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 .
Claim Rejections - 35 USC § 103
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(s) 1, 3, 6, 25-31, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 9183968).
Regarding Claims 1, 3, and 28, Li teaches a method for forming a conductive layer (abstract) comprising: depositing a metal nanowire ink onto an inert surface (col. 13 ln. 65-col. 14 ln. 10) to form a coating with a silver loading from about 1mg/m2 to about 200 mg/m2 (col. 15 ln. 35-40), the ink comprising from about 0.01 wt.% to about 4 wt. % metal nanowires and from about 0.05 wt. % to about 5 wt. % polysaccharide (col. 1 ln. 39-43; col. 10 ln. 58-60, col. 8 ln. 17-22); and drying the coating (col. 14 ln. 33-34) to form a conductive film having a sheet resistance is less than about 100 Ohm/sq and the coating has a %TT at least about 98.6% (col. 17 ln. 37-49; col. 16 ln. 48-52, col. 1 ln. 55-67). Li teaches a silver salt consisting of AgF (col. 9 ln. 31-65). Li teaches the inert surface is a surface of a polymeric substrate (col 13 ln. 65-col. 14 ln. 10). Li teaches the metal nanowire ink comprises from 0.001 mg/mL and about 2.0 mg/mL silver ions and wherein after drying a fused metal nanostructure network is formed (col. 21 ln. 59-61; col. 1 ln. 63-67).
Li does not explicitly teach room temperature without application of heat; however, Li teaches films that can be air dried can be desired in some embodiments (i.e. room temperature without application of heat, col. 14 ln. 33-34). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the drying conditions of Li to be any conditions, including room temperature, as suggested by the reference because Li teaches they are suitable conditions for use with the invention and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the film of Li with any of the suggested drying conditions.
Regarding Claim 6, Li teaches the sheet resistance is less than about 100 Ohm/sq (col. 16 ln. 48-52). Li teaches the inert surface is a surface of a polymeric substrate (col 13 ln. 65-col. 14 ln. 10) including polymers exhibiting a glass transition temperature of 145 or less, e.g. PET.
Regarding Claims 25 and 33, Li teaches the metal nanowire ink further comprises aqueous solvent comprising 5-80 wt. % of the claimed alcohols (col. 8 ln. 62-col. 9 ln. 8). Li teaches from about 0.01-1 wt. % surfactant (col. 2 ln. 7-55). 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, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select any of the concentrations of Li, including those within the claimed range, because Li teaches they are all suitable for use with the invention.
Regarding Claims 26-27, Li teaches alkyl cellulose (col. 11 ln. 1-5).
Regarding Claims 29-31, Li teaches diameters of no more than 250 nm (col. 8 ln. 40-46). 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, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select any of the diameters of Li, including those within the claimed range, because Li teaches they are all suitable for use with the invention.
Regarding Claims 34-35, Li teaches non-ionic surfactant and a fluorinated surfactant (col. 12 ln. 32-55).
Claim(s) 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 9183968) as applied to claims 1, 3, 6, 25-31, and 33-35 above, and further in view of Yang (US 20160108256).
Regarding Claims 7 and 9, Li teaches the inert surface is a surface of a polymeric substrate and the substrate with the coating forms a conductive film exhibiting a percent total transmission of at least about 90%, a haze of less than about 1.0% (col 13 ln. 65-col. 14 ln. 10; col. 17 ln. 37-49; col. 17 ln. 58-63).
Li is silent as to the value of the color parameter b*; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable value. Yang teaches nanoscale colorants introduced to adjust the hue of transparent conductive films wherein films can be made less yellow, i.e. smaller absolute value of b* ([0025]). Yang teaches a b* of less than about 1.0 ([0087]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Li to include a b*, as taught in Yang, because Yang teaches it is an adjustable and desirable optical property in transparent conductive films.
Claim(s) 32 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US 9183968) as applied to claims 1, 3, 6, 25-31, and 33-35 above, and further in view of Leschkies (US 20120164470).
Regarding Claim 32, Li teaches the nanowires can be silver, gold, indium, tin, iron, cobalt, platinum, palladium, nickel , cobalt, titanium, copper, and alloys thereof (col. 8 ln. 26-30). Li does not explicitly teach the silver nanowires have a noble metal coating; however, Leschkies teaches core-sheath nanowires with noble metal sheaths ([0010]) for applications in transparent electrically conductive films ([0029]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the nanowires of Li to include nanowires, as taught in Leschkies, because they are known nanowires for transparent electrically conductive films and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coating of Li with nanowires as in Leschkies.
Response to Arguments
Applicant’s arguments, see amendment and remarks, filed 3/19/2026, with respect to the previous Section 112 rejection have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant's other arguments filed 3/19/2026 have been fully considered but they are not persuasive.
Applicant incorporates by reference their arguments from the Amendment dated April 24, 2025 and October 17, 2025. In response to Applicant’s argument, these arguments have been addressed in the Response to Arguments section of the Office Actions dated 7/21/2025 and 12/19/2025.
Applicant argues currently amended claim 1 recites a method by which a highly conductive layer (sheet resistance no more than about 100 Ohms/sq) can be unexpectedly formed from a silver nanowire ink, without applying heat, if the ink includes AgF. Applicant argues evidentiary support for this unexpected result is shown in Example 10 beginning at page 46, including Tables 17 and 19 and FIG. 9. In response to applicant’s argument, Li teaches the product having a sheet resistance within the claimed range; therefore, the argued feature of a sheet resistance no more than about 100 Ohms/sq is not unexpected based on the disclosure of Li. While Li does not explicitly teach an embodiment with a combination of an AgF salt and air drying, Li suggests these features are suitable for the invention. Li teaches the product having sheet resistances within the claimed range. One of ordinary skill in the art would have had a reasonable expectation of success in using AgF and air drying based on the disclosure of Li to achieve sheets having the taught electrical resistance.
Applicant argues Li does not describe use of AgF and AgNO3 is used in all the examples. Applicant argues Li did extrapolate that processing without heat could be achieved but based on the teachings of Li, one of ordinary skill in the art would have no reason to expect that certain silver salts work better than others. In response to Applicant’s argument, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123 II. The disclosure of Li recognizes AgF as a suitable salt for use with the invention and recognizes air drying as a suitable treatment. One of ordinary skill in the art would have had a reasonable expectation of success in using AgF and air drying based on the disclosure of Li.
Applicant argues Claim 1 has been amended to include features that are achievable due to the improved understanding of the fusing process which Li does not recognize. Applicant argues there is no specific indication or reasonable expectation of success that a sheet resistance of no more than about 100 Ohms/sq would be obtained without application of heat if AgF is present. In response to applicant’s argument, the disclosure of Li recognizes AgF as a suitable salt for use with the invention and recognizes air drying as a suitable treatment. Li teaches the product having sheet resistances within the claimed range. One of ordinary skill in the art would have had a reasonable expectation of success in using AgF and air drying based on the disclosure of Li to achieve sheets having the taught electrical resistance. In response to applicant's argument that Li does not explicitly teach the sheet resistance achieved with a combination of an AgF salt and air drying, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues the rejections of the dependent claims have the same deficiencies and that Yang and Leschkies do not cure the deficiencies; however, this is not convincing as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/TABATHA L PENNY/ Primary Examiner, Art Unit 1712
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