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
This application is a 371 of PCT/JP2022/031091 (filed 08/17/22), which application claims priority to JP 2021-140507 (filed 08/30/21).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The spacing of the lines of the specification is such as to make reading difficult. New application papers with lines 1 1/2 or double spaced (see 37 CFR 1.52(b)(2)) on good quality paper are required.
Amendment(s)
The Preliminary Amendment filed 02/27/24 and 03/12/24 (specification) is/are entered. Claims 1-29 are pending.
Drawings
The Drawings filed 02/27/24 are approved by the examiner.
Information Disclosure Statement
The IDS statements filed 05/22/24 and 03/19/25 have been considered. Initialed copies accompany this action.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim Construction
The examiner notes that both subscript variables “d” and “e” may be 0, thereby making the units “δ” and “ε” optional.
Claim(s) 1-14, 16-25, 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107739430 (IDS).
CN 107739430 discloses conductive polymeric materials useful in conductive polymeric electrochromic devices (Abstract). Polymeric materials include ProDOT(Me)2-EDOT-ProDOT(Me)2 (molecular weight 103-105) and dopant anions such as PF6- or PTSA (para 0043-53; examples) of English language translation):
PNG
media_image1.png
520
1064
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Greyscale
.
The above repeating units meet the instant claimed compound represent by Z1-αa-αb-αc-Z2.
With respect to dependent claims 23-24, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. resistivity, activation energy, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
The reference is anticipatory.
Claim(s) 15, 26, 27, 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 107739430 (IDS) in view of WO 2020-262443 (IDS).
CN ‘430 is relied upon as set forth above. With respect to dependent claims listed above, the examiner submits that WO ‘443 discloses the use of polythienothiophene oligomers and battery electrodes as claimed, and additionally teaches the use of -SMe endcap units (0006; 0020), and that such would have been an obvious selection and optimization to the skilled artisan.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
May 23, 2025
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