RESPONSE TO AMENDMENT
WITHDRAWN REJECTIONS
The objections to the claim 4 made of record in the office action mailed on 04/30/2026 have been withdrawn due to Applicant’s amendment in the response filed 07/28/2026.
The 35 U.S.C. §112 rejection of claims 4-5 made of record in the office action mailed on 04/30/2026 have been withdrawn due to Applicant’s amendment in the response filed 07/28/2026.
The 35 U.S.C. §102 and 103 rejections of the claims made of record in the office action mailed on 04/30/2026 have been withdrawn due to Applicant’s amendment in the response filed 07/28/2026.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 3, 6, 8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (U.S. App. Pub. No. 2010/0311872).
Regarding claim 1, Lai et al. discloses an aqueous dispersion of carbon nanotubes including:
A carbon nanomaterial (par. [0027])
One or more polymeric carriers including polyvinyl materials such as polyvinylpyrrolidone (PVP) (i.e. a polyvinyl dispersant), polyvinyl acetate (another polyvinyl dispersant) and polyacrylates (i.e. a polyacrylic dispersant). (par. [0033]). The PVP may also be provided in combinations of different mixtures/types. (par. [0034]). Lai et al. therefore discloses first and second polyvinyl dispersants and polyacrylic dispersants, as claimed.
A solvent for the carbon nanotubes that is water (aqueous dispersion, par. [0026]-[0028]) and an aqueous solvent for the polymeric carrier (par. [0033]-[0034]). Lai et al therefore discloses a first and second solvent which are both water.
A bipolar compound in the form of silane coupling agents included in the composition such as N-(β-aminoethyl)-γ-aminopropyltrimethoxysilane (par. [0079]), polyethyleneimine (par. [0084]) and urea formaldehyde (par. [0115]).
The limitation a “combination of compositions” can be interpreted to refer to a mixture of the materials, Lai et al. therefore teaches these components present as a combination of compositions as presently claimed. The limitations of (a) would therefore include the materials present in the dispersion combined with the materials of element (b) in Lai et al.
Regarding claims 3 and 11, Lai et al. teaches the use of PVP. (par. [0033]).
Regarding claims 6 and 12, Lai et al. teaches the solvent is water. (par. [0026]-[0028] and [0033]-[0034]).
Regarding claim 8, the carbon nanomaterial includes carbon nanotube. (par. [0027]).
Claims 2 are rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (U.S. App. Pub. No. 2010/0311872) in view of Morita et al. (JP 2019-192537).
Citations to Morita et al. refer to the machine translation document provided with the office action mailed on 04/30/2025.
Lai et al. is relied upon as described in the rejection of claim 1, above.
Lai et al. does not teach a bipolar compound selected from the group of materials in claim 2.
Morita et al. teaches a carbon nanotube dispersion including carbon nanotubes and a dispersion aid in the form of an amine (Abstract) which includes alanine, arginine and ethanolamine (page 4, 2nd full paragraph). Morita et al. teaches inclusion of the amine material improves the viscosity which increases the ability to have a high concentration of carbon nanotubes and improves storage stability. (page 5, 7th paragraph).
It would have been obvious to one of ordinary skill in the art to include an amine dispersion aid in the composition of Lai et al. selected from the materials disclosed in Morita et al.
One of ordinary skill in the art would have found it obvious to include the amine compounds disclosed in Morita et al. in the composition of Lai et al. in order to improve viscosity, dispersibility of carbon nanotubes and storage stability of the carbon nanomaterial dispersion in Lai et al.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (U.S. App. Pub. No. 2010/0311872) in view of Kimura et al. (JP2004-352848).
Citations to Kimura et al. refer to the machine translation document provided with the office action mailed on 04/30/2025.
Lai et al. is relied upon as described in the rejection of claim 1, above.
Lai et al. does not teach a composition including a copolymer of poly(4VP-co-NVP) or PEG-PVP as claimed.
Kimura et al. a water-based coating composition including dispersed nano sized particles, including carbon nnanoparticles (par. [0017]), with a vinyl polymer or nonionic surfactant. (Abstract). Kimura et al. teaches that known vinyl polymer dispersants include vinyl monomers including N-vinylpyrrolidone and 4-vinylpyridine and that the monomers can be using together (i.e. as copolymers). (par. [0023]).
It would have been obvious to use a dispersant material for the nanomaterials in Lai et al. which includes copolymers of monomers including N-vinylpyrrolidone and 4-vinylpyridine as taught in Kimura et al.
One of ordinary skill in the art would have found it obvious to use a copolymer of N-vinylpyrrolidone and 4-vinylpyridine in Lai et al. in view of the teaching in the prior art that such dispersants are known to be suitable for use in dispersions including nanomaterials. One of ordinary skill in the art would therefore have a reasonable expectation of success in using such a dispersant in Lai et al. to achieve a dispersions of carbon nanomaterials having satisfactory properties. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (U.S. App. Pub. No. 2010/0311872) in view of Kimura et al. (JP2004-352848), further in view of Deguchi (JP 2020-194625).
Citations to Deguchi below refer to the machine translation document included with this office action
Lai in view of Kimura et al. is relied upon as described in the rejection of claim 4, above.
Lai in view of Kimura et al. does not disclose a dispersant content in the range as presently claimed.
Deguchi teaches a method of making a carbon nanotube dispersion composition in an aqueous liquid media which includes a dispersant such as a PVP. (Abstract and page 3, last paragraph). Deguchi teaches that the content of the dispersant can be included in an amount of 1-40 parts by mass with respect to the carbon nanotubes for controlling the degree of dispersibility and conductivity of the carbon nanotube composition. (page 4, 2nd full paragraph).
It would have bene obvious to one of ordinary skill in the art to use a dispersant amount for the composition produced by the combination of Lai in view of Kimura et al. to lie in the range disclosed by Deguchi, which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to include the dispersant in an amount as disclosed in Deguchi in order to optimize the dispersibility and conductivity of the carbon nanotube dispersion.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (U.S. App. Pub. No. 2010/0311872) in view of Kang et al. (U.S. App. Pub. No. 2024/0279065).
Lai et al. is relied upon as described in the rejection of claim 1, above.
Lai et al. does not teach a dispersant selected from the materials disclosed in claims 9-10.
Kang et al. a carbon nanotube dispersion in a solvent which includes one or more dispersants including PVP, polyethylene glycol, polyethylene oxide and polyacrylic acid. (par. [0019]). Kang et al. teaches that the dispersants may be used alone or in combinations. (par. [0090]).
It would have been obvious to one of ordinary skill in the art to include one or more dispersants selected from the materials disclosed in Kang et al. in the dispersion of Lai et al. which include polyacrylic acid as claimed in claim 9 and polyethylene based materials as claimed in claim 10.
One of ordinary skill in the art would have found it obvious to use dispersants as disclosed in Kang et al. in the dispersion of Lai et al. in order to improve the dispersibility of the carbon nanotubes in the aqueous dispersion. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Claims 1-3, 6 and 8-12 rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (JP 2019-192537) in view of Noro et al. (WO 2020/022503). (cited in the IDS filed on 08/08/2024).
Citations to Morita et al. refer to the machine translation document provided with the office action mailed on 04/30/2025.
Citations to Noro et al. refer to the machine translation document provided with this office action.
Regarding claims 1-3 and 6, Morita et al. teaches a carbon nanotube dispersion including N-methyl-2-pyrrolidone (a solvent), polyvinylpyrrolidone (a polyvinyl dispersant) (Abstract) and an amine compound which include bipolar materials such as alanine, arginine and ethanolamine. (page 4, 2nd full paragraph). The limitation a “combination of compositions” can be interpreted to refer to a mixture of the materials, Lai et al. therefore teaches these components present as a combination of compositions as presently claimed. The limitations of (a) would therefore include the materials present in the dispersion combined with the materials of element (b) in Lai et al.
Furthermore, Morita et al. teaches that this composition is added to a glass bottle followed by addition of carbon nanotubes. (Example 1-1) and explicitly discloses various combinations of sequential or simultaneous addition of the components in the dispersion to be product. (page 5, first full paragraph). Morita et al. therefore teaches a first carbon nanomaterial composition including the solvent, bipolar compound and polyvinyl dispersant as well as forming a combination of compositions.
Morita et al. does not explicitly disclose the presence of a polyacrylic dispersant.
Noro et al. teaches a method of producing a non-covalent nanocarbon-polymer hybrid composition (Abstract) including mixing polymers having non-covalent functional groups such as polyacrylate (bridging paragraph, pages 3-4) and achieves improved uniformity of mixing of the composition resulting in improve material properties such as flexibility and elastic modulus of a resin or rubber composition containing the nanocarbon materials, which is of interest in films requiring strength and electrical conductivity. (page 6, paragraph 1-3). Noro et al. explicitly mentions a composition including a combination of polymer materials such as PVP (a polyvinyl dispersant) in combination with a polyacrylate (paragraph bridging, pages 3-4), a polar solvent (page 7, last paragraph) and the carbon nanomaterial. (page 5).
It would have been obvious to one of ordinary skill in the art to include a polyacrylic material as disclosed in Noro et al. in the nanotube composition of Morita et al.
One of ordinary skill in the art would have found it obvious to include the polyacrylic material in the carbon nanotube composition of Morita et al. in order to enhance the uniformity of the mixing of the carbon nanotubes and the ability to achieve improved mechanical properties of flexibility and elastic modulus for a resin composition including the carbon nanotube dispersion.
The combination of Morita in view of Noro et al. would therefore include the combination of two separate compositions (which are later mixed into a “combination”) including the N-methyl-2-pyrrolidone (a solvent), polyvinylpyrrolidone (a polyvinyl dispersant). and an amine compound from Morita et al, and a composition of carbon nanotubes, the polyacrylic dispersant, polyvinyl dispersant and solvent, from Noro et al. Alternatively, a simple mixing the polyacrylate material of Noro et al. into the combined composition of Morita et al. would be sufficient to satisfy all of the claim limitations due to the use of the limitation “a combination”, since the compounds would effectively be combined.
Regarding claim 8, Morita et al. teaches the use of carbon nanotubes. (Abstract).
Regarding claim 9, Noro et al. teaches the use of polyacrylic acid, polymethacrylate, polyacrylonitrile and polyethyl methacrylate, as well as co-polymers thereof. (bridging paragraph, pages 3-4)
Regarding claim 10, Noro et al. teaches one of the polymer materials include polyethylene glycol and polyvinyl chloride which may be used in combination with the polyacrylate and polyvinyl pyrrolidone. (bridging paragraph, pages 3-4)
Regarding claims 11-12, Noro et al. teaches the same solvents as Morita et al., N-methylpyrrolidone (Morita, Abstract and Noro et al., page 7, last paragraph) but also contemplates the use of several other solvents such as water, ethanol, DMSO and DMF. (page 7, last paragraph)
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (JP 2019-192537) in view of Noro et al. (WO 2020/022503). (cited in the IDS filed on 08/08/2024), further in view of Kimura et al. (JP2004-352848).
Citations to Kimura et al. refer to the machine translation document provided with the office action mailed on 04/30/2025.
Morita in view of Noro et al. is relied upon as described in the rejection of claim 1, above.
Morita in view of Noro et al. does not teach a composition including a copolymer of poly(4VP-co-NVP) or PEG-PVP as claimed.
Kimura et al. a water-based coating composition including dispersed nano sized particles, including carbon nnanoparticles (par. [0017]), with a vinyl polymer or nonionic surfactant. (Abstract). Kimura et al. teaches that known vinyl polymer dispersants include vinyl monomers including N-vinylpyrrolidone and 4-vinylpyridine and that the monomers can be using together (i.e. as copolymers). (par. [0023]).
It would have been obvious to use a dispersant material for the nanomaterials in Morita in view of Noro et al. which includes copolymers of monomers including N-vinylpyrrolidone and 4-vinylpyridine as taught in Kimura et al.
One of ordinary skill in the art would have found it obvious to use a copolymer of N-vinylpyrrolidone and 4-vinylpyridine in Lai et al. in view of the teaching in the prior art that such dispersants are known to be suitable for use in dispersions including nanomaterials. One of ordinary skill in the art would therefore have a reasonable expectation of success in using such a dispersant in Morita in view of Noro et al. to achieve a dispersions of carbon nanomaterials having satisfactory properties. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Morita et al. (JP 2019-192537) in view of Noro et al. (WO 2020/022503). (cited in the IDS filed on 08/08/2024) and Kimura et al. (JP2004-352848), further in view of Deguchi (JP 2020-194625).
Citations to Deguchi below refer to the machine translation document included with this office action
Morita in view of Noro et al. and Kimura et al. is relied upon as described in the rejection of claim 4, above.
Morita in view of Noro et al. and Kimura et al. does not disclose a dispersant content in the range as presently claimed.
Deguchi teaches a method of making a carbon nanotube dispersion composition in an aqueous liquid media which includes a dispersant such as a PVP. (Abstract and page 3, last paragraph). Deguchi teaches that the content of the dispersant can be included in an amount of 1-40 parts by mass with respect to the carbon nanotubes for controlling the degree of dispersibility and conductivity of the carbon nanotube composition. (page 4, 2nd full paragraph).
It would have bene obvious to one of ordinary skill in the art to use a dispersant amount for the composition produced by the combination of Morita in view of Noro et al. and Kimura et al. to lie in the range disclosed by Deguchi, which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to include the dispersant in an amount as disclosed in Deguchi in order to optimize the dispersibility and conductivity of the carbon nanotube dispersion.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 07/28/2026 regarding the 35 U.S.C. §112(b) rejections made of record in the office action mailed on 04/30/2026 have been considered but are moot as they have been withdrawn.
Applicant’s arguments in the response filed 07/28/2026 regarding the prior art rejections made of record in the office action mailed on 04/30/2026 have been considered but are moot due to the new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection 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 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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 09/17/2026
