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 .
The amendment filed 12/23/2025 has been entered. Claims 10, 14, 16 and 18 have been canceled. Claims 1-9, 11-13, 15, 17, and 19-20 are 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 Objections
Claim 1 is objected to because of the following informalities: “layer” should be inserted after “rear surface” on line 8. Appropriate correction is required.
Further, Applicant is advised that should claim 11 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
Claims 1-9, 11-13, 15, 17, and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 has been amended to now recite that the conductive nanowires are “elongated conductive nanowires” and that the magnetic nanoparticles are “discrete magnetic nanoparticles” on line 4, however, the term “nanowires” by itself implies a greater length than diameter/width (e.g., the ordinary and customary meaning of the term “elongated”), and given that the instant specification does not describe the nanowires as being “elongated” aside from being “nanowires” and noting that the nanowires have a “high aspect ratio”, particularly 10 to 500 as recited in instant claim 13, it is unclear as to what is meant to be encompassed by the term “elongated” with respect to the “nanowires”, e.g., how long do the nanowires need to be in order to be considered “elongated” according to instant claim 1, are the nanowires “elongated” meaning “stretched” in a lengthwise direction after formation, etc.? Further, given that the claimed “elongated conductive nanowires” and the claimed “discrete magnetic nanoparticles” are not mutually exclusive, i.e., the claimed “elongated conductive nanowires” may be “discrete” (i.e., non-aggregated) nanowires that are both magnetic and conductive such as formed from nickel, cobalt and/or iron, while the claimed “discrete magnetic nanoparticles” are not limited to spherical or non-elongated nanoparticles and may be “elongated” nanoparticles or “nanowires” and thus may be “discrete magnetic” elongated nanowires given that the term “nanoparticles” encompasses “nanowires” as noted in the prior office action, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
The dependent claims do not remedy the above and hence are indefinite for the same reasons.
Claim Rejections - 35 USC § 102
Claims 1-3, 9, 11-13, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shim (US2023/0156896A1), for generally the reasons recited in the prior office action and restated below with respect to the amended claims.
As discussed in the prior office action, Shim discloses a film for manufacturing an electronic component including a polymer layer, and metallic nanowires dispersed in the polymer layer, wherein the polymer layer may include a polyester such as polyethylene terephthalate (PET, as in instant claims 2-3), and the metal nanowires may include a ferromagnetic metal such as at least one of nickel (Ni), cobalt (Co), and iron (Fe), or alloys thereof (Abstract, as in instant claim 9) and thus have both a magnetic property and conductivity (Paragraph 0034), with claim 7 of Shim, which is dependent upon claims 1-6, specifically reciting that the film comprises a polymer layer including PET with ferromagnetic Ni, Co, and/or Fe nanowires dispersed therein, and more particularly with the polymer layer including a front surface layer and a rear surface layer disposed on the front surface layer, and the nanowires dispersed in the front surface layer (Claims 1-7, as in instant claims 1 and 11). Shim also discloses that a content of the metal nanowires, i.e., including ferromagnetic Ni, Co, Fe, or alloys thereof, in the front surface layer is less than 0.2 wt% (Paragraph 0038, claim 11), as discussed in the prior office action with respect to now cancelled claim 14, wherein when a content of the nanowires is 0.2 wt% or more with respect to a content of the front surface layer, the content may become high such that the nanowires are aggregated which may decrease an antistatic property of the film (Paragraph 0039). Hence, Shim clearly discloses that the metal nanowires are “discrete” or are “not aggregated” as in the working examples, and given that Shim also discloses that the metal nanowires including ferromagnetic Ni, Co, Fe, or alloys thereof (as in instant claim 9), have an aspect ratio of 10 to 500 (claim 10, Paragraph 0037, as in instant claim 13) and thus are “elongated”, Shim clearly discloses a plurality of discrete, elongated conductive, magnetic metal nanowires dispersed in the front surface layer in a content of less than 0.2 wt% thereby reading upon the claimed “plurality of elongated conductive nanowires” and the claimed “plurality of discrete magnetic nanoparticles” as in instant claim 1, particularly dispersed in the front surface layer of the polymer layer as in instant claims 11 and 19, as well as the claimed “content of the magnetic nanoparticles in the front surface layer is 0.3 wt% or less with respect to a content of the front surface layer” as in amended claim 1 given that any portion of the plurality of discrete, elongated conductive, magnetic metal nanowires of Shim may be equated to the claimed “plurality of elongated conductive nanowires” and the remaining portion equated to the claimed “plurality of discrete magnetic nanoparticles”, especially given that Shim specifically discloses that the metal nanowires may include a plurality of nanowires having a difference in aspect ratio with each other and dispersed in the first or front surface layer (Paragraph 0037). Further, given that Shim also clearly discloses that the polymer layer further includes a release layer disposed on the other surface of the front surface layer, which includes the nanowires dispersed therein, opposing one surface of the front surface layer upon which the rear surface layer is disposed as shown in Fig. 4, as in amended claim 1 (Paragraph 0056, claim 12), Shim anticipates amended claim 1, as well as instant claims 2-3, 9, 11, 13, and 19 (the limitations of which are discussed above).
With respect to instant claim 12, Shim discloses that “the metal nanowires 112 may be dispersed in a second resin layer 121 of the rear surface layer 120 as well as the front surface layer 110” (Paragraph 0035), thereby anticipating instant claim 12.
The applied reference has a common Applicant and joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim Rejections - 35 USC § 103
Alternatively, claims 1-3, 9, 11-13, and 19 as well as claims 4-8, 15, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable Shim (US2023/0156896A1), as applied above to claims 1-3, 9, 11-13, and 19, and in further view of Mittal (US2011/0281070A1).
As discussed in detail above, Shim discloses a film for manufacturing an electronic component including a polymer layer, and a plurality of elongated conductive nanowires, particularly elongated conductive nanowires of ferromagnetic metal such as Ni, Co, Fe, or alloys thereof, dispersed in the polymer layer without being aggregated, thus “a plurality of elongated conductive nanowires” as well as “a plurality of discrete magnetic nanoparticles” dispersed in the polymer layer, and given that Shim clearly discloses that the polymer layer comprises a front surface layer (110), a rear surface layer (120) disposed on one surface of the front surface layer(110), and a release layer (200) disposed on the other surface of the front surface layer (110) opposite to the rear surface layer (120), and that the non-aggregated, elongated conducive nanowires of ferromagnetic metal are dispersed in the front surface layer in a content of less than 0.2 wt% with respect to a content of the front surface layer, the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-3, 9, 11-13, and 19 as detailed above. However, if the claimed “plurality of discrete magnetic nanoparticles” are meant to be formed from a material different and/or have a different aspect ratio from that of the “plurality of elongated conductive nanowires”, then the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1-3, 9, 11-13, and 19 would have been obvious over the teachings of Shim given that Shim clearly teaches that the metal nanowires may include a plurality of nanowires having a difference in aspect ratio with each other and dispersed in the first or front surface layer (Paragraph 0037), and may be formed from a ferromagnetic metal including at least one of Ni, Co, Fe, or alloys thereof such that a combination thereof, e.g., a combination of Ni nanowires and Co nanowires of differing aspect ratios, would have been obvious to one skilled in the art thereby reading upon the claimed “plurality of elongated conductive nanowires” and “plurality of discrete magnetic nanoparticles” given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Additionally, Shim teaches that filler particles (122), shown as round or spherical particles in Fig. 3, may be dispersed in the front surface layer (110) as well as the rear surface layer (120) (Paragraphs 0045 and 0049), wherein the filler particles (122) may be “general inorganic fillers” (Paragraph 0047), and although Shim teaches that example fillers may be silica or other metal oxides as recited in Paragraph 0047 and may have an average diameter of 2 µm (i.e., 2000 nm) to 5 µm, Shim clearly teaches that said filler particles (122) are not limited to said materials nor said average particle diameter (Paragraph 0047), such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any known inorganic “filler” particles in the art, and given that metal filler particles such as nickel particles are an obvious species of “fillers” in the art and would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, the claimed invention as recited in instant claims 1-3, 9, 11-13, and 19 would have been further obvious over the teachings of Shim given the presence of “filler” particles (122) in the front and/or rear surface layers.
Further, Mittal teaches electrically conductive or semiconducting additives embedded into surfaces of host materials such as PET (Paragraph 0072, as in Shim) for use in a variety of applications and devices, including for providing antistatic properties (Paragraphs 0007 and 0094), wherein the additives can be present in various layers of the material in varying concentrations, and can be in the form of nano-sized additives or nanoparticles having an aspect ratio of less than about 3, nanowires and/or nanotubes having an aspect ratio of about 3 or greater, and combinations thereof (Paragraphs 0040-0044) and thus including nanowires as well as nanoparticles that are different or distinct from the nanowires, as well as core-shell nanoparticles and/or core-shell nanowires, that are produced from a variety of conductive materials including carbon-based conductors such as carbon nanotubes (as in instant claims 4-5 and 15), electrically conductive polymers (as in instant claims 6 and 17) and metals such as iron or nickel as a ferromagnetic core material of a core-shell particles or nanowires, with a shell of metal or carbon, or any combination thereof (as in instant claim 6-8; Entire document, particularly as noted above and Abstract, Figures, Paragraphs 0066-0070 and 0081). Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the additives taught by Mittal as the “fillers” in the invention taught by Shim and/or any of the conductive additives as taught by Mittal in combination with and/or in place of the metal nanowires taught by Shim, in an amount as taught by Shim or in an amount to provide the desired conductivity or sheet resistance as taught by Shim given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to combine prior art elements according to known methods to yield predictable results. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 4-8, 15, and 17 would have been obvious over the teachings of Shim in view of Mittal.
With respect to instant claim 20, although Shim does not teach that the release layer also includes the conductive nanowires and magnetic nanoparticles dispersed therein, given that Shim does teach that the release layer may have a sheet resistance on the other surface of the release layer (e.g., facing away from the front surface layer), of 1010 Ω/□ or less, such that an amount of static electricity generated in the film for manufacturing an electronic component may be decreased (Paragraphs 0060-0062), and that Mittal clearly teaches that incorporation of such nanowires and/or nanoparticles can adjust the sheet resistance as required for a particular end use, including for providing antistatic properties (Entire document, particularly Paragraphs 0007, 0076, 0081-0092 and 0094), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to also include the (elongated) conductive nanowires and the (discrete) magnetic nanoparticles in the release layer of Shim to further reduce the sheet resistance thereof and/or provide the desired sheet resistance for a particular end use as in the teachings of Mittal. Hence, absent any clear showing of criticality and/or unexpected results, the Examiner takes the position that the claimed invention as recited in instant claim 20 would have been obvious over the teachings of Shim in view of Mittal given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
Double Patenting
Claims 1-3, 9, 11, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,363,815, for generally the reasons recited in the prior office action and restated below with respect to the amended claims.
Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 5 which depends upon patented claims 1-4, is directed to a “film for manufacturing an electronic component, comprising: a polymer layer including a front surface layer, a rear surface layer disposed on the front surface layer, and a silicone release layer disposed on the front surface layer; and metal nanowires dispersed in the polymer layer, wherein a content of the metal nanowires in the front surface layer is less than 0.2 wt %” (patented claim 1, as in instant claims 1, 11, 14, and 19), “wherein the polymer layer includes a polyester-based compound” (patented claim 2, as in instant claim 2), more particularly “wherein the polyester-based compound includes polyethylene terephthalate (PET)” (patented claim 3, as in instant claim 3); and “the metal nanowires include a ferromagnetic metal” (patented claim 4, “discrete magnetic nanoparticles” as in instant claim 1), “wherein the ferromagnetic metal includes at least one of nickel (Ni), cobalt (Co), or iron (Fe), or alloys thereof” (patented claim 5, “elongated conductive nanowires” as in instant claim 1, and “discrete magnetic nanoparticles” of same materials as in instant claim 9); and given that the ferromagnetic metal nanowires as recited in patented claim 5 would read upon read upon both the instantly claimed “elongated conductive nanowires” and the instantly claimed “discrete magnetic nanoparticles”, instant claims 1-3, 9, 11, and 19 would have been obvious over patented claim 5.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection presented above. With respect to the rejection under 35 U.S.C. 112(b), the Applicant argues that the amended claim “now defines each element by its distinct morphology and property, resolving any ambiguity regarding scope or overlap” (see page 5 of the response). However, the Examiner respectfully disagrees given that as noted above, the claimed “elongated conductive nanowires” and the claimed “discrete magnetic nanoparticles” are not mutually exclusive, i.e., the claimed “elongated conductive nanowires” may be “discrete” (i.e., non-aggregated) nanowires that are both magnetic and conductive such as formed from nickel, cobalt and/or iron, while the claimed “discrete magnetic nanoparticles” are not limited to spherical or non-elongated nanoparticles and may be “elongated” nanoparticles or “nanowires” and thus may be “discrete magnetic” elongated nanowires given that the term “nanoparticles” encompasses “nanowires” as noted in the prior office action. Hence, Applicant’s arguments with respect to the rejection under 35 U.S.C. 112(b) are not persuasive and the rejection has been reapplied above with respect to the amended claims.
With respect to the anticipation rejection over Shim, the Applicant argues that “the reference discloses polymer films containing ferromagnetic metal nanowires and describes embodiments with multiple resin layers; however, Shim [allegedly] does not disclose a release layer disposed on the other surface of the front surface layer opposite the rear surface layer, as recited”, arguing that the “Examiner's position [allegedly] relies on equating a portion or sublayer of Shim's front surface layer with the claimed release layer” and that the “claim language, however, requires a structurally distinct release layer disposed on an opposing surface of the front surface layer, as described in paragraphs [0110]-[0116] of the specification” (see first fully paragraph of page 7). The Applicant also argues that “Shim [allegedly] does not disclose controlling a content of magnetic nanoparticles in the front surface layer to 0.3 wt% or less, particularly where Shim relies on ferromagnetic nanowires rather than a defined magnetic nanoparticle content in the front surface layer.” However, the Examiner respectfully disagrees and notes that Shim clearly discloses a release layer (200) that is a “structurally distinct release layer disposed on an opposing surface of the front surface layer” as clearly shown in Fig. 4 and discussed in the prior office action with respect to now cancelled claim 18, wherein the Examiner’s prior position with respect to equating a portion or sublayer of Shim’s front surface layer to the release layer was not because Shim do not disclose a release layer. Further, given that Shim clearly discloses that the content of ferromagnetic nanowires in the front surface layer is less than 0.2 wt%, wherein such ferromagnetic nanowires are not aggregated and thus are “distinct magnetic nanoparticles” and may be a plurality of nanowires of differing aspect ratios as discussed in detail above, Applicant’s arguments with respect to the anticipation rejection over Shim as reapplied above to amended claims 1-3, 9, 11-13, and 19 are not persuasive.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 12/23/2025.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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