DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 12, 2025 has been entered.
Election/Restrictions
Newly submitted claim 33 is directed to an invention that is independent or distinct from the invention originally elected for the following reasons: claim 33 depends from claim 1, which recites an invention that was non-elected in Applicant’s response, filed on December 10, 2024 to the Restriction Requirement mailed on September 27, 2024.
Since Applicant has received an action on the merits for the originally-elected invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 33 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should Applicant traverse on the ground that the inventions are not patentably distinct, Applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 14 and 32 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claim(s) contains subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. In particular, as claim 14 recites a material comprising the non-covalent hybrid of claim 1, the hybrid of claim 14 must meet the requirements of claim 1. As claim 1 has been amended to recite a non-covalent hybrid comprising a single-walled carbon nanotube (“SWCNT”) or nanotubes (“SWCNTs”) with a specific length and diameter, claim 14 also requires one or more SWCNTs with a specific length and diameter, neither of which are recited in the original disclosure. Although Applicant has pointed to a website (https://tuball.com/) for support of these limitations (Applicant’s Remarks filed 11/13/25, p. 5), the original disclosure does not appear to recite any specific product number or model that was used to source the SWCNTs used in the disclosed and claimed invention. Therefore, it is not clear that the webpage Applicant has cited describes the SWCNTs that were used to make the instantly claimed product. Applicant is requested to point out where in the original disclosure support for the new claim limitations can be found.
Applicant’s arguments also indicate that the dimensions have unique characteristics that result in the beneficial effects demonstrated by the claimed invention (Applicant’s Remarks filed 11/13/25, p. 6-8). As such, the fact pattern of this case raises a reasonable rejection under 35 U.S.C. 112(a) because Applicant is now alleging that SWCNTs with the newly claimed dimensions is a different invention than the what was originally disclosed (i.e. SWCNTs with no specified dimensions) since the newly claimed ranges are held to have properties unique from the originally disclosed (limitless) ranges, as evidenced by Applicant’s arguments. Additionally, the original disclosure provides no discussion of the importance of the dimensions of SWCNTs, much less the specific dimensions that are now claimed and disclosed by Applicant to result in unique characteristics that are not necessarily inherent to all SWCNTs, or SWCNTs of any dimensions.
In instances where a newly claimed range is alleged to have properties unique from the originally disclosed range and the originally filed application is void of any such guidance, one of ordinary skill in the art would not have appreciated the criticality of the narrower range based on the original disclosure. With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (ССРА 1976). The subject matter sought to be patented, as a whole, need have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. The original disclosure to the narrower range and allegations of criticality to the narrower range would not have been apparent to a person having ordinary skill in the art at the time the invention was made.
It has been held that, "[t]he Supreme Court has never suggested that it is permissible to look beyond the inventor's knowledge at the time of patent filing in determining unexpected results. To the contrary, the Supreme Court has characterized such after-acquired knowledge as an "afterthought," Ball & Socket Fastener Co. v. Kraetzer, 150 U.S. 111, 117, 116-17 (1893), and has declined to give it weight in determining patent validity. For example, in Graham v. John Deere Co., 383 U.S. 1, 25 (1966), the Supreme Court rejected the patentee's argument that his patented plow had the unexpected result of additional "flex" over the prior art, noting that "[n]o 'flexing' argument was raised in the Patent Office." See also Lincoln Eng'g Co. v. Stewart-Warner Corp., 303 U.S. 545, 550 (1938) ("If this [new feature] were so vital an element... it is strange that all mention of it was omitted [in the specification].")." See Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. August 23, 2011; No. 2010-1264.
Unexpected results (which is effectively what Applicant has alleged) must be either contained in the specification or contemporaneously known to the inventor, consistent with the written description requirement, which demands that the invention be in possession of the inventor as of the time the patent was filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010); (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.Cir.1991)); see also Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985)"; see Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc. August 23, 2011; No. 2010-1264.
Accordingly, the claimed ranges do not comply with the written description requirement and claim 14 is rejected under 35 U.S.C. 112(a) for reasons set forth above.
Claim 32 is also rejected under 35 U.S.C. 112(a) because it depends from and requires all of the limitations of claim 14.
Claims 14 and 32 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
Claim 14 is indefinite because it recites the material of claim 1 and, therefore, requires all of the limitations of claim 1, which is indefinite because it now recites a “noncovalent hybrid of a single walled carbon nanotubes (CNTs)” and later refers to “the SWCNT”. The first quoted recitation is indefinite because it appears to recite both a single single-walled carbon nanotube (“SWCNT”) and multiple SWCNTs and, therefore, it is not clear if the hybrid comprises only one SWCNT or multiple SWCNTS. The recitation of “the SWCNT” is also indefinite because it lacks proper antecedent basis due to a “SWCNT” or the acronym not being recited/defined in the claim. For the sake of compact prosecution and because there is no indication in the instant disclosure that a stretchable, flexible, and/or inflatable material would behave as claimed if it only included a single alizarin-SWCNT hybrid, claim 1 and, therefore, claim 14 is considered here to be directed to a hybrid comprising multiple SWCNTs. The recited of claim 1 “SWCNT” is interpreted herein as referring to the single-walled carbon nanotubes recited previously in the claim. Appropriate explanation and correction are required.
Claim 32 is also rejected under 35 U.S.C. 112(a) because it depends from and requires all of the limitations of claim 14.
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 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Lawrence (US PG Pub. No. 2012/0279874) in view of Tuball (Tuball, “Graphene Nanotubes”, 2020, p. 1-12) and Baccarin (Baccarin, M. et al.; Mater. Sci. Eng. C, 2020, 114, p. 1-8).
Regarding claims 14 and 32, 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 substrate by applying a solution of that is eventually evaporated (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 the diameter length of the SWCNTs used in his product are not disclosed. However, Tuball teaches SWCNTs that have a mean outer diameter of 1.6 +/- 0.4 nm and a length of greater than 5 µm (p. 3, Technical Info). Tuball discloses that such SWCNTs are beneficial because more than 70 % of all basic materials can be improved with the addition of graphene nanotubes, as disclosed, and because such nanotubes are an all-purpose additive that can improve specific characteristics of a multitude of materials (p. 1-2, text). Tuball also teaches that the disclosed SWCNTs are ultra-strong and can be used in a variety of applications, including with plastics, in composites, in electrochemical applications, and in sensors (p. 4, 7-10, text). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Tuball’s graphene SWCNTs having a mean outer diameter of 1.6 +/- 0.4 nm and a length of greater than 5 µm because they can benefit most materials, they are an all-purpose additive that can improve specific characteristics of a multitude of materials, they are ultra-strong, and they are useful in a variety of different applications including in plastics, electrochemical applications, and sensor applications.
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.
Claims 14 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (US PG Pub. No. 2014/0093773) in view of Tuball and Park (Park et al. RCS Advances, 2017, 7, p. 16244-16252).
Regarding claims 14 and 32, Hashimoto teaches a hybrid including conductive carbon nanotubes, which may be single-walled carbon nanotubes (SWCNTs) carrying 1,2-dihydroxyanthraquinone (i.e. "alizarin", which has the chemical structure recited in claim 1) (par. 63-65). The term "carrying" may mean that the alizarin is physically bonded or adsorbed to the conductive fibers (par. 62). Hashimoto exemplifies applying his hybrid of carbon nanotubes and alizarin to a surface of a current collector (par. 67). Although Hashimoto does not explicitly exemplify a material comprising a noncovalent hybrid including SWCNTs and alizarin, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to make such a structure because Hashimoto explicitly teaches that each component/feature is appropriate for his product and discloses that the alizarin may be attached to the carbon nanotubes by methods other than covalent bonding.
The teachings of Hashimoto differ from the current invention in that the diameter length of the SWCNTs used in his product are not disclosed. However, Tuball teaches SWCNTs that have a mean outer diameter of 1.6 +/- 0.4 nm and a length of greater than 5 µm (p. 3, Technical Info). Tuball discloses that such SWCNTs are beneficial because more than 70 % of all basic materials can be improved with the addition of graphene nanotubes, as disclosed, and because such nanotubes are an all-purpose additive that can improve specific characteristics of a multitude of materials (p. 1-2, text). Tuball also teaches that the disclosed SWCNTs are ultra-strong and can be used in a variety of applications, including with plastics, in composites, and in electrochemical applications (p. 4, 7-10, text). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Tuball’s graphene SWCNTs having a mean outer diameter of 1.6 +/- 0.4 nm and a length of greater than 5 µm because they can benefit most materials, they are an all-purpose additive that can improve specific characteristics of a multitude of materials, they are ultra-strong, and they are useful in a variety of different applications including in plastics and electrochemical applications.
The teachings of Hashimoto further differ from the current invention in that his noncovalent hybrid is not taught to be attached to a flexible or stretchable substrate. However, Hashimoto does teach using his product in a lithium ion battery and/or as an energy device in various applications including mobile phones, laptop computers, and hybrid cars (par. 84, 90). Park further teaches that there is an increasing demand for flexible lithium ion batteries for use in personal electronics devices, such as mobile phones, laptop computers, and other devices with roll-up displays (p. 16244). Conventional metal electrodes are not suitable for such devices because they cannot remain functional after repeated bending or folding, and, as an alternative, Park teaches that flexible substrate materials such as cellulose paper and different types of polymers may be used to support carbon nanotube electrodes while providing necessary flexibility (p. 16244). Park further teaches that polyurethane (PU), in particular, is suitable for use as a support material because it provides mechanical strength while being flexible and stretchable (p. 16244). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize a flexible, stretchable polyurethane in or as the substrate of Hashimoto's current collector, which is covered with a layer (i.e. "coating") of the SWCNT-alizarin noncovalent hybrid discussed above in order to provide the device with mechanical strength, flexibility, and stretchability, thereby making suitable for use in personal electronics devices, such as foldable/rollable mobile telephones.
Although neither of Hashimoto or Park explicitly teaches a product including a PU substrate and a noncovalent SWCNT-alizarin hybrid such that its conductivity is maintained upon stretching, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to do so because it would permit the energy device and personal electronic device containing the material to remain functional after repeated bending/stretching operations, as taught to be in demand and desirable by Park (p. 16244).
As no level of flexibility or stretchability are claimed or defined to qualify as material as "flexible" and "stretchable", any material capable of any level of flexing or stretching qualifies as "flexible" and "stretchable". Therefore, Hashimoto and Park's material including the hybrid and substrate comprising PU 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 SWCNTs 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. As Park renders obvious making Hoshimoto’s electrode stretchable to make it suitable for use in flexible and rollable devices (discussed above) it would have been obvious to one of ordinary skill in the art to make the material as stretchable as possible, including being capable of stretching to 600 % of its original length, at least in some regions, in order to allow the material to be as suitable as possible for use in the disclosed devices. It also would have been obvious to one of ordinary skill in the art to configure such a structure to remain electrically conductive after such stretching in order to allow it continue functioning as intended after stretching. 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 level, non-zero level of thermal conductivity and, therefore, still meet the claim requirement.
Response to Arguments
Applicant's arguments filed November 12, 2025 have been fully considered but they are not persuasive.
Applicant has argued that the groups of inventions no longer lack unity of invention and the withdrawn claims should be rejoined because the previously-cited references do not teach SWCNTs with the dimensions that are now claimed. However, it would have been obvious to utilize Tuball SWCNTs having the recited dimensions as the carbon nanotubes in the cited prior art products for the reasons discussed above. As such, the groups of inventions lack unity of invention because their common technical feature is not a special technical feature because it lacks an inventive step.
Applicant has further argued that the claimed invention is distinguished over Lawrence because Lawrence does not teach the recited SWCNT dimensions and allegedly discloses rigid electrode substrates, which Applicant asserts would cause someone to not be motivated to utilize a stretchable, flexible substrate. However, it would have been obvious to utilize Tuball SWCNTs having the recited dimensions and a polyurethane substrate in Lawrence’s for the reasons discussed above. Additionally, Lawrence never uses the word “rigid” and discloses that plastic or polyester substrates, both of which are at least somewhat flexible, may be used. As no level of stretchability or flexibility and no type or level of conductivity are claimed, Lawrence’s product meets the claim requirements because it has at least some flexibility and at least some, non-zero level of at least some type of conductivity after stretching.
Applicant has further argued that the claimed invention is distinguished over Hoshimoto and Park because Hoshimoto allegedly discloses conductive, rigid electrode substrates rather than flexible substrates and a expresses a preference for multi-walled carbon nanotube (MWCNTs). Applicant has also asserted that modifying Hoshimoto’s product to include a polyurethane substrate would contradict his teachings of using chemical vapor deposition (“CVD”) at high temperatures to grow CNTs on a metallic collector. However, Hoshimoto never uses the word “rigid” or requires his substrate to be rigid, and Park specifically addresses the use of metal electrodes being unsuitable for flexible electronics, teaching that electrodes employing polyurethane are more suitable for various reasons, thereby motivating using a substrate that includes polyurethane in Hoshimoto’s product. Additionally, although Hoshimoto does teach a method of making CNTs on a metal substrate, Applicant has presented no evidence that one ordinary skill in the art would be incapable of adjusting the production method to employ a polyurethane-containing substrate, if motivated to do so. With respect to Applicant’s assertion that it would not be obvious to utilize SWCNTs in Hoshimoto’s product because he prefers MWCNTs, it is noted that Hoshimoto’s explicit teaching of SWCNTs is sufficient motivation to utilize SWCNTs. Hoshimoto’s teaching of a preference for MWCNTs does not teach away from SWCNTs because it does not discredit, criticize, or otherwise discourage their use.
Applicant has also argued that the claimed invention is distinguished over Hoshimoto and Park because Park is focused on mechanical flexibility, does not teach a need for maintaining or existence of maintained conductivity after stretching, teaches MWCNTs, and makes no mention of hybrid CNT/quinone structures. However, it would have been obvious to utilize a polyurethane-containing substrate in view of Park’s teachings for the reasons discussed above. As also noted above, Hoshimoto and Park’s product meets the claim requirements regarding stretchability and conductivity because no level of stretchability or flexibility and no type or level of conductivity are claimed and because their combined product has at least some flexibility and at least some, non-zero level of at least some type of conductivity after stretching, including to the recited length. Furthermore, that Park uses MWCNTs and does not discuss CNT hybrids is immaterial because the rejections are based on Hoshimoto’s teachings, which do include SWCNTs, being modified to include Park’s substrate material rather than his nanotubes.
Applicant has also argued that the claims are distinguished over Hoshmoto and Park because neither discloses the recited SWCNT dimensions. However, it would have been obvious to utilize Tuball SWCNTs having the recited dimensions for the reasons discussed above.
Conclusion
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