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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-19) in the reply filed on 6/1/2026 is acknowledged. The traversal is on the ground(s) that the search and examination of all currently pending claims would not pose an undue burden on the Examiner. This is not found persuasive because the groups I-III, as stated in the previous office action, have acquired a separate status in the art in view of their different classification; the inventions have acquired a separate status in the art due to their recognized divergent subject matter; the inventions require a different field of search; and the prior art applicable to one invention would not likely be applicable to another invention. Therefore, there is a burden on the Examiner to search all groups.
The requirement is still deemed proper and is therefore made FINAL.
Claims 20-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Groups II and III, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/3/2024 have been considered by the examiner. Initialed copies accompany this action.
Drawings
The Drawings filed 3/22/2024 are approved by the examiner.
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 1-19 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 a limitation “PEDOT:PSS nanoparticles with intrinsic dispersibility. Intrinsic dispersibility refers to the inherent ability of a material’s particles to disperse in a medium. Without a clear definition and/or description, the phrase “intrinsic dispersibility” is unclear as to which medium the nanoparticles are dispersed in, and thus claim 1 does not clearly set forth the metes and bounds of the patent protection desired.
Claim 1 also recites “X represents an amount of an acid in a coagulation bath”. This recitation fails to define the invention in which the limitations must be organized and correlated in such a manner as to present a complete product. It is unclear how the acid in a coagulation bath and the PEDOT:PSS nanoparticles are related. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation between 0-100%, and the claim also recites 0-5%, 5-10%, up to 99% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 12 recites a limitation “….rivaling all the existing conjugated polymer particles”. There is insufficient antecedent basis for “all the existing conjugated polymer particles”. The term “rivaling” in the claim is a relative term which renders the claim indefinite because one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The terms “highly conductive” in claim 18 and “rivaling” in claim 19 are relative terms which renders the claim indefinite because one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2-19 are rejected as being depended on a rejected claim.
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 1-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (Adv. Mater. 2014, 26, 2268–2272).
Regarding claim 1, Kim discloses a conductive nanomaterial (PEDOT:PSS film) comprising crystallized PEDOT:PSS nanofril (Experimental Section), wherein the PEDOT:PSS film is treated with concentrated H2SO4 at various concentrations. The amount of an acid recited in the claim includes zero as a lower limit, therefore PEDOT:PSS nanoparticles which does not contain acid still meets the claim.
Regarding claims 2-6, and 17-19 the claims are directed to intended uses and properties of the nanoparticles. The conductive nanomaterial disclosed by Kim appears to be the same as the product set forth in the claim. It has been held that "products of identical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims (dispersibility, compatibility) are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established." The law also held that If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)50, 152, 88 USPQ 478,481 (CCPA 1951 ).
Regarding claims 7-12, 15, and 17-19, these claims are a product-by-process claim. The law held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In re Marosi 710 F.2d 799,218 USPQ 289 (Fed. Cir. 1983). The conductive nanomaterial disclosed by Kim appears to be the same as the product set forth in a product-by-process claim, it meets the claim.
Regarding claims 13 and 14, Kim discloses the crystallized PEDOT:PSS nanofril has conductivities in a range of about 1 S cm-1 and up (Fig. 1).
Regarding claim 16, , Kim discloses the crystallized PEDOT:PSS nanofril has a crystalline size about 10-15nm (page 2269).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
6/23/2026
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