DETAILED ACTION
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 .
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.
Claims 1-5 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.
The term “fine” in claim 1 is a relative term which renders the claim indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Here, an artisan is not reasonably apprised of infringement based on the particle size produced by the step of dispersion treatment by the high-pressure homogenizer has been rendered indefinite by the use of the term “fine”.
The term “substantially” in claim 4 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Here, an artisan is not reasonably apprised of infringement based on the content of water in the liquid medium that has been rendered indefinite by the term “substantially”.
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.
Claim(s) 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Rudhardt et al (US 2013/0200310 submitted in the IDS filed 4/1/2024).
Rudhardt teaches a method for production of dispersions containing carbon nanotubes, the method comprising:
Preparing a mixture of liquid dispersing agent (i.e., solvent), dispersing aid (i.e., dispersant) and carbon nanotubes (i.e., subjecting a raw material comprising: a carbon material comprising a carbon nanotube; a dispersant; and a liquid medium to a stirring treatment to obtain a wetted mixture);
Pre-dispersion of the mixture from step 1 to obtain a pre-dispersed mixture;
Dispersion of the pre-dispersed mixture from step 2 with a high-pressure homogenizer to obtain an initial dispersion;
Further dispersion of the initial dispersion in the high-pressure homogenizer to obtain a final dispersion (see [0020-0025], [0035] and [0036] and Examples).
Rudhardt further teaches where the pre-dispersion, initial dispersion, and final dispersion steps are carried out with a high-pressure homogenizer (see [0041-0042]). Rudhardt further teaches where the high-pressure homogenizer is a jet disperser where jets produced by aperture plates come into contact with one another (i.e., where the high-pressure homogenizer employs a system of allowing the wetted mixtures jetted by pressurization to collide with each other to form fine particles) (see [0043]).
Rudhardt further teaches where the pressures used in the high-pressure homogenizers are from 50 to 4000 bar (i.e., 5 to 400 MPa) (see [0048]).
Rudhardt further teaches that at the beginning nozzles having a diameter greater than the diameter of the largest CNT agglomerates are preferably used in order to prevent blockage, and as the degree of dispersion increases the nozzle diameter is reduced in order to achieve higher pressure losses and lead to higher energy inputs (i.e., where D1>D2 and where the pressure in the later steps is higher) (see [0049]). Rudhardt further teaches that after the CNT-containing mixture is fed into a storage container from the high-pressure homogenizer in steps 2, 3 and 4 the CNT-containing mixture is removed from the storage container again and fed to the high-pressure homogenizer once more (i.e., where the dispersion treatment is performed at least two times) (see [0051-0052]).
Claim 1 therefore differs from Rudhardt where Rudhardt does not specifically teach a method where the first treatment is performed at a pressure of 1 to 100 MPa and the second treatment is performed at a treatment pressure of 120 to 250 MPa. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the pre-dispersion, initial dispersion and final dispersion at a pressure in any overlapping range with 5 to 400 MPa as taught by Rudhardt including where a first dispersion is at 1 to 100 MPa and a second dispersion step is at 120 to 250 MPa as taught by Rudhardt.
Regarding claim 2, Rudhardt teaches a method where the nozzle diameter is in a range of 1.5 mm to 0.6 mm (see [0049]). Rudhardt further teaches examples where the first nozzle diameter is 1.4 mm and second nozzle diameter is 0.75 (see Examples).
Regarding claim 5, Rudhardt teaches a method where the ratio of the dispersing aid to CNTs is from 0.5:1 to 1:1; the content of the dispersing aid is 2 to 10 wt% based on the weight of the final dispersion; the content of the CNT is up to 20 wt% of the final dispersion (see [0039] and [0062]).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudhardt and in further view of Morita et al (US 2023/0187644 and which was effectively filed date of 12/11/2020 based on the foreign priority date and corresponds to JP 686470 submitted in the IDS filed 6/10/2024) and Makita et al (JP-2012214320 where citations are from the machine translation provided by the Office).
Regarding claim 3, Rudhardt teaches a method where the liquid medium is water (see [0035] and Examples); and the dispersant is a cellulose derivative or polymeric dispersing aid (see [0036]). Rudhardt does not teach the viscosity and the degree of etherification of the cellulose derivative or the claimed constituents for polymeric dispersant according to claim 3.
Regarding a viscosity of the cellulose derivative dispersant, Makita teaches a dispersant for carbon nanotubes comprising at least one of a compound expressed by a formula (1) Ar-X-Y-Z and cellulose families free of polycyclic aromatic hydrocarbon group (see Abstract). Makita further teaches where the cellulose dispersant has a degree of etherification of 0.4 to 1.6 and a 1% by weight aqueous solution having a viscosity at 25°C of 1 to 2000 mPa-s (see Dispersant, Cellulose having no polycyclic aromatic hydrocarbon group). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Rudhardt where the viscosity of the cellulose derivative is in any workable or optimum range overlapping with 1 to 2000 mPa-s as taught by Makita including the claimed range since Makita teaches a viscosity for a cellulose derivative in a dispersant for carbon nanotubes.
Further regarding a degree of etherification, Morita teaches a method for producing a conductive material dispersion comprising carbon nanotubes, carboxymethyl cellulose (CMC) or its salt as a dispersant, and water in a high-pressure homogenizer (see [0050] and [0066-0070]. Morita further teaches that the CMC has an etherification degree of 0.5 to 0.9 so that the CMC has appropriate affinity with water and CNT (see [0066]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Rudhardt where the dispersant is a cellulose derivative comprising carboxymethylcellulose with an etherification degree of 0.5 to 0.9 to improve the affinity of the dispersant with water and the CNTs and improve dispersing ability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
Prosecution Insights