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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 and 15-19 in the reply filed on 07/23/2026 is acknowledged. The traversal is on the grounds that there is no burden to examine the groups together. This is not found persuasive because the elected group is drawn to a conductive composition while at least group II is drawn to a method of producing a conductive composition. For example, determination of patentability of a product is based on the product itself, not its method of production. Searches for a conductive composition would be structural in nature while searches for a method would take into account specific method steps in route to a product. Further, if Examiner was to search the method and product simultaneously, it is noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
.The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 6 is 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.
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Regarding claim 6, the formula (8):is unclear. It is unclear if the line attached to “S” is intended to be the attachment point to the R groups in general formula 6 and 7, or if the line is a methyl group (CH3), where the attachment to the general formula 6 or 7 occurs at either the Rx, Ry, or Rz position. In the interest of compact prosecution and in view of the instant specification, the former interpretation where the line coming off the “S” atom is attached to general formula 6 and/or 7 was applied. This is supported in at least Table 7, entries 7-12 to 7-17
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024). Note, the Figures cited can be found in the JP2015187946A version of Haramoto et al., as the translated copy does not have correct images.
Regarding claim 1, Haramoto teaches a conductive paste where the material includes a metal powder and a conductive organic compound, where the conductive organic compound includes a compound represented by the formula (19):[AltContent: textbox (Figure 1. Reproduced formula (19) from JP2015187946A. )]
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where R1-R6 includes a hydrogen atom, an optionally substituted alkyl group or an optionally substituted alkoxy group, where examples of such substituents include halogen atoms, alkyl groups, alkoxy groups, phenyl groups, naphthyl groups, amino groups, alkylamino groups, carbonyl groups, ester groups, sulfonyl groups, nitro groups, cyano groups, alkylene oxide groups, and the like (Pg. 27, par. 1-2; Pg. 10, Formula 19).
The above compound, when R1 is an aromatic group with a substituent of alkylamino or sulfonyl meets the requirements of the claimed “general formula (3).
Regarding claim 2, Haramoto anticipates the conductive composition of claim 1 and Haramoto teaches the hydrophilic group attached to N can be a phenyl group that is substituted with including halogen atoms, alkyl groups, alkoxy groups, phenyl groups, naphthyl groups, amino groups, alkylamino groups, carbonyl groups, ester groups, sulfonyl groups, nitro groups, cyano groups, alkylene oxide groups, and the like (Pg. 27, par. 1-2).
Regarding claim 7, Haramoto anticipates the composition of claim 1 and Haramoto teaches the metal particle coated can be silver (Claims; Pg. 4, par. 2; Pg. 33, Example).
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 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 3-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024) in view of Tomonari et al. (JP2007128864A English; cited in IDS dated 01/05/2024). Note, the Figures cited can be found in the JP2015187946A version of Haramoto et al., as the translated copy does not have correct images.
Regarding claim 3, Haramoto anticipates the conductive composition of claim 1 and 2 and the claim further requires the hydrophilic group is “a phenyl group to which at least one of a carboxylic acid group and a sulfonic acid group is bonded,” to which Haramoto describes sulfonyl and ester groups but does not explicitly state these are the acid forms (Pg. 27, par. 1-2).
Tomonari teaches a fluid composition for use in electrodes, wiring, patterns, and mirror coatings, where a sulfur-containing compound with at least one hydrophilic group selected from a carboxyl, a hydroxyl group, an amino group, a hydrazide group and an amide group is included (Abstract; Claims).
Advantageously, the hydrophilic group binds the surface of the metal and compositions comprising the sulfur-containing compound with at least one hydrophilic group provides metal films with excellent adhesion to substrates at relatively low temperature while having excellent smoothness (Pg. 2, par. 6-8)
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a carboxyl group in the conductive compound of Haramoto in order to bind the metal and provide metal films with excellent adhesion to substrates at relatively low temperature while having excellent smoothness as taught by Tomonari.
Regarding claim 4, Haramoto anticipates the conductive composition of claim 1 and 2 and Haramoto in view of Tomonari teach the conductive composition of claim 3.
Haramoto further teaches a conductive compound with 1-3 carboxyl or sulfonyl groups (Pg. 27, par. 1-2; Pg. 10, Formula 19). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Haramoto (1-3 carboxyl or sulfonyl groups) overlaps with the claimed range (2 or 3 groups bonded to the phenyl group). Therefore, the range in Haramoto renders obvious the claimed range.
Regarding claim 9, Haramoto anticipates the conductive composition of claim 1 and the claim further requires “an aqueous medium” to which Haramoto teaches organic solvents (Pg. 31, par. 1).
Tomonari teaches the solvent used in the fluid composition may be water or an organic solvent (Pg. 4, par. 6).
Advantageously, including aqueous solvent allows the hydrophilic compound to be sufficiently dispersed (Pg. 4, par. 6).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide an aqueous medium in the conductive compound of Haramoto in order to sufficiently disperses the hydrophilic compound as taught by Tomonari.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024) in view of Imahashi et al. (JP2016194641A English). Note, the Figures cited in Imahashi et al can be found in the JP2016194641A version of Imahashi et al., as the translated copy does not have correct images.
Regarding claim 5, Haramoto anticipates the conductive composition of claim 1 and the claim further requires “the hydrophilic group in the general formula (1) and the hydrophilic group in the general formula (2) are each independently (i) any heteroaromatic group selected from the group consisting of: a pyridazyl group; a pyrazyl group; a pyrimidyl group; and a triazyl group,” to which Haramoto does not teach these general formulas.
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[AltContent: textbox (Figure 2. Reproduced [6] from JP2016194641A)] Imahashi teaches a photosensitive conductive paste comprising a photosensitive mesoionic compound (also called organic binder (A)) that include pyridinium-ylide derivatives such as N-(1-pyridino) amidate, 4,6-dioxo-1,3-diazinederivatives, aryl-N-alkylnitrone derivatives, and N-aryl-4-Oxyisoquinolidium betaine (Abstract; Claims; Pg. 2, par. 10.). Imahashi teaches one of the organic binders is the following compound:This compound is consistent with the general formula (2), R3 and R4 are a heteroaromatic group and R1 and R2 are an aliphatic group (Abstract; Claims; [6]). The N-N(C5H5) group taught by Imahashi is a pyridazyl group and meets the limitation required by the claim.
Advantageously, a conductive film comprising the formula taught by Imahashi provides an improved conductivity that displays conductivity without disconnection during development (i.e. development of an image with ultraviolet exposure (Pg. 2, par. 3-10).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a conductive compound with the formula taught by Imahashi in the conductive compound of Haramoto in order to provide a conductive paste that displays conductivity without disconnection during development, as taught by Imahashi.
The claim further requires a hydrophilic group is attached to the pyridazyl group, to which Haramoto does not teach a pyridazyl group and Imahashi does not teach a hydrophilic group attached to the pyridine ring.
Tomonari teaches a fluid composition for use in electrodes, wiring, patterns, and mirror coatings, where a sulfur-containing compound with at least one hydrophilic group selected from a carboxyl, a hydroxyl group, an amino group, a hydrazide group and an amide group is included (Abstract; Claims).
Advantageously, the hydrophilic group binds the surface of the metal and compositions comprising the sulfur-containing compound with at least one hydrophilic group provides metal films with excellent adhesion to substrates at relatively low temperature while having excellent smoothness (Pg. 2, par. 6-8)
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a carboxyl group in the conductive compound of Haramoto in order to bind the metal and provide metal films with excellent adhesion to substrates at relatively low temperature while having excellent smoothness as taught by Tomonari.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024).
Regarding claim 8, Haramoto anticipates the composition of claim 1 and Haramoto further teaches the silver particles have a diameter of from 1 nm to 100 µm (Pg. 11, par. 16). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Haramoto (1 nm to 100 µm) overlaps with the claimed range (“5 nm or more to 100 nm or less). Therefore, the range in Haramoto renders obvious the claimed range.
Note, Haramoto does not explicitly state the particle diameter is “a volume-based 50% cumulative” particle diameter. However, although there is no disclosure that the particle diameter of Haramoto is conformity with “volume-based 50% cumulative”, given that the Haramoto discloses a particle diameter as the presently claimed and absent evidence criticality how the diameter is measured, it is an examiner's position that the particle diameter disclosed by Haramoto meets the claim limitation.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024) in view of Imahashi et al. (JP2016194641A English).
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[AltContent: textbox (Figure 3. Reproduced formula (19) from JP2015187946A. )] Regarding claim 15, Haramoto teaches a conductive paste that can be attached to a glass plate (i.e. base material), where the conductive paste includes a metal powder and a conductive organic compound, where the conductive organic compound includes a compound represented by the formula (19):where R1-R6 includes a hydrogen atom, an optionally substituted alkyl group or an optionally substituted alkoxy group, where examples of such substituents include halogen atoms, alkyl groups, alkoxy groups, phenyl groups, naphthyl groups, amino groups, alkylamino groups, carbonyl groups, ester groups, sulfonyl groups, nitro groups, cyano groups, alkylene oxide groups, and the like (Pg. 27, par. 1-2; Pg. 10, Formula 19).
The above compound, when R1 is an aromatic group with a substituent of alkylamino or sulfonyl meets the requirements of the claimed “general formula (3).
Haramoto does not explicitly state the conductive paste is used in conductive images.
Imahashi teaches a conductive paste that is photosensitive that is used in image development (Abstract; Pg. 4, par. 4).
Advantageously, the conductive paste for image development can be used in conventional printing methods by providing a conductive thin film with excellent specific resistance that enables excellent resolution (Pg. 4, par. 4; Pg. 7, par. 9)
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the conductive compound of Haramoto in a conductive image in order to provide a conductive film with excellent specific resistance that enables excellent resolution of images and that can used with conventional printing methods, as taught by Imahashi.
Regarding claim 16, Haramoto teaches a conductive paste that can be attached to a glass plate (i.e. base material), where the conductive paste includes a metal powder and a conductive organic compound, where the conductive organic compound includes a compound represented by the formula (19):
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[AltContent: textbox (Figure 4. Reproduced formula (19) from JP2015187946A. )]where R1-R6 includes a hydrogen atom, an optionally substituted alkyl group or an optionally substituted alkoxy group, where examples of such substituents include halogen atoms, alkyl groups, alkoxy groups, phenyl groups, naphthyl groups, amino groups, alkylamino groups, carbonyl groups, ester groups, sulfonyl groups, nitro groups, cyano groups, alkylene oxide groups, and the like (Pg. 27, par. 1-2; Pg. 10, Formula 19).
The above compound, when R1 is an aromatic group with a substituent of alkylamino or sulfonyl meets the requirements of the claimed “general formula (3).
Haramoto does not explicitly state the conductive paste is used in “conductive images to be recorded on a base material”.
Imahashi teaches a conductive paste attached to a base material that is photosensitive and that can be used in image development (Abstract; Claims; Pg. 4, par. 4).
Advantageously, the conductive paste for image development can be used in conventional printing methods by providing a conductive thin film with excellent specific resistance that enables excellent resolution (Pg. 4, par. 4; Pg. 7, par. 9)
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the conductive compound of Haramoto in a conductive image in order to provide a conductive film with excellent specific resistance that enables excellent resolution of images and that can used with conventional printing methods, as taught by Imahashi.
Regarding claim 17, Haramoto in view of Imahashi teach the conductive image according to claim 16-17 and Haramoto further teaches the conductive paste is applied to a glass plate (Pg. 4, par. 6).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024) in view of Imahashi et al. (JP2016194641A English) and further in view of Sanger et al. (US20140231723A1).
Regarding claims 18-19, Haramoto in view of Imahashi teach the conductive image of claims 16-17 and the claim further requires the base material is a “resin material” that is “a biocompatible material”, where the “biocompatible material is at least one kind selected from the group consisting of: gelatin, cellulose, chitosan, collagen, and fibroin.” Haramoto teaches a glass substrate (Pg. 4, par. 6), while Imahashi teaches base materials including a glass substrate, a glass epoxy substrate, a glass polyimide substrate, a ceramic substrate, a polyimide substrate, a bismaleimide triazine) plate, a phenol substrate, or paper phenol can be used (Pg. 5, par. 1). Neither explicitly teach a biocompatible material from the group listed in claim 19.
Sanger teaches a conductive silver-containing film comprising a hydrophilic binder material that is coated on a substrate, where the substrate includes cellulose (Abstract; [0043]-[0044]). Cellulose is listed in claim 19 as a “biocompatible material” and accordingly the cellulose taught by Sanger is considered to meet the limitation of claim 18 for a “biocompatible material”.
Advantageously, the cellulose film is useful because it can be applied with a silver coating while being flexible and allowing further manipulation of the opposite side (([0043]-[0047]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include a cellulose base material in the conductive material of Haramoto in order to provide flexible substrate that can be applied silver coatings while also being coated on the opposite side, as taught by Sanger.
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for Indicating Allowable Subject Matter
The following is the examiner’s statement of reasons for Indicating Allowable Subject Matter:
The closest prior art reading on the instant invention identified by the Examiner during search is Haramoto et al. (JP2015187946A English; cited in IDS dated 01/05/2024). Haramoto teaches a conductive paste that can be attached to a glass plate (i.e. base material), where the conductive paste includes a metal powder and a conductive organic compound, where the conductive organic compound includes a compound represented by the formula (19):
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[AltContent: textbox (Figure 5. Reproduced formula (19) from JP2015187946A. )]where R1-R6 includes a hydrogen atom, an optionally substituted alkyl group or an optionally substituted alkoxy group, where examples of such substituents include halogen atoms, alkyl groups, alkoxy groups, phenyl groups, naphthyl groups, amino groups, alkylamino groups, carbonyl groups, ester groups, sulfonyl groups, nitro groups, cyano groups, alkylene oxide groups, and the like (Pg. 27, par. 1-2; Pg. 10, Formula 19).
While the prior art does disclose the preparation of compound consistent with general formula (3) in claim 1, Haramoto does not teach or suggest the conductive compound containing a hydrophilic group has the general formula (6) or (7). Haramoto does not teach or suggest a bipyridine or phenanthroline based compound, much less one substituted with the hydrophilic group represented by general formula (8). For this reason, the limitation is considered to be novel and nonobvious
Other relevant prior art identified during search include the following:
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[AltContent: textbox (Figure 6. Reproduced Fig. 1 from Hearn.)]Hearn et al. (US8748582): Hearn teaches an affinity ligand-matrix that comprises a linker with the formula:While this reference discloses a ligand-matrix comprising a pyridine ring attached to a S-CH2-CH2-NH2 moiety (Series VI), it does not teach or suggest the sulfur is connected to a bi-pyridine or phenanthroline ring, nor that an alkyl amino group (i.e. NR2 as is claimed) is attached to the S-containing group. Hearn is further in a different field of endeavor, being focused on column chromatography, and skilled artisan would not find motivation in Hearn to prepare a conductive paste for treating a metal particle, as required by the instant claims. For these reasons, Hearn et al. does not remedy the deficiencies of Haramoto et al.
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Uenishi et al. (Heterocycles 1999, 50, 1): Uenishi teaches a series of substituted oligopyridine molecules as shown below:
where Y and X can be sulfur substituted with a methyl group (Pg. 343, Scheme 2). While Uenishi teaches a bipyridine ring substituted with sulfur (akin to general formula (6) of the instant invention), Uenishi does not teach the sulfur moiety is attached to an alkyl amino group with an alkylene chain. For these reasons, Uenishi et al. does not remedy the deficiencies of Haramoto et al.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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