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 .
Response to Amendment
Upon entry of the amendment filed on 09 July 2026, Claim(s) 1 is/are amended; Claim(s) 11-21 is/are withdrawn; Claim(s) 22 and 23 is/are added and Claim(s) 2 is/are cancelled. The currently pending claims are Claims 1 and 3-23.
Applicants’ remarks and amendments have been carefully considered; however, they are not found persuasive and the rejections are maintained. Further, new grounds of rejections are provided necessitated by the amendments.
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 22 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.
The term “good silver nanowire dispersion” in claim 22 is a relative term which renders the claim indefinite. The term “good silver nanowire dispersion” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that the specification recites various examples of a good dispersion; however, the specification is silent regarding a specific definition of the claimed terminology and limitation (what is the threshold for a “good” dispersion?).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-7, 9, 10, 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (WO-2022010309-A1, a translation is provided).
Claims 1, 3, 4, 9,10, 22 and 23: Kim discloses a composite with 1-90 pbw of silver nanorods and a polymeric binder (abs, pg. 1, 8, 13 and examples). In particular, Kim discloses a mass ratio of conductive component to binder from 1:0.5 to 2.5 “but is not limited to limited thereto” (pg. 10 and 12) and nanorods having L=500nm to 15 microns and an aspect ratio of 20-80 – it is noted that the structural dimension meets the claimed nanowire limitation (pg. 3, 6 and 8). The Kim reference discloses the claimed invention but does not explicitly disclose the claimed loading amounts and size ranges. Given that the Kim reference discloses loading amounts and size ranges that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught values, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading and size variables with the benefit gain of enhanced conductivity and mechanical integrity parameters of the composite. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Regarding the claimed conductivity/resistivity property, if a prior art reference teaches the substantially identical structure/material/product, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcome to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present. Here, it is noted that Kim discloses a line resistance of less than 5 MOhm/cm (pg. 3 and 6).
Claims 5 and 6: Kim discloses various polymeric binders such as cellulose, urethane and acrylic resins (pg. 3 and 6).
Claim 7: Kim discloses the crosslinking agent and viscosity modifiers being optional (pg. 13).
Claim(s) 1-4, 7-10 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong (CN-107502017-A, a translation is provided).
Claims 1, 3, 6, 8-10, 22 and 23: Dong discloses a composite with 80-95 wt.% of nano silver wires and a polymeric binder/matrix (abs, pg. 3 and 4). Further, Dong discloses the nanowires having L=80-100 nm, a D=20-30 microns – thus resulting in an aspect ratio of 200-375 and loading amounts of the nano silver nanowires to the binder of 0.3-8 wt% to 0.05-01 wt% - thus meeting the claimed relative loading amounts (pg. 3 and 4). The Dong reference discloses the claimed invention but does not explicitly disclose the claimed loading amounts. Given that the Dong reference discloses loading amounts that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught values, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading and size variables with the benefit gain of enhanced conductivity, compatibility and mechanical integrity parameters of the composite. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Regarding the claimed conductivity/resistivity property, if a prior art reference teaches the substantially identical structure/material/product, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcome to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claim 4: Dong discloses the polyacrylate polymer (abs).
Claim 7: Dong does not require any crosslinking agents and viscosity modifiers.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 1 above, and further in view of Hu (US-20190172600-A1).
The Kim reference discloses the claimed invention but does not explicitly disclose the diameter and aspect ratio ranges. It is noted that the Kim reference discloses silver nanorods and is open to optimize the structural characteristics and the claim(s) call(s) for specific structural dimensions. In an analogous art, the Hu reference discloses that the feature of silver nanowires having the claimed diameters and aspect ranges in a composite is well known in the art (abs, ¶ 3-7, 51-52, 65-71, 91-100). One of ordinary skill in the art would have recognized that applying the known technique of Hu to the teachings of Kim would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced opto-conductivity, compatibility and mechanical integrity parameters. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dong as applied to claim 1 above, and further in view of Hu (US-20190172600-A1).
The Dong reference discloses the claimed invention but does not explicitly disclose the claimed polysaccharide polymeric binder. In an analogous art, the Hu reference discloses that the feature of silver nanowires having the claimed diameters and aspect ranges in a composite with a polymeric binder such as a polyacrylate and polysaccharide polymer is well known in the art (abs, ¶ 3-7, 51-52, 65-71, 91-100). One of ordinary skill in the art would have recognized that applying the known polymeric binder of Hu to the teachings of Kim would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced opto-conductivity, compatibility and mechanical integrity parameters. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution/implementation would be repugnant to a skilled artisan.
Response to Arguments
Applicant's arguments filed 09 July 2026 have been fully considered but they are not persuasive.
Applicant argues that Kim teaches the silver nanoparticles having a loading amount of at most 66.67% (instead of the claimed 75 wt%) based on the disclosure of a ratio of the conductive material to binder being 1.0:0.5 (pg. 6).
The examiner respectfully disagrees and notes that Kim further teaches a mass ratio of conductive component to binder from 1:0.5 to 2.5 “but is not limited to limited thereto” (pg. 10 and 12) – thus Kim is open to the amounts being outside the preferred range.
Applicant argues that the nano rods of Kim differ from the claimed silver nanowires (pg. 6 and 7).
The examiner respectfully disagrees and notes that the instant claims are silent regarding any specific structural or chemical features that would differentiate the nanorods of Kim with the claimed nanowires since Kim discloses nanorods having L=500nm to 15 microns and an aspect ratio of 20-80 – thus meeting the claimed structural features.
Applicant argues that the conductivity would not be inherent since Kim teaches different components and loading amounts (pg. 7).
The examiner respectfully disagrees and notes that Kim teaches the same Ag nanoparticles having similar structural and chemical structures and similar loading amounts – thus the claimed conductivity would be expected.
Applicant argues that Dong teaches the silver nanoparticles having a loading amount of 0.3 to 8 wt% instead of the claimed 75% loading amount (pg. 8).
The examiner respectfully disagrees and notes that the loading amounts have been interpreted both as based on the total amounts of the dispersion and alternatively as relative to each other (see applicant’s specification – see Table 12). Here, Dong discloses loading amounts of the nano silver nanowires to the binder of 0.3-8 wt% to 0.05-01 wt% - thus meeting the claimed relative loading amounts.
Examiner’s remarks:
It is noted that applicant has not provided any substantive arguments regarding the rejections of claims 4, 6 and 8 besides that the cited references do not remedy the deficiencies of the parent claims – thus the rejections are maintained.
It is suggested that the claims should reflect the showing of unexpected results to overcome any obviousness rejections.
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 TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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