of Bipyridine-Containing Polyfluorene Derivative/SWCNT Composites, Polymers 2019; 11: 278, pp. 1-10 with Supporting Information (hereinafter “Pan at __”) in view of:
(i) Li, et al., Fluorene Copolymer and Carbon Nanotube Interaction Modulates Network Transistor Performance, Appl. Electron. Mater. 2021; 3: 4424-4432 with Supporting Information (hereinafter “Li at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 4, Pan teaches this:
PNG
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160
440
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(Pan at 4). The R groups are slightly different than those claimed, and n is not specified. In a similar composition/method, Li teaches at least PFBPy:
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194
256
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Greyscale
(Li at 4225, Fig. 1), which one of the conjugated polymers disclosed in the Specification. See (S. 5: [0078] et seq.; passim). The R groups are taught. The length of the polymer – which is not discussed in any detail in the Specification – is readily optimized by the polymer chemist with standard techniques. Substitution of the polymers of Li for those of Pan is an obvious expedient. The articulated rationale is that it would yield “[w]ell-balanced electron and hole transport” (Li at 4430, col. 1) and a “denser and more bundled network.” Id.
As to Claim 5, 5,5 positions are taught. (Pan at 4, Fig. 1; Li at 4225, Fig. 1(a))
As to Claim 6, at least bipyridine is taught. (Pan at 4, Fig. 1, passim; Li at 4225, Fig. 1(a), passim).
As to Claim 7, at least Mn, Fe, Co, Ni, Cu and Zn are taught. (Pan at 3 - 2.4. Preparation of F8bpy/Metal Complex/SWCNT Composite Films).
As to Claim 8, Li teaches: “poly(9,9-di-n-dodecylfluorenyl-2,7-diylalt-2,2’-bipyridine-5,5’).” (Li at 4425, col. 2). Copper is taught. (Pan at 3 - 2.4. Preparation of F8bpy/Metal Complex/SWCNT Composite Films). The discussion of Claim 1 is relied upon for the particle size.
As to Claim 12, Pan dissolves in chlorobenzene (Pan at 3 – 2.3. Preparation of F8bpy/SWCNT Composite Films), understood to be polar, while Li teaches toluene – one of the disclosed non-polar solvents. (Li at 4425, col. 1). Substitution of one solvent for another to achieve predictable results (they both dissolve the polymers and the nanotubes) is an obvious expedient, reflecting use of known components to achieve predictable results. This does not impart patentability. MPEP 2143; KSR.
As to Claim 13, toluene is taught. (Li at 4425, col. 1).
As to Claim 14, separation (by evaporation) and redispersing in THF is taught. (Pan at 3 – 2.4, 2.5).
As to Claim 15, a 50/50 ratio or ratio 1 is taught. (Pan at 3 – 2.4).
As to Claim 16, a 50/50 ratio or ratio 1 is taught. (Pan at 3 – 2.4).
As to Claim 17, Pan teaches this:
PNG
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160
440
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Greyscale
(Pan at 4). The R groups are slightly different than those claimed, and n is not specified. In a similar composition/method, Li teaches at least PFBPy:
PNG
media_image2.png
194
256
media_image2.png
Greyscale
(Li at 4225, Fig. 1), which one of the conjugated polymers disclosed in the Specification. See (S. 5: [0078] et seq.; passim). The R groups are taught. The length of the polymer – which is not discussed in any detail in the Specification – is readily optimized by the polymer chemist with standard techniques. Substitution of the polymers of Li for those of Pan is an obvious expedient. The articulated rationale is that it would yield “[w]ell-balanced electron and hole transport” (Li at 4430, col. 1) and a “denser and more bundled network.” Id.
As to Claim 18, at least bipyridine is taught. (Pan at 4, Fig. 1, passim; Li at 4225, Fig. 1(a), passim).
As to Claim 19, at least Mn, Fe, Co, Ni, Cu and Zn are taught. (Pan at 3 - 2.4. Preparation of F8bpy/Metal Complex/SWCNT Composite Films).
With respect to Claim 20, this claim requires “[a] sensor for sensing an analyte in a gaseous medium, the sensor comprising a sensing material disposed between two electrodes.” The sensor language is interpreted as an intended use. The claim is reciting a circuit. Li teaches the sensing material (discussed below) between two electrodes. (Li at 4424 “Abstract”).
Claim 20 further requires limitations drawn to the polymer and the metal. These have been discussed above, and those discussions are relied upon mutatis mutandis. One of skill in the art would be motivated to use a the polymer/metal composite in the electrode of Li, as they are taught to have higher conductivity. (Pan at 8 – 4. Conclusions; passim).
III. Claim(s) 9-11 – or as stated below – is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan, et al., Preparation and Thermoelectric Properties Study of Bipyridine-Containing Polyfluorene Derivative/SWCNT Composites, Polymers 2019; 11: 278, pp. 1-10 with Supporting Information (hereinafter “Pan at __”) in view of:
(i) Sakamoto, et al., Light as a construction tool of metal nanoparticles: Synthesis and mechanism, Journal of Photochemistry and Photobiology C: Photochemistry Reviews 2009; 10: 33-56 (hereinafter “Sakamoto at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference. To the extent the discussion above is insufficient to address the photocatalytic reduction of the metals, this technique is known. (Sakamoto, entire reference). Use of known techniques (photocatalytic reduction) to achieve predictable results (reduction of metals) does not impart patentability. MPEP 2143; KSR.
IV. Claim(s) 12-19 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan, et al., Preparation and Thermoelectric Properties Study of Bipyridine-Containing Polyfluorene Derivative/SWCNT Composites, Polymers 2019; 11: 278, pp. 1-10 with Supporting Information (hereinafter “Pan at __”) in view of:
Li, et al., Fluorene Copolymer and Carbon Nanotube Interaction Modulates Network Transistor Performance, Appl. Electron. Mater. 2021; 3: 4424-4432 with Supporting Information (hereinafter “Li at __”), and further in view of:
Sakamoto, et al., Light as a construction tool of metal nanoparticles: Synthesis and mechanism, Journal of Photochemistry and Photobiology C: Photochemistry Reviews 2009; 10: 33-56 (hereinafter “Sakamoto at __”).
The discussion accompanying “Rejection II” above is incorporated herein by reference. To the extent the discussion above is insufficient to address the photocatalytic reduction of the metals, this technique is known. (Sakamoto, entire reference). Use of known techniques (photocatalytic reduction) to achieve predictable results (reduction of metals) does not impart patentability. MPEP 2143; KSR.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736