DETAILED ACTION
1. This Office Action is in response to Applicant’s Amendments and Remarks filed on 08/27/2025. Claims 1-17 are pending for examination. Claims 1-2, 6-12 and 15 are currently amended. Claim 17 is newly added.
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . -- The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
3. The objection to claim 15 for informalities is withdrawn in view of Applicant’s amendments to the claim.
4. The rejection of claim 12 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention is withdrawn in view of Applicant’s amendments to the claim.
Claim Rejections - 35 USC § 112
5. Claim 1 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation "the polymer coating" in line 4. There is insufficient antecedent basis for this limitation in the claim since the term in line 1 has been amended to recite “a polymer overcoat”. Appropriate correction is required.
Claim Rejections - 35 USC § 102 or 103
6. Claims 1, 3-6, 10-11, 14-16 stand rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Li et al. (US 9,183,968 B1; cited on Applicant’s IDS filed on 11/07/2023).
As to claim 1, Li teaches a method for lowering sheet resistance of a transparent conductive film (see col. 6, lines 30-59 & col. 16, lines 39-59) comprising a substrate, a transparent conductive layer and a polymer overcoat (see col. 13, line 48 to col. 14, line 18), the transparent conductive layer comprising a fused metal nanostructured network and polymeric polyol binder (see col. 13, lines 48-64; col. 15, lines 1-19: fused metal nanostructured network; see col. 10, lines 32-58 & col. 11, line 51 to col. 12, line 6: nanowire ink can include a polymeric polyol curable binder), wherein the polymer overcoat has an average thickness from about 5 nm to about 250 nm (see col. 15, lines 59-66: in general, the polymer overcoats can have average thicknesses from about 50 nm to about 10 microns), the method comprising: heating the transparent conductive film to a temperature of at least about 55˚C for at least about 10 minutes (see col. 14, lines 19-67: heat films to a temperature from about 60˚C to about 145˚C during drying for about 1 minute to about 45 minutes) to lower the sheet resistance by at least about 5% (see col. 16, lines 28-55). See MPEP 2131.03 and 2144.05 I on ranges.
As to claims 3-4, Li teaches the method of claim 1, wherein the heating is performed with a relative humidity adjusted to at least about 60% (see col. 14, lines 44-64) and wherein the heating is performed under the conditions recited in claim 4 (see col. 14, lines 29-64) and the film is free of an optically clear adhesive (Li is silent on an adhesive, so satisfies this claim requirement).
As to claim 5, Li teaches the method of claim 1, wherein the fused metal nanostructured network comprises silver (see col. 8, lines 26-40), and the transparent conductive film has a sheet resistance of no more than 120 ohms/sq (see col. 16, lines 48-55) & a transmittance of visible light of at least about 88% (see col. 17, lines 37-42).
As to claim 6, Li teaches the method of claim 1, wherein the method further comprises, prior to application of the polymer overcoat, the steps/heating conditions recited in claim 6 (see col. 22, lines 42-50 in Example 1).
As to claim 10, Li teaches the method of claim 1, wherein the fused metal nanostructured network comprises silver (see col. 8, lines 26-40), and wherein the polymer overcoat comprises from about 0.25 wt% to about 12 wt% silver ions (see col. 16, lines 3-12: overcoats may contain conductive particles, e.g. metals, generally in an amount from 0.0001 wt% to about 0.5 wt%; col. 9, lines 31-65: silver ions).
As to claim 11, Li teaches the method of claim 1, wherein the polymer overcoat comprises one or more of the polymers recited in claim 11 (see col. 13, line 61 to col. 14, line 15: the overcoat polymers can comprise the polymers listed for the substrates described above: e.g. polysiloxane, polyurethane, etc.).
As to claim 14, Li teaches the method of claim 1, wherein the transparent conductive film has a transmittance of at least about 90% (see col. 17, lines 37-42) and a sheet resistance of no more than 90 ohms/sq (see col. 16, lines 48-55).
As to claim 15, Li teaches the method of claim 1, wherein the polymer overcoat comprises from about 0.25 wt% to about 12 wt% silver ions (see col. 16, lines 3-12: overcoats may contain conductive particles, e.g. metals, generally in an amount from 0.0001 wt% to about 0.5 wt%; col. 9, lines 31-65: silver ions). One of ordinary skill in the art would be motivated to select one of the compounds recited in claim 15 as a source of the silver ions since such silver reactants/salts are well-known to chemists and this selection is merely a matter of obvious engineering choice.
As to claim 16, Li teaches the method of claim 1, wherein the fused metal nanostructured network is patterned (see col. 18, line 13 to col. 19, line 27).
Li anticipates claims 1, 3-6, 10-11, 14-16 since he teaches all of the limitations of the method recited in the above listed claims. In the event that any minor modifications are necessary to meet the claimed limitations, such as selection of a particular coating thickness, metal/polymer material or heating temperature/time, such modifications would be achieved by one having ordinary skill in the art without undue experimentation. Therefore, claims 1, 3-6, 10-11, 14-16 are anticipated by or rendered obvious over the disclosure of Li as discussed above.
Claim Rejections - 35 USC § 103
7. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 9,183,968 B1), in view of Allemand et al. (US 2010/0243295 A1; cited on IDS).
As to claim 2, Li teaches the method of claim 1 as described above, but fails to explicitly disclose that, during the heating, the transparent conductive film is on a roll and that the overcoat is covered with a release layer.
However, Allemand, in analogous art of nanowire-based transparent conductive films (see para. 0009-0010, 0071, 0114), teaches that rollers may be heated for surface treatment of transparent conductors (see para. 0206, 0186-0187, 0198-0200). Allemand also teaches an overcoat covered with a release layer (see para. 0222, 0226-0232 and FIG. 17A to 17C: release layer 244 & overcoat 274).
Therefore, in view of the teaching of Allemand, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the method taught by Li by heating the film on a roll and covering the overcoat with a release layer as taught by Allemand to arrive at the claimed invention because Li suggests that the films can be dried/heated, for example, with a heat gun, an oven, a thermal lamp or the like to facilitate fusing (see Li col. 16, lines 3-21) and that there may be a plurality of polymer overcoats/layers (see Li col. 15, lines 44-58). Thus, a person of ordinary skill in the art would be motivated to select the instantly claimed rolls for heating and release layer in the claimed method with a reasonable expectation of success for applying both heat and pressure to a transparent conductor (see Allemand para. 0206 regarding “on a roll”) and for allowing easy removal of a substrate from the conductive layer without damaging the conductive layer (see Allemand para. 0222 regarding the “release layer”) and would expect such a method to have similar properties to those claimed, absent the showing of unexpected results.
8. Claims 7-9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 9,183,968 B1), in view of Yang et al. (US 2018/0105704 A1; cited on IDS).
As to claim 7, Li teaches the method of claim 6 as described above and that the polymer overcoat comprises silver ions (see col. 16, lines 3-12: overcoats may contain conductive particles, e.g. metals; col. 9, lines 31-65: silver ions), but fails to disclose that the polymer overcoat further comprises a vanadium (+5) stabilization composition.
However, Yang, in analogous art of transparent conductive films containing metal nanowires (see abstract), teaches vanadium (+5) stabilization compositions placed in a polymer overcoat layer (see para. 0018, 0033).
Therefore, in view of the teaching of Yang, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the method taught by Li by incorporating the vanadium (+5) stabilization compositions taught by Yang to arrive at the claimed invention because Li suggests that polymer overcoats may contain a mixture of conductive particles or other additives to give stabilization advantages (see Li col. 16, lines 3-21). Yang clearly teaches that vanadium compounds are known for incorporation into an overcoat layer of a transparent conductive film (see Yang para. 0033, 0037-0039). Thus, a person of ordinary skill in the art would be motivated to select the instantly claimed vanadium (+5) stabilization composition for the claimed method with a reasonable expectation of success for improving the stability of sparse metal conductive films formed with metal nanowires (see Yang abstract), and would expect such a method to have similar properties to those claimed, absent the showing of unexpected results.
As to claim 8, Li teaches the method of claim 1 as described above and that the polymer overcoat comprises polyacrylate and has an average thickness from about 20 nm to about 125 nm (see Li col. 14, lines 2-4 & 11-15: polyacrylate; col. 15, lines 59-66) and Yang teaches that the polymer coating comprises from about 0.5 to 5 wt% of a vanadium (+5) stabilization composition (see Yang para. 0033).
As to claim 9, Li and Yang teach the method of claim 8 as described directly above, wherein the polymer overcoat comprises from about 0.01 wt% to about 20 wt% noble metal ions (see Li col. 16, lines 3-12: overcoats may contain conductive particles, e.g. metals; Li col. 9, lines 31-65: metal ions providing a source of metal include silver, gold, platinum, and palladium, which are noble metals).
As to claims 12-13, Li teaches the method of claim 1 as described above and Yang teaches that the polymer overcoat further comprises from about 0.1 wt% to about 9 wt% of a vanadium (+5) stabilization composition and comprising one or more of the vanadium compounds recited in claim 13 (see Yang para. 0033).
9. Claim 17 (newly added) is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 9,183,968 B1).
As to claim 17, Li teaches the method of claim 1 as described above, but fails to explicitly disclose that the transparent conductive film, before the heating, has a sheet resistance of no more than about 120 ohms/sq.
Li teaches fused metal nanowire networks having a sheet resistance of no more than about 100 ohms/sq (see col. 16, lines 39-55), but does not specify that this is before a heating step. Li also teaches that the fusing is believed to take place during the drying of the liquid, that any heat application to facilitate drying is incidental to the fusing, and that additional ranges of temperature and drying times are contemplated by a person of ordinary skill in the art and are consistent with a chemically driven fusing process (see col. 14, lines 29-64). This suggests that a heating step could occur beyond fusing. Since Li teaches a transparent conductive layer comprising a fused metal nanostructured network and polymeric polyol binder, so the same chemical makeup required by claim 1 (see citations above), it follows that the transparent conductive film taught by the prior art would satisfy the sheet resistance property recited in instant claim 17. If different results are achieved, it must be due to limitations that are not currently claimed. Further, since the Office does not have the facilities for examining and comparing Applicant’s sheet resistance property of the film before heating with the film taught by the prior art, the burden is on the Applicant to show that Li’s transparent conductive film would not have a sheet resistance of “no more than about 120 ohms/sq” before the heating.
Response to Arguments
10. Applicant's arguments filed 08/27/2025 have been fully considered but they are not persuasive.
Applicant argues on pg. 7 of the Remarks that Li does not describe heating a transparent conductive film comprising a fused metal nanostructured layer and a polymer overcoat as recited in claim 1, which, in the context of the present application, would mean Li would need to describe heating a transparent conductive film after the metal nanowire layer is fused and any polymer layers are formed. Applicant additionally argues that heating would need to be carried out at a temperature of at least about 55˚C for at least about 10 minutes to lower the sheet resistance by at least about 5% and that Li does not teach or suggest such processing.
However, Li also teaches that the fusing is believed to take place during the drying of the liquid, that any heat application to facilitate drying is incidental to the fusing, and “heating to drive the drying”, which suggest heating longer is required to fuse. Li also discloses that a person of ordinary skill in the art will recognize that additional ranges of temperature and drying times are contemplated and within the present disclosure and, the improvement of the fusing through the drying under more humid conditions at lower temperatures is consistent with a chemically driven fusing process (see col. 14, lines 29-64). This also suggests that a heating step would occur beyond chemical fusing. “At least about 55˚C” and “at least about 10 minutes” are very broad method steps. Anything at or above 55˚C and 10 minutes falls within the scope of claim 1. If the post-processing step of heating is critical to patentability of the method, then details of it should be clearly set forth in the claims.
Applicant argues that Li does not anticipate claim 1 because Li does not describe the heating step applied to a transparent conductive film having a fused metal nanostructured layer and a polymer overcoat wherein heating is carried out at a temperature of at least about 55˚C for at least about 10 minutes to lower the sheet resistance by at least about 5% and the heating step is not inherent in any of the processes described by Li. Applicant argues that Li does not render claim 1 prima facie obvious because, at the very least, not all of the features of claim 1 are described by Li.
However, Li does not specify when a polymer overcoat is placed on the fused metal nanowire network (see col. 14, lines 11-18). Li teaches that, after forming the coating with the dispersion, the nanowire network can be dried to remove the liquid (see col. 14, lines 29-44). Li teaches temperatures from 50˚C to 150˚C and times from 45 seconds to almost two hours, which is a lengthy time in which the film would be “post-processed” by further heating. In general, the transposition of method steps or the splitting of one step into two, where the methods are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the methods. Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results See MPEP 2144.04 IV.
With respect to claim 2, Applicant has not argued the Office’s citations to secondary reference Allemand outside of Allemand not remedying the deficiencies of primary reference Li. However, since Li is not deficient, this argument is moot.
With respect to claims 7-9 and 12-13, Applicant has not argued the Office’s citations to secondary reference Yang outside of Yang not remedying the deficiencies of primary reference Li. However, since Li is not deficient, this argument is moot. Applicant argues that the excerpt of col. 9, lines 31-65 [of Li] describes metal ions such as noble metal ions, but they are present in the inks which comprise the metal nanowires used to form the transparent conductive layer [in contrast to being in the polymer overcoat itself; this is Office’s assumption from the statement].
However, Li teaches that overcoats may contain conductive particles, i.e. conductive elements, that can be composed of metals (see Li col. 16, lines 3-12). Li col. 9 was cited to suggest that silver ions are a known metal material for use with conductive films and would have been an obvious choice. If there is a patentably distinct difference between including silver ions over silver particles in the polymer overcoat that would make this selection non-obvious, then a clear showing with experimental evidence and/or comparative data should be provided by Applicant.
For at least the reasons described above, the claim rejections are maintained.
Conclusion
11. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katie L Hammer whose telephone number is (571)270-7342. The examiner can normally be reached Monday to Friday: 10am-6pm EST.
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KATIE L. HAMMER
Primary Examiner
Art Unit 1761
/KATIE L. HAMMER/Primary Examiner
Art Unit 1761 December 16, 2025
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