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 10/31/2025 has been entered. Claims 2, 4, and 16-27 been canceled. New claims 28-31 been added. Claims 1, 3, 5-15, and 28-31 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.
Election/Restrictions
Newly submitted claims 30-31 are drawn to a coating method similar to the coating method of Invention II as recited in the Restriction Requirement dated 3/28/2024, wherein such coating method is similarly distinct from elected Invention I, drawn to a coating system, for generally the same reasons recited in the Restriction Requirement and incorporated herein by reference, wherein it is further noted that the product, i.e., the coating system of elected Invention I, can be used without exposure to UV radiation to cure the coated layer; and given that Applicant elected Invention I, drawn to the coating system, without traverse in the reply filed 5/28/2024, and has received an action on the merits for the elected invention, claims 30-31 have been withdrawn from consideration as being directed to a non-elected invention.
Claim Rejections - 35 USC § 103
Claims 1, 3, and 5-15 and new claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Li (USPN 9,150,746) in view of Gurtler (US2004/0229047A1), for generally the reasons discussed in detail in the prior office action and restated below with respect to amended claims 1, 3, and 15, and new claims 28-29.
As discussed in the prior office action, Li teaches stable metal nanowire inks that “provide for the formation of transparent conductive films with excellent optical properties and low sheet resistance in which sparse metal conductive layers generally comprise fused nanostructured metal networks with a polymer binder”, particularly a hydrophilic polymer binder such as a cellulose based binder (Entire document, particularly Abstract, Col. 1, lines 16-21; and Col. 2, lines 61-66). Li teaches that the inks generally comprise a dispersion of metal nanowires, metal ions as a fusing agent, and a polymer binder in an aqueous system (Col. 2, line 66 – Col. 3, line 1), and more specifically, an ink (Col. 1, lines 48-52) comprising from about 0.001 wt% to about 4 wt% nanowires, particularly silver nanowires (Col. 8, lines 36-50); from about 0.05 wt% to about 5 wt% hydrophilic polymer binder, particularly polysaccharides such as cellulose based polymers (as in instant claim 14; Col. 10, line 42-Col. 11, line 10); and from about 0.0001 to about 0.5 wt% metal ions, particularly metal ions that generally correspond with the metal element of the nanowires such that silver salts would be generally used with silver nanowires (as in instant claims 1 and 13), although other metal ions or combinations thereof may be used if the metal element corresponding with the metal ions corresponds with a metal element with an oxidation potential approximately comparable to or greater than the metal of the nanowires (Col. 9, line 41-Col. 10, line 8). Li teaches that the solvent for the inks generally comprises an aqueous solvent that optionally also comprises an alcohol, particularly water and from 5 wt% to about 80 wt% alcohol (as in instant claim 15), which can also function as a reducing agent (as in instant claim 13) to drive the fusing process (Col. 5, lines 58- 64; Col. 8, lines 4-8; Col. 9, lines 5-25). Li specifically teaches working examples that read upon the claimed component A) silver nanowire ink comprising solvent and from 0.05 to 1.0 wt% silver nanowires (AgNWs) as in instant claim 1 as well as instant claims 13-15, given that the examples utilize fusing solutions containing between 0.05 mg/mL and 5 mg/mL metal/silver ions in ethanol that are mixed with the silver nanowire inks comprising silver nanowires, a cellulose based polymer, alcohol and water, in a ratio of AgNW ink to fusing solution by volume of 3:1 or 4:1 (thus an ion content as in instant claim 13; Examples).
Li also teaches that in producing the transparent conductive films, a polymer overcoat composition may be applied over the conductive film formed from the nanowire ink to provide one or more polymer overcoats as a protective cover thereon (Col. 14, lines 4-25), wherein suitable polymers for the polymer overcoat include the polymers listed for use as the substrate in Col. 14, lines 8-20, and/or the curable resins that are described for inclusion in the inks (Col. 14, lines 4-25), with specific reference to UV curable hardcoat polymers as examples thereof (Col. 14, lines 21-25; as in new claim 28), and can be dissolved in aqueous or non-aqueous solvents (as in instant claim 9) such as curable polyurethanes, acrylic resin, polyesters and epoxy containing polymers that can be self-crosslinked and/or crosslinked with a photoinitiator or crosslinking agent, with examples thereof including commercially available acrylic and/or polyurethane resins (as in instant claims 6-7; Col. 11, lines 31-60). Li teaches that the polymer overcoat can be applied by solution coating techniques utilizing polymer overcoat coating solutions which generally have between about 0.1-80% by weight solids (thus a solvent content as in instant claims 10-11), and comprise polymer or polymer precursor, solvent, and additives, particularly conductive particles that can have average particle diameters in the range from about 3 nm-20 microns, and may be composed of metals, metal oxides, or conductive organic materials, present in a range from 0.0001-1.0 wt % of the coating solution (Col. 15, line 55-Col. 16, line 38). Li teaches that “[w]hile the overcoats should not achieve a high level of electrical conductivity, these conductive particles can allow for thicker overcoats to be deposited and still allow for electrical conductivity to trace electrodes” and that a thicker overcoat provides corresponding stabilization advantages, thus a “stabilization overcoat” as in the instant invention (Col. 16, lines 12-32).
Li also teaches that “[f]or applications as transparent conductive films, it is desirable for the fused metal nanowire networks to maintain good optical transparency,” and that in some embodiments, the film formed by the fused network has a total transmittance of visible light (TT %) “of at least 80%, in further embodiments at least about 85%, in additional embodiments, at least about 90%, in other embodiments at least about 94% and in some embodiments from about 95% to about 99%” (Col. 17, lines 18-63). Li teaches that the polymer of the one or more polymer overcoats applied to provide the protective cover as noted above, can be selected to maintain optical transparency (Col. 14, lines 1-7), with suitable polymers including curable resins as noted above (Col. 14, lines 21-28); and that “other layers can be added on top or in between the conductive film and substrate to reduce reflective losses and improve the overall transmission of the stack (Col. 14, lines 25-28). Li more particularly teaches that the polymers of the overcoats “can be selected for the overcoat to have good optical transparency” and that “[i]n some embodiments, the optical properties of the films with the polymer overcoat are not significantly different from the optical properties described above for the electrically conductive film” (Col. 16, lines 33-39); and hence, Li provides a clear teaching and/or suggestion that the overcoat is a “transparent coating” or more specifically in the case of a curable resin overcoat, “cures to form a transparent coating” as in amended claim 1, with a clear teaching and/or suggestion of a total transmission of visible light of at least about 85% as in instant claim 29.
Hence, with respect to amended claims 1, 6-7, 9-11, and 13-15, and new claims 28-29, Li teaches a system for forming a stabilized transparent conductive film comprising: A) a silver nanowire ink comprising solvent and silver nanowires as recited in instant claims 1 and 13-15; and B) an overcoat precursor solution comprising curable polymer precursors and solvent as in instant claim 1, particularly precursors that upon curing form a transparent coating as in instant claim 1 and form a matrix comprising polyurethanes and/or acrylic resins as recited in instant claims 6-7, that may include non-aqueous solvents as in instant claim 9, with contents as in instant claims 10-11, and may be UV curable as in new claim 28, providing a film having a total transmission of visible light as recited in instant claim 29; and although Li teaches that the overcoat solution may further comprise metals, metal oxides, or conductive organic materials present in a range from 0.0001-1.0 wt % of the coating solution, Li does not teach that the overcoat solution comprises from about 0.1 wt% to about 9 wt% of a stabilization composition relative to the solid weight, wherein the stabilization composition comprises a metavanadate (VO-3) salt, an orthovanadate (VO4-3) salt, a vanadium oxytrialkoxide (VO(OR)3) where R is an alkyl group, a vanadium oxytrihalide or combinations thereof as recited in amended claim 1, or more particularly, the vanadium compounds as recited in instant claim 3 and/or amounts as in instant claim 5.
However, as discussed in the prior office action, Gurtler teaches a one-component polyurethane coating system that can be utilized for preparing paints, inks (e.g. as in Li), adhesives, baking enamels, and other formulations, useful in various applications including as topcoat materials (e.g. polymer overcoat as in Li), wherein the one-component polyurethane system includes one or more organic and/or inorganic compounds of vanadium in which the vanadium has an oxidation state of at least +4 (Abstract; Paragraphs 0002, 0027, 0041, 0085, and 0087). Gurtler teaches that the polyurethane system comprises: (a) blocked polyisocyanates that may be monomeric isocyanates, oligomeric polyisocyanates, as well as polyurethane-, polyester- and/or polyacrylate-based polymers containing free isocyanate groups (reading upon the claimed “curable polymer precursors are UV curable” as recited in instant claim 28 given that said precursors taught by Gurtler are capable of being cured by UV radiation), that are blocked with a suitable blocking agent and may be formed from further synthesis components C that allow for UV irradiation for further crosslinking (i.e., “UV curable” as in instant claim 28; Paragraphs 0033-0034, 0042-0047, and 0056); (b) polymers having polyisocyanate-reactive groups such as polyhydroxy polyacrylates and polyacrylate-modified polyester polyols (Paragraphs 0066-0072); (c) the one or more organic and/or inorganic compounds of vanadium in which vanadium has an oxidation state of greater than or equal to +4 as catalysts for accelerating the crosslinking reaction (Paragraph 0076); (d) water and/or organic solvents or solvent mixtures (as in instant claim 9); and (e) if desired, further additives and auxiliaries, with the amounts of (a)+(b) being from 20 to 89.9 parts by weight, (c) from 0.01 to 5 parts by weight, (d) from 10 to 70 parts by weight, and (e) from 0 to 10 parts by weight, with the sum (a) to (e) being 100 (reading upon the claimed weight percentage ranges as recited in instant claims 1, 5, 8, 10-11; the claimed “nonaqueous” solvent of instant claim 9, as well as the claimed “curable polymer precursors form a polymer matrix upon curing, wherein the polymer matrix comprises…polyurethanes, acrylic resins, acrylic copolymers” as in instant claim 6, and “form a crosslinked acrylic resin polymer matrix upon curing” as in instant claim 7, particularly in light of the working examples comprising a urethane acrylic resin upon curing; Paragraphs 0017-0025, Examples). Gurtler specifically teaches that examples of preferred vanadium compounds for (c) include ammonium, lithium, sodium and potassium vanadate; lithium, sodium and potassium orthovanadate; magnesium vanadate; calcium vanadate; vanadyl(IV) acetylacetonate (VO(C5H7O5)2); vanadyl bistetramethylheptadionate VO(TMHD)2; and vanadic acid (Paragraph 0078), with preference given to derivatives of vanadic acid and/or of orthovanadic acid, especially orthovanadates, as well as lithium metavanadate LiVO3, sodium metavanadate NaVO3, and potassium metavanadate KVO3, reading upon the claimed “stabilization composition” of instant claims 1 and 3 (Paragraphs 0076-0079). Gurtler also teaches that adding the vanadium compounds into the one-component polyurethane can improve the chemical resistance thereof as well as reduce the curing temperature as demonstrated by the working examples utilizing sodium metavanadate (Examples, Paragraphs 0093 and 0100); and given that Gurtler does not limit the substrate or application for use of the polyurethane system and broadly recites the use as an ink or topcoat, including baking enamels that “may comprise pigments or may be pure topcoat materials” (Paragraph 0087) with working examples specifically providing clearcoats (Examples, thus clearly teaching and/or suggesting that the “precursor solution cures to form a transparent coating” as in instant claim 1); while Li does not limit the polyurethane composition utilized for the protective polymer overcoat and broadly recites commercial polyurethanes that may be utilized in the ink such as curable one-component polyurethane compositions (e.g. JONCRYL® brand acrylic copolymers by BASF Resins include polyurethane acrylic resin, SANCURE® brand urethanes from Lubrizol Advanced Materials, BAYHYDROL™ brand polyurethane dispersions from Bayer Material Science, and UCECOAT® brand polyurethane dispersions from Cytec Industries, Inc.; see Col 11, lines 40-50 of Li), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the polyurethane coating composition taught by Gurtler for the polyurethane overcoat in the invention taught by Li given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results, or alternatively, to incorporate one or more organic and/or inorganic compounds of vanadium in which the vanadium has an oxidation state of at least +4 as taught by Gurtler, particularly the above metavanadates and/or orthovanadates reading upon the instantly claimed “stabilization composition” into the polyurethane overcoat composition taught by Li to improve properties thereof as taught by Gurtler, given that it is prima facie obviousness to combine prior art reference teachings to arrive at the claimed invention where there is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference. Hence, the claimed invention as recited in instant claims 1, 3, 5-11, and 13-15 as well as new claims 28-29 would have been obvious over the combined teachings of Li in view of Gurtler.
Further, with respect to instant claim 12, it is again noted that Li clearly teaches that the nanowire ink composition may further comprise from about 0.0001 to about 0.5 wt% metal ions provided in the form of metals, particularly metal ions that generally correspond with the metal element of the nanowires although other metal ions or combinations thereof may be used as discussed above, wherein Li teaches the use of silver as well as cobalt for the nanowires (Col. 8, lines 36-40), and Li teaches that the counter ion of the metal salts is not particularly limited with suitable anions including nitrates, sulfates, acetates, and the like (Col. 9, lines 41-67), such that cobalt (II) nitrite as in instant claim 12 would have been obvious as a suitable metal salt compound to provide cobalt ions and any amount within the amount taught by Li would have been obvious to one skilled in the art and fall within the claimed wt% relative to the total weight of the silver nanowire ink as instantly claimed. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 12 would have been obvious over the teachings of Li in view of Gurtler.
Response to Arguments
Applicant's arguments filed 10/31/2025 have been fully considered but are not persuasive and/or moot in view of the additional remarks above with respect to the teachings of Li in view of Gurtler as applied above to the amended/new claims. Specifically, the Applicant argues that “Gurtler describes polyurethane systems that can be incorporated into formulations for paints, inks or adhesives (Abstract),” wherein “[t]he product formulations are referred to as one-component baking systems because they contain (a)-(e),” with component (e) comprising auxiliary components such as pigment colorants”, and that “[a]lthough not explicitly stated, a one-component baking system containing (a)-(e) has all the components necessary for forming a baked enamel such as for passenger cars” referring to paragraph [0087] of Gurtler (see page 6, last full paragraph of the response filed 10/31/2025). The Applicant argues that “Gurtler [allegedly] provides no information regarding the transparency of coatings formed from the polyurethane systems or from the paints, inks and adhesives that include the polyurethane systems” and that “regarding currently amended claim 1, there is [allegedly] no motivation to combine the references as suggested in the rejection,” arguing that “Gurtler is directed to forming a base for paints and the like” and that “[t]hus, there would be expected to be other additives into the composition” wherein “[t]he resulting materials [allegedly] would not be transparent” (see last full paragraph on page 6 and the paragraph bridging pages 6-7). The Applicant then argues that “Li and the presently claimed invention are directed to transparent films” and that “[s]ince the use of the Gurtler materials [allegedly] would destroy the Li films for their intended use, there is [allegedly] no motivation to combine the references” (see paragraph bridging pages 6-7). However, the Examiner respectfully disagrees and first notes that Gurtler is not limited to applications for passenger cars nor applications that require pigment colorants as clearly evident from Paragraph 0087 which more broadly states that the “one-component baking systems of the invention are used to prepare baking enamels, for industrial coating, for example, and in the OEM finishing of passenger cars” and that “[t]hese baking enamels can be, for example, primers, surfacers and topcoat materials” wherein the “baking enamels may comprise pigments or may be pure topcoat materials” (emphasis added, Paragraph 0087). The Examiner also notes that Gurtler clearly teaches that component (e) is optional, added “if desired”, may be present in a content of 0 to 10 parts by weight, and is not limited to pigment colorants but instead may be fillers, leveling agents, defoamers, and catalysts other than the catalyst (c); and given that Gurtler specifically teaches working examples that are “clearcoat” formulations, thus clearly implying transparency, that include a commercially available leveling agent/defoamer (ADDITOL® XW 395 - a known leveling, wetting, and antifoaming agent available from Allnex as evidenced by the attached ADDITOL® XW 395 Technical Datasheet) and no pigment colorants, wherein the incorporation of sodium orthovanadate into the coating system provides better chemical resistance, Applicant’s arguments over Gurtler, particularly that Gurtler allegedly “would destroy the Li films for their intended use” are not persuasive. Hence, given again that Gurtler clearly teaches that the polyurethane one-component compositions containing the one or more organic and/or inorganic compounds of vanadium in which vanadium has an oxidation state of at least +4 may be utilized, in general, for paints, inks, and other formulations including adhesives, primers, surfacers, and topcoats or clearcoats, e.g., overcoat as in Li, for general industrial coatings and not just limited to OEM finishing of passenger cars; and can be further crosslinked/cured by UV irradiation as discussed in detail above (Entire document, particularly Abstract; Paragraphs 0002-0003, 0027, 0041, 0048, 0056, and 0085; and Examples), and that Li clearly teaches a system for forming a transparent conductive film having total transmission properties as instantly claimed and comprising a silver nanowire ink and overcoat composition comprising curable polymer precursors as in the claimed invention, Applicant’s arguments are not persuasive and the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Li in view of Gurtler for the reasons discussed in detail above as applied to amended claims 1, 3, and 15, and new claims 28-29.
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.
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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