DETAILED ACTION
The following Office action concerns Patent Application Number 18/656,267. Claims 1, 2, 4, 7-14, 16 are pending in the application. Claim 16 has been withdrawn from consideration as being drawn to a non-elected invention.
The applicant’s amendment filed August 20, 2026 has been entered.
The previous grounds of rejection are withdrawn in light of the applicant’s amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 112 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(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.
Claims 1, 2, 4, 7-14 are rejected under 35 USC § 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the art that the inventor had possession of the claimed invention at the time the application was filed. In particular, the limitation “a polar-solvent-soluble polymer comprising, in a backbone of the polymer, at least one heteroatom. . .,” which was added by amendment, is not supported by the specification. The specification teaches that the heteroatom is attached to the backbone of the polymer. It does not teach that the heteroatom is in the backbone. MPEP § 2163(II)(A)(3)(b).
Claims 1, 2, 4, 7-14 are rejected under 35 U.S.C. § 112(b) because the term “a thixotropy of 1.0 to 5.0 at 25 °C” is indefinite. It is unclear what is required by the term “1.0 to 5.0.” Thixotropy is sometimes defined as a ratio of two viscosities, but in that case the viscosity tests must be specified.
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 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.
Claims 1, 2, 4, 7-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Ionescu et al (US 2022/0007515) in view of Omenetto et al (US 2021/0155812).
Ionescu et al teaches a conductive ink for printing conductive lines on a substrate (par. 17, 143). The ink comprises conductive metal particles, binder and sodium hydroxide (par. 29-30, 65, 53). Sodium hydroxide is the claimed charge transfer element. The ink further comprises a acrylic acid polymer having a molecular weight of less than 5,000 (par. 43). Acrylic acid polymer is known to be water soluble and is known to contain hydroxy groups, which contain oxygen heteroatom. The acrylic acid polymer is a reaction element as that term is defined in the claims. The amount of the acrylic acid polymer is 0.1-5 % of the ink (par. 44). The amount of conductive element is 0.1-65 % by weight (par. 32). Therefore, the amount of reaction element includes 3 parts per 70 parts conductive element.
The binder includes acrylic binder (par. 65). Sodium hydroxide is the claimed charge transfer element (par. 53). The amount of sodium hydroxide is 0-2 % by weight (par. 54). The amount of conductive element is 0.1-65 % by weight (par. 32). Therefore, the amount charge transfer element includes 0.5 parts per 70 parts conductive element. The conductive element includes two or more types of materials (par. 29).
The limitation in claim 1 regarding spraying the ink onto a substrate having a 3-D surface to form a conductive line having an aspect ratio of 0.05 to 0.3 is a statement of the intended use of the claimed composition. The conductive ink of Ionescu et al is capable of the claimed use because it is a conductive printing ink and it comprises all the required components of the claimed ink.
The limitations regarding forming a conductive pattern and curing the ink with a laser to form a line is a statement of the intended use of the claimed composition. The conductive ink of Ionescu et al is capable of the claimed use because it is a conductive printing ink and it comprises all the required components of the claimed ink.
Regarding claim 4, the acrylic binder is inherently capable of providing adhesion, the sodium hydroxide charge transfer element is inherently capable of providing electric charge, and the conductive particles are inherently capable of providing conductivity.
Regarding claims 13 and 14, the limitation regarding applying the ink by electrohydrodynamic printing is a statement of the intended use of the claimed composition. The conductive ink of Ionescu et al is capable of the claimed use because it is a conductive printing ink and it comprises all the required components of the claimed ink.
Ionescu et al does not teach the viscosity of the ink.
However, Omenetto et al teaches a conductive ink for printing having a viscosity of 1,000-10,000 cP (par. 143).
Ionescu et al teaches an ink for printing but is silent regarding the viscosity on the ink. Omenetto et al teaches an ink for printing and further teaches the ink viscosity. A person of ordinary skill in the art would have been motivated by design need to combine the viscosity of Omenetto et al with the ink of Ionescu et al in order to obtain a viscosity known to be suitable for printing.
Ionescu et al is silent with respect to the thixotropy of the ink. However, the combination of teachings from Ionescu et al and Omenetto et al have rendered obvious the instantly claimed conductive ink. Therefore, it is reasonable that a person of ordinary skill in the art would expect the claimed thixotropy to naturally arise.
Response to Arguments
The applicant argues that there is no reason to combine Omenetto et al with Ionescu et al. The reason to combine the references is stated in the grounds of rejection above.
The applicant argues that the invention provides unexpected results. However, the comparative examples in the specification are of no probative value in determining patentability of claims since they do not involve a comparison of applicant’s invention of a conductive ink with the closest applied prior art. See In re De Blawe, 222 USPQ 191 (Fed. Cir. 1984) and In re Fenn, 208 USPQ 470 (CCPA 1981). Even if, arguendo, the comparison had been done between the applicants’ invention and the closest applied prior art, the claims would not be deemed patentable over the references of record since they are not commensurate in scope with the probative value of data in the examples. See In re Clemens, 206 USPQ 289 (CCPA 1980).
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 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 http://pair-direct.uspto.gov. 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./WILLIAM D YOUNG/Primary Examiner, Art Unit 1761 August 31, 2026
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