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 .
Examiner’s Note on a Claim Limitation
Claims 5 and 7 recite the limitation of “a sheet resistance” and then defines said resistance as a value of ohms per square. Within the specification, Applicant fails to define what a square is, although likely referring to an area of length and width. However, upon review of the prior art Examiner notes that such term “ohms per square” is a well known unit of measurew within the field for sheet resistance. Therefore, given that “ohms per square” or often times short noted as “ohms square” is a recognized term within the field of endeavor, Examiner does not believe that the lack of such details within Applicant’s specification arises to a 35 U.S.C. 112 rejection.
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.
Claim 5-7, 10-13, 18 and 19 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.
Claims 5-7,10-13, 18 and 19 all recite the term “about” when referencing a specific range of a limitation. The term “about” in claims 5-7,10-13, 18 and 19 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.
For Example, with regard to claim 5, it is unclear to the examiner where the range for the contact angle is acceptable to meet the limitation given the language recited states “a contact angle of at least about 15 degrees.” It is also unclear whether the 15 degrees itself is within the range or if such is excluded from the range.
Examiner suggests eliminating the term “about” from the claims to eliminate the 112 rejections associated with claims 5-, 10-13, 18, and 19.
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.
Claim(s) 1-2, 7, 12, 15, 16, 18 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”).
In Reference to Claim 1:
Lee discloses a transparent conformable resistive heating element that is configured to be coupled to a structure to be heated to at least a predetermined heating range, comprising: a transparent conformable substrate (100) with a lower surface that is configured to be coupled to the structure to be heated and an opposed upper surface, wherein the substrate is stable across the predetermined heating range (See, Table of Examples 1-4) ; a layer (300) of dried carbon nanotube (CNT) transparent conductive ink on at least some of the upper surface of the substrate (See, Figure 4: See Example 5 which discloses a liquid carbon nano tube solution used as the heating element), wherein the transparent conductive ink is stable across the predetermined heating range; and a pair of spaced electrodes (400) each in electrical contact with the transparent conductive ink layer.
In Reference to Claim 2:
Lee further discloses wherein the substrate comprises at least one of silicone. See, Translation: “According to one embodiment of the present invention, the substrate may be a silicon substrate, a glass substrate, or a polymer substrate, but is not limited thereto.”
In Reference to Claim 7:
Lee further discloses wherein the transparent conductive ink layer has one or more of: a thickness of between about 50 nm and about 300 nm and a visible light transmittance (VLT) of at least about 60%. See, Tables which show examples of VLT being above 85%. In addition, See, Specification: “[Nanotubes are] excellent in dispersibility and can obtain a transmittance of 85% or more in a visible light region when it is made into a film.” In addition See also, Specification: “According to the exemplary embodiment of the present application, the heating layer may have a thickness of about 10 nm to about 500 nm, but is not limited thereto.”
In Reference to Claim 12:
In so far as the claim is defined, Lee further discloses wherein the conformable resistive heating element of claim 1 with a VLT of at least about 50%. See, Table charts which show all the VLT above 85% percent for the examples. See also, Specification: “[Nanotubes are] excellent in dispersibility and can obtain a transmittance of 85% or more in a visible light region when it is made into a film.”
In Reference to Claim 15:
Lee further discloses wherein the electrodes (400) are on top of the transparent conductive ink (300). See, Figure 1-4.
In Reference to Claim 16:
Lee further discloses further comprising an optically clear cover layer (500) over at least the transparent conductive ink layer (300). See, Figure 3 and 4.
In Reference to Claim 18:
In so far as the claim is defined, Lee further dislcloses 1 wherein the substrate has a VLT of from about 85% to about 95%. See, Tables first column which illustrates all the VLT being above 85%.
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”).
In Reference to Claim 17:
Lee discloses all the limitations set forth in claim 16, but fails to explicitly disclose wherein the optically clear cover layer comprises silicone, merely disclosing “a transparent polymer resin, but may be a film or a thin film, but is not limited thereto.”
Examiner notes it would have been obvious to a person having ordinary skill in the art at the time of effective filing to utilize a silicon polymer resin as the protective layer of Lee because it is well known in the field of endeavor that silicon provides transparency as required by Lee and also excels as a protective layers for a heating element due to their material characteristics for even heat distribution, thermal stability thermal stability, moisture resistance, and mechanical protection (from impact/shock).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”) as applied to claim 1 above, and further in view of Heintz et al., WIPO Publication WO 2012068424 A2 (hereinafter “Heintz”).
In Reference to Claim 3 and 4
Lee discloses all the limitations as recited in claim 1, but fails to explicitly disclose wherein the upper surface of the substrate is modified to improve its wetting characteristics and wherein the process is by corona treatment (a type of wetting process).
However, in the same field of endeavor, heating elements using Carbon Nanotubes, Heintz discloses wherein the substrate is treated with a corona discharge treatment (a wetting process) prior to the application of a CNT film for the purpose of improving the bonding between the film and the substrate and also the uniform layering of the CNT film. See, Figure 1 which illustrates the process. See also Page 4, lines 11-15 which disclose a corona discharge, plasma or flame treatment as the second step prior to applying the CNT layer as the third step.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing to modify Lee with the teachings of Heintz, specifically, to modify the process of manufacturing Lee such that the substrate (100) which the heating element (300) is applied to is first corona treated (wetting) as taught by Heintz because in doing so a more uniform heating layer can be achieved and more importantly the bonding between the heating element and the substrate is improved (as mentioned in Heintz).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”) in view of Heintz et al., WIPO Publication WO 2012/068424 A2 (hereinafter “Heintz”) as applied to claim 3 above and further in view of Heintz et al., WIPO Publication WO 2008/085550 A2 (hereinafter “Heintz II”)
In Reference to Claim 5:
Lee as modified further discloses wherein wherein the upper surface of the substrate has a sheet resistance of less than 2000 ohms per square. See Heintz Application, Specification which discloses during application after corona treatment that “the final resistivity ranged between 15 - 19 ohms per square” when placed in a testing environment. Lee as modified, failed to explicitly disclose a contact angle of at least about 15 degrees.
However, in the same field of endeavor, heating films, Heintz II discloses a carbon nanotube heating film wherein the contact angle between the heating film and the substrate “exhibit a contact angle on the substrate of at least 80 degrees.”
It would have been obvious to a person having ordinary skill in the art at the time of effective filing to further modify, Lee such that the contact angle between the carbon nanotube film and the substrate is greater than 80 degrees because at such a large contact angle it allows the heating film to exhibit hydrophobic properties enhancing applications where the heating film may be used for removing/preventing icing conditions (as discussed in Heintz II “First, because the polymer component of the coating is highly hydrophobic, it reduces wetting of a substrate surface by virtue of the high contact angle between the surface and any water droplets. In addition, where ice formation occurs, the surface interface can be heated by passing current through the coating to melt the ice, enhancing its removal from the substrate surface).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”) as applied to claim 1 above, and further in view of Christy et al., WIPO Publication WO2016/126827 A1 (hereinafter “Christy”).
In Reference to Claim 6:
In so far as the claim is defined, Lee discloses all the limitation of claim 1, but fails to explicitly disclose wherein the concentration of CNT in the ink is between about 0.6 g/l and about 2 g/l.
However, in the same field of endeavor, an electrically conductive heating element, Christy discloses utilizes carbon nanotubes in an aqueous liquid of at least .1g/ and up to about 10g/L and in various embodiments the CNT concentration is known to be least about .5g/L and at least about .7g/L, placing a CNT concentration in such aqueous liquid facilitations dispersion and minimized agglomeration of the CNTS thereby improving the uniform conductivity of the heating element.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing to modify Lee with the teachings of Christy, such that the concentration of CNT in the ink is between .6 g/l and 2 g/l because as discussed in Christy such a concentration allows for minimized agglomeration of the CNTS and facilitates a more uniform dispersion. Thus, improving the uniformity of the heating element.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”) as applied to claim 1 above, and further in view Du et al., Chinese Patent Publication CN 113225861 (hereinafter “Du”).
In Reference to Claim 8-11:
Lee discloses all the limitation set forth in claim 1, but fails to disclose comprising an adhesive on the lower surface of the substrate.
However, in the same field of endeavor, heating elements, Du discloses the use of a transparent adhesive in the form of a transparent resin used to bind the heating layer to the substrate, wherein the adhesive layer is optically clear and has a VLT of above 75%. See, Du Table 1: “As isclear from Table 1, the transparent heat-generating bodies of examples 1 to 5 had a transmittance of 75% or more.”
Examiner notes it would have been obvious to a person having ordinary skill in the art at the time of effective filing to modify Lee with the teachings of Du such that adhesive used to bind the substrate to the heating element is a transparent resin as disclosed by Du because the need for a completely transparent heating element is well known in the field of endeavor for glass heating of vehicles in cold climates. In such an environment, it is essential for the adhesive to be transparent to ensure the driver can maintain visibility while still allowing for the glass to be heated to remove ice.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., WIPO Publication WO 2016/108656 (hereinafter “Lee”) as applied to claim 1 above, and further in view ZHANG et al., Chinese Patent Publication CN 111278177 A (hereinafter “Zhang”).
In Reference to Claim 13-14:
Lee discloses all the limitations as set forth in claim 1, but fails to disclose wherein the predetermined heating range is up to about 200°C and wherein the predetermined heating range is achieved using a variable 220V power supply, due to Lee only using a low voltage system.
However, in the same field of endeavor, carbon nanotube heating films, Zhang discloses the use of a variable power supply from 5v to 220v (See, Zhang: “the voltage of the transformer can be adjusted to be 5-220V”) wherein as the voltage is increased the heating range is increased reaching about 200 degrees Celsius in the Figure 4 and 5 embodiment at 40 volts and 65 volts respectively given the design of the heating film.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing to modify Lee, such that the power supply is variable, as taught by Zhang (using a voltage transformer that varies from 5-220v) because by supplying a higher voltage as shown in Zhang it would allow for Lee to operate not only in low voltage lower temperature heating environments, but heating environment which require higher temperatures providing the flexibility of using a single heating film for multiple applications.
Allowable Subject Matter
Claim 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Examiner notes that that the combination as described is not taught by the prior art and although the concepts are known, Examiner does not believe it would be obvious in light of the prior art to produce Applicant’s claimed invention without the use of hindsight reasoning, given the specificity of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S. COLLINS whose telephone number is (313)446-6535. The examiner can normally be reached M-TH 8:00-5:30.
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/DANIEL S COLLINS/ Examiner, Art Unit 3745
/NATHANIEL E WIEHE/ Supervisory Patent Examiner, Art Unit 3745