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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/4/26 has been entered.
Response to Amendment
The Examiner acknowledges the remarks and amendments filed on 1/28/26. Claims 1, 12, and 13 have been amended. Claims 2, 4, 5, and 16 have been canceled. Claims 1, 3, 6-15, and 17-20 are pending.
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) 1, 3, 6-15, and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu CN_113322048_A (see machine English translation) in view of Shi CN_110305345_A (see machine English translation) and Shimizu USPA_20120145968_A1.
1. Regarding Claims 1, 3, 6-9, 11, 12, 14, 15, 17-19, Wu discloses a method of preparing a carbon nanotube-based thin film (corresponds to instant Claims 12 and 14) material having excellent electromagnetic shielding functionality (corresponds to instant Claim 19) (abstract). The method comprises the steps of first mixing singe-walled carbon nanotubes (corresponds to instant Claim 2), cellulose nanofibers in an amount of 33 wt% (paragraph 0132; corresponds to instant Claims 3, 9, 12) and water (corresponds to claimed solvent of instant Claim 1), ultrasonic dispersion (corresponds to claimed slurry of instant Claim 1) and then magnetic stirring (corresponds to instant Claim 6) (example 8). The aqueous dispersion is then placed in a motor-controlled syringe (reads on ink-jet printing of instant Claim 8) and printed on a silicone rubber substrate (corresponds to instant Claim 7), next the material is dried and peeled from the silicone rubber substrate to obtain a carbon nanotube-based film (corresponds to claimed freestanding sheet of instant Claims 11 and 18) (example 8). Wu specifies the film may be 80 μm thick (corresponds to instant Claim 15) (paragraph 0013). Although the claimed ratio of water to ethanol is not explicitly stated, the Examiner respectfully submits that this difference is no more than an obvious optimization, ethanol is a well-known solvent for carbon nanotube film formation and one of ordinary skill in the art would know how to adapt and modify the employed solvent by routine means alone when optimizing the method for specific film properties and substrates.
2. However, Wu does not disclose the claimed TEMPO-oxidized cellulose nanofibers nor explicitly the water to ethanol ratio.
3. Shi discloses a method of forming cellulose nanofibers (paragraph 0015) by using TEMPO-oxidized cellulose that contributes to a simple, time-saving, inexpensive method that avoids drawbacks of traditional photolithography, chemical etching methods that are expensive and leads to having sensitive sensing performance which greatly expands the applications range of its cellulose and provides a new approach for the research and application of cellulose in the field of sensing (paragraph 0077).
4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the cellulose, of Wu, by trying the use of TEMPO-oxidized cellulose, of Shi. One of ordinary skill in the art would have been motivated in doing so in order to obtain the aforementioned benefits and also because Shi discloses using its cellulose in sensor applications too (Claim 10).
5. Shimizu discloses that the application of the film onto the substrate becomes more difficult as the proportion of water in the dispersion increased but the dispersibility was higher with increasing proportion of water, and suggests using 1:3 ratio of water to ethanol (paragraph 0042).
6. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the water to ethanol ratio, of Wu, by using the stated ratio, of Shimizu. One of ordinary skill in the art would have been motivated in finding a happy medium, 1:3, in light of the effects stated by Shimizu.
7. Given that the method of fabrication and constituents are sufficiently similar to the presently claimed carbon nanotube sheet, the composite film of Wu in view of Shi and Shimizu is considered to inherently possess an emissivity between 0.03 to 0.3, of instant Claims 1, 12, and 17.
8. Regarding Claim 10, although not explicitly stated, based on the deposition methods disclosed, it can be envisaged that one of ordinary skill in the art could deposit multiple layers on a substrate based on end-user specifications as is commonly practiced in the art.
9. Regarding Claim 13, Wu in view of Shi and Shimizu suggests its method comprises the steps of first mixing singe-walled carbon nanotubes (corresponds to instant Claim 2), cellulose nanofibers in an amount of 33 wt% (Wu: paragraph 0132). Although this does not explicitly overlap with Applicants’ claimed range, it nevertheless comes very close. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) See MPEP 2144.05.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu CN_113322048_A (see machine English translation) in view of Shi CN_110305345_A (see machine English translation) and Shimizu USPA_20120145968_A1, as applied to Claims 1, 3, 6-15, and 17-19, and in view of Liu USPA_20110135894_A1.
10. Regarding Claim 20, Wu in view of Shi and Shimizu does not disclose the claimed primer.
11. Liu discloses a carbon nanotube film and method for manufacturing thereof (Title) comprising a layer of adhesive (corresponds to claimed primer) on the surface of its substrate to secure the carbon nanotube film (paragraph 0044).
12. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the carbon nanotube film and substrate, of Wu in view of Shi and Shimizu, by using the adhesive, of Liu. One of ordinary skill in the art would have been motivated in doing so in order to secure the deposition of its carbon nanotube film onto its substrate.
Response to Arguments
Applicant’s arguments with respect to all claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Examiner respectfully submits that Applicants’ Specification only supports a relationship between the claimed emissivity with type of cellulose, weight percentage of cellulose, single-walled carbon nanotubes, and the thickness of said carbon nanotube sheets (see Figs. 3, 4A, 4B, and 5). Given that the applied of record above teaches all of the claimed values for the type of cellulose, weight percentage of cellulose, single-walled carbon nanotubes, and the thickness of said carbon nanotube sheets, as shown above, it would then be expected for it to inherently possess the claimed emissivity values.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 April 2, 2026
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