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 .
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
The Drawings filed 5/6/2024 are approved by the examiner.
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.
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.
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 1-4, and 9-16 are rejected under 35 U.S.C. § 102 (a) (1) as being anticipated by, or, alternatively, under 35 U.S.C. § 103 as being obvious over Ionescu et al (US 2022/0007515).
Regarding claims 1, 9, 10, 14 and 15, Ionescu discloses a conductive ink for printing conductive lines on a substrate (abstract). The ink comprises a binder (para 0065), potassium hydroxide (KOH) and/or sodium hydroxide (NaOH) (para 0053) and conductive material (para 27-31). Potassium hydroxide (KOH) and/or sodium hydroxide (NaOH) (para 0053) is the claimed charge transfer element.
The limitations in claims 1, 10, 14 and 15 regarding spraying the ink onto a substrate by an electrohydrodynamic method to form a conductive pattern, and the conductive pattern having specific characteristics, these limitations are statements of the intended use of the claimed composition. The conductive ink of Ionescu is capable of the claimed use because it is a conductive printing ink and it comprises all the required components of the claimed ink. A person having an ordinary skill in the art would reasonably expect the conductive pattern to have the properties (linear resistance) because 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 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."
Regarding claims 2-4, Ionescu discloses the ink further comprises an acrylic acid polymer having a molecular weight of less than 5,000 (para 43). Acrylic acid polymer is known to be water soluble. The acrylic acid polymer is the claimed reaction element. The amount of the acrylic acid polymer is 0.1-5 % of the ink (para 44).
Regarding claims 11 and 12, Ionescu discloses the conductive material comprises metallic conductive nanoparticles and comprises at least two types of materials or at least two shapes (para 0029-31).
Regarding claim 13, Ionescu discloses the ink further comprises a solvent (para 0067) and a thixotropic agent (viscosity modifier, para 0035, 50)
Regarding claim 16, Ionescu discloses electric device comprising a substrate having a three-dimensional surface shape and a conformal conductive line provided on the substrate, wherein the conformal conductive line comprises the conductive printing ink composition as recited in claim 1 (para 0137, 139).
Claims 5-8 are rejected under 35 U.S.C. § 103 as being unpatentable over Ionescu et al (US 2022/0007515).
Ionescu et al teaches a conductive ink for printing as described above. Ionescu discloses the conductive material may be present in the conductive ink in an amount ranging from about 0.1 wt % to about 65 wt % (para 0032), the potassium hydroxide (KOH) and/or sodium hydroxide (NaOH) in the ink ranges from greater than 0 wt % active to about 2 wt % active based on the total weight of the conductive ink (para 0054), and the amount of the acrylic acid polymer is 0.1-5 % of the ink (para 44).
It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 P.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use the ranges within the claimed ranges of the conductive material, potassium hydroxide (KOH) and/or sodium hydroxide and the acrylic acid polymer because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ionescu suggests the amount of these components. A person of ordinary skill would be motivated to use the claimed amounts/ratio, based on the teachings of Ionescu. See MPEP 2123.
Regarding claim 6, Ionescu discloses the binder comprises an acrylic binder (para 0065).
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, and 16 of copending Application No. 18,656,267 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 18,656,267 contains substantially similar subject matter and anticipatory or overlapping ranges. Specifically, Application No. 18,656,267 claims a conductive printing ink composition for being sprayed onto a substrate by an electrohydrodynamic method to form a conductive pattern, the conductive printing ink composition comprising a binder applying adhesion to the substrate; a charge transfer element providing an electric charge transferred by an electric field; and a conductive element providing conductivity to the conductive pattern. The conductive printing ink composition further comprising an electric field reaction element assisting in the transfer of the electric charge in the electric field, wherein the electric field reaction element is a polymer soluble to a polar solvent and has a three-dimensional surface with a molecular weight of 500 to 1,000,000.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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
7/24/2026
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