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
This application claims priority to US 63/412,336 (filed 09/30/22), and to US 63/412,338 (filed 09/30/22).
Claims 1-20 are pending.
Drawings
The Drawings filed 10/02/23 are approved by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-14) in the Reply filed 04/02/26 is acknowledged.
Information Disclosure Statement
The IDS statements filed 09/30/25 and 12/05/25 have been considered. Initialed copies accompany this action.
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 4, 5, 8, 10, 13 are 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 listing of several ranges for the same component (in the same claim) is 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). Such renders the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. Applicant is suggested to add several dependent claims each reciting a single specific range for the component(s) in question.
For examination purposes, the examiner construes each of the above claims to include all amounts of the claimed components from the lowest to highest recited values.
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.
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.
Claim Construction
The examiner notes applicant’s definition of the claim terms “alkyl” and “substitutes” (as relating to the solvent component) in para 0045-46 of the instant specification. Likewise, applicant’s definition of the claim terminology “liquid metal” at para 0092 is noted.
Claim(s) 1, 2 and 7-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busbee et al US 2017/0253751 A1.
Busbee et al US 2017/0253751 A1 discloses a composite waterborne dispersion for 3D printing comprising an aqueous dispersion of polymer particles, a thickener, and a functional filler (Abstract). Preferred functional fillers include eutectic metal particles such as InGa (i.e. instantly claimed liquid metal)(para 0025, 0131 of reference), polymers include polyurethane or acrylic dispersions (0039), and the reference teaches additional components such as conductive second functional filler (para 0007; 0107) and coalescent additive such as 2,2,4-trimethyl-1,3-pentanediol diisobutyrate which may be present in up to 10 wt% of the composition (0012; 0116; Table 2). The percentages of components disclosed in the reference appear to overlap with those specified in the instant dependent claims (see Table 2 of reference).
Although the reference does not disclose the claimed combination of polymer binder solution, liquid metal component and solvent (TXIB) with sufficient specificity to anticipate the above listed claims, the examiner submits that the claimed selection of materials would have been obvious to the skilled artisan because such conductive paste compositions fall within the scope of those taught by Busbee et al. Therefore, one of ordinary skill in the art would have had a reasonable expectation of success, because such a paste composition containing polymer binder solution, liquid metal component and solvent (TXIB) (and additional metal filler and second solvent (i.e. water)) is expressly suggested by the Busbee disclosure and therefore is an obvious formulation. All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention (KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007)).
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Allowable Subject Matter
Claims 3-6 are allowable over the prior art. The prior art above does not disclose or fairly suggest the specific components recited in these dependent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
June 23, 2026
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