DETAILED ACTION
The following Office action concerns Patent Application Number 18/278,752. Claims 1-13 are pending in the application.
Claims 1-6 and 9-13 are withdrawn from consideration as being drawn to non-elected inventions.
The applicant’s amendment filed June 2, 2025 has been entered.
The previous rejection of claim 8 under 35 USC 112 is withdrawn in light of the applicant’s amendment.
The previous rejections under 35 USC 102 and 103 are maintained in this action and discussed below.
Claim Rejections - 35 USC §§ 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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 7 is rejected under 35 U.S.C. § 102 as being anticipated by Bidan et al (US 5,264,157).
Bidan et al teaches a conducting polymer material comprising magnetic particles and conductive polymer (col. 1, lines 7-15). The conducting polymer material is a thin film, which is equivalent to a layer (col. 1, lines 7-15). The magnetic particles include iron oxide (col. 2, line 64 to col. 3, line 2).
Claim 7 is a product by process claim. Patentability of a product by process claim is based on the structure of the claimed product, not on the steps in the process to make the product. MPEP § 2113. Since the conducting polymer material of Bidan et al includes the components and structure of the claimed conducting polymer composite, the product by process requirements are satisfied.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Bidan et al (US 5,264,157) in view of Angelopoulos et al (US 5,721,299).
Bidan et al teaches a conducting polymer material as described above. Bidan et al does not teach that the material is reinforced with a polymer deposited on it.
However, Angelopoulos et al teaches a conductive polymer layer coated with an epoxy hard coat (col. 3, line 60 to col. 4, line 10). The hard coating provides scratch and abrasion resistance (id.). The epoxy hard coat reinforces the conductive polymer layer as that term is described in the instant specification. A person of ordinary skill in the art would have been motivated to combine the hard coating of Angelopoulos et al with the conductive polymer layer of Bidan et al in order to obtain scratch and abrasion resistance.
Claim 8 is a product by process claim. Patentability of a product by process claim is based on the structure of the claimed product, not on the steps in the process to make the product. MPEP § 2113. Since the conducting polymer composite of Bidan et al in view of Angelopoulos et al includes the components and structure of the claimed conducting polymer composite, the product by process requirements are satisfied.
Response to Arguments
The applicant argues that the film of Bidan et al has a different structure because the iron-containing particles have a different oxidation state. However, there is no limitation in claims 1 or 7 which specify the oxidation state of the iron-containing particles. The claims require the polymer film to contain iron oxide. Bidan et al teaches a polymer film containing iron oxide. If the iron is intended to have a specific oxidation state then that feature of the invention should be recited in the claims.
The applicant further argues that the claimed polymer film is flexible. However, there is no limitation regarding flexibility in any claim under examination. The prior art need not teach flexibility since it is not claimed.
Conclusion
No new ground of rejection was 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 extension fee 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 date of this final action.
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000./WILLIAM D YOUNG/Primary Examiner, Art Unit 1761 June 12, 2025
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