DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/23/26 has been entered.
Status of Claims
Claims 1-9 are examined in this office action as claims 12-15 are withdrawn as directed to a nonelected invention and claim 1 is amended in the reply dated 3/23/26 and entered as requested with the filing of the RCE dated 4/23/26 and claims 10-11 are canceled in the reply dated 4/23/26.
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 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 1 has been amended to recite “wherein the polymer is graft-polymerized on the surface of the copper nanoparticles via a polymerization initiator coupled to the surface of the copper nanoparticles” in lines 9-10. Regarding the claimed subject matter of “graft-polymerized”, the specification does not recite the recite the term graft or grafting, much less graft-polymerized. Applicant argues that a polymerization initiator is coupled to the surface of the copper nanoparticles and that a polymer monomer is subsequently polymerized on the initiator-coupled surface so that the polymer become chemically bonded to the nanoparticles surface and the chain grows from the polymer surface forming a graft-polymerized structure (Applicant’s remarks 3/23/26, pg. 6, last paragraph). However, the specification merely recites “coupling a polymerization initiator to the oxide film-free surface of the copper nanoparticles; polymerizing a polymer monomer on the polymerization initiator-coupled surface of the copper nanoparticles to prepare polymer-capped copper nanoparticles” (Specification, pg. 5, lines 12-16) however this recitation of the method does not recite that this forms a polymer which is graft-polymerized. It is not shown that this process of using a polymerization initiator necessarily produces a graft polymer incorporating segmented copolymers with a linear backbone of one composite and randomly distributed branches of another composite. Therefore, the specification does not describe the claimed subject matter of the polymer being graft-polymerized in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. Claims 2-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Response to Arguments
With respect to the 103 rejection over Yamaguchi, it is agreed that Yamaguchi does not disclose where the polymer is graft-polymerized on the surface of the copper nanoparticles (Applicant’s remarks 3/23/26, pg. 6, last paragraph). However, see 112(a) rejection above concerning support for graft-polymerization.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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