DETAILED ACTION
An Office Action was mailed 11/03/2025. Applicant filed a Response on 01/02/2026.
Claims 12, 16, 21, 23, 25-26, 28-30 and 53-63 are pending. Claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62 are rejected. Claims 53, 59, 61 and 63 are withdrawn from consideration.
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 .
Examiner’s Note
Upon reconsideration of the claimed invention as disclosed in the specification, a new grounds of rejection under 35 U.S.C. 112, first paragraph, has been made. This is a second non-final.
Election/Restrictions
Applicant's election with traverse of Category A: Species (b); Category B: Species (c); and Category C: Species (f), in the reply filed on 01/02/2026 is acknowledged. The traversal is on the grounds that claims themselves are never species, citing MPEP 806.04(e). This is not found persuasive because MPEP 806.04(e) also states MPEP 806.04(e), “Species always refer to the different embodiments of the invention.” Looking at, for example, Category A, Species (a), wherein the environmental indicator material is configured to change color state in response to exposure to the predetermined environmental condition (Claim 53), and Species (b) wherein the environmental indicator material liquifies in response to the predetermined environmental condition (claims 54-56 and 61-63), these are two mutually exclusive and distinct species of environmental materials configured to change from an initial state to a second state, producing a mutually exclusive and distinct observable effect. For example, a photochromic dye which is configured to change color upon heating is mutually exclusive and distinct from a white wax which melts upon heating to form a white liquid.
Applicant further argues the two options are not mutually exclusive, and all of the listed claims are generic to embodiments of both types, e.g., indicator materials that
both liquify and change color. As a cited example, there are materials that liquify, thereby permitting them to become part of a color changing chemical reaction, or materials that are light scattering and opaque, that when they liquify, become transparent.
This is not deemed persuasive because claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. See MPEP 806.04(f). The claims of individual species in separate claims is evidence that the species are mutually exclusive.
Further, although it is possible that some of the claimed species may have overlapping configurations, observable effects, predetermined environmental conditions and/or changes of state, it is clear that the claims encompass countless mutually exclusive species. For example, a prior art search for an environmental indicator which changes color would not necessarily result in findings of an environmental indicator which changes from solid to liquid.
The requirement is still deemed proper and is therefore made FINAL.
Claims 53, 59, 61 and 63 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/02/2026.
Claim Objections
Claims 21 and 28 are objected to because of the following informalities:
Claim 21, line 2, deletion of the term “is” is suggested.
Claim 28, line 2, it is suggested to amend to the term “a list” to the term “the group” in accordance with proper Markush language.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16, as amended, claims that the predetermined environmental condition is selected from a group which includes “temperature excursion above a predetermined temperature threshold” and “temperature excursion below a predetermined temperature.”
Although the specification at paragraphs [0035], [0054], [0072] and [079] disclose “temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time” and “temperature excursion below a predetermined temperature for at least a predetermined amount of time” (emphasis added), the specification does not teach “temperature excursion above a predetermined temperature threshold” and “temperature excursion below a predetermined temperature,” without a predetermined amount of time as presently claimed.
Claim 21, line 2, recites that the carrier composition has a viscosity in the range from 100cps to 10,000cps when at a first temperature in a range from 50oC to 80oC (emphasis added). The specification at paragraph [0043] teaches a first temperature range from 50oC to 80oC, and paragraph [0044] teaches a first viscosity range from 1000cps to 10,000cps. Amending “100cps” to “1000cps” can overcome this rejection.
Claim 55, as amended, claims that the predetermined environmental condition is selected from a group which includes “temperature excursion above a predetermined temperature threshold.”
Although the specification at paragraphs [0035], [0054], [0072] and [079] discloses “temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time” (emphasis added), the specification does not teach “temperature excursion above a predetermined temperature threshold” without a predetermined amount of time as presently claimed.
Regarding dependent claims 12, 23, 25-26, 28-30, 54, 56-58, 60 and 62, these claims do not remedy the deficiencies of parent claim 16 noted above, and are rejected for the same rationale.
Claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compositions within the scope of claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62 can be used as claimed and whether claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since from the specification (paragraph [0032]), it appears that a variety of microcapsules (e.g., material) encapsulating various environmental indicator material, including those broadly described in Specification [0079], in various non-activated configuration must be met to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, there is nothing in the specification that discloses what microcapsules (e.g., material), environmental indicator material, and what non-activated configuration are necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time. Given the breadth of claim 16 which encompasses any type material of microcapsules encapsulating any type of environmental indicator material in any non-activated configuration, the quantity of experimentation necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, would be great. To achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various materials of microcapsules encapsulating various environmental indicators, including those broadly described in Specification [0079], the microcapsule materials and environmental indicators present in various non-activated configurations, without any apparent predictability.
(b) There is no direction or guidance presented for the conditions necessary for microcapsules encapsulating an environmental indicator material in a non-activated configuration to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time; there is nothing in the specification that discloses what microcapsules (e.g., material), environmental indicator materials, and non-activated configurations are necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
No guidance is provided on what the microcapsules (e.g., material), environmental indicator materials, and non-activated configurations must be to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
(c) There is an absence of working examples concerning the conditions necessary for microcapsules encapsulating the environmental indicator material in a non-activated configuration to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, and there is nothing in the specification that discloses what microcapsules (e.g., material), environmental indicator material, and non-activated configurations are necessary to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
Therefore, there would be undue experimentation to determine not only what microcapsules (e.g., material), environmental indicator material, and what non-activated configurations must be met to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time, but also what the scope of each these conditions must be, i.e., what microcapsules (e.g., material), environmental indicator materials, and what non-activated configurations are required, etc., to allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured, wherein the predetermined environmental condition comprises at least one condition selected from the group consisting of temperature excursion above a predetermined temperature threshold, temperature excursion above a predetermined temperature threshold for at least a predetermined amount of time, temperature excursion below a predetermined temperature, temperature excursion below a predetermined temperature for at least a predetermined amount of time, cumulative exposure to temperature over a time period above a predetermined threshold for at least a predetermined amount of time, oxygen exposure, ammonia exposure, exposure to at least a predetermined amount of radiation of a particular type, ultraviolet light exposure, humidity exposure, exposure to a humidity level above a predetermined threshold, and exposure to a humidity level above a predetermined threshold for at least a predetermined amount of time.
In light of the above, it is seen that undue experimentation would be necessary to make and use the invention of claims 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62.
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 12, 16, 21, 23, 25-26, 28-30, 54-58, 60 and 62 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.
Claim 16, line 22, the term “of a particular type” renders the claim indefinite. The term “of a particular type” 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.
Regarding dependent claims 12, 21, 23, 25-26, 28-30, 54-58, 60 and 62, these claims do not remedy the deficiencies of parent claim 16 noted above, and are rejected for the same rationale.
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.
Claims 12, 16, 54-56, 60 and 62 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al, CN 112680030A (Xu).
The Examiner has provided a machine translation of Xu. The citation
of the prior art in this rejection refers to the machine translation.
Xu discloses conductive microcapsules comprising a composite material of graphene and low melting point polyurethane as the core material, and an amino resin wall material. The melting point of the polyurethane is 50-60oC (Xu; page 3, lines 1-4). The microcapsules are used in graphene conductive inks with a self-repair function, where the graphene ink comprises the following in percentage by mass: 30-60% water-based resin, 2-20% graphene, 1-5% conductive microparticles, 2-8% dispersing agent, 0.1-0.5% defoaming agent, 0.5-2% thickening agent, and 30-55% water (i.e., a carrier liquid as claimed) (Xu; Abstract and page 4, lines 22-24). The water-based resins include but are not limited to polyurethane resin, acrylic resin, and acrylic-modified polyurethane resin (i.e., a gelling agent as claimed) (Xu; page 4, lines 30-32). The inks are suitable for screen printing as claimed (Xu; page 2, line 12).
The self-repairing method includes heating to a temperature 50-80oC for 1-3 hours, (i.e., the predetermined environmental condition of temperature excursion above a predetermined temperature for at least a predetermined amount of time of claim 55), resulting in repairing the electrical properties of a conductive film (i.e., the observable effect is a change in an electrical property of claims 12 and 60, causing the repairing or closing of an electrical circuit of claim 62) (Xu; page 4, lines 51-54). The reason why the amino resin is chosen for the microcapsule wall is because amino resin is easily broken under the action of stress cracks, thereby creating outflow of graphene and low melting point polyurethane (TPU) in the capsule (i.e., microcapsules encapsulating an environmental indicator material in a non-activated configuration and releasing the environmental indicator material when ruptured) (Xu; page 3, lines 14-18). It is clear that the combination of rupturing the microcapsule wall and heating to at or above the melting temperature of the polyurethane resin inherently results in a change of state of the polyurethane resin (i.e., the polyurethane resin liquefies or melts of claims 54 and 56), producing an observable effect (i.e., flowing out of microcapsule to self-repair the electrical properties of a conductive film).
Specifically, Xu discloses the environmental indicator material (polyurethane resin) is configured, in response to exposure to a predetermined environmental condition (heating to a temperature at or above the melting point for 1-3 hours), to change from an initial state to a second state (liquefy or melt,) producing an observable effect (electrical repair of a conductive film), wherein the plurality of microcapsules prevent an occurrence of the observable effect while in the non-activated configuration, and allow the occurrence of the observable effect when the environmental indicator material is exposed to the predetermined environmental condition after at least a portion of the plurality of microcapsules are ruptured as claimed.
Xu exemplifies conductive microspheres comprising graphene and low-melting polyurethane composite material (Xu; page 5, Example 1, lines 17-46). The microspheres are added to a conductive ink comprising water (liquid carrier), wherein polyurethane resin (gelling agent) and thickener are added to obtain a viscosity of 10,000-50,000cp at room temperature (Xu; page 5, lines 48-54). The ink is screen printed on a fabric to produce a conductive film. After bending, the conductive film is heated to 60oC for 2 hours for repair, after which the electrical properties have been restored (Xu; page 8, lines 27-34). Xu, therefore, discloses inks as claimed.
Claim Rejections - 35 USC § 103/102
The text of those sections of Title 35, U.S. Code not included in this section can be found above.
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 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 21 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xu.
Regarding claim 21, Xu is relied upon as disclosing the limitations of claim 16 as discussed above. Xu discloses that the melting point of the polyurethane resin is 50-60oC, and the self-repairing method, which permits the polyurethane core to flow from the microcapsule, includes heating to a temperature 50-80oC (Xu; page 3, lines 1-4 and 14-18, and page 4, lines 51-54). The water-based resin and thickener are added to the ink at room temperature (no elevated temperature is disclosed) to form an ink system having a viscosity of 10,000-50,000cp (Xu; page 4, lines 44-46). Therefore, it is clear that the ink has a viscosity greater than 10,000cps at temperatures less than 50oC as claimed.
Further, given that the screen printing compositions of Xu comprise the claimed components, it is clear that the compositions would inherently have a viscosity in the range of 100-10,00cps at a temperature range from 50-80oC as claimed, and a viscosity greater than 10,000cps at temperatures less than 50oC as claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this section can be found above.
Claims 23 and 57-58 are rejected under 35 U.S.C. 103 as being unpatentable over Xu.
Regarding claim 23, Xu is relied upon as disclosing the limitations of claim 16 as discussed above. Xu discloses and exemplifies the use of polyurethane as a water-soluble resin to obtain viscosities of 10,000-50,000cp at room temperature (Xu; page 4, lines 30-32 and 44-46; page 5, lines 50-54; and page 6, lines 14-17). Xu discloses that the melting point of the polyurethane resin is 50-60oC (Xu; page 3, lines 1-4).
Xu does not explicitly teach wherein the carrier composition forms a gelled material comprising a network expanded throughout the carrier liquid when cooled below a predetermined low temperature threshold (claim 23).
Given that the screen printing compositions of Xu comprise the claimed components, including the known gelling agent polyurethane, it is clear that the carrier compositions of Xu would inherently form a gelled material comprising a network expanded throughout the carrier liquid when cooled below a predetermined low temperature threshold (claim 23).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 57, Xu is relied upon as disclosing the limitations of claim 23 as discussed above. Xu discloses and exemplifies the use of polyurethane as a water-soluble resin to obtain viscosities of 10,000-50,000cp at room temperature (Xu; page 4, lines 30-32 and 44-46; page 5, lines 50-54; and page 6, lines 14-17). Xu discloses that the melting point of the polyurethane resin is 50-60oC (Xu; page 3, lines 1-4).
Xu does not explicitly teach wherein the predetermined threshold is 50oC.
Given that Xu teaches the polyurethanes have a melting point of 50-60oC, it would have been obvious to one of ordinary skill in the art that the lower temperature threshold is 50oC as claimed, i.e., when the composition is cooled below the melting point of the polyurethane, a gel forms (claim 57).
Regarding claim 58, Xu is relied upon as disclosing the limitations of claim 23 as discussed above. Xu teaches that the ink has a viscosity 10,000-50,000cp at room temperature (i.e., at least 10,000 cps below the predetermined threshold of claim 58)
(Xu; page 4, lines 30-32 and 44-46; page 5, lines 50-54; and page 6, lines 14-17).
Claims 25-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Xu as applied to claim 16 above, and further in view of Arapov et al, “Conductive screen printing inks by gelation of graphene dispersions” (Arapov).
Regarding claims 25-26 and 28, Xu is relied upon as set forth above as teaching the limitations of claim 16 as discussed above, wherein the graphene-containing inks comprise a water-based resin, a thickening agent and water (Xu; Abstract). The water-based resins include, but are not limited to, the known gelling agents polyurethane resins, acrylic resins, and acrylic-modified polyurethane resins (Xu; page 4, lines 30-32).
Xu does not explicitly teach wherein the ink comprises an organic solvent (claim 25), wherein the organic solvent is a polar protic organic solvent (claim 26), and wherein the polar protic organic solvent is chosen from polyethylene glycol, methanol, ethanol, propanol, butanol, pentadecanol, hexanol, decanol, undecanol, dodecanol, and tridecanol (claim 30).
With respect to the differences, Arapov describes the gelation of highly concentrated graphene/polymer dispersions used for the preparation of colloidally stable and highly concentrated graphene pastes for screen printing (Arapov; Abstract). The dispersions comprises expanded graphene and a copolymer of polyvinyl pyrrolidone and polyvinyl acetate in isopropanol (i.e., a polar protic organic solvent) (Arapov; page 588, para 1). The gel microstructure formed is thermally stable at least up to 75oC (Arapov page 588, para 2). In conclusion, the gelled preparation can be used to formulate highly stable, environmentally friendly, and colloidally stable graphite pastes that show excellent performance in screen printing. The need for long-time high temperature annealing, doping and other treatment was avoided. The formulation is fully compatible with industrially relevant substrates (Arapov; pages 590-591, 3. Conclusion).
Arapov is analogous art as it teaches screen printing inks comprising a gelling agent and an organic solvent carrier liquid.
In light of the motivation provided by Arapov to use a gelled dispersion of graphene in inks for screen printing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the gelled carrier of Arapov in the graphene conductive inks of Xu in order to obtain conductive inks for screen printing that are fully compatible with industrially relevant substrates;
are highly stable, environmentally friendly, and colloidally stable; show excellent performance in screen printing; and avoid high-temperature treatments such as annealing and doping, and thereby arrive at the claimed invention wherein the ink comprises a polar protic organic solvent (claims 25-26).
Although Arapov teaches isopropanol instead of propanol as claimed (claim 28), given that these solvents are structurally similar isomers, both of which are well-known in the art as solvents for inks, the Examiner maintains that substitution of isopropanol with propanol would have been an obvious modification to one of ordinary skill in the art with the expectation of equivalent results, absent a showing or teaching otherwise.
Similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) ("When chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made."). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). See MPEP 2144.08.4(d).
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Xu as applied to claim 16 above, and further in view of Arapov and Kaga et al, US 2013/0044168 A1 (Kaga).
Regarding claims 29-30, Xu is relied upon as set forth above as disclosing the limitations of claim 16 as discussed above. In addition to screen printing, the conductive inks may be applied using inkjet printing (Xu; page 2, lines 10-13). The inks may comprise the known gelling agents polyurethane resins, acrylic resins, and acrylic-modified polyurethane resins (Xu; page 4, lines 30-32).
Xu does not explicitly teach the addition of an amide gelling agent to the compositions (claim 29), wherein the amide comprises dibutyl ethylhexanoyl glutamide, dibutyl lauroyl glutamide, or combinations thereof (claim 30).
Arapov is relied upon above as teaching that gelled preparations of graphene can be used to formulate highly stable, environmentally friendly, and colloidally stable graphene pastes that show excellent performance in screen printing. The need for long-time high temperature annealing, doping and other treatment was avoided. The formulation is fully compatible with industrially relevant substrates (Arapov; pages 590-591, 3. Conclusion).
Kaga teaches ink-jet image forming methods using a curable composition comprising a gelling agent, wherein a thermo-reversible gel is formed (Kaga; [0014]). Examples of gelling agents include, but are not limited to, urethane resins as taught by Xu, as well as N-lauroyl-L-dibuylglutaminamide and N-2-ethylhexanoyl-L-dibutylglutaminamide as claimed (Kaga; [0037-0038]).
Kaga is analogous art as it teaches gelling agents for ink compositions.
In light of the motivation provided by Arapov to use a gelled dispersion of graphene for screen printing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a gelled carrier in the graphene conductive inks of Xu in order to obtain conductive inks for screen printing that are fully compatible with industrially relevant substrates; are highly stable, environmentally friendly, and colloidally stable; show excellent performance in screen printing; and avoid high-temperature treatments such as annealing and doping.
In light of the disclosure of Kaga of the equivalence and interchangeability of using polyurethane resins as disclosed in Xu, with dibutyl ethylhexanoyl glutamide and dibutyl lauroyl glutamide as presently claimed, it would therefore have been obvious to one of ordinary skill in the art to use dibutyl ethylhexanoyl glutamide or dibutyl lauroyl glutamide as the gelling agent in Xu, in order to obtain a gelled, graphene-containing screen printing ink that is full compatibility with industrially relevant substrates, highly stable, environmentally friendly, and that had excellent performance in screen printing, and thereby arrive claimed invention.
Response to Amendment
Applicant’s Amendments have overcome the 35 USC 112(d) rejection previously of record.
Applicant’s Remarks and Amendments have overcome the 35 U.S.C. § 102(a)(1) rejection over Gaurav, FR 312288 ("Gaurav"). Specifically, the microcapsules of Gaurav are ruptured due to frictional force, i.e., the predetermined environmental condition. Gaurav does not teach microcapsules configured to change from an initial state to a second state in response to a predetermined environmental condition as presently claimed.
Applicant’s Remarks and Amendments have overcome the 35 U.S.C. § 102(a)(1) rejection over EP 3904468, Bourque et al. ("Bourque"), and over Bourque taken in view of evidence by Dhiaa "The Temperature Effect on the Viscosity and Density of Xanthan Gum Solution" ("Dhiaa") or Wikipedia, "Gel" ("Wikipedia"); and the 35 U.S.C. § 103 rejection over Bourque.
Specifically, the microencapsulated thermochromic dyes of Bourque do not rupture, and therefore do not release the environmental indicator material in response to exposure to a predetermined environmental condition to change from an initial state to a second state, producing an observable effect as claimed.
Applicant’s Remarks and Amendments have overcome the 35 U.S.C. § 102(a)(1) over JP 2004-175922 to Umeda ("Umeda"); and the 35 U.S.C. § 103 rejections over Umeda; over Umeda and further in view of U.S. Patent Publication No. 2013/0044168 to Kaga et al. ("Kaga"); over Umeda in view of Kaga and taken in view of evidence by Wikipedia; and over Umeda in view of Kaga and further in view of PG-Chem, "Composition and Properties of Screen Printing Ink". Although Umeda teaches rupturing microcapsules to release a nucleotide polymer upon exposure to heating or humidifying, thus forming an image detectable by probing, Umeda, alone or in combination with Kaga, Wikipedia and/or PG Chem, does not teach or suggest the presently elected invention wherein the environmental indicator material liquefies in response to a predetermined environmental condition, causing the closing or breaking of an electrical circuit.
Upon further consideration and search of the elected invention, new grounds of rejection are made over Xu; over Xu in view of Arapov; and over Xu in view of Arapov and Kaga, as set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Odom et al, "A Self-Healing Conductive Ink," teaches a self-healing conductive ink for screen printing comprising an encapsulated solvent, wherein circuits are restored.
As is evidenced by Zhang et al, "Study of the Gelation Process and Mechanical Properties of Organic Polymer Grouting Materials Applied to Fissure Sealing in Underground Mines,” polyurethanes are known gelling agents at 20-40oC, reaching viscosities up to 10 Pa.s in seconds (Section 3. Results and Discussion).
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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