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 .
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.
Claim(s) 1 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Toba et al. (US 2019/0388933).
Regarding claims 1 and 13, Toba et al. teaches a transparent conductive substrate comprising a transparent conductive film containing a binder resin and conductive fibers, wherein the thermal decomposition starting temperature of the binder resin is 210° C. or higher (See Abstract), wherein the conductive fibers may be metal nanowire having an average major axis length of preferably 1 to 100 μm, particularly preferably 5 to 50 μm (paragraph [0041]). The transparent conductive film contains a solvent (paragraph [0045]). 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); see MPEP 2144.05.
Claim(s) 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Toba et al. (US 2019/0388933) in view of Yonezawa et al. (WO 2016125581).
Toba et al. is relied upon as disclosed above.
Regarding claim 2, Toba et al. fails to teach the resin as claimed.
However, Yonezawa et al. teaches conductive fine particles in a dispersion comprising metal fine particles and an acid-decomposable polymer having an acetal bond (See Abstract) and a solvent (page 13), wherein the metal fine particles include a rod shape (page 4) i.e. nanowire. Yonezawa et al. teaches wherein the resin (B) comprises a repeating unit having an acetal structure represented by general formula (1) (pages 4 and 10-11, formula 3).
It would have been obvious to one of ordinary skill in the art to use an acid-decomposable polymer as the binder resin in Toba et al. in order to provide high stability under normal stimuli (page 4).
Regarding claim 4, Toba et al. fails to teach a photo-acid generator or a thermal acid generator.
However, Yonezawa et al. teaches further comprising a photo-acid generator or a thermal acid generator (page 17).
It would have been obvious to one of ordinary skill in the art to include a photo-acid generator or a thermal acid generator in the composition of Toba et al. in order to allow low-temperature sintering and enhance decomposability of the acid-decomposable polymer (Yonezawa et al., page 17).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Toba et al. (US 2019/0388933) in view of Yonezawa et al. (WO 2016125581) and further, in view of Ogiwara et al. (JP 2015149384).
Toba et al. in view of Yonezawa et al. is relied upon as disclosed above.
Regarding claim 3, Toba et al. in view of Yonezawa et al. fails to teach wherein the resin (B) is a compound as claimed.
However, Ogiwara et al. teaches a composition containing a resin to be decomposed by either an acid and heat or both, i.e. thermally decomposable polymer (See Abstract, page 4), wherein the thermally decomposable polymer contains a repeating unit having an acetal structure represented by the general formula (1), including general formulas (1a) to (1c) (page 5).
It would have been obvious to one of ordinary skill in the art to include a thermally decomposable polymer including that presently claimed in resin (B) of Toba et al. in view of Yonezawa et al. in order to impart the desired heat decomposability and fluidity to the heat decomposable polymer (Ogiwara et al., page 5).
Response to Arguments
Applicant’s arguments filed 02/17/2026 have been considered but are moot because the new ground of rejection as necessitated by Applicant’s amendments.
Applicant amended claim 1 to recite “wherein the metal nanowires have an average length of 10 um or more” and added new claim 13.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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