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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/2025 has been entered. Claim 1 is amended; and claims 15-20 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1-20 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-14 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 recites “stringed nanoparticles being relatively more concentrated at the surface than at a location within the thickness of the layer of polymer” (lines 6-7). However, there is no support for higher concentration of stringed nanoparticles at the surface either in the general disclosure of the present application or in Figure 4A alluded to in the remarks section of amendment filed 11/14/2025.
Claims 2-14 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 1.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 7-8 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Razeeb et al (Advances in Nanocomposites - Synthesis, Characterization and Industrial Applications; Chapter 30; Year: 2011).
Prior to setting forth the rejection, it is noted that the recitation of "smudge-resistant composite" in the preamble (cf. independent claim 1) is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the instantly claimed invention and Kolb et al and hence the preamble fails to limit the claim. MPEP 2111.02
Regarding claim 1, Razeeb et al teach AgNW (silver nanowire) - polymer composite fabricated by electrodeposition using a porous polycarbonate film as a template. The top surface and the cross-sectional view of Ag-NWs within the PC matrix are characterized by SEM (page 693, 1st full paragraph). The SEM images of Fig. 5 indicate that the as-grown Ag arrays are vertically aligned. The top view of the nanocomposite film shows that AgNW have extruded outside the polycarbonate membrane. The nanometer size of these AgNW tips are expected to be able to conform to the submicron roughness of the substrate surface (page 694, last full paragraph and page 696) which reads on layer of polymer at least partially infiltrated into at least one of the interstitial spaces between nanowires of a layer of nanowires that extend from layer of polymer in present claim 1.
Regarding claim 7, see Fig. 5, wherein it shows SEM of AgNW arrays within PC matrix (page 696). It is noted that PC (i.e., polycarbonate) is a thermoplastic polymer.
Regarding claim 8, thermoplastic photoresist is in the alternative and therefore not required.
Regarding claim 14, given that the composite comprises a layer of polymer with nanowires extending from the polymer layer and AgNWs are expected to conform to submicron roughness, it is the Office’s position that the nanocomposite of Razeeb et al would inherently exhibit the claimed properties (such as water contact angle of at least 1500, an olive oil contact angle of at least 1500, or a hexadecane contact angle of at least 1500. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Razeeb et al (“Nanowire-polymer nanocomposites … Material; 2011) in view of Arzberger et al (US 2012/0263940 A1)
The discussion with respect to Razeeb et al in paragraph 8 above is incorporated here by reference.
Razeeb et al differ with respect to species of polymer in the layer of composite.
However, Arzberger et al in the same field of endeavor teach thermally conductive polymer composite and to thermally interface materials (abstract). The composition comprises a conductive network of elongated, thermally conductive particles dispersed throughout a matrix material (paragraph 0005). The thermally conductive particles include nanowires (paragraph 0006). Matrix material is selected from the group consisting of polystyrene, polyolefins, and polycarbonates (paragraph 0007). Therefore, in light of the teachings in Arzberger et al, it would have been obvious to one skilled in art prior to the filing of present application to include any of the matrix materials, such as polystyrenes, in forming the composite, of Razeeb et al, because of the equivalence of polystyrenes, polyoefins and polycarbonates as matrix material in preparing composites to be used as thermally interface materials, absent evidence to the contrary.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Razeeb et al (“Nanowire-polymer nanocomposites … Material; 2011) in view of Yuen et al (US 2013/0299217 A1).
The discussion with respect to Razeeb et al in paragraph 8 above is incorporated here by reference.
Razeeb et al are silent with respect to layer of polymer superposed over a substrate and transparency of nanocomposite.
However, Yuen et al in the same field of endeavor teach a conductive thin film device including a substrate and a thin film structure applied to the substrate (abstract). The conductive film forms a thermal interface material (see claim 11). The thin film demonstrates excellent electrical performance and optical transparency depending on substrates (paragraph 0019) which reads on layer superposed on a substrate in present claim 10. Among these materials, silver nanowire is one of the most promising candidates due to its superior optoelectrical properties (paragraph 0022). Examples of substrates include PET (i.e., reads on substrate comprises plastic in present claim 11 and polyethylene terephthalate in present claim 12), and glass (paragraph 0036) which reads on substrate is glass in present claim 11). Therefore, in light of the teachings in Yuen et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to prepare the film, of Razeeb et al, on a transparent substrate, of Yuen et al, if a transparent thermal interface material is desired, by one of ordinary skill in art, absent evidence to the contrary. Additionally, it is the Office’s position that when a transparent substrate such as glass is used as the substrate, one skilled in art prior to the filing of present application would have a reasonable basis to expect the composite, of Razeeb et al in view of Yuen et al, to exhibit a transparency of greater than about 80%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764