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 .
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.
Claim(s) 1-2, 8-10, 12-13, 15-16, 20, 23 and 54-55 are rejected under 35 U.S.C. 103 as being unpatentable over An et al. (WO 2015/102320) in view of Karna et al. (US 5,340,499).
Regarding claims 1 and 20, An et al. teaches a composition comprising a conductive polymer, a solid extender containing a metal salt, an antioxidant and an organic solvent (See Abstract), wherein the metal salt includes sodium octylsulfonate, potassium octylsulfonate, etc. (pages 4-5) which are alkali metal salt and is present in an amount of 0.01-10 wt% (page 5) which encompasses the claimed range of about 2 to about 7 wt% and in combination with the antioxidant which is present in an amount of 0.01-10% (page 3), the total amount of the alkali metal salt and antioxidant would overlap the claimed range of less than 9 wt%. As set forth in MPEP 2144.05, in the case where the claimed range “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); see MPEP 2144.05.
An et al. fails to teach the polyaniline conducting polymer as claimed.
However, Karna et al. teaches an electrically conductive composition comprising protonic acid including dodecylbenzene sulfonic acid that protonates with polyaniline to form a salt complex with polyaniline (col. 6, lines 13-15 and 46-51).
It would have been obvious to one of ordinary skill in the art to use protonic acid with the polyaniline of An et al. in order to impart greater conductivity (col. 6, lines 13-25 and 51-55).
Given that An et al. in view of Karna et al. teaches a polyaniline conducting polymer including polyaniline salt and organic solvent identical to that used in the present invention, the polyaniline conducting polymer is considered inherently solution processable and inherently greater than 95% of the polyaniline salt would be dissolved in the organic solvent.
It is noted the limitation regarding how the polyaniline conducting polymer is made in-situ by polymerizing an aniline monomer with a protonic acid is considered a process limitation. It is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that An et al. in view of Karna et al. meets the requirements of the claimed polyaniline conducting polymer, An et al. in view of Karna et al. clearly meets the requirements of present claims.
Regarding claim 2, An et al. teaches wherein the formulation further comprises organic binder (page 4), i.e. one or more film formers.
Regarding claims 8, 9, 10, and 12, note that because claim 1 is in the form of alternatives, and An et al. teaches alkali metal salt, it is not required that An et al. meet the further limitation of the non-selected groups via subsequent dependent claims.
Regarding claim 13, An et al. teaches wherein the second thermal stability agent, i.e. antioxidant comprises an amount of 0.01-10% (page 3), which encompasses the claimed range of about 0.5 wt% and about 3 wt% of the formulation.
Regarding claims 15 and 16, An et al. teaches wherein the antioxidant includes octadecyl-3- (3,5-di-tert-butyl-4-hydroxy Oxyphenyl) propionate (page 5), i.e. hindered phenol.
Regarding claim 23, An et al. teaches wherein the amount of the polyaniline conducting polymer (as a weight % of total formulation) is between comprises 5 to 80 wt% (page 4) which overlaps the claimed range of about 80 wt% to about 90 wt% of the formulation.
Regarding claims 54 and 55, An et al. teaches 5-80 wt% of the conductive polymer (See Abstract, page 4). As set forth in MPEP 2144.05, in the case where the claimed range “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); see MPEP 2144.05.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over An et al. (WO 2015/102320) in view of Karna et al. (US 5,340,499) and further, in view of Watanabe et al. (JP 2009270047).
An et al. in view of Karna et al. is relied upon as disclosed above.
Regarding claims 4, 5, and 6, An et al. in view of Karna et al. fails to teach the alkali metal salt as claimed.
However, Watanabe teaches a conductive composition comprising polyaniline (page 8) and filler including calcium carbonate, magnesium carbonate, etc. (page 10).
It would have been obvious to one of ordinary skill in the art to include calcium carbonate as the alkali metal salt of An et al. in view of Karna et al. in order to impart desired properties such as strength.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over An et al. (WO 2015/102320) in view of Karna et al. (US 5,340,499) and further, in view of Hayasaka et al. (JP 5892282).
An et al. in view of Karna et al. is relied upon as disclosed above.
Regarding claim 7, An et al. fails to teach wherein the alkali metal has an average particle size.
However, Hayasaka et al. teaches a conductive adhesive (See Abstract) comprising a conductive filler including polyaniline (page 7) and inorganic filler including calcium carbonate having an average particle diameter of 0.01 to 10 µm (page 10), which overlaps the claimed range of less than about 2 µm.
It would have been obvious to one of ordinary skill in the art to include calcium carbonate having an average particle diameter including that presently claimed as the alkali metal salt in order to improve punching processability of the composition (Hayasaka et al., page 10).
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
Applicant amended claim 1 to recite “wherein the polyaniline conducting polymer is an organic solvent soluble polyaniline conducting polymer salt made in-situ by polymerizing an aniline monomer with a protonic acid” from cancelled claim 18 and added new claims 54-55.
Applicant argues that the specification contrasts formulations made by dissolving pre-formed polyaniline polymer in a solvent as opposed to polymerizing in-situ and therefore the feature “greater than 95% of polyaniline salt dissolved in the organic solvent” would not be inherent.
However, there is no evidence, i.e. data to support this position.
Applicant argues that An nor Karna teach or suggest in-situ polymerization of an aniline monomer with a protonic acid, or greater than 95% of polyaniline salt dissolved in the organic solvent.
However, the claimed in-situ limitation considered a process limitation as set forth in the rejection above, absent evidence to the contrary. Given that An in view of Karna disclose composition identical to that presently claimed, the composition would inherently have greater than 95% of polyaniline salt dissolved in the organic solvent. There is no evidence, i.e. data that the process of An in view of Karna would not result in the property presently claimed.
Conclusion
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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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