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 .
DETAILED ACTION
Note new Examiner due to a reassignment after applicant’s election.
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on
January 12 ,2026 is acknowledged.
Claim Rejections - 35 USC § 102 and35 USC § 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.
Claims 1, 5-7 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TW 200946335 A1 (Nov. 16, 2009) with Machine translation.
Machine translated TW teaches a transparent multilayer sheet having a surface
layer comprising a conductive thermoplastic polyurethane.
TW teaches a layer/sheet obtained from a composition comprising PEG (Mw
of 1500), HDI (hexamethylene isocyanate), 1,4-butanediol and LiN(SO2C2F5)2 in example 4 of table 1 (page 16). The LiN(SO2C2F5)2 is a lithium salt as taught by a lower section of page 4 of Machine translated TW.
Machine translated TW teaches that a sheet of the example 4 was obtained by a
method used for a comparative example 1 on lines 8-11 from bottom of page 6.
Machine translated TW teaches utilization of ZSK58 twin-screw extruder at 190-220oC
for the comparative example 1 in middle of page 5. Thus, utilization of the ZSK58 twin-screw extruder for the example 4 would anticipate the instant claim 1.
Regarding claim 5, the PEG (Mw of 1500) used in example 4 of table 1 comprises ether linkages in a backbone inherently.
Regarding claim 6, the PEG (Mw of 1500) used in example 4 of table 1 would meet claim 6.
Regarding claim 7, the HDI (hexamethylene isocyanate) used in example 4 of table 1 would meet claim 7.
Regarding claim 10, the extruder has a heating mechanism for reaction of reactants as evidenced by heating at 190-220oC taught by TW.
Claims 1, 5-7, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable
over TW 200946335 A1 (Nov. 16, 2009) with Machine translation.
Regarding claim 12, Machine translated TW teaches that the surface layer (i.e., conductive polyurethane layer, see abstract) has a thickness of 0.05 to 3 mm (i.e., 50 to 3,000 µm) on line 24 of page 5, and thus the conductive polyurethane layer having a thickness of 50 µm-100 µm falling within scope of the recited thickness of 15 µm-100 µm) would have been obvious to one skilled in the art before the effective filing date of invention. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In re Woodruff, 919F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over TW 200946335 A1 (Nov. 16, 2009) with Machine translation as applied to claims 1, 5-7 and 10 above, and further in view of Roy et al. (US 2022/0041861 A1).
Regarding claims 2-4, although TW is silent as to blending sequence of reactants, there would be very limited choices for adding three components (i.e., a polyol, a polyisocyanate and a lithium salt) in an extruder such as adding three components together, adding one component and then two components, adding two components and then adding one component or adding three components separately. A court held that very limited choices is anticipation and thus the recited different adding sequences would have been at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Utilization of a twin-screw extruder having multiple inlet zones is known in the art.
Roy et al. teach ZSK58 twin-screw extruder having multiple inlet zones in [0286-0288].
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the recited different adding sequences in TW since the twin-screw extruder having multiple inlet zones is known in the art as taught by Roy et al. and since there would be very limited choices for adding three components in the twin-screw extruder having multiple inlet zones absent showing otherwise.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over TW 200946335 A1 (Nov. 16, 2009) with Machine translation as applied to claims 1, 5-7 and 10 above, and further in view of Machine translated JP 2004519824 A (July 2, 2004).
Regarding alternative lithium salts of claim 8, Machine translated JP 2004519824 A (July 2, 2004) teaches LiBF4 as a lithium salt at top of page 11.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the art well known lithium salt (i.e., LiBF4) taught by JP in TW since both teach ion-conductive compositions absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over TW 200946335 A1 (Nov. 16, 2009) with Machine translation as applied to claims 1, 5-7 and 10 above, and further in view of WO 2022/040373 A1 (Feb. 24, 2022).
Regarding alternative polyester polyol of claim 5 and the recited ratio of claim 9, utilization of different ratios of a polyol or polyester polyol and a polyisocyanate for obtaining polyurethane is known in the art.
WO teaches utilization of the instantly ratio of the polyol or polyester polyol andpolyisocyanate in examples 1-4 of Table 1 of page 19. WO further teaches and equates the polyol and polyester polyol for obtaining polyurethane in the examples 1-4.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the art well known polyester polyol and a ratio of a polyol or polyester polyol and a polyisocyanate taught by WO in TW since WO teaches and equates the polyol taught by TW and the polyester polyol and since modification to amounts of reactants is known in the art and since utilization of a higher amount of the polyisocyanate in TW would be expected to yield more rigid/less flexible polyurethane due to presence of higher portion of rigid urethane linkages and since the more rigid/less flexible polyurethane would be dependent on a desired final applications absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Again, utilization of a higher amount of the polyisocyanate in TW would be expected to yield more rigid/less flexible polyurethane due to presence of higher portion of rigid urethane linkages.
CLAIM OBJECTION
Claims 11 and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims since Machine translated TW TW 200946335 A1 (Nov. 16, 2009) teaches utilization of ZSK58 twin-screw extruder at 190-220oC which would be expected yield polyurethane having different properties over one obtained by the recited temperature of 80-120oC throughout a length of a screw barrel of claim 11 and since none of the cited prior art of record teaches further extrusion of the thermoplastic polyurethane on a substrate comprising lithium metal.
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/TAE H YOON/Primary Examiner, Art Unit 1762