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 .
Status of the Claims
The Amendment filed July 7, 2026 has been entered. Claims 1-2 have been amended; claims 3-4, 6-7 and 9-11 have been cancelled. Claims 1-2, 5, 8 and 12-13 are currently pending and examined herein.
Status of the Rejection
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the amendment.
New grounds of rejection under 103 are necessitated by the amendment as outlined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/28/2026, 7/13/2026, 7/13/2026, 7/13/2026 and 7/14/2026 has been considered by the examiner.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Blok (US20040202856A1), and in view of Nishiura et al. (US20090236566A1). Nishiura was provided in IDS filed on 7/14/2026.
Regarding claim 1, Blok teaches a sensitive membrane (a sensor film 22 comprises a polymer 60 with conductive particles 62 dispersed throughout [para. 0026, 0029; Fig.5 ]) comprising:
a membrane body containing a sensitive material (a conductive polymeric matrix 66 containing the polymer 60 [para. 0026]; the polymer 60 can be any polymer that readily absorbs a target analyte or chemical compound, through a gas-solid interface occurring between a surface of the sensor film 22 and the surrounding gas in the external environment 17 at a rate that is relatively proportional to the concentration of the analyte in the surrounding gas [para. 0028]); and
a carbon black contained in the membrane body (use of conductive carbon black particles 62 significantly enhances the sensitivity of the sensor film 22 [para. 0044]),
wherein the carbon black has a dibutyl phthalate absorption number less than 100 cm3/100 g (Example A is a conductive carbon black particle in a sensor film having a DBP value of 85 ml/100 g. Example B also has large conductive carbon black particles having a DBP of 30 ml/100g. Examples A and B demonstrate increased resistance for shorter time durations when compared with Control 1, 2, and 3. The more rapid change in resistance of Examples A and B indicates increased sensitivity to the presence of analytes in the surrounding environment [para. 0044; Table 2]), and
the carbon black forms a conductive path in the membrane body (the sensor film 22 comprises a polymer 60 with conductive particles 62 dispersed throughout; A preferable configuration of the sensor film 22 includes conductive particles 62 distributed homogeneously [i.e. evenly] throughout the sensor film 22 body forming a conductive polymeric matrix 66 [para. 0026]; conductive carbon black particles 62 [para. 0044]. Fig.5 also shows the conductive particles 62 dispersed throughout the sensor film 22 forming a conductive path in the membrane body between the leads 70 and 72 [para. 0029]), and the membrane body is configured to expand when the sensitive material adsorbs an analyte (Upon exposure of the matrix 66 to target analytes, the matrix 66 volume increases by swelling [para. 0027]), thereby changing an electrical resistance of the conductive path (Resistance measurements are taken across the sensor film 22 via monitoring of the current and potential difference across the sensor film 22 between the negative and positive leads 70, 72, and typically is measured by the processing or control unit 14 (FIG. 1) attached to the sensor probe 12. Resistance values vary with the distance “d” between the conductive particles. As this distance “d” between the conductive particles 62 increases, the resistance has a proportional relationship and thus increases. If the distance “d” decreases, the resistance also decreases. Thus, any increase or decrease in the volume of the sensor film 22 affects the overall resistance measurements [para. 0029]).
Blok is silent to: (1) wherein the carbon black has a volatile content equal to or greater than 0.3 wt % and less than 2.5 wt %; and (2) functional groups are disposed on the surface of the carbon black, the functional groups including at least one selected from the group consisting of a carboxyl group, a hydroxyl group, and a quinone group.
Nishirua teaches a carbon black-dispersed polyamic acid solution composition that utilizes carbon black excelling in safety and environmental adaptability and excels in the dispersion stability and fluidity of carbon black dispersed in polyamic acid solution, and that realizes high solid content and high carbon black content (abstract). The carbon black has a volatile content of 2 wt% to 6 wt%, and a DBP absorption of 50 to 90 ml/100 g (claims 1 and 2; [para.0057, 0098]). Fig.1 shows three condition models of the carbon black dispersed in a resin: (A) partially continuous; (B) discontinuous; and (C) continuous, and their corresponding equivalent circuit. In (C), conductivity is stable and is determined almost solely by the powder resistance of the carbon black, and the equivalent circuit is a resistor [para. 0024; Fig.1c]. It is therefore necessary that the carbon black be uniformly dispersed in the resin as continuously as possible, instead of being dispersed partially continuously or discontinuously [para. 0025]. Nishirua further teaches wherein the carbon black of 2% to 6% volatile content has oxygen functional groups, such as a phenolic hydroxyl group, a carbonyl group, and a carboxyl group (particularly a carboxyl group) on the surface. These oxygen functional groups improve fluidity and dispersion stability of the carbon black in the polyamic acid solution. Compatibility with the polyimide resin is also improved [para. 0048].
Given the teachings of Blok regarding the conductive carbon black particles having a DBP absorption less than 100 cm3/100 g and forming a conductive path in the membrane body and the analyte is measured based on a change in an electrical resistance (see the rejection of claim 1 above), and the teachings of Nishirua regarding carbon black having a volatile content of 2 wt%-6 wt%, a DBP absorption of 50 to 90 ml/100 g, and oxygen functional groups such as a carboxyl group and a hydroxyl group on the surface been uniformly dispersed as continuously as possible to provide a stable conductivity, which is almost solely determined by the resistance of the carbon black (equivalent circuit is a resistor R as shown in Fig.1c), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carbon black in Blok to carbon black having a volatile content of 2-6 wt% and oxygen functional groups such as a carboxyl group and a hydroxyl group on the surface, as taught by Nishirua, since it would provide a high powder resistance; the carbon black particles would be uniformly dispersed in a high content to provide a stable conductivity which is almost solely determined by the resistance of the carbon black; and the oxygen functional groups would improve fluidity and dispersion stability [para. 0026, 0048; Fig.1c in Nishirua].
Furthermore, it would have been obvious to have selected and utilized carbon black having a volatile content within the disclosed range, as taught by Nishirua, including those amounts that overlap within the claimed range, since one of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that Nishirua specifically teaches the volatile content range of the carbon black to be suitable for the carbon black to provide a high power resistance and dispersion stability. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding claim 5, modified Blok teaches a gas sensor (a polymer-absorption chemiresistor sensor probe 12 in Fig.5 [para. 0029 in Blok]; in the exemplary sensor probe 12 depicted, the change in the volume of the sensor film 22 is correlated to the concentration of the analyte present in the gas; of particular interest are sensor films 22 that detect vaporous hydrocarbon compounds, such a volatile organic compounds [para. 0028 in Blok]) comprising:
the sensitive membrane of claim 1 (sensor film 22 in Fig.5 of Blok is modified by Nishirua as outlined in the rejection of claim 1 above); and
an electrode electrically connected to the sensitive membrane (a positive lead 70 and a negative lead 72 electrically connected to the sensitive membrane, as shown in Fig.5 [para. 0029 in Blok]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Blok and Nishirua, as applied to claim 1 above, and further in view of Wyszynski et al. (Array of chemosensitive resistors with composites of gas chromatography (GC) materials and carbon black for detection and recognition of VOCs: an optimization study, All Sensors 2018, the 3rd Int. Conf. on Advances in Sensors, Actuators, Metering and Sensing, 28-32).
Regarding claim 12, modified Blok teaches the sensitive membrane of claim 1, and is silent to wherein the sensitive material includes bis cyanopropyl-cyanopropylphenyl polysiloxane.
Blok further teaches wherein the sensitive material for detecting VOCs include siloxane polymers, which are known as “silicone” polymers [para. 0028, 0030].
Wyszynski teaches chemosensitive resistors with composites of GC materials and carbon black for detection and recognition of VOCs (title and abstract and section II), wherein the sensing element is a composite film of blends of carbon black and GC material. Table 1 lists 16 GC materials used for the 16-channel chemosensitive resistor device for detection and recognition of VOCs. The 16 GC materials include silicone such as SP-2330. Thus, Wyszynski teaches SP-2330 as the sensitive material.
Modified Blok and Wyszynski are considered analogous art to the claimed invention because they are in the same field of a chemosensitive sensor for detecting VOCs using carbon black conductive particles mixed with a sensitive material of silicone. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the sensitive material of silicone in modified Blok with SP-2330, as taught by Wyszynski, since Wyszynski teaches SP-2330 as a suitable sensitive material for detection and recognition of VOCs (Table 1 and Fig.4). The simple substitution of one known element (i.e., silicone of SP-2330) for another silicone as the sensitive material of chemosensitive resistor device is likely to be obvious when predictable results are achieved (i.e., detection of the analyte). See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) [see MPEP § 2143(I)(B)]. Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
SP-2330 is bis cyanopropyl-cyanopropylphenyl polysiloxane, as evidenced by [para. 0039] in PGPub of the instant specification: “bis cyanopropyl-cyanopropylphenyl polysiloxane [product name SP-2330 manufactured by Sigma-Aldrich]”.
Claims 2 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Blok, and further in view of Harada et al. (JP2004211012A, English translation) and Nishirua.
Regarding claim 2, Blok teaches a sensitive membrane (a sensor film 22 comprises a polymer 60 with conductive particles 62 dispersed throughout [para. 0026, 0029; Fig.5 ]) comprising:
a membrane body containing a sensitive material (a conductive polymeric matrix 66 containing the polymer 60 [para. 0026]; the polymer 60 can be any polymer that readily absorbs a target analyte or chemical compound, through a gas-solid interface occurring between a surface of the sensor film 22 and the surrounding gas in the external environment 17 at a rate that is relatively proportional to the concentration of the analyte in the surrounding gas [para. 0028]); and
a carbon black contained in the membrane body (use of conductive carbon black particles 62 significantly enhances the sensitivity of the sensor film 22 [para. 0044]),
wherein the carbon black forms a conductive path in the membrane body (the sensor film 22 comprises a polymer 60 with conductive particles 62 dispersed throughout; A preferable configuration of the sensor film 22 includes conductive particles 62 distributed homogeneously [i.e. evenly] throughout the sensor film 22 body forming a conductive polymeric matrix 66 [para. 0026]; conductive carbon black particles 62 [para. 0044]. Fig.5 also shows the conductive particles 62 dispersed throughout the sensor film 22 forming a conductive path in the membrane body between the leads 70 and 72 [para. 0029]), and the membrane body is configured to expand when the sensitive material adsorbs an analyte (Upon exposure of the matrix 66 to target analytes, the matrix 66 volume increases by swelling [para. 0027]), thereby changing an electrical resistance of the conductive path (Resistance measurements are taken across the sensor film 22 via monitoring of the current and potential difference across the sensor film 22 between the negative and positive leads 70, 72, and typically is measured by the processing or control unit 14 (FIG. 1) attached to the sensor probe 12. Resistance values vary with the distance “d” between the conductive particles. As this distance “d” between the conductive particles 62 increases, the resistance has a proportional relationship and thus increases. If the distance “d” decreases, the resistance also decreases. Thus, any increase or decrease in the volume of the sensor film 22 affects the overall resistance measurements [para. 0029]).
Blok is silent to: (1) the carbon black has a Dst/D0 ratio less than 4, where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 is a mean primary particle size; (2) the carbon black has a volatile content equal to or greater than 0.3 wt % and less than 2.5 wt %; and (3) functional groups are disposed on the surface of the carbon black, the functional groups including at least one selected from the group consisting of a carboxyl group, a hydroxyl group, and a quinone group.
Blok further teaches preferably, the conductive particles 62 are homogeneously distributed throughout the polymer matrix base 60, to enhance the uniformity of resistance measurements [para. 0040]. Most preferably, the conductive particles will comprise carbon black [para. 0043].
Harada teaches carbon microspheres having extremely little mutual agglomeration and have a substantially uniform spherical shape (the first paragraph in Technical Field on page 1). The carbon microspheres of the present invention have an arithmetic mean particle diameter dn of 20 to 150 nm. That is, the particle size corresponds approximately to the average particle size of carbon black ranging from channel black class carbon black to fine thermal black class carbon black. The carbon microspheres of the present invention are further characterized in that they have a particle property in which the ratio Dst/dn is 1.2 or less, wherein the Stokes mode diameter Dst is a parameter that indicates the size of an aggregated structure formed by agglomerating carbon particles, and a larger value of this parameter means that the number of aggregated carbon particles increases. Therefore, the ratio of Dst/dn indicates the size of an aggregated carbon particle relative to a single carbon particle, that is, the size of the aggregate. If there is no aggregation of carbon particles and only single particles, Dst=dn, and therefore the ratio Dst/dn=1. As the number of aggregated carbon particles increases, the value of Dst/dn increases. The Stokes mode diameter Dst is measured by centrifugal sedimentation analysis (the first paragraph in Detailed description of the Preferred embodiments on pages 3-4). Thus, Harada teaches carbon black (the particle size corresponds approximately to the average particle size of carbon black ranging from channel black class carbon black to fine thermal black class carbon black) has a Dst/D0 ratio less than 1.2 (Dst/dn is 1.2 or less), where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 (dn) is a mean primary particle size, which has extremely little mutual agglomeration.
Given the teachings of Blok regarding the conductive carbon black particles are homogeneously distributed throughout the polymer matrix to enhance the uniformity of resistance measurements [para. 0040, 0043], and the teachings of Harada regarding carbon blacks with a Dst/D0 ratio of 1.2 or less have extremely little mutual agglomeration, wherein Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 is a mean primary particle size, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carbon blacks in Blok to carbon black conductive particles having a Dst/D0 ratio less than 1.2, where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 is a mean primary particle size, as taught by Harada and motivated by Blok, since the modified carbon blacks would have extremely little mutual agglomeration (the first paragraph in Technical Field on page 1 of Harada), and accordingly would be homogeneously distributed throughout the polymer matrix to enhance the uniformity of resistance measurement [para. 0040 in Blok].
Modified Blok is silent to: (2) wherein the carbon black has a volatile content equal to or greater than 0.3 wt % and less than 2.5 wt %; and (3) functional groups are disposed on the surface of the carbon black, the functional groups including at least one selected from the group consisting of a carboxyl group, a hydroxyl group, and a quinone group.
Nishirua teaches a carbon black-dispersed polyamic acid solution composition that utilizes carbon black excelling in safety and environmental adaptability and excels in the dispersion stability and fluidity of carbon black dispersed in polyamic acid solution, and that realizes high solid content and high carbon black content (abstract). The carbon black has a volatile content of 2 wt% to 6 wt%, and a DBP absorption of 50 to 90 ml/100 g (claims 1 and 2; [para.0057, 0098]). Fig.1 shows three condition models of the carbon black dispersed in a resin: (A) partially continuous; (B) discontinuous; and (C) continuous, and their corresponding equivalent circuit. In (C), conductivity is stable and is determined almost solely by the powder resistance of the carbon black, and the equivalent circuit is a resistor [para. 0024; Fig.1c]. It is therefore necessary that the carbon black be uniformly dispersed in the resin as continuously as possible, instead of being dispersed partially continuously or discontinuously [para. 0025]. Nishirua further teaches wherein the carbon black of 2% to 6% volatile content has oxygen functional groups, such as a phenolic hydroxyl group, a carbonyl group, and a carboxyl group (particularly a carboxyl group) on the surface. These oxygen functional groups improve fluidity and dispersion stability of the carbon black in the polyamic acid solution. Compatibility with the polyimide resin is also improved [para. 0048].
Given the teachings of Blok regarding the conductive carbon black particles forming a conductive path in the membrane body and the analyte is measured based on a change in an electrical resistance (see the rejection of claim 2 above), and the teachings of Nishirua regarding carbon black having a volatile content of 2 wt%-6 wt% and oxygen functional groups such as a carboxyl group and a hydroxyl group on the surface been uniformly dispersed as continuously as possible to provide a stable conductivity, which is almost solely determined by the resistance of the carbon black (equivalent circuit is a resistor R as shown in Fig.1c), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carbon black in modified Blok to carbon black having a volatile content of 2-6 wt% and oxygen functional groups such as a carboxyl group and a hydroxyl group on the surface, as taught by Nishirua, since it would provide a high powder resistance; the carbon black particles would be uniformly dispersed in a high content to provide a stable conductivity which is almost solely determined by the resistance of the carbon black; and the oxygen functional groups would improve fluidity and dispersion stability [para. 0026, 0048; Fig.1c in Nishirua].
Furthermore, it would have been obvious to have selected and utilized carbon black having a volatile content within the disclosed range, as taught by Nishirua, including those amounts that overlap within the claimed range, since one of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that Nishirua specifically teaches the volatile content range of the carbon black to be suitable for the carbon black to provide a high power resistance and dispersion stability. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding claim 8, modified Blok teaches a gas sensor (a polymer-absorption chemiresistor sensor probe 12 in Fig.5 [para. 0029 in Blok]; in the exemplary sensor probe 12 depicted, the change in the volume of the sensor film 22 is correlated to the concentration of the analyte present in the gas; of particular interest are sensor films 22 that detect vaporous hydrocarbon compounds, such a volatile organic compounds [para. 0028 in Blok]) comprising:
the sensitive membrane of claim 2 (sensor film 22 in Fig.5 of Blok, which is modified by Harada and Nishirua as outlined in the rejection of claim 2 above); and
an electrode electrically connected to the sensitive membrane (a positive lead 70 and a negative lead 72 electrically connected to the sensitive membrane, as shown in Fig.5 [para. 0029 in Blok]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Blok, Harada and Nishirua, as applied to claim 2 above, and further in view of Wyszynski et al. (Array of chemosensitive resistors with composites of gas chromatography (GC) materials and carbon black for detection and recognition of VOCs: an optimization study, All Sensors 2018, the 3rd Int. Conf. on Advances in Sensors, Actuators, Metering and Sensing, 28-32).
Regarding claim 13, modified Blok teaches the sensitive membrane of claim 2, and is silent to wherein the sensitive material includes bis cyanopropyl-cyanopropylphenyl polysiloxane.
Blok further teaches wherein the sensitive material for detecting VOCs include siloxane polymers, which are known as “silicone” polymers [para. 0028, 0030].
Wyszynski teaches chemosensitive resistors with composites of GC materials and carbon black for detection and recognition of VOCs (title and abstract and section II), wherein the sensing element is a composite film of blends of carbon black and GC material. Table 1 lists 16 GC materials used for the 16-channel chemosensitive resistor device for detection and recognition of VOCs. The 16 GC materials include silicone such as SP-2330. Thus, Wyszynski teaches SP-2330 as the sensitive material.
Modified Blok and Wyszynski are considered analogous art to the claimed invention because they are in the same field of a chemosensitive sensor for detecting VOCs using carbon black conductive particles mixed with a sensitive material of silicone. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the sensitive material of silicone in modified Blok with SP-2330, as taught by Wyszynski, since Wyszynski teaches SP-2330 as a suitable sensitive material for detection and recognition of VOCs (Table 1 and Fig.4). The simple substitution of one known element (i.e., silicone of SP-2330) for another silicone as the sensitive material of chemosensitive resistor device is likely to be obvious when predictable results are achieved (i.e., detection of the analyte). See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) [see MPEP § 2143(I)(B)]. Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
SP-2330 is bis cyanopropyl-cyanopropylphenyl polysiloxane, as evidenced by [para. 0039] in PGPub of the instant specification: “bis cyanopropyl-cyanopropylphenyl polysiloxane [product name SP-2330 manufactured by Sigma-Aldrich]”.
Response to Arguments
Applicant's arguments, see Remarks Pgs. 4-10, filed 7/7/2026, with respect to the 35 U.S.C. § 103 rejections have been fully considered, but are not persuasive.
Applicant’s Argument #1:
Regarding claim 1, Applicant argues at pages 5-6 that the rejection of the amended claim 1 is based on improper hindsight reconstruction. The rejection of previous claim I starts from Blok's chemiresistor sensor film and then imports selected material properties from Ebata and Zhao. But the cited references do not identify a
reason, apart from Applicant's claim, to select and combine those separate properties in the same carbon black forming the conductive path of Blok's swelling-type chemiresistor film. Blok does not provide the claimed combination of carbon black properties. Nothing in Ebata teaches that volatile content should be selected for a low-DBP carbon black forming a conductive path in a swelling sensitive membrane. Zhao does not teach
that such surface-functionalized carbon black should be combined with Blok's low-DBP carbon black, much less that such carbon black should also have the volatile-content range recited in claim 1. Accordingly, the rejection reconstructs the claim only by using the claim itself as a roadmap. The cited references may disclose individual pieces of the claim in different contexts, but they do not provide a teaching or reason that would have led one of ordinary skill in the art to the claimed sensitive membrane in which carbon black having the recited combination of properties forms the conductive path whose electrical resistance changes due to expansion of the membrane body.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the new grounds of rejection of claim 1 above, Nishirua teaches the volatile content of the carbon black is 2 wt-6 wt% with oxygen functional groups, such as a phenolic hydroxyl group, a carbonyl group, and a carboxyl group (particularly a carboxyl group) on the surface [para. 0048]. Thus, the rejection was based on the knowledge from the prior art instead of only from the applicant's disclosure, thus such a reconstruction is proper.
Applicant’s Argument #2:
Regarding claim 1, Applicant argues at pages 6-7 that no rationale to combine.
The relevant question is whether one of ordinary skill in the art would have had a reason to modify the carbon black conductive path of Blok's chemiresistor film so that the same carbon black simultaneously has the DBP absorption number, volatile content, and surface functional groups recited in amended claim 1. The Office Action does not explain why that teaching would have motivated one of ordinary skill to modify Blok's low-DBP carbon black conductive path in a sensitive membrane for gas sensors. Nor does the Office Action show that volatile content was recognized in the prior art as a result-effective variable for the resistance-change behavior of a conductive path formed by low-DBP carbon black in a swelling sensitive membrane. The Office Action does not explain why one of ordinary skill would have selected Zhao' s surface functionalized
carbon black for Blok's low-DBP chemiresistor film, while also selecting the volatile-content range from Ebata, to arrive at the same carbon black recited in claim 1.
Examiner’s Response #2:
Applicant’s arguments have been fully considered but are moot in view of the new grounds of rejection for claim 1 above. The rejection does provide the rationale for the combination. Note that the DBP adsorption of the carbon blacks in both Blok and Nishirua is less than 100 ml/100g.
Applicant’s Argument #3:
Regarding claim 2, applicant argues at pages 7-8 that the rejection of amended claim 2 is also based on improper hindsight reconstruction. Harada does not provide a non-hindsight basis for this reconstruction. Harada uses Dst/dn as an index of particle shape and agglomeration state of those carbon microspheres. Harada does not teach that this particle parameter should be selected for carbon black forming a conductive path in a swelling chemiresistor sensor film. The cited references do not themselves provide a reason to assemble those selected features in the same carbon black forming the conductive path of the claimed sensitive membrane.
Examiner’s Response #3:
Applicant’s arguments have been fully considered, but are not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the rejection of claim 2, Blok further teaches preferably, the conductive particles 62 are homogeneously distributed throughout the polymer matrix base 60, to enhance the uniformity of resistance measurements [para. 0040]. Most preferably, the conductive particles will comprise carbon black [para. 0043]. Harada teaches carbon black has a Dst/D0 ratio less than 1.2 (Dst/dn is 1.2 or less), where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 (dn) is a mean primary particle size, which has extremely little mutual agglomeration. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carbon blacks in Blok to carbon black conductive particles having a Dst/D0 ratio less than 1.2, where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 is a mean primary particle size, as taught by Harada and motivated by Blok, since the modified carbon blacks would have extremely little mutual agglomeration (the first paragraph in Technical Field on page 1 of Harada), and accordingly would be homogeneously distributed throughout the polymer matrix to enhance the uniformity of resistance measurement [para. 0040 in Blok]. As outlined in the Examiner’s response #1 above, the other properties of the carbon black particles were taught by Nishirua. Thus, the rejection was based on the knowledge from the prior art instead of only from the applicant's disclosure, thus such a reconstruction is proper.
Applicant’s Argument #4:
Regarding claim 2, applicant argues at pages 8-9 that no rationale to combine. Harada's Dst/dn value is disclosed in the context of carbon microspheres having a substantially uniform spherical shape and little aggregation, for uses such as coating materials for semiconductor device wiring, pigments for anti-reflective films, and light-shielding pigments for black matrices. Harada does not teach that Dst/dn is a design parameter for a conductive path in a gas-sensitive membrane. Harada does not teach that its carbon microspheres would form such a conductive path in a sensitive membrane, and Harada does not teach that the Dst/dn value would improve, or even preserve, the resistance-change behavior of Blok's chemiresistor film. Indeed, Harada's disclosure points away from the proposed modification. Harada describes its carbon microspheres as having small aggregate structures in which particles are essentially single spheres, and as exhibiting high compressed electrical resistance in a compressed and packed state. This disclosure does not provide a reason to use Harada' s carbon microspheres, or Harada's Dst/dn particle parameter, to modify the carbon black conductive path of Blok's chemiresistor film, whose operation depends on changes in electrical resistance of that conductive path. For the reasons discussed above with respect to claim 1, Ebata and Zhao also do not provide a reason to further modify the carbon black relied upon from Blok and Harada so that the same carbon black additionally has the recited volatile content and surface functional groups.
Examiner’s Response #4:
The arguments are unpersuasive because Blok further teaches preferably, the conductive particles 62 are homogeneously distributed throughout the polymer matrix base 60, to enhance the uniformity of resistance measurements [para. 0040]. Most preferably, the conductive particles will comprise carbon black [para. 0043]. Harada teaches carbon black has a Dst/D0 ratio less than 1.2 (Dst/dn is 1.2 or less), where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 (dn) is a mean primary particle size, which has extremely little mutual agglomeration. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the carbon blacks in Blok to carbon black conductive particles having a Dst/D0 ratio less than 1.2, where Dst is a Stokes mode diameter of an aggregate as measured by centrifugal sedimentation analysis and D0 is a mean primary particle size, as taught by Harada and motivated by Blok, since the modified carbon blacks would have extremely little mutual agglomeration (the first paragraph in Technical Field on page 1 of Harada), and accordingly would be homogeneously distributed throughout the polymer matrix to enhance the uniformity of resistance measurement [para. 0040 in Blok]. As outlined in the new grounds of rejection for claim 2 above, Nishirua teaches the volatile content of the carbon black is 2 wt-6 wt% with oxygen functional groups, such as a phenolic hydroxyl group, a carbonyl group, and a carboxyl group (particularly a carboxyl group) on the surface [para. 0048]. Note that the DBP adsorption of the carbon blacks in both Blok and Nishirua is less than 100 ml/100g. The argument regarding the combination with Ebata and Zhao are moot in view of the new grounds of rejection for claim 2 above since Ebata and Zhao are replaced by Nishirua.
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 SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V Van can be reached on 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIZHI QIAN/Primary Examiner, Art Unit 1795
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