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 .
Response to Amendment
1. Applicant’s amendment and accompanying remarks filed 7/2/26 have been fully considered and entered. Claim 1 has been amended as requested.
Election/Restrictions
2. Applicant's election with traverse of Group I, claims 1-6 and 14 in the reply filed on 7/2/26 acknowledged. The traversal is on the ground(s) that Groups I-V have the same technical feature (e.g., the conjugated polymer) and thus makes a contribution over the cited TW reference set forth in the requirement for restriction mailed on 5/5/26. The cited TW does not appear to teach the claimed conjugated polymer. However, Applicants have now amended claim 1. Because Applicants have amended claim 1, the Examiner is still of the position that unity of invention does not exist. Specifically, the cited prior art of WO 2019186116 reference clearly evidences that the technical feature (e.g., the conjugated polymer does not make a contribution over the prior art. WO 2019186116 teach a polymer composition comprising the claimed conjugated polymer blended with conductive carbon materials (see abstract, page 7, 15-25, page 13, 15-20).
The requirement is still deemed proper and is therefore made FINAL.
3. Claims 7-13 and 15 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected film, device, heat sink and method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/2/26.
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 1-3, 5-6 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019186116 issued to BOURCET et al., in view of US 8741998 issued to l’Abee et al.
Specifically, regarding claims 1 and 6, the published WO reference issued to BOURCET et al., teach a polymer composition comprising the claimed conjugated polymer blended with conductive carbon (e.g., graphite) materials (e.g., fibers, nanotubes) (see abstract, page 7, 15-25, page 13, 15-20). Regarding the conjugated polymer, BOURCET et al., teach the claimed conjugated polymer.
Ar.sup.1 and Ar.sup.2 may be arranged in a cis- or trans- configuration with respect to the C.sup.2=N.sup.1 double bond and the C.sup.1=N.sup.2 double bond. Ar.sup.1 and Ar.sup.2 are preferably arranged in a trans configuration with respect to at least one of the C.sup.2=N.sup.1 double bond and the C.sup.1=N.sup.2 double bond, and are preferably in a trans arrangement with respect to both double bonds as illustrated below:
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All repeat units of the polymer may be repeat units of formula (I) or the polymer may comprise further co-repeat units. (see page 5, line 25-page 6, line 5). Said composition is used in battery materials (abstract).
BOURCET et al., does not teach that the conductive material is in flake form.
The patent issued to l’Abee et al., teach a polymer composition also comprising a conjugated polymer and conductive carbon graphite flakes (title, abstract and column 4, 45-column 5, 60 and column 20, 55-60). Said composition is also used in batteries (column 27, 5-15). The Examiner is of the position that the cited prior art references are analogous since they are both concerned with forming similar polymer compositions used to form similar products. As such, the Examiner is of the position that a person of ordinary skill in the art would recognize that the conductive filler can be in the form of a flake. The modification involves the mere substitution of one material with another material known for its suitability as a conductive filler and would yield a predictable variation whose application is well within the skill of the art.
Regarding claim 2, I’Abee et al., teach using boron nitride flakes as the conductive filler (column 20, 65-column 21, 15).
Regarding claim 3, the combination of cited prior art does specifically teach the claimed aspect ratio; however, flakes and fibers are known to have a higher aspect ratio. Absent a clear and convincing showing of unexpected results demonstrating the criticality of the claimed aspect ratio, it would have been obvious to one of ordinary skill in the art to optimize this result-effective variable by routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claim 5, I’Abee et al., teach using the conductive filler in amount ranging from 5-15 wt. % (column 20, 35).
Regarding claim 14, BOURCET et al., teach a solvent and mixing the polymer and conductive carbon materials in the solvent (page 18, 5-15). It also noted that the limitations of claim 14 constitute method limitations on product claims. Absent a showing to the contrary, it is Examiner's position that the article of the applied combination of prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
6. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019186116 issued to BOURCET et al., in view of US 8741998 issued to l’Abee et al., as applied to claim 1 and further in view of WO 2011063217 A2 issued to BARAN et al.
The combination of BOURCET et al., in view of I’Abee et al., do not teach surface modifying the conductive flakes as claimed.
The published WO reference issued to BARAN et al., teach compositions wherein a plurality of conductive particles comprising a plurality of surface-modified nanoparticles covalently bonded thereto, are provided in an organic vehicle (title and abstract). BARAN et al., teach surface-modified means that the nanoparticles are modified so as to contain at least some organic groups on their surface. (page 7). In general, a surface modification agent has at least a first end with at least one reactive group that can covalently bond to the nanoparticle surface, and a second, organic end that can modify the properties of the nanoparticle surface. In some embodiments, the surface modification agent may be multifunctional so as to contain multiple reactive groups by which the surface modification agent can covalently bond to the surface of the nanoparticle (and additionally to the surface of the conductive particle, as described in further detail herein). Thus, in some embodiments the same multifunctional agent or agents that may be used to provide the surface modification of the nanoparticle, may also be used to provide the covalent bonding of the surface-modified nanoparticles to the conductive particles. For example, isooctyltrimethoxy silane may be used for this dual purpose. In other embodiments, one agent (e.g., a monofunctional silane, such as trimethylmethoxy silane) may be used primarily to provide the surface modification, and a different, multifunctional agent, may be used to provide the covalent bonding between the conductive particles and the surface-modified nanoparticles (pages 8 and 9). The Examiner is of the position that isooctyltrimethoxy silane and/or trimethylmethoxy silane would have organic molecules since it is an organosilicon. The published WO reference teaches that it has been found that the use of conductive particles that comprise surface- modified nanoparticles that are covalently bonded to the surface of the conductive particle as disclosed herein, can advantageously enhance the processing of organic syrups (e.g. that are used to form pressure-sensitive adhesives). Specifically, those of skill in the art will appreciate that the dispersion of conductive particles, particularly conductive particles with relatively high aspect ratio, such as flakes, fibers and the like, into adhesive precursor syrups, may be difficult. Specifically, the blending of such conductive particles into adhesive precursor syrups may cause the adhesive precursor syrup to gel (e.g., to become a viscoelastic mass that is difficult to mix further, to pump, to coat into a uniform layer, and the like). It has been found that when such conductive particles are present, the presence of surface-modified nanoparticles as disclosed herein can significantly and advantageously reduce the likelihood and/or degree of such gelling.
Therefore, motivated by the desire to reduce the likelihood and/or degree of gelling of the polymer composition it would have been obvious to surface modify the conductive flakes of modified BOURCET et al., as taught by BARAN et al.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached on M-
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/ Primary Examiner, Art Unit 1789
