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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/18/2025 has been entered.
Response to Amendment
Claims 1 -20 are pending.
The previous rejection of claims 1-10 and 15-20 under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 7,964,938) in view of Ling et al. (PNAS, November 25, 2014, vol. 111, no. 47, 16676-16681) and Barsoum et al. (US 2014/0162130) is maintained in view of applicant's amendment.
The previous rejection of claims 11-13 under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 7,964,938) in view of Ling et al. (PNAS, November 25, 2014, vol. 111, no. 47, 16676-16681), Barsoum et al. (US 2014/0162130) and Wu et al. (2017/0190925) is maintained in view of applicant's amendment.
The previous rejection of claims 1-12 and 14-20 under 35 U.S.C. 103 as being unpatentable over Sarto et al. (US20150305212) and Barsoum et al. (US 2014/0162130) is maintained in view of applicant's amendment.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/19/2025 have been considered by the examiner. Initialed copies accompany this action.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Arguments
Applicant's arguments filed 3/11/2025 have been fully considered but they are not persuasive.
Applicant argues that a person of skill in the art would not have replaced the nickel metal-based in the shielding coating of Yoon with the MXene composition of Ling. The examiner respectfully disagrees with applicant’s arguments. As stated in the previous Office actions, the rejection does not suggest removing the nickel from Yoon's coating and then replace that nickel with the composition from Ling as assumed by Applicant. Instead, the claim would have been obvious to one of ordinary skill in the art to substitute the Yoon’s coating with the composite film of Ling, and the results of the substitution would have been predictable. The rejections are based on combinations of prior art references and obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007) and "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Moreover, the law also held that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). In this case, the films of Yoon and Ling are both functioning as an electromagnetic interference (EMI) shielding film and Ling’s composite film has excellent flexibility, good tensile and compressive strengths, and electrical conductivity that can be adjusted over a wide range and the potential (abstract). Therefore, it would have been obvious to one of ordinary skill in the art to substitute Yoon’s coating film for that of Ling for the predictable result of shielding electromagnetic interference (EMI) emitted from the semiconductor package. In addition, the Yoon reference does not teach that coating the object with a film similar to that of Ling’s is undesirable, does not criticize, discredit, or otherwise discourage using other material such as those taught by Ling, therefore it does not constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also MPEP § 2123.
Applicant further argues that the office does not identify disclosure in the cited references to establish that a person of ordinary skill would, after reading the cited art, modify Sarto to replace the graphene nanoplatelets of Sarto with MXene materials. As stated above, the rejections are based on combinations of prior art references and obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, and "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In this case, Barsoum discloses the two- dimensional transition metal carbides are analogous to graphene, both are similar in structure (structures of multi-layer) and used as reinforcements in polymer composites, and that transition metal carbides (functionalized Ti3C2 sheets) were much more stable than graphene sheets (para 0117). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have replaced the graphene nanosheets in the coating of Sarto with the transition metal carbides taught by Barsoum to achieve improved stability.
The law also held that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claims 1 -20 remain unpatentable for the reasons of record.
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 on M-Th: 10a-3p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
2/21/2026
Prosecution Insights