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 .
The amendment of July 24, 2025 has been received and entered. With the entry of the amendment, claims 1-4 and new claims 5-20 are pending for examination.
Specification
The objection to the disclosure because in paragraph 0001 of the specification, it should be clarified that 18/076,458 is now US Patent No. 11,961,637 is withdrawn due to the correction made as to this issue in the amendment of July 24, 2025.
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 19-20 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 19, lines 5-6 has performing a “curing process” where an “annealing temperature” while performing the “annealing” “is 140 oC and 160 oC”. This is confusing and indefinite because (1) both curing and annealing are referred to, apparently for the same process. Is applicant intending a curing process to occur at the described annealing temperature, or is any heating/annealing process at the claimed temperature OK, even if not “curing”? Are two different heating processes referred to? Something else? Secondly, (2) as worded the temperature of the annealing is described as 140 oC and 160 oC. Did applicant mean that there is supposed to be a heat treatment only at 140 degrees C or 160 degrees C? Did applicant mean these is supposed to be two heat treatments, one at 140 degrees C and the second at 160 degrees C? Did applicant intend to mean a heat treatment at a temperature in the range of 140-160 degrees C? For the purpose of examination any of the above options for (1) and (2) is understood to meet the requirement of the claims, but applicant should clarify what is intended, without adding new matter.
Claim 20 does not cure the defects of parent claim 19, so is also rejected, and claim 20 at line 2 also refers to the curing process, and so is considered under the same understanding as for claim 19.
Claim Rejections - 35 USC § 102
The rejection of claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by CN 113647952 (hereinafter ‘952) is withdrawn due to the change in scope of the claims after the amendment of July 24, 205.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5-11 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stapleton et al (US 2017/0229668) in view of CN 113647952 (hereinafter ‘052), and as evidenced by Kim et al (US 2016/0156282) and Wijesundara et al (US 2016/0340534).
Claim 1: Stapleton teaches a manufacturing method for a flexible composite electrode (note figure 1, 0001, 0037, 0056-0059). The method includes forming a silver nanowire layer on a carrier (note 0107, where the PEN substrate acts as a carrier, note 0108). The silver nanowire layer has a first surface in contact with a carrier and a second surface facing away from the first surface (note figure 1, 0803, where the conductive layer 10 with silver nanowire (AgNW) would have a first surface 20 in contact with the PEN carrier, note 0107-0108, where the conductive layer can be made with PEDOT:PSS, note 0031, 0108). A non-conductive coating (such as epoxy) is applied on the second surface of the silver nanowire layer, where a portion of the coating is penetrated into the silver nanowire layer, note figure 1, layer 12, 0108, 0033, 0036-0038). The coating is cured to form a film (note 0108), wherein the coating that penetrates into the silver nanowire layer forms a surface of the film that is substantially flat (note second surface 22), and a portion of the silver nanowire layer is embedded int the surface of the film, such that the film is over a top surface of the silver nanowire layer and a bottommost surface of the silver nanowire is below a bottommost surface of the film (note figure 1, 0108, 0036-0038). The carrier is then removed, thereby exposing the first surface of the silver nanowire layer (note 0108).
As to the composite electrode being stretchable, and the non-conductive layer is a PDMS coating forming the film,
‘952 describes how it is desirable to form flexible composite electrodes that are also stretchable (note the abstract, and page 2, translation, as to the resulting electrode being flexible and stretchable). The method comprising forming a silver nanowire layer on a carrier (note figures 1d and 1e, pages 3-4, translation, step (2), where the carrier would be the glass sheet). The silver nanowire layer has a first surface in contact with the carrier and a second surface facing away from the first surface (note figure 1e, pages 3-4 translation, step (2)). A PDMS coating is formed on the second surface of the silver nanowire layer, and a portion of the coating is penetrated into the silver nanowire layer (note the abstract, figure 1f, pages 3-4, translation, step (3), note the penetration/fully permeates into the gaps in the nanowire conductive network). The coating is cured to form a film (note pages 3-4, translation, step (3)). The carrier is removed, thereby exposing the first surface of the silver nanowire layer (note figure 1g, pages 3-4, translation, step (3), where the silver nanowire network on the surface contacting the glass sheet (before peeling) becomes exposed after peeling).
Kim describes how PDMS can be considered as a nonconductive polymer (note 0018).
Wijesundara evidences how PEDOT:PSS can be considered stretchable (note 0030).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Stapleton to provide that the formed electrode is stretchable as well as flexible and that the non-conducting layer material applied is PDMS as suggested by ‘952 and as evidenced by Kim and Wijesundara to provide a desirable stretchable composite electrode, since Stapleton indicates how it is desirable to provide a flexible composite electrode of two layers, one with a conductive layer with silver nanowires and conductive polymer such as PEDOT:PSS and a second layer of non-conductive polymer that encapsulates protruding nanowires from the first layer, and ‘952 describes that it is desirable to form composite electrodes with silver nanowires and PDMS combined, where the electrodes are desirably both flexible and stretchable, which indicates PDMS as stretchable, and Kim further evidences that PDMS is also a non-conductive polymer, and ‘952 indicates it can encapsulate nanowires, and thus PDMS would be considered as a predictably acceptable polymer to use for the non-conductive polymer of Stapleton, and Wijesundara further evidences that PEDOT:PSS is considered stretchable, and thus two layers with PDMS and PEDOT:PSS would be considered stretchable.
Claims 5, 6, 7, 14, 15, 16: as to providing an annealing on the carrier prior to forming the silver nanowire layer, Stapleton places the formed nanowire structure on a PEN substrate/carrier with heating with a laminator, which would give an annealing of the carrier prior to forming the complete silver nanowire layer (which also has the conductive coating, PEDOT:PSS, for example) (note 0107-0108). As to claim 6 and 7, Stapleton describes a temperature of 130 degrees C, and does not give the specific time for the lamination, however, it would have been obvious to one of ordinary skill in the art to optimize the time and temperature, giving values in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claims 8 and 11: As to the thickness of the portion of the silver nanowire layer that is embedded in the film is 0.27-0.048 % of a thickness of the film (note for claim 11, all other features of claim 11 are provided as discussed for claim 1 above), in Stapleton, it is shown in the figure and indicated that the bulk of the nanowires are in layer 10 and there is some extension into layer 12 (the non-conductive film) (note figure 1, 0027, 0033, 0036), furthermore, it is indicated that layer 10 (conductive layer) is 5-300 nm thick (note 0020), and the non-conductive/base layer 12 is 1-1000 microns (note 0037)m and the nanowires can be 1-50 microns long and 1-60 nm in diameter (note 0039), and as a result of these measurements and the desire to encapsulate the nanowires in layer 10, and the desire to optimize the layer thicknesses and nanowire size, it would have been obvious to optimize the conditions and amount of protraction of the nanowires from the first layer to optimize and standardize the resulting product, giving a value in the claimed range, note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 9, 17: As to the silver nanowire layer comprising a matrix material and silver nanowires, this would be indicated by Stapleton (note figure 1, where the matrix can be the conductive material of layer 10, such as PEDOT:PSS, note 0015, 0031, 0108), and the non-conductive coating (suggested to be the PDMA as discussed for claim 1) can be applied over the matrix material (note claim 1, 0108).
Claim 10, 18:as to the desirable stretching length variation and resistance recovery of the electrode after removing the carrier, ‘952 indicates that for a stretchable electrode is the same signal when the substrate stretched by 50% of strain and is stretched in a reciprocating manner for 50 times are still accurate (note page 2, translation). This would suggest that the stretching length various and resistance recovery should be optimized to get the best results, as there would be stretching and recovery and resistance changes would be proportional to getting the same signal, giving values in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 19: as to the performing a curing/annealing process after forming the silver nanowire layer with a temperature of 140-160 degrees C (where all other features of the claim provided as discussed for claim 1 above), the is suggested by Stapleton, note the annealing after the PEDOT:PSS applied at 140 degrees C (note 0108).
Claim 20: As to the time of the curing/annealing, Stapleton describes 140 degrees C for 10 minutes (note 0108), however, it would have been obvious to one of ordinary skill in the art to optimize the time, giving values in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Stapleton in view of ‘952, and as evidenced by Kim and Wijesundara as applied to claims 1, 5-11 and 14-20 above, and further in view of CN 105603725 (hereinafter ‘725).
Claims 2 and 12: As to further performing a surface plasma treatment on the silver nanowire layer and the film (of PDMS) from the first surface of the silver nanowire layer,
‘725 describes how a composite can be formed with silver nanowires provided on a substrate and coated with PDMS, which can be used for converting mechanical generators to electricity and power small devices, and as a wearable energy device. (note the abstract), where it is further described that it is desired to further coat the formed article coated with PDMS with an FAS solution to obtain fluorine containing silane hydrophobic surface layer (note page 2, translation). It is further indicated that before applying the FAS solution the formed composite with silver nanowires and PDMS is provided with a surface plasma treatment to prepare for the FAS coating (note pages 2-3, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Stapleton in view of ‘952, and as evidenced by Kim and Wijesundara to provide a plasma treatment to the first surface of the silver nanowire layer and the PDMS film formed to prepare for a further surface coating as suggested by ‘725, since the combination of Stapleton in view of ‘952, and as evidenced by Kim and Wijesundara provides a silver nanowire/PDMS composite with a silver nanowire layer with a first surface and a PDMS film and ‘725 indicates that similar composites can be desirably further coated with an FAS solution and to prepare for such coating to prepare the article, which would include the surface to be coated, with a surface plasma treatment.
Claims 3, 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Stapleton in view of ‘952, and as evidenced by Kim and Wijesundara as applied to claims 1, 5-11 and 14-20 above, and further in view of CN 113744929 (hereinafter ‘929).
Claims 3, 13: As to forming the silver nanowire layer on the carrier including coating a silver nanowire solution on the carrier, where the solution comprises a plurality of silver nanowires, Stapleton provides the suggestion of applying the nanowires before the conductive layer material coated (note 0107-0108), and ‘952 indicates how nanowires can be applied to a substrate/carrier, where a solution of silver nanowires is deposited on the carrier to form the silver nanowire layer, where nanowires in the plural is indicated as being present, so understood that the solution would have multiple nanowires (note page 3, translation), and therefore, ‘952 would suggest to one of ordinary skill in the art before the invention was made that an acceptable way of providing initial nanowires (and even the similar carbon nanotubes) would be to apply the initial nanomaterial for the first silver nanowire layer would be by coating of solution with the nanomaterial including he silver nanowires on the carrier. As to the wt% concentration of silver nanowires in solution, it is described in ‘952 that it is preferably 2 x 104- 4 x 104 mg/l (about 2-4 wt%) (note page 3, translation). Furthermore, Stapleton indicates that the loading/density of the silver nanowires for the silver nanowire layer should be optimized (note 0106).
‘929 further describes making a silver nanowire flexible conductive film (note the abstract), where silver nanowire solution is applied to a film surface (here PMMA) and dried to form a silver nanowire grid (note page 2, translation, step 5), where the silver nanowire solution can have a silver nanowire content of 0.3-0.7 mg/ml or 0.3-0.7 g/l (note page 3, translation), giving about o.03 to 0.07 wt% silver nanowires. ‘929 also indicates how deposition density can be controlled by the volume of solution applied (note page 3, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Stapleton in view of ‘952, and as evidenced by Kim and Wijesundara to provide the concentration of the silver nanowire in the silver nanowire solution can be 0.3-0.7 wt% for example as suggested by ‘929 with an expectation of predictably acceptable results, since Stapleton indicates that the loading/density of the silver nanowires should be optimized, ‘952 provides a silver deposition using a silver nanowire containing solution and ‘929 indicates how solutions for silver nanowire deposition can have silver content in a concentration of 0.03-0.07 wt%, in the range claimed, and the deposition density can be controlled by controlling the volume of such solution applied, for example, and thus even if ‘929 shows a concentration lower than that preferred by ‘952, the total amount/density of silver nanowires can still be controlled. Additionally, as noted in MPEP 2144.05(II)(A): “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
Claim 4: as to performing a heating treatment on the silver nanowire layer, Stapleton indicates heat treating the silver nanowire layer after the conductive coating (PEDOT:PSS) applied to form the completed silver nanowire layer (note anneal at 140 degrees C) or also heating after the non-conductive layer applied (heated in the oven) (note 0108).
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over CN 113647952 (hereinafter ‘952) in view of Takada (US 2011/0018424) is withdrawn due to the change in scope of the claims after the amendment of July 24, 205.
Zhu et al (US 2017/0172439) also has applying silver nanowires to a carrier, then applying liquid PDMS to form a film, and removing the carrier to form an electrode (note figure 1B, abstract, 0057, 0058).
Response to Arguments
Applicant's arguments filed July 24, 2025 have been fully considered.
(A) Note the new rejections, including the new 35 USC 112 and 103 rejections, due to the amendments.
(B) As to the arguments as to the rejections using ‘952 as the primary amendment, these rejections have been withdrawn due to the amendments to the claims. New rejections are now provided using Stapleton as the primary reference, as noted in the rejections above. While ‘952 is used as a secondary reference, the suggestion as to the use of PDMS and stretchability, for example, would be applicable to the process of Stapleton. As to arguments as to ‘952’s providing of post fabrication chlorination, this would not appear to be required by Stapleton, and in any case, the present claims would not prevent post fabrication chlorination. As to the arguments with regard to the new claims, the new rejections above address the features of these new claims.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718