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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-7 and 16-20) in the reply filed on June 30, 2026 is acknowledged. Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 16-20 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.
Regarding claim 1, there are four (4) sets of parentheses which render the claim indefinite because it is unclear if the limitations within the parentheses are positively recited. Please remove the parenthesis from the claim for clarity.
The remaining claims are rejected for being dependent upon a previously rejected claim.
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.
Claim(s) 1-7 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata (US 2014/0363760).
Regarding claims 1 and 3, Hirata teaches a resin composition which comprises a solvent such as diethylene glycol monobutyl ether acetate ([0148]) and a polycarbonate with the following structures:
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(Claims)
Hirata fails to specifically exemplify the claimed invention. However, Hirata discloses each of the components of the composition and teaches that they are all suitable for use in the resin composition. It is within the ordinary level of skill in the art to make any of the resin compositions suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the resin compositions suggested by Hirata, including the claimed invention. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Hirata. It would have been nothing more than using known components in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Regarding claim 2, Hirata teaches that the amount of the polycarbonate in the polycarbonate and solvent mixture ranges from 01 to 40 % by mass ([0152]).
Regarding claim 4-7, Hirata teaches a resin composition which comprises a solvent such as diethylene glycol monobutyl ether acetate ([0148]) which has a boiling point of approximately 245 C.
Regarding claim 16, Hirata teaches that the composition is a printing ink (as it is a liquid that can be spread by ink spreading methods) ([0188]).
Regarding claim 17, it is noted that the limitation “for 3D printers” is an intended use limitation and as there is no structural difference between the prior art resin solution and the presently claimed invention, the prior art teachings read on the claimed invention.
Regarding claim 18-20, Hirata teaches an electroconductive paste made from the resin composition according to claim 1 (Examples, [0209]) which is also a coating solution and forms a film.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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