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 .
Response to Amendment
Upon entry of the amendment filed on 26 December 2025, Claim(s) 1 and 9-11 is/are amended; Claim(s) 15-25 is/are withdrawn; Claim(s) 26 is/are added and Claim(s) 12 is/are cancelled. The currently pending claims are Claims 1-11 and 13-26.
Based on applicants’ remarks and amendments (e.g. the specific loading of the hydrophobic enhancer), the 103 rejections based on He are withdrawn. However, they are not found persuasive regarding the Hendricks reference and the rejections are maintained.
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.
Remarks: It is noted that the “screen-printing ink” limitation is construed as an intended use of the composition – thus the instant rejection is based on the components – which could be employed in a screen-printing application. Therefore the composition taught by the cited references only need to be capable of being a preform for being employed as a screen-printing ink. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). It is the examiner's position that the preamble does not state any distinct definition of the claimed invention's limitations.
Claim(s) 1-11, 13, 14 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hendricks (US2020/0362181A1, cited in the IDS).
Claims 1 and 26: Hendricks discloses a coating composition comprising graphite, a conductive polymer binder, up to 50 % wt. of polytetrafluoroethylene (the hydrophobicity modifier), ethylene glycol or sulfonic acid (the conductivity modifier) and a crosslinking agent (abs, ¶7, 16-20, 55-78, 83-86, 94, 102 and examples). The Hendricks reference discloses the claimed invention with all the components but does not disclose the composition with the claimed components with enough specificity to anticipate the claimed invention. Nevertheless, given that Hendricks discloses graphite, a conductive polymeric binder, a crosslinking agent, a conductivity modifier, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Hendricks teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as a graphite, a conductive polymeric binder, a crosslinking agent, a conductivity modifier, less obvious. Here, Hendricks discloses each of the claimed components and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 1-4, 6, 7, 10: Hendricks discloses a loading 1-20 % of the graphite, 0.1-10% of the crosslinking agent, up to 50 % wt. of polytetrafluoroethylene and about 5% of ethylene glycol (¶7, 16-29, 43-78, 83-86, 94, 97, 102 and examples). The Hendricks reference discloses the claimed invention but does not explicitly disclose the claimed loading ranges. Given that the Hendricks reference discloses loading ranges that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught percentages, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the loading variables with the benefit gain of enhancing the conductivity, durability and flexibility parameters of the composition. 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 would be repugnant to a skilled artisan.
Claims 5, 8, 9, 11, 13 and 14: Hendricks discloses PEDOT:PSS, ethylene glycol, sulfonic acid, a trimethoxysilane crosslinking agent and a polytetrafluoroethylene (¶7, 16-29, 43-78, 94, 102 and examples).
Response to Arguments
Applicant’s arguments, see pg. 9-11, filed 26 December 2025, with respect to the He reference have been fully considered and are persuasive. The 103 rejection based on He has been withdrawn.
Applicant's arguments filed 26 December 2025 regarding the Hendricks reference have been fully considered but they are not persuasive.
Applicant argues that Hendricks does not disclose the claimed loading of the hydrophobic enhancer (e.g. the surfactant) and the unexpected results of improved conductivity based on the specification (pg. 7-11).
The examiner concurs that the loading amount of the surfactant is outside the claimed range. However, the examiner respectfully notes that Hendricks also disclose up to 50 % wt. of polytetrafluoroethylene which meets the claimed hydrophobicity modifier. In order to overcome the prima facie case of obviousness, the applicant may show (1) criticality or unexpected result of the range and the component, (2) the prior art teaches away from the claim or (3) a pertinent secondary factors to rebut the rejection under 35 USC 103. MPEP 2144.05. Here, the applicant intends to show the criticality or unexpected result of ionic conductivity. It is noted that applicant seems to argue the unexpected results as based on Table 1 of the specification. However, the showing in applicant’s specification is not commensurate with the instant claims. In particular, the Showing in applicant’s specification are directed to specific and distinct components and loading amounts and differ from the instant claims which are directed to a broad and generic loading amounts of the binder, cross-liking agent and hydrophobic modifier components. After a careful evaluation and consideration of the Showing, it is the examiner’s position that the specific limitations presented in the Showing would not inexorably extrapolate to the instant broader limitations. Applicant is welcomed to provide any evidence that the narrower components and loading amounts recited in the Showing would inevitably lead to the same critical and unexpected results in the broader components of the instant claims. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-obviousness fails to outweigh the evidence of obviousness. Thus, the Showing have been found insufficient to overcome the rejections and the rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Staron discloses an ink composition with a hydrophobic control agent.
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.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764