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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 November 2025 has been entered.
Response to Amendment
Upon entry of the amendment filed on 04 November 2025, Claim(s) 1 and 16-19 is/are amended and Claim(s) 2-5, 10-13 and 15 is/are cancelled. The currently pending claims are Claims 1, 6-9, 14 and 16-19.
Based on applicants’ remarks and amendments (e.g. the specific saturation feature), the 102 rejections based on Ulbrich are withdrawn. However, they are not found persuasive regarding the obviousness rejections and the rejections based on Jung and the rejections are maintained and updated.
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.
Claim(s) 1, 14 and 16-17 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Ulbrich (US-20160020466-A1).
Claims 1 and 14: Ulbrich discloses a method of preparing a carbon nanotube dispersion via the steps of providing a CNT bundle; grinding to reduce the length of from greater than 50 microns (e.g. 500 microns) to less than 10 microns thus meeting the claimed Dv90 of 50 microns to enhance the dispersion and dispersing the CNT bundle in a solution comprising a dispersant and a dispersion medium (abs, ¶30-51, examples and Figs 1-4 with accompanying text). Ulbrich discloses the claimed solvent and dispersant (¶20-25 and examples). Regarding the claimed property such as the viscosity pattern and behavior, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Ulbrich discloses the shortening of CNTs via ball/jet/pressure milling and homogenizer and the optimization of the experimental variables to arrive at the desired structural parameters such as SSA, length and diameter and adjusting the viscosity of the dispersion (abs, ¶18-38). The Ulbrich reference discloses the claimed invention but does not explicitly disclose the claimed structural ranges (e.g. SSA and diameter) and the claimed saturation point vis-à-vis the average length. It is noted that the claimed SSA and diameter are construed as result-effective variables, i.e., a variable which achieves a recognized result. Given that the Ulbrich reference discloses a similar method with similar starting material to achieve a similar dispersion and is cognizant of monitoring, adjusting and optimizing the SSA, diameter, length and viscosity, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components and steps would be repugnant to a skilled artisan. In particular, it is noted that the saturation is construed as a measured observation and the office is not equipped to provide such measurement. Further, even though Ulbrich does not provide the specific measurement, the instant claim merely requires a CNT bundle being shortened to less than 50 microns by a mill, a homogenizer and/or a sonicating instrument – all these components, steps and instruments are disclosed by Ulbrich and there is no active specific step and/or experimental conditions that would explicitly differentiate the process of Ulbrich from the claimed process.
Claims 16 and 17: Ulbrich discloses the composite and energy storage device (¶5-14 and examples).
Claim(s) 1 and 14 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Jung (KR2013-0053015A, cited in the IDS – a machine translation is provided and referenced from hereon).
Jung discloses a method of preparing a carbon nanotube dispersion via the steps of providing a CNT bundle; grinding to reduce the length of the CNT bundle to 1 micron (e.g. from a 2 cm) to enhance the dispersion and dispersing the CNT bundle in a solution (abs, pg. 2, 3). The Jung reference discloses the claimed invention but does not explicitly disclose the claimed nanotube range. Given that the Jung reference discloses a range of 10 nm to 0.1 microns for the CNT and the various bundles size (abs, Figs 3-6 with accompanying text) – which is well within the claimed Dv90 of 50 microns, it would have been obvious to one of ordinary skill in the art at the time of the invention to arrive at the taught sizes since Jung discloses the same methodology and is motivated to achieve the same dispersion. See MPEP 2131.03 and MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the structural variables with the benefit gain of enhancing the dispersion of the CNT bundles in the solution. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components/steps would be repugnant to a skilled artisan. Jung discloses the claimed solvent and dispersant (pg. 3-5). Regarding the claimed property such as the viscosity pattern and behavior, if a prior art reference teaches the substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Applicant is welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Jung discloses the dry and wet grinding/pulverization and the optimization of the experimental variables to arrive at the desired viscosity of the dispersion (pg. 2-5). The Jung reference discloses the claimed invention but does not explicitly disclose the claimed structural ranges (e.g. SSA and diameter) and the claimed saturation point vis-à-vis the average length. It is noted that the claimed SSA and diameter are construed as result-effective variables, i.e., a variable which achieves a recognized result. Given that the Jung reference discloses a similar method with similar starting material to achieve a similar dispersion, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Here, it would have been well within the purview of a skilled artisan to monitor the structural variables of the CNTs to enhance the dispersion of the CNTs as motivated by Jung. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components and steps would be repugnant to a skilled artisan. It is noted that the saturation dependence on the average length is construed as a measured observation and the office is not equipped to provide such measurement. Further, even though Jung does not provide the specific measurement, the instant claim merely requires a CNT bundle being shortened to less than 50 microns by a mill, a homogenizer and/or a sonicating instrument – all these components, steps and instruments are disclosed by Jung and there is no active specific step and/or experimental conditions that would explicitly differentiate the process of Jung from the claimed process.
Claim(s) 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ulbrich or Jung as applied to claim 1 above, and further in view of Kim (US-20180175370-A1) or Tarat (WO-2015173589-A2).
Ulbrich or Jung discloses the claimed invention but does not disclose the synthetic route for the CNTs preparation. Yoon/Ulbrich/Rubio/Jung discloses employing known CNTs in the method of preparing the dispersion and the claims recited a metal catalyst aided CVD process. In an analogous art, Kim or Tarat discloses that the claimed metal catalyst aided CVD process is well known in the art to produce CNTs which can be subsequently be post-treated by milling and/or employed in dispersions (Kim: abs, ¶12-17, 35-81, 90 and examples & Tarat: abs, pg. 3-5). One of ordinary skill in the art would have recognized that applying the known synthetic route of Kim or Tarat to the teachings of Ulbrich or Jung would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of procuring CNTs that can be post-treated. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 6-8, filed 04 November 2025, with respect to anticipation rejection based on Ulbrich have been fully considered and are persuasive. The 102 rejections have been withdrawn.
Applicant's arguments filed 04 November 2025 have been fully considered but they are not persuasive.
Applicant argues that the Ulbrich or Jung reference fails to disclose the saturation point being dependent on average length of the CNT bundle (pg. 5-11).
The examiner respectfully notes that the saturation dependence on the average length is construed as a measured observation and the office is not equipped to provide such measurement. Further, even though Ulbrich or Jung does not provide the specific measurement, the instant claim merely requires a CNT bundle with a dispersant and a solvent being shortened to less than 50 microns by a mill, a homogenizer and/or a sonicating instrument– all these components, steps and instruments are disclosed by Ulbrich or Jung to achieve a similar dispersion and viscosity - there is no active specific step and/or experimental conditions that would explicitly differentiate the process of Ulbrich or Jung from the claimed process.
It is suggested that applicant provides specific experimental conditions, specific milling/homogenizing/sonication setups/conditions, specific steps and/or specific components that would be required/configured to achieve the claimed saturation pattern – thus differentiating the instant process from the process of Ulbrich or Jung.
Conclusion
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764