DETAILED ACTION
Claim Rejections - 35 USC § 112
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 1-13 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 1 recites the limitation “at least one type of electrically conductive particles”. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). Claims 2-13 are rejected as being dependent upon claim 1.
Claim Rejections - 35 USC § 102
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 1, 3-7, 9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keite-Telgenbüscher (US 20140216654; Hereafter “Keite”).
Keite discloses an electrically conductive adhesive compound and tape thereof. Concerning claims 1, 3, and 5 Keite discloses a pressure-sensitive adhesive composition comprising 30 wt% ethylhexyl acrylate, 67 wt% butyl acrylate, and 3 wt% acrylic acid, and conductive filler, wherein the ethyl hexyl acrylate and butyl acrylate are non-polar monomers and the acrylic acid is a polar monomer and the PSA is an acrylate copolymer (para. 0097-0107). The term “for skin applications” is considered intended use and not given patentable weight since the structure of the adhesive is the same as that claimed. Regarding claim 4, since the non-polar materials are the same as that in the instant Example, the content of acid esters and molar masses of the non-polar monomers of Keite would meet the instant limitations.
With respect to claim 6, the content of the electrically conductive filler is 20 to 45 wt% (para. 0107). Regarding claim 7, the conductive filler can be carbon particles such as graphene or carbon nanotubes (para. 0055). In regards to claims 9 and 11, since the PSA composition is the same as that claimed, the Tg and adhesive force values would be within the claimed ranges. With respect to claim 12, the PSA has a thickness preferably of 10 to 50 microns (para. 0079). Concerning claim 13, the PSA is disposed on a conductive carrier (para. 0067-0076; claim 16).
Claims 1-9 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (Journal of Industrial and Engineering Chemistry) with evidence from Oh et al. (Polymer International).
Park discloses an acrylic PSA with graphene. Concerning claims 1, 3, 5 and 7, Park discloses the acrylic copolymer PSA comprises graphene as a conductive carbon particle and the PSA comprising 2-ethylhexyl acrylate (i.e. non-polar monomer) at a content of 190 parts and acrylic acid (i.e. polar monomer) at a content of 10 parts, resulting in 95 wt% of the non-polar monomer and 5 wt% of the polar monomer (pp. 4108-4109). The term “for skin applications” is considered intended use and not given patentable weight since the structure of the adhesive is the same as that claimed. Regarding claim 2, since there is no other conductive material such as a compound, the graphene provides all of the electrical conductivity for the PSA. With respect to claim 4, 2-ethylhexyl acrylate has a molar mass of about 185 g/mol and is 95 wt% of the copolymer which would meet the limitations as claimed.
In regards to claim 6, the graphene is found at a content of 5 to 10 parts per 100 parts of adhesive, resulting in an exemplary range of about 5 to 9 wt% of the total composition which meets the instant claims (pp. 4109-4110; Series 1). Concerning claim 8, as evidenced by Oh, the graphene as set forth by Park contains a few graphene layers with a particle size of 8.3 microns which meets the instant limitations of “micro-platelets” (Park, p. 4108; Oh, p. 55, “Preparation of graphene section”). With respect to claim 9, since the composition is the same with the same materials as claimed and used in the instant application, the Tg of the PSA would be within the claimed range. Regarding claim 11, since the PSA is the same as that claimed with the same materials, the adhesive force as it relates to the specific substrates that are claimed would also be within the claimed ranges. Concerning claim 12, the adhesive has a thickness of 60 microns which is within the claimed range (p. 4109). In regards to claim 13, the adhesive is disposed on a conductive fabric (p. 4109-4110; Table, Series 1).
Claim Rejections - 35 USC § 103
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Keite-Telgenbüscher (US 20140216654; Hereafter “Keite”) in view of Bahiraei et al. (Energy Conversion and Management).
Keite discloses the above but is silent to the graphene being a nanoplatelet.
Bahiraei discloses the graphene nanoplatelets is easier to disperse than single sheet graphene (pp. 1224-1225; Section 2.2). As such, it would have been obvious to one of ordinary skill in the art to use a graphene nanoplatelet, which is equivalent to the claimed micro-platelet, as the graphene conductive filler of Keite, in order to disperse the filler easier than single layer graphene.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Keite-Telgenbüscher (US 20140216654; Hereafter “Keite”) in view of Czech et al. (European Polymer Journal).
Keite discloses the above but is silent to a crosslinking agent.
Czech discloses crosslinking agents for acrylic PSAs, wherein the crosslinking agent is found at a content of 0.2 to 1.0 wt% (pp. 2154-2159; FIGS. 12 and 13). Crosslinking agents in acrylic PSAs change the tack, cohesion, and adhesion and also builds shear, heat, and chemical resistance (FIG. 1; pp. 2154-2155, section 2). As such, to balance the tack, cohesion, and adhesion of the adhesive, while also building shear, heat, and chemical resistance of the adhesive, one of ordinary skill in the art would have been motivated to add a crosslinking agent into the adhesive composition of Keite.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (Journal of Industrial and Engineering Chemistry) in view of Czech et al. (European Polymer Journal).
Czech discloses the above but is silent to the claimed crosslinking agent.
Czech discloses crosslinking agents for acrylic PSAs, wherein the crosslinking agent is found at a content of 0.2 to 1.0 wt% (pp. 2154-2159; FIGS. 12 and 13). Crosslinking agents in acrylic PSAs change the tack, cohesion, and adhesion and also builds shear, heat, and chemical resistance (FIG. 1; pp. 2154-2155, section 2). As such, to balance the tack, cohesion, and adhesion of the adhesive, while also building shear, heat, and chemical resistance of the adhesive, one of ordinary skill in the art would have been motivated to add a crosslinking agent into the adhesive composition of Park.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-14 of copending Application No. 18/596191 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite an adhesive having the claimed amounts of polar monomers, non-polar monomers, and electrically conductive particles with the claimed structure. While it is noted that the ‘191 claims do not recite the claimed adhesive force, since the adhesive has the same materials and at the same amounts, the adhesive force would be within the claimed range.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783