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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-12 in the reply filed on 04/06/2026 is acknowledged.
Claims 13-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 4 objected to because of the following informalities: Poly(4VP-co-NVP) should specify what “4VP” and “NVP” refer to similar to how PEG and PVP are described as “Poly Ethylene Glycol” and “PolyVinylPyrrolidone” in the same claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 contains the limitation Poly(4VP-co-NVP) and claim 5 contains the limitation “Poly(4VP-co-NVP) is polymerized by 4-vinylpyridine and N-vinylpyrrolidone”. It is not clear therefore if the species “Poly(4VP-co-NVP)” somehow refers to a different polymer than one that is produced by polymerizing 4-vinylpyridine and N-vinylpyrrolidone since claim 5 appears to be attempting to further limit claim 4. Alternatively, if they refer to the same copolymer, claim 5 does not further limit claim 4 since Poly(4VP-co-NVP) implies a copolymer of 4-vinylpyridine and N-vinylpyrrolidone. Appropriate clarification is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN 105936760).
With respect to the preamble “for coating a carbon nanomaterial” found in claims 1-12, terminology which limits the structure of the invention must be treated as a claim limitation however when the terminology recites a purpose or intended use, the preamble is not considered a limitation and is of no significance to claim constructure. MPEP 2111.02 I and II. In this case, “for coating a carbon nanomaterial” is being interpreted as referring to an intended use of the claimed composition and therefore does not impart structure to the composition. So long as a prior art composition meeting the limitations of the body of the claim would be capable of being used as a coating for a carbon nanomaterial, the prior art composition would anticipate the claim.
Regarding claim 1, Zhang discloses a water based anti-rust pigment composition including: polyethylene pyrrolidone (i.e. a polyvinyl dispersant), ethanolamine (i.e. a bipolar compound) and water. (a solvent). (see Abstract and Embodiments 2-5)
Regarding claim 2, Zhang discloses ethanolamine incorporated in the composition. (Embodiments 2-5).
Regarding claim 3, Zhang discloses polyethylene pyrrolidone. (Embodiments 2-5).
Regarding claim 6, the solvent used in Zhang is water. (Embodiments 2-5).
Regarding claims 7-12, the limitation “that it is used together with” is a statement of intended use. Given that the limitation does not impart additional structure to the claim and that Zhang would be capable of being used together with the claimed carbon nanomaterial dispersion, the claims are rejected for substantially the same reasons as claim 1, above.
Claims 1-3 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Itoi et al. (JP2022-063854).
With respect to the preamble “for coating a carbon nanomaterial” found in claims 1-12, terminology which limits the structure of the invention must be treated as a claim limitation however when the terminology recites a purpose or intended use, the preamble is not considered a limitation and is of no significance to claim constructure. MPEP 2111.02 I and II. In this case, “for coating a carbon nanomaterial” is being interpreted as referring to an intended use of the claimed composition and therefore does not impart structure to the composition. So long as a prior art composition meeting the limitations of the body of the claim would be capable of being used as a coating for a carbon nanomaterial, the prior art composition would anticipate the claim.
Regarding claim 1, Itoi et al. discloses a dispersant composition including an acrylic polymer, a compound having a formula according to formula (1) and an organic solvent. (Abstract). The acrylic polymer includes vinyl containing monomer structural units b1/b2 such as v2-inylpyridine (machine translation, page 5-6) and would therefore meet the limitation of a “polyvinyl dispersant”. The compound shown in formula (1) includes compounds that are bipolar such as those disclosed in last paragraph of page 8.
Regarding claim 2, the compound of formula (1) may include ethanolamine.
Regarding claim 3, Itoi et al. teaches a comparative example including polyvinylpyrrolidone, a solvent and the bipolar compound. (Table 3)
Regarding claim 6, Itoi et al. teaches that the solvent may include ethanol, DMF, NMP or acetone. (page 9, 2nd to last paragraph).
Regarding claims 7-12, the limitation “that it is used together with” is a statement of intended use. Given that the limitation does not impart additional structure to the claim and that Zhang would be capable of being used together with the claimed carbon nanomaterial dispersion, the claims are rejected for substantially the same reasons as claim 1, above.
Claims 1-3 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morita (JP2019-192537). (cited in the IDS filed on 08/08/2024).
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).
Regarding claims 7-12, the limitation “that it is used together with” is a statement of intended use. Given that the limitation does not impart additional structure to the claim and that Zhang would be capable of being used together with the claimed carbon nanomaterial dispersion, the claims are rejected for substantially the same reasons as claim 1, above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Itoi et al. (JP2022-063854) in view of Kimura et al. (JP2004-352848)
Itoi et al. is relied upon as described in the rejection of claim 1, above.
Itoi et al. does not disclose a dispersant copolymer of poly(4VP-co-NVP) or PEG-PVP as claimed.
Kimura et al. a water-based coating composition including dispersed particles 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 Itoi 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 Itoi 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 Itoi 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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Morita (JP2019-192537) (cited in the IDS filed on 08/08/2024) in view of Kimura et al. (JP2004-352848)
Morita et al. is relied upon as described in the rejection of claim 1, above.
Morita et al. does not disclose a dispersant copolymer of poly(4VP-co-NVP) or PEG-PVP as claimed.
Kimura et al. a water-based coating composition including dispersed particles 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 nanotubes in Morita 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 Morita 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 et al. to achieve a dispersions of carbon nanotubes having satisfactory properties. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 04/28/2026
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