DETAILED ACTION
The following Office action concerns Patent Application Number 18/278,752. Claims 1-15 are pending in the application.
Claims 1-6 and 9-13 have been withdrawn from consideration as being drawn to non-elected inventions.
The applicant’s amendment filed March 27, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 112 that form the basis for the rejections under this section made in this Office action:
(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 8 and 15 are rejected under 35 U.S.C. § 112(b) because the term “the conducting polymer layer” lacks antecedent basis. MPEP § 2173.05(e). Although claim 1 recites a conducting polymer layer, the process steps in claim 1 are not required for the compositions claims. The term in claim 7, “which is obtainable by the process according to claim 1” is merely explanatory, because it does not require the composition to be made by the process of claim 1, but merely to be obtainable by it.
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.
Claims 7 and 14 are 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). The particles include Fe2O3 (maghemite)(col. 3, line 1). Fe2O3 is known in the art to contain iron with +3 oxidation state.
The term “which is obtainable by the process according to claim 1” is merely explanatory, because it does not require the composition to be made by the process of claim 1, but merely to be obtainable by it.
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
New grounds of rejection are presented above.
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 May 20, 2026
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