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 of Group I (claims 1-23) in the reply filed on 07/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. DE102022122416.3, filed on 09/05/2022.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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 1-23 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least one crosslinker”, and the claim also recites “preferably a photoreactive crosslinker” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, 8-13, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eickenscheidt et al. (Polymer Journal ‘2019’ 51:1029–1036).
Considering claims 1, 2, 8, 9, 11-13, 19 and 20, Eickenscheidt discloses a method for producing a layered body, wherein the layered body comprises an electrically conductive substrate (working electrode), the surface of which is at least partially coated with a layer containing an electrically conductive polymer (PEDOT), (page 1030, left column) the method comprising the following method steps: a) providing the electrically conductive substrate (Au) (page 1030, left column); b) contacting at least a part of the surface of the electrically conductive substrate with a composition containing i) at least one monomer (3,4-ethylenedioxythiophene – EDOT) suitable for producing an electrically conductive polymer (page 1029, Introduction, line 6), ii) at least one solvent (acetonitrile – aprotic organic solvent) (page 1030, left column), c) applying an electrical potential between the electrically conductive substrate and the composition such that the at least one monomer i) polymerizes to form an electrically conductive polymer, and the electrically conductive polymer formed is deposited in the form of a layer containing this polymer on at least a part of the surface of the electrically conductive substrate (page 1030, left column); - wherein applying the electrical potential comprises a pulse phase PP having successive pulses, wherein each pulse of the pulse phase PP comprises a partial pulse phase PP1 having a phase duration t1 and a partial pulse phase PP2 having a phase duration t2, - wherein the partial pulse phase PP1 is characterized by an electrical potential EP(PP1) (µmin) (Fig. 1A) and by a current density SD(PP1) (page 1031, right column, 3rd line) guided through the electrically conductive substrate; - wherein the partial pulse phase PP2 is characterized by an electrical potential EP(PP2) (µmax) and by a current density SD(PP2) guided through the electrically conductive substrate (page 1031, right column, 3rd line); - wherein EP(PP1) < EP(PP2) (Fig. 1A, reproduced below).
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Considering claim 10, Eickenscheidt discloses the pulse phase is caried for 120 sec. (page 1030, left column), which is within the claimed range of 30 sec to 20 min.
Claim(s) 1, 8, 9 and 11-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hendricks et al. (US 20160208114 A1).
Considering claims 1, 8, 9, 11-14, 19 and 20, Hendricks discloses a method for producing a layered body, wherein the layered body comprises an electrically conductive substrate [0030], the surface of which is at least partially coated with a layer containing an electrically conductive polymer [0034] the method comprising the following method steps: a) providing the electrically conductive substrate (gold, platinum) [0030]; b) contacting at least a part of the surface of the electrically conductive substrate with a composition containing i) at least one monomer (3,4-ethylenedioxythiophene – EDOT) suitable for producing an electrically conductive polymer [0038], ii) at least one solvent (acetonitrile – aprotic organic solvent) [0081], c) applying an electrical potential between the electrically conductive substrate and the composition such that the at least one monomer i) polymerizes to form an electrically conductive polymer, and the electrically conductive polymer formed is deposited in the form of a layer containing this polymer on at least a part of the surface of the electrically conductive substrate [0009]; - wherein applying the electrical potential comprises a pulse phase PP having successive pulses, wherein each pulse of the pulse phase PP comprises a partial pulse phase PP1 (low voltage) having a phase duration t1 and a partial pulse phase PP2 (high voltage) having a phase duration t2, - wherein the partial pulse phase PP1 is characterized by an electrical potential EP(PP1) and by a current density SD(PP1) guided through the electrically conductive substrate (inherently); - wherein the partial pulse phase PP2 is characterized by an electrical potential EP(PP2) and by a current density SD(PP2) guided through the electrically conductive substrate (inherently) [0103]; - wherein EP(PP1) < EP(PP2) [0103];
e) optionally applying electromagnetic radiation to the layer containing the electrically conductive polymer in order to cause a photoreaction of the at least one photoreactive crosslinker iii) ([0060] and [0067]) comprising an anionic photoreactive cross-linking agent or an anionic photoreactive hydrophilic polymer [0006].
Considering claim 15, Hendricks discloses the at least one anionic photoreactive hydrophilic polymer has sulfonate groups [0063].
Considering claim 16, Hendricks discloses the crosslinker iii) contains at least one anionic photoreactive crosslinking agent comprising sulfonate groups, carboxylate groups, phosphonate groups, phosphate groups or combinations of these groups [0058].
Considering claims 17 and 18, Hendricks discloses the at least one photoreactive and uncharged hydrophilic polymer is a photoreactive 1-vinyl-2-pyrrolidone derivative [0074].
Considering claims 21 and 22, Hendricks discloses the surface-active compound iv) is selected from the group consisting of poloxamers [0079].
Considering claim 23, Hendricks discloses the electromagnetic radiation applied in method step e) is UV light in a wavelength range of 260 to 400 nm [0105].
Claim(s) 1, 5, 8, 9, 11-14, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 104328462 A, machine translation).
Considering claims 1, 8, 9, 11-14, 19 and 20, Liu discloses a method for producing a layered body, wherein the layered body comprises an electrically conductive substrate [0019], the surface of which is at least partially coated with a layer containing an electrically conductive polymer [0030] the method comprising the following method steps: a) providing the electrically conductive substrate (working electrode) [0019]; b) contacting at least a part of the surface of the electrically conductive substrate with a composition containing i) at least one monomer suitable for producing an electrically conductive polymer [0034], ii) at least one solvent [0034], c) applying an electrical potential between the electrically conductive substrate and the composition such that the at least one monomer i) polymerizes to form an electrically conductive polymer, and the electrically conductive polymer formed is deposited in the form of a layer containing this polymer on at least a part of the surface of the electrically conductive substrate [0023]; - wherein applying the electrical potential comprises a pulse phase PP having successive pulses, wherein each pulse of the pulse phase PP comprises a partial pulse phase PP1 (resting phase) having a phase duration t1 and a partial pulse phase PP2 (pulse stage) having a phase duration t2, - wherein the partial pulse phase PP1 is characterized by an electrical potential EP(PP1) and by a current density SD(PP1) guided through the electrically conductive substrate [0023]; - wherein the partial pulse phase PP2 is characterized by an electrical potential EP(PP2) and by a current density SD(PP2) guided through the electrically conductive substrate (inherently) [0023]; - wherein EP(PP1) < EP(PP2) (inhernelty, because the resting phase the current density is O) [0023].
Considering claim 5, Liu discloses SD(PP1) < SD(PP2) and wherein, during partial pulse phase PP1 and partial pulse phase PP2, the current density guided through the electrically conductive substrate is constant within the relevant partial pulse phase [0023].
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.
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 104328462 A, machine translation).
Considering claim 6, Liu discloses the amount of the current density |SD(PP1)| guided through the electrically conductive substrate during partial pulse phase PP1 is 0 [0023], which is less than 0.4 mA/cm2, and the amount of the current density |SD(PP2)| guided through the electrically conductive substrate during partial pulse phase PP2 is 0.05 to 5 mA/cm2 [0023], which overlaps the claimed range of 0.9 to 1.7 mA/cm2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the recited range because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
Allowable Subject Matter
Claims 3, 4 and 7 are 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.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art (Hendricks et al. US 20160208114 A1) discloses a method of electrochemically polymerizing a monomer on a substrate from an electrolyte including a monomer and a solvent thus forming electrically conductive polymer film, where the applied electrical potential comprises successive pulses each pulse having a peak and trough.
However, Hendricks does not disclose the lower potential of the pulse phase is 0.2 to 0.8 V, and higher potential of the pulse phase is in a range of 0.8 to 1.4 V, as required by claim 3. Hatricks also does not disclose t1 is in a range of 1 to 15 sec, and t2 is in a range of 1 to 10 sec, as required by claim 7.
The prior art of record does not disclose nor suggest the instantly claimed invention as a whole.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/Examiner, Art Unit 1794
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