DETAILED ACTION
Claim Rejections - 35 USC § 112
The rejections of claims 14 and 32 made under 35 U.S.C. 112 in the previous Office Action are withdrawn in view of Applicant’s amendment, filed May 21, 2026.
Claim Rejections - 35 USC § 103
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.
Claims 14, 32, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Lawrence (US PG Pub. No. 2012/0279874) in view of Xing (US PG Pub. No. 2011/0171364) and Baccarin (Baccarin, M. et al.; Mater. Sci. Eng. C, 2020, 114, p. 1-8).
Regarding claims 14, 32, and 34, Lawrence teaches a hybrid including 1,2-dihydroxyanthraquinone (i.e. "alizarin", which has the chemical structure recited in claim 1) immobilized on conductive carbon electrode substrate (par. 112, 113).
The teachings of Lawrence differ from the current invention in that the hybrid discussed above is not taught to be a "noncovalent hybrid". However, Lawrence does disclose that the carbon electrode may be made up of single-walled carbon nanotubes (SWCNTs) and that the alizarin is immobilized on the electrode substrate (par. 113). While the electrode shown in Figure 12 includes alizarin and another compound, Lawrence teaches that two separate electrodes, one with each of the immobilized compounds, may be used instead of the electrode with the two immobilized compounds (par. 112). Lawrence also teaches that his methods of applying alizarin result in physical attachment of the compound to the underlying electrode and makes no disclosure of the interaction between the alizarin and the substrate being covalent (par. 115). As an alternative to the above method, Lawrence teaches derivatizing to covalently bond a different compound to a carbon electrode (par. 117), thereby implying that the carbon-alizarin hybrid discussed above, which is not "derivatized" is noncovalent. Lawrence further teaches that carbon electrode materials may be applied to plastic or polyester substrates (par. 136). Accordingly, it would have been obvious to one of ordinary skill in the art to make an electrode comprising a substrate with a coating of SWCNTs with alizarin immobilized, but not covalently bound, onto the SWCNTs because Lawrence teaches that such a combination of materials is appropriate and useful for his product, makes no disclosure of covalently bonding alizarin to carbon electrode materials, and implies that the immobilized alizarin is not covalently attached to the substrate.
The teachings of Lawrence differ from the current invention in that he does not teach preparing his SWCNT-alizarin hybrid by sonicating in a solvent to form a dispersion followed by centrifugation, filtration, or precipitation prior to coating the material on the substrate. However, such requirements are product-by-process limitations. Product-by-process claims are not limited to the recited processing steps, but rather the structure implied by the procedure. See MPEP 2113. As no parameters are recited about the milling and sonication processes and no requirements (e.g. composition in terms of mass percentages of SWCNTs and alizarin, level of uniformity, etc.) are recited about the dispersion, the claim requirements that a mixture of the hybrid is milled or sonicated to form something that qualifies as a “dispersion” and eventually purified implies very little about the actual structure that is achieved.
Lawrence does exemplify forming a carbon nanotube hybrid by stirring together the carbon nanotubes (“CNTs”) with the redox-active compound (i.e. which is the function of alizarin in Lawrence’s product) followed by eventual filtration and washing (par. 116). As just noted, given that no amount of sonication or uniformity of the dispersion is claimed, a CNT hybrid formed by Lawrence’s mixing-and-washing method has the limited structure that is implied by the recited product-by-process limitations.
Xing further teaches that dispersing CNTs, such as SWCNTs, in a liquid can be difficult because the nanotubes entangle into large agglomerates, but also discloses that milling and sonication can be used to reduce the size of such agglomerates (par. 33, 45). Xing further teaches using milling and sonication to uniformly disperse carbon nanotubes in a solution with a liquid vehicle, which he teaches may be aqueous or organic (par. 41-43, 54). After dispersing the CNTs, the solution can be further treated with centrifugation or filtration prior to use (par. 50, 52). Therefore, it would have been obvious to one of ordinary skill in the art to combine Lawrence’s SWCNTs and alizarin in an aqueous or organic solution and to use milling and sonication to make a uniform dispersion of the mixture for application onto a substrate (discussed above) because Lawrence demonstrates that combining CNTs with a redox-active compound in a solution is an appropriate method of making a carbon-hybrid for his product and because Xing teaches that sonication and milling are useful in overcoming the difficulties of dispersing CNTs in solution and in making uniform CNT dispersions, and in order to create a uniform dispersion of Lawrence’s SWCNTs and alizarin. It also would have been obvious to one of ordinary skill in the art follow such a process with filtration and, optionally, centrifugation prior to use/application of the CNT-hybrid on a substrate, thereby yielding a homogenous hybrid on the substrate after deposition, because Lawrence and Xing teach such methods are appropriate in preparing CNT mixtures and in order to purify and reduce the solvent content in the mixture, thereby making it appropriate for further use. As the product of Lawrence and Xing is made by forming a homogenous dispersion of SWCNTs and alizarin, the formed hybrid is also expected to be substantially homogenous prior to depositing on a substrate. Furthermore, the requirement that the hybrid is purified does not distinguish the claims over the prior art because it is prima facie obvious to purify a known products. See MPEP 2144.04 (VII).
The teachings of Lawrence also differ from the current invention in that he does not teach that his SWCNT-coated substrate is one of the recited materials. However, as noted above, Lawrence’s SWCNT-containing device is an electrode and Lawrence teaches that the substrate can be plastic or polyester, thereby making clear he is open to the substrate being made of polymeric materials. Baccarin further teaches using polyurethane as a material for electrodes in sensing devices and discloses that polyurethane is beneficial because it is a sustainable, ecofriendly material that can be cured at room temperature and avoids swelling in aqueous media (p. 1, left, right col.). Accordingly, it would have been obvious to one of ordinary skill in the art to use polyurethane as or in the substrate of Lawrence’s electrode, as discussed above, because Lawrence is clearly open to polymeric substrates and because Baccarin discloses that polyurethane is an appropriate and useful material for electrodes that advantageously is a sustainable, ecofriendly material that can be cured at room temperature and avoids swelling in aqueous media.
As no level of flexibility or stretchability are claimed or defined to qualify a material as "flexible" and "stretchable", any material capable of any level of flexing or stretching qualifies as "flexible" and "stretchable". Therefore, Lawrence's material including a hybrid and a polyurethane substrate qualifies as "flexible" and "stretchable" in the context of the claims because it is capable of at least some flexing and stretching.
Additionally, as no level of stretching is recited in claim 14, as no type or level of conductivity is claimed, and as no area or distance over which conductivity occurs is claimed, the noncovalent hybrid in a material comprising SWCNT and alizarin with the recited structure and a flexible substrate rendered obvious by the prior art for the reasons discussed above meets the claim requirements because it demonstrates at least some level of at least some type (e.g. electrical or thermal) of conductivity over at least some area or distance upon at least some, minimal level of stretching of the material. Furthermore, as no level or type of conductivity is claimed and no distance over which the material must be conductive is claimed, the requirement that “the material remains conductive upon stretching the material to a length that is 600 % of its original length”, as recited in claim 32, only requires that the material demonstrate some level of some type of conductivity over some distance, regardless of how small, when the material is stretched as claimed. Even if the level of electrical conductivity of the overall material was reduced or lost upon this level of stretching, the material would retain at least some, non-zero level of thermal conductivity and, therefore, still meet the claim requirement.
The rejections of claims 14 and 32 under 35 U.S.C. 103 as being unpatentable over Hashimoto (US PG Pub. No. 2014/0093773) et al. are withdrawn in view of Applicant’s amendment, filed May 21, 2026.
Response to Arguments
Applicant's arguments filed May 21, 2026 have been fully considered but they are not persuasive or are moot in view of current rejections. The Declaration by Dr. Rybtchinski, filed on May 21, 2026, is acknowledged and will be addressed below in conjunction with Applicant’s arguments.
Applicant has argued and Dr. Rybtchinski has asserted that the claimed invention is distinguished over the Lawrence et al. because claim 1, which is referred to in claim 14, recites a single-walled carbon nanotube (SWCNT)-alizarin hybrid that has been prepared by sonication and optional milling. To support this argument, Applicant and Dr. Rybtchinski have asserted that the recited method allows a uniform, organized 3D network of SWCNTs to be formed, which results in improved mechanical and electrical properties as compared to a mixture that was not subjected to sonication and optional milling. However, preliminarily, it is noted that the claims contain no recitations of an organized, 3D network or of any uniformity. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, the new recitations are product-by-process limitations. Product-by-process claims are not limited to the recited processing steps, but rather the structure implied by the procedure. See MPEP 2113. As no parameters are recited about the milling and sonication processes and no requirements (e.g. composition in terms of mass percentages of SWCNTs and alizarin, level of uniformity, etc.) are recited about the dispersion, the claim requirements that a solution of the hybrid is milled or sonicated to form something that qualifies as a “dispersion” (claim 14) and eventually purified (claim 34) implies very little about the actual structure that is achieved. In particular, it cannot be concluded that the structure Applicant and Dr. Rybtchinski describe is achieved from the limited parameters that are recited because there is no evidence that any mixture of SWCNTs and alizarin sonicated under any conditions would form a network with the organization and properties that have been purported. It is also not clear from the instant disclosure and Declaration that a SWCNT-alizarin mixture made according to Lawrence would fail to have the limited structure that implied by claim 1. As also discussed above, it would have been obvious to sonicate and mill a mixture of SWCNTs and alizarin, as taught by Lawrence, in view of Xing’s teachings that dispersing CNTs in a solvent can be difficult because the CNTs entangle into agglomerates and that milling and sonication can be employed to overcome this challenge and create uniform CNT dispersions.
Applicant and Dr. Rybtchinski have also argued that the recited combination, wherein SWCNTs and alizarin or purpurin are sonicated together, provides unexpectedly good performance because alizarin and purpurin are structurally different from other dispersants that are used to aid in suspending CNTs in solution and because the combination achieves the aforementioned uniform, 3D network without eliminating electrical conduction due to the presence of the dispersant. Applicant and Dr. Rybtchinski have also pointed to some measurements that demonstrate that the deposited hybrid remains conductive on a flexible substrate after stretching and deformation. However, while the presented data and explanations are appreciated, they are not sufficient to show nonobviousness or unexpected results of the claimed product for a few reasons.
First, the rejections are not based on using alizarin as a dispersant, but rather as a redox-active compound. 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). At least with respect to Lawrence et al., the use effectiveness of alizarin as a dispersant is not relevant.
Second, as discussed above, Xing teaches that aggregation of CNTs in solution is a known problem that can be solved with sonication. Therefore, an improved, more uniform dispersion would be expected if a solution containing the prior art SWCNTs was sonicated.
Third, as discussed above, claim 1 and claim 14 are not commensurate with the products that demonstrated the beneficial results. As discussed in Dr. Rybtchinski’s Declaration and the instant disclosure, Examples 1 and 2 were made with a specific mixture (i.e. 1:1 w/w mixture) of SWCNTs and alizarin and sonicated for a specified amount of time (i.e. 30 minutes) (Declaration, #15; Applicant’s published application, par. 111). As no temperature has been taught, the sonication is presumed to have been performed without additional heating. Several layers of the mixture were then spray coated in onto paper, heat-dried, and laminated onto a polymer substrate (Applicant’s published application par. 111). Although there are several different parameters that were set to produce the exemplified products, claims 1 and 14 only recite that SWCNTs and alizarin have been mixed and sonicated before deposition.
There is no reason to believe from the presented examples or data that a different mixture of SWCNTs and alizarin (e.g. a 100:1 mixture or a 1:100 mixture) in a different solvent (e.g. water or hexane) that is sonicated at for a different duration of time would perform in the same manner. Notably, Figure 2 demonstrates that different solvents produce different qualities of dispersions (e.g. the mixture in acetonitrile in 2B appears to be mostly uniform, whereas the mixtures in acetone, 2C, and tetrahydrofuran, 2E, are not). It is also unclear that a material made with a different number of layers (e.g. one or two layers) of the hybrid dispersion or a different method of applying (e.g. dip coating) the hybrid to a flexible substrate would perform in the same manner as Examples 1 and 2. Therefore, the claims are not commensurate in scope with the examples that demonstrated beneficial results and insufficient evidence has been provided to establish that the products spanning the broad scope of claims 1 and 14 would also demonstrate unexpected results.
Applicant’s arguments with respect to Hashimoto are moot because they do not apply to the current rejections.
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 JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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