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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/21/2026 has been entered.
Response to Amendment
Applicant's amendment filed 4/21/2026 has been entered. Currently, claims 1 and 5-11 are pending and claims 2-4 are cancelled.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
Applicants’ provisional application 63/105913 was filed in a language other than English. A communication was sent to applicant 11/19/2020 in the provisional application concerning this. According to 37 CFR 1.78(a)(5), either an English language translation of the provisional application with a statement that the translation is accurate, or an amended application data sheet eliminating the reference to the provisional application need to be filed to address this.
Claim Rejections - 35 USC § 103
Claims 1 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai (JP 2004-055363), machine translation included.
With regard to claims 1, 5, 9 and 10, Hirai discloses a method of forming a transparent conducting film that can be formed in a pattern [0001]. The method includes inkjet printing a colloidal dispersion onto a polycarbonate substrate, which reads on applicants’ conductive ink applied onto a base material, and then baked with UV laser irradiation [0016], [0018] and [0021]. UV laser light of 308 nm may be used [0025]. Since the ink is printed on a polycarbonate substrate, this means the polycarbonate substrate reads on the functional limitations of being a base material for a print substrate [0021] and [0025]. The dispersion medium of the colloidal dispersion ink reads on a liquid component [0013]. According to Hirai, the laser beam is focused onto the colloidal dispersion film and is absorbed by one of the components in the colloidal solution and heat is not used [0018]. The metal hydroxide generated from a metal salt and aqueous ammonia reads on applicants’ metal complex derived from an amine as claimed [0011].
All of this disclosure means the liquid components of the colloidal dispersion were intrinsically not removed prior to irradiating with UV laser radiation; hence, the method of Hirai will intrinsically have a content of liquid component of the conductive ink at a time when the UV irradiation begins of 20% by mass or more as claimed. Hirai also teaches inkjet printing a colloidal dispersion ink and then irradiating the ink with UV radiation [0025]; however, he does not specifically teach a time between inkjet printing and UV irradiation.
It would have been obvious to one having ordinary skill in the art to have made the time between the inkjet printing landing on the substrate and UV irradiation be any amount, including 10 second or less, so that the pattern can be formed quickly and increase the throughput of electrode formation. A shorter time of manufacture would have been obvious as it would then save costs in manufacturing.
With regard to claims 6 and 7, Hirai teaches that the transparent conductive film can be from 0.01 to 10 microns, which overlaps with the claimed range of 1.5 microns or less [0017]; however, they do not specifically teach applying further conductive ink layers with the thickness claimed.
Since the thickness of the conductive film pattern overlaps with the range claimed, a prima facie case of obviousness exists. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Also, it is noted that a further conductive ink being printed on the first formed conductive layer represents a mere duplication of parts. It would have been obvious to one having ordinary skill to have merely duplicated the conductive film pattern of Hirai by inkjet printing further conductive inks on the previously formed layer to make the conductive film pattern thicker.
With regard to claim 8, an underlayer may be formed between the substrate and the transparent conductive film [0022]. The underlayer can be formed by dissolving a curable resin in a solvent and then spin coating, extrusion coating or bar coating, which reads on applicants’ applying an insulating ink on the base material by a dispenser coating method and curing said insulating material as the resins disclosed will inherently be insulating [0023].
Claims 1, 5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 2014/0178601).
With regard to claims 1, 5 and 9-11, Wei et al. teach forming a conductive traces by depositing a conductive ink composition on a substrate by ink jet printing, which reads on applicants’ base material for a print substrate [0036]-[0037]. After the deposition, the conductive ink is dried by subjecting it to an external energy source, which may be UV [0038]. Ultraviolet light will inherently have a peak wavelength of 400 nm or less as this is where the ultraviolet spectrum begins. The conductive ink can contain a silver carboxylate, which reads on applicants’ metal salt, or a silver oxalate that has been reacted with octylamine, which reads on applicants’ metal complex derived from an amine [0028], [0041] and [0044]. Wei et al. teach inkjet printing the conductive ink and then irradiating the ink with an external energy source that may be UV radiation to dry it [0038]; however, he does not specifically teach a time between inkjet printing and UV irradiation.
It would have been obvious to one having ordinary skill in the art to have made the time between the inkjet printing landing on the substrate and UV irradiation be any amount, including 10 second or less, so that the pattern can be formed quickly and increase the throughput of electronic circuit formation. A shorter time of manufacture would have been obvious as it would then save costs in manufacturing.
Since the application of energy is drying the ink, this means that there will intrinsically be a content of liquid greater than 20% by mass or more when the UV irradiation begins relative to the time when the ink is applied on the base material.
Claim 6-8 is rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (US 2014/0178601) in view of Hirai (JP 2004-055363).
Wei et al. teach all of the limitations of claim 1; however, they do not specifically teach an insulating ink layer between the base substrate and applying further conductive ink layers with the thickness claimed.
Hirai teaches inkjet printing a circuit pattern of a transparent conductive film on a substrate [0017]. Hirai teaches that the transparent conductive film can be from 0.01 to 10 microns, which overlaps with the claimed range of 1.5 microns or less [0017]. Hirai also teaches an underlayer formed between the substrate and the transparent conductive film [0022]. The underlayer can be formed by dissolving a curable resin in a solvent and then spin coating, extrusion coating or bar coating, which reads on applicants’ applying an insulating ink on the base material by a dispenser coating method and curing said insulating material as the resins disclosed will inherently be insulating [0023].
It is noted that a further conductive ink being printed on the first formed conductive layer represents a mere duplication of parts. It would have been obvious to one having ordinary skill to have merely duplicated the conductive film pattern of Wei et al. by inkjet printing further conductive inks on the previously formed layer and drying them with UV to make the conductive film pattern thicker. It would also have been obvious to one having ordinary skill in the art to have made the thickness of each layer of the conductive pattern any amount, including an average thickness of 0.01 to 1.5 microns as taught in Hirai, such that the conductive pattern had the proper amount of conductivity, while not being so thick as to waste materials.
Lastly, it would have been obvious to one have ordinary skill in the art to have combined in the underlayer of Hirai into the structure of Wei et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately. The rationale to have added is to improve the flatness of the substrate on which the printing is performed [0022].
Response to Arguments
Applicant's arguments filed 4/21/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 6-7 that neither Wei nor Hirai would intrinsically teach the content of liquid component when UV irradiation begins is “20% by mass or more”, and the Examiner has not met the timing limitation of UV irradiation is started within 60 seconds.
The Examiner respectfully disagrees and first notes that the timing limitation of UV irradiation has been rendered obvious in each of the rejections based on Wei and Hirai above, wherein the narrower timeframe of 10 second or less of dependent claim 5 was met. This limitation was not met via inherency. Applicants have not persuasively argued that the obviousness rationale was improper, and therefore the Examiner maintains that the rejection of this limitation is proper for the same reasons set forth above.
As to the content of liquid component being “20% by mass or more”, the grounds and art of record meet these limitations for the same reasons as was set forth prior to the filing of the RCE. The rationale has not changed.
In Hirai, the dependent claim time frame of UV radiation beginning at 10 second or less was rendered obvious above. Also, the fact that the UV laser is absorbed by the “nanoparticle colloid” means that the ink was in the form of a colloidal dispersion that would necessarily have had a liquid present [0018]. Given that the time frame, the ink composition and the method steps of UV laser treatment of an ink that forms a conductive layer are the same as claimed, the Examiner has concluded by the preponderance of the evidence that the content of liquid component at a time when UV irradiation begins would be “20% by mass or more” relative to the content of liquid component when the ink is applied on the base material.
In Wei, the dependent claim time frame of UV radiation beginning at 10 second or less was rendered obvious above. Also, Wei teaches inkjet printing the conductive ink and then irradiation the ink with an external energy source, i.e. UV, to dry it [0038]. The ink composition includes liquid solvents [0043]. Since the ink is being dried in the UV irradiation step, this necessarily means that a liquid was present when irradiation began. Given that the time frame, the ink composition and the method steps of UV laser treatment of an ink that forms a conductive layer are the same as claimed, the Examiner has concluded by the preponderance of the evidence that the content of liquid component at a time when UV irradiation begins would be “20% by mass or more” relative to the content of liquid component when the ink is applied on the base material.
Applicants argue on page 6 that the references do not discuss the “initial liquid amount, evaporation rate, temperature conditions, ink composition, or similar parameters”.
The Examiner respectfully disagrees and notes that since the claim is dealing with a liquid content percentage of “20% by mass or more”, the “initial liquid amount” would not be a factor in determining whether the prior art met the liquid content percentage claimed. The amount of the liquid in the ink would change by the same percentage in the same period of time if one started with a large volume of liquid or a small volume of liquid since that is how liquid evaporates.
As to the evaporation rate, this was considered by the Examiner in that if the timing of UV irradiation was done in 10 seconds or less and with the same ink compositions as claimed, the liquid content percentage would be “20% by mass or more” as claimed. The time between inkjet printing and UV irradiation is directly correlated with evaporation of the liquid, i.e. less time between inkjet printing and UV irradiation results in less evaporation which results in a higher liquid content percentage.
As to the “temperature conditions”, the default position of one of ordinary skill would be that the process of Hirai is being done at room temperature since no heating is taught during the UV irradiation [0025]. Also, Wei teaches that UV does the drying [0038], which means heat would not be used in this process. These facts combined with all of the other factual findings would further support the Examiner’s position.
As to the ink composition, each of Wei and Hirai teach the ink composition for the reasons noted above.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The Examiner has shifted the burden to Applicants, and Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Applicants argue on page 6 that claim 1 requires both the timeframe and liquid content percentage “be satisfied simultaneously”.
Applicants’ arguments are unclear and unpersuasive. The claim does not require the method steps of timeframe and liquid content percentage to be done simultaneously. It appears that applicants are arguing that one must think about the limitations together, which does not make sense in terms of claim interpretation. The method step of when UV irradiation is applied can be addressed in a different way than how the liquid content percentage is addressed. The Examiner maintains that how these limitations were addressed in the rejections was proper.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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