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 .
This communication responds to the amended claim set filed 09/19/2025. Claims 1-17 are current pending. Elected Claims 1-3 and 6 are under examination.
Non-elected claims 4-5 and 7-17 are withdrawn.
Claims 1-3 and 6 are rejected for the reasons set forth below. The new grounds of rejection set forth below are necessitated by applicant's amendments filed 09/19/2025. In particular, claim 1 is amended to insert the limitation that the proportion of the first polymer and the second polymer is so selected to make the coated surface resist charging against a contacting material; and the claim 3 is amended to insert the limitation that the wt.% of the first polymer is based on the total weight of the first polymer and the second polymer.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a previous Office Action.
Claim Interpretation
“During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification.” (MPEP 2111). Instant Claim 1 recites “the first polymer and the second polymer are dissolved in the solvent, and wherein a weight proportion of the first polymer and the second polymer is selected based on the surface that the non-conductive polymer material is to be
applied to or another material that is to be in contact with the coated surface so that the coated surface resists charging against the another material.” Instant application [0032] lines 1-8 state the limitation. Following the statements, para.[0032] states, “In various embodiments, the weight proportion of the first polymer in the polymer material may be 40% to 85%, …, by weight based on the total weight of the polymer material. … … In various embodiments, the polymer material comprises polyethylene oxide (PEO) and polyvinylidene fluoride (PVDF). In these embodiments, the weight proportion of PEO in the polymer material may be 55% to 70%, 60% to 65% by weight based on the total weight of the polymer material.” Accordingly, a prior art anticipates or is obvious over the limitation, if the prior art explicitly states the limitation or the prior art discloses the weight proportion of polymers anticipate or is obvious over the ranges stated in specification para. [0032].
Additionally, according to instant specification, the polymer material includes the first polymer, the second polymer and a solvent (see ab. FIELD OF THE INVENTION).
Further, the examples of the instant application disclose that the proportion of first polymer and the second polymer being: 3: 2 ratio (Example 1 (i)), 45% PVAC-55% PVDF (Example 1 (iii)), or 70: 30 ratio (Example 2 (ii) (a)). Thus, a prior art reads on the newly inserted limitation of instant Claim 1 if the prior art discloses such ratios.
Claim Rejections - 35 USC § 112
Claim 3 is 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 3 is amended to recite that the first polymer is present in the non-conductive polymer material in an amount of 40% to 85% based on the total weight of the first polymer and the second polymer in the non-conductive polymer material. However, Examiner found first polymer and the second polymer being: 3: 2 ratio (Example 1 (i)), 45% PVAC-55% PVDF (Example 1 (iii)), 70: 30 ratio. Examiner did not find the specification support a range of 40% to 85% of the first polymer. Thus, it is possible that the instant claim 3 contains new matter.
Claim Rejections - 35 USC § 102
Claims 1-3 and 6 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Krueger et al.
(US4,615,848).
Attention is drawn to Example 3a. Krueger teaches a mixture of polyvinyl acetate and polyvinylidene fluoride in dimethylformamide solvent, wherein the proportion of polyvinyl acetate is 40% of the total weight of polyvinyl acetate and polyvinylidene fluoride. The proportion of polyvinyl acetate meets the proportion claimed in the dependent claim 3, therefore, the limitation that the coated surface resists charging against another material is met.
Claim Rejections - 35 USC§ 103
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et
al. (US20160355675 Al) in view of Kolpikov et al. (RU2020144132-A), as evidenced by Krueger et al. (US4,615,848) cited above.
As discussed at para. 9 of the Office Action dated 07/03/2025, Zhang in view of Kolpikov discloses a modified polymer material comprising polyvinyl acetate as the first polymer, polyvinylidene fluoride as the second polymer and dimethylformamide. Additionally, Zhang exemplifies the copolymer of the polymer material being a 50-50 wt.% of polyvinyl acetate and the second polymer (Example 2). Thus, it would have been obvious to one ordinary skilled artisan, before the effective filing date of instant application, to have a modified polymer material comprising a copolymer of polyvinyl acetate and polyvinylidene fluoride being 50-50 wt.%, the proportion ratio falling within the claimed range of instant claim 3. Consequently, the limitation that the coated surface resists charging against another material is met.
Response to Arguments
Applicant's arguments filed 09/19/2025 have been fully considered but they are not persuasive.
Applicant’s argument: Krueger discloses the polymeric film has characteristics other than resisting charging against a contacting material.
Examiner’s answer: Krueger discloses disclose the polymer mixture containing the same components as instant claim 1 and the proportion of the first polymer meets what is claimed in the dependent claim; therefore, the characteristics of resisting charging against a contacting material is inherently present. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable (MPEP 2112.I.).
Applicant’s argument: Krueger discloses the blend for forming the polymeric film should contain at least about 50 percent polyvinylidene fluoride.
Examiner’s answer: the disclosure overlaps with the first polymer being 40 wt.% to 85 wt.% of the total weight of the first polymer and the second polymer.
Applicant’s argument: As can be seen from the examples provided in the present application, the weight
proportion of the first polymer and the second polymer needs to be carefully selected based on
the surfaces to reap the technical effect of charge resisting surface.
Examiner’s answer: instant claim 1 does not specify the proportion of the first polymer. The proportion disclosed by example 3a of Krueger not only meets the broad disclosure of instant application but also meets that is claimed in the instant claim 3. Therefore, the technical effect inherently present in example 3a mixture of Krueger.
Applicant’s argument: the current claim 3 claims the proportion of the first polymer being 40 wt.% to 85 wt.% based on the total weight of the first polymer and the second polymer.
Examiner’s answer: Zhang examples the first polymer and the second polymer being 50-50 wt.%, falling within the claimed range.
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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763