DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶ denotes the paragraph number of the pregrant publication corresponding to the application, US 2024/0379960. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The preliminary amendment dated 3/4/2024 has been received and will be entered.
Claim(s) 1-14 is/are pending.
Claim(s) 3-7 is/are currently amended.
Claim(s) 9-14 is/are new.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/7/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered 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.
I. Claims 1-14 – or as stated below – is/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 “(C) an anionic water-soluble polymer (provided that the naphthalenesulfonic acid condensate is excluded).” (emphasis added). It is unclear what this language is intended to convey. First, note that this language conflicts with the transitional phrase (“comprising”), which excludes nothing. Second, the claim would seem to be both requiring and excluding naphthalenesulfonic acid condensate. The description in the Specification provides little context, merely restating the claim language. The Specification states:
[0037] In the present embodiment, an anionic water-soluble polymer serving as a component (C) is used together with the component (B) described above. Use of the component (B) and the component (C) in combination enables the dispersibility of nanocarbon to be further improved and enables dispersion stability to be improved. Herein, the naphthalenesulfonic acid condensate serving as the component (B) is excluded from the anionic water-soluble polymer serving as the component (C).
(S. 3: [0037]) (emphasis added). The examples however strongly suggests that (B) and (C) are present. See (S. Tables 1-3). The only example that doesn’t have limitation/component (B) is Comparative Example (1). Why devote 21 examples and 6 comparative examples to compositions comprising (B) and (C), and then claim (B) and (C), only to exclude (B). This makes little sense.
Claim 8 and Claim 14 are some manner of product-by-process claims. The process language (“produced using”) however is indefinite, as the “using” language does not set forth any steps involved in the process. See MPEP 2173.05(q).
Dependent claims not specifically addressed import the issues of the claims above.
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.
I. Claim(s) 1-3, 5-7, 9, 11-13 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 10-287836 to Ota, et al. (cited by Applicants; 10/27/1998; C09D 11/00).
Citation is to the translation accompanying the 6/7/2024 IDS.
With respect to Claim 1, this claim recites in the preamble “[a] nanocarbon dispersion.” Ota teaches an ink, interpreted as a nanocarbon dispersion. (Ota [0007]; passim).
Claim 1 further requires “(A) nanocarbon.” Carbon black is taught. (Ota [0009]-[0010]; passim). Carbon black is one of the nanocarbon examples taught in the Specification. (S. 1: [0018]).
Claim 1 further requires “(B) a naphthalenesulfonic acid condensate which is at least one selected from the group consisting of alkylnaphthalenesulfonic acid-formaldehyde condensates, a naphthalenesulfonic acid-formaldehyde condensate, formaldehyde condensates of an alkylnaphthalenesulfonic acid and naphthalenesulfonic acid, and salts thereof and which has a number-average molecular weight of 470 to 3,000.” Napthenesulfonic acid-formalin (i.e. formaldehyde) condensates are taught. (Ota [0015]). The molecular weight is reasonably suggested. (Ota [0018]: “The ultrafiltration is preferably carried out using an ultrafiltration membrane having a molecular weight cut-ff of 5 to 400000…”). Overlapping ranges are prima facie obvious. MPEP 2144.05 I.
Claim 1 further requires “(C) an anionic water-soluble polymer (provided that the naphthalenesulfonic acid condensate is excluded).” Notwithstanding the issues above, the resins at (Ota [0011]) are interpreted as the anionic water-soluble polymer.
Claim 1 further requires “(D) an organic solvent having an O/I of less than 1.00, the O/I being a ratio of an organic value to an inorganic value in an organic conceptual diagram.” At least n-methyl-2-pyrrolidone – disclosed in the Specification as meeting the esoteric organic conceptual diagram, see (S. 4: [0049]) – is taught. (Ota [0014]).
Claim 1 further requires “(E) water.” Water is taught. (Ota [0013]).
As to Claim 2, at least n-methyl-2-pyrrolidone is a nitrogen-containing solvent. (Ota [0014]).
As to Claim 3, the parts/percentages are taught. (Ota [0020]).
As to Claim 5, napthenesulfonic acid-formalin (i.e. formaldehyde) condensates are taught. (Ota [0015]).
As to Claim 6, the copolymers with acrylic acids are interpreted as polycarboxylic acids. (Ota [0011]).
As to Claim 7, the “is an electrode coating material for a battery” language is interpreted as an intended use. The discussion accompanying Claim 1 is relied upon.
As to Claim 9, the parts/percentages are taught. (Ota [0020]).
As to Claim 11, napthenesulfonic acid-formalin (i.e. formaldehyde) condensates are taught. (Ota [0015]).
As to Claim 12, the copolymers with acrylic acids are interpreted as polycarboxylic acids. (Ota [0011]).
As to Claim 13, the “is an electrode coating material for a battery” language is interpreted as an intended use. The discussion accompanying Claim 1 is relied upon.
Allowable Subject Matter
I. Dependent upon a rejected base claim.
Pending resolution of the indefiniteness issues noted above, Claims 4 and 10 would be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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