DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 10/17/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 4-13 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 07/09/2025 is considered and signed IDS form is attached.
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 4-13 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 and claim 11 each recite that the coating liquid has “a pH from 4.5 to 5.5”. While there is support to recite the coating liquid has such pH “at 25 C” (see paragraphs 0041 and 0063 of the published application), there is no support to broadly recite such pH at any temperature.
Claims 10 and 13 each recite “the film….having a thickness of 200 to 600 nm”. While there is a support for an acid-based conductive polymer layer having a thickness of 200 to 600 nm (see paragraph 0040 of published application), there is no support for the film that includes both a base layer and an acid-based conductive polymer layer, having a thickness of 200 to 600 nm.
Claim Objections
Claims 5-8 are objected to because of the following informalities: Claims 5-8, line 1 each recite “The film”, which should be “The organic conductive film”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: Claim 9, line 2 recites “a film”, which should be “the organic conductive film”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: Claim 10, line 1 recite “The film”, which should be “The organic conductive film”. Appropriate correction is required.
Claims 12 and 13 are objected to because of the following informalities: Claims 12 and 13, line 1 recite “The film”, which should be “The organic conductive film”. Appropriate correction is required.
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.
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 4-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kadem et al. (Journal of Material Science, 2018, cited in IDS).
Regarding claims 4-6, Kadem et al. disclose PEDOT-PSS film (acid-based conductive polymer layer) on ITO-coated glass slide (base layer) (see page 19288, col. 2, 2.2 Organic solar cells preparations). PEDOT-PSS is poly(3,4-ethylenedioxythiophene):polystyrene sulfonic acid (see page 19287, 1 Introduction). The PEDOT-PSS film is prepared from PEDOT-PSS solution treated with ammonium hydroxide (NH4OH) such that pH value is 2 to 8, preferably 4 (see page 19288, col. 1, 2.1 Preparation of PEDOT:PSS solution; page 19289, Figure 1 and page 19294, col. 1, 4 Conclusion). The PEDOT-PSS solution treated with NH4OH reads on a coating liquid consisting of PEDOT-PSS (acid-base conductive polymer), NH4OH (alkali neutralizing agent) and water.
Given that the PEDOT-PSS solution is treated with ammonium hydroxide (alkali neutralizing agent), the PEDOT-PSS film will necessarily contain cations such as ammonium ions derived from an alkali neutralizing agent such as ammonium hydroxide. Further, given that pH value is 2 to 8, which overlaps with that utilized in the present invention, within the overlapping range, the cations contained in the PEDOT-PSS film would inherently have a density as presently claimed. The PEDOT-PSS film and ITO-coated glass slide together read on an organic conductive film as presently claimed.
In light of the overlap between the claimed organic conductive film and that disclosed by Kadem et al., it would have been obvious to one of ordinary skill in the art to use an organic conductive film that is both disclosed by Kadem et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 8, Kadem et al. disclose the organic conductive film as set forth above. Kadem et al. do not disclose the organic conductive film is a resistive coating of an electromagnetic wave suppression sheet or as a circuit material in an electronic device.
However, the recitation in the claims that the organic conductive film is “a resistive coating of an electromagnetic wave suppression sheet or as a circuit material in an electronic device” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kadem et al. disclose organic conductive film as presently claimed, it is clear that the organic conductive film of Kadem et al. would be capable of performing the intended use, i.e. a resistive coating of an electromagnetic wave suppression sheet or as a circuit material in an electronic device, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claims 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over Allemand (US 2007/0077451 A1).
Regarding claims 4-7 and 10-13, Allemand discloses an organic film (acid-base organic conductive polymer layer) consisting of an ABL material (anode buffer layer) such as PEDOT:PSS (acid-base organic conducive polymer) and a volatile base such as solution of ammonia or ammonium hydroxide (alkali neutralizing agent and water) that neutralizes acidic groups to bring pH between about 1.5 to about 8 (see page 5, claims 1, 4, 5, 6, 7 and 8, and paragraph 0032). A solution containing PEDOT:PSS and ammonia or ammonium hydroxide reads on a coating liquid as presently claimed. The organic film is used as ABL (anode buffer layer) (see page 5, claim 8). The organic film is obtained by coating the coating liquid (see paragraph 0033).
The organic film or ABL (acid-base conductive polymer layer) 417 is disposed on an anode or first electrode layer 411 made of polymers (base layer or resin substrate) (see Figure 2, paragraphs 0025, 0026, 0028 and page 5, claim 9). The ABL 417 and first electrode layer 411 together read on an organic conductive film as presently claimed. The ABL 417 has a thickness of about 5 to about 1000 nm, and the first electrode layer has a thickness of about 10 nm to about 1000 nm (see paragraphs 0035 and 0026). Accordingly, the organic conductive film (417 and 411) has a thickness of about 15 to about 2000 nm.
Given that the PEDOT-PSS solution is treated with ammonia or ammonium hydroxide (alkali neutralizing agent), the PEDOT-PSS film will necessarily contain cations such as ammonia or ammonium ions derived from an alkali neutralizing agent such as ammonia or ammonium hydroxide. Further, given that pH value is about 1.5 to about 8, which overlaps with that utilized in the present invention, within the overlapping range, the cations contained in the PEDOT-PSS film would inherently have a density as presently claimed.
In light of the overlap between the claimed organic conductive film and that disclosed by Allemand, it would have been obvious to one of ordinary skill in the art to use an organic conductive film that is both disclosed by Allemand and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 8, Allemand discloses the organic conductive film as set forth above. Allemand does not disclose the organic conductive film is a resistive coating of an electromagnetic wave suppression sheet or as a circuit material in an electronic device.
However, the recitation in the claims that the organic conductive film is “a resistive coating of an electromagnetic wave suppression sheet or as a circuit material in an electronic device” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Allemand disclose organic conductive film as presently claimed, it is clear that the organic conductive film of Allemand would be capable of performing the intended use, i.e. a resistive coating of an electromagnetic wave suppression sheet or as a circuit material in an electronic device, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 9, Allemand discloses OLED device (laminate) comprising a second electrode layer 423 made from metals (electromagnetic shielding layer), the anode buffer layer (ABL) 417 (i.e. acid-base organic conductive polymer layer), the first electrode layer 411 (base layer), a substrate 408 made of quartz (dielectric layer) (see Figure 2 and paragraphs 0023, 0025, 0028, 0029, 0044, 0045). As noted above, the ABL 417 and the first electrode layer 411 together read on an organic conductive film as presently claimed.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that Kadem does not teach or suggest "the acid-based organic conductive polymer layer formed by coating a coating liquid having pH from 4.5 to 5.5 and consisting of an acid-based organic conductive polymer, an alkali neutralizing agent and water" as amended claim 4 recites.
However, Kadem discloses that the PEDOT-PSS film is prepared from PEDOT-PSS solution treated with ammonium hydroxide (NH4OH) such that pH value is 2 to 8 (see page 19288, col. 1, 2.1 Preparation of PEDOT:PSS solution; page 19289, Figure 1 and page 19294, col. 1, 4 Conclusion). The PEDOT-PSS solution treated with NH4OH reads on a coating liquid consisting of PEDOT-PSS (acid-base conductive polymer), NH4OH (alkali neutralizing agent) and water.
Applicants argue that Kadem's already prepared PEDOT/PSS films treated with ammonium hydroxide are not the same as "the acid-based organic conductive polymer layer formed by coating a coating liquid having pH from 4.5 to 5.5 and consisting of an acid-based organic conductive polymer, an alkali neutralizing agent and water." Because of a different method of preparation, the Office cannot rely on Applicant's data that Kadem's films have "4.5 to 5.0 mg/cm³ of cations derived from the alkali neutralizing agent" as amended claim 1 recites.
As noted above, Kadem discloses the PEDOT-PSS film is prepared from PEDOT-PSS solution treated with ammonium hydroxide (NH4OH) such that pH value is 2 to 8. Kadem discloses that the ammonium hydroxide is added to the PEDOT-PSS solution in different ratios to vary the pH. The PEDOT-PSS solution treated with NH4OH reads on a coating liquid consisting of PEDOT-PSS (acid-base conductive polymer), NH4OH (alkali neutralizing agent) and water. That is, the acid-based organic conductive polymer layer formed by coating a coating liquid consisting of an acid-based organic conductive polymer, an alkali neutralizing agent and water in both Kadem and present application. Further, given that pH value of 2 to 8 disclosed by Kadem overlaps with that utilized in the present invention, within the overlapping range, the cations contained in the PEDOT-PSS film would inherently have a density as presently claimed, absent evidence to the contrary.
Applicants argue that Kadem uses in its experiments pH=1 (pristine), pH=2, pH=4, pH=6 and pH=8. Kadem finds that pH=4 works best for its purposes as "[t]he PEDOT:PSS (pH~4) based device exhibited the lowest degradation among other devices treated with different pH" see Kadem's page 6, left column. Kadem explicitly teaches away from using pH higher than 4, such as 4.5 to 5.5 recited in amended claim 1, by saying in the right column of its page 6 that "[f]urther increase in the pH has resulted in further degradation of the device performance "
However, the fact remains that Kadem discloses pH value of 2 to 8 which overlaps with that presently claimed. While Kadem discloses pH=4 works best and exhibits lowest degradation, Kadem does not disclose pH other than 4 (pH =2, pH=6) do not work or function at all but rather that they produce different results. While other pH value other than 4 may be less preferred, these pH values can still be used. That is, Kadem do not reach away from using pH higher than 4.
Applicants argue that further any prima facie case of obviousness is more than overcome by the evidence of criticality for the cation content range and the pH range recited in amended claim 4. Specifically, Table 2 provides evidence of superiority of Example 1, which is within the scope of amended claim 4, over Comparative Examples 1 and 2, which are outside the scope of amended claim 4, in the combination of the three evaluations in the last three columns. Such superiority cannot be expected based on the cited references because based on the Office's rationale in the rejections, Comparative Examples 1 and 2 are as possible as Example 1.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that (i) the example recites specific acid-base organic conductive polymer layer prepared from a specific acid-base organic conductive polymer (PEDOT:PSS) and specific alkali neutralizing agent (ammonia water), while present claim 4 recites any acid-base organic conductive polymer layer prepared from any acid-base organic conductive polymer and any alkali neutralizing agent, (ii) the example recites acid-base organic conductive polymer layer having specific thickness (300 nm) (see paragraph 0068, 0070 of published application), while present claims 4 and 11 each recite acid-base organic conductive polymer layer having any thickness, (iii) the example recites a specific base layer (PET) having specific thickness (50 m), while present claim 4 recite any base layer having any thickness and present claim 11 recites any resin substrate having any thickness, and (iv) the example recites a coating liquid having a pH value of 5 at 25 °C (no data at pH value of 4.5 and no data pH value of 5.5) (see Table 1), while present claims 4 and 11 each has broad recitation of pH value of 4.5 to 5.5 at any temperature.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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, Callie Shosho can be reached at 571-272-1123. 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.
/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787