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 .
Drawings
The Drawings filed 05 April 2024 are approved by the examiner.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 3-7 and 9-11, in the reply filed on 13 February 2026 is acknowledged. The traversal is on the ground(s) that a special technical feature of the specific ink is not taught by the cited reference. This is not found persuasive because the cited reference discloses the special technical feature of an ink/dispersion with metal nanoparticles.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12 and 14-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 13 February 2026.
Response to Amendment
Upon entry of the amendment filed on 13 February 2026, Claim(s) 1, 12 and 21 is/are amended; Claim(s) 12 and 14-21 is/are withdrawn; and Claim(s) 2, 8 and 13 is/are cancelled. The currently pending claims are Claims 1,3-7,9-12 and 14-21.
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(s) 1, 3 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jiang (CN-105542561-A, a translation is provided).
Claims 1 and 3: Jiang discloses an ink comprising metal nanoparticles surface coated with resorcylic or trihydroxybenzoic acid and a solvent (abs, pg. 3 and 5). It is noted that the bonding schematic is met since the same functional groups are present.
Claim 9: Jiang does not require any carbon-based components.
Claim(s) 1, 3, 5, 9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (JP-2009215619-A, a translation is provided).
Claims 1 and 3: Sato discloses an ink comprising metal nanoparticles surface coated/capped with gallic acid and a solvent (abs, pg. 3 and examples).
Claims 5 and 11: Sato discloses a diameter of 4 to 15 nm and various loading amounts such as about 36 % wt. (pg. 4 and examples).
Claim 9: Jiang does not require any carbon-based components.
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.
Claim(s) 1, 3-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cao (WO-2019114829-A1, a translation is provided).
Claims 1, 3, 4 and 6-7: Cao discloses a coating dispersion comprising a nickel quantum dot, 4-hydroxybenazoic acid and propylene glycol monobutyl ether (abs, pg. 4, 6-8, 10-13 and examples). The Cao reference discloses the claimed invention with the nickel quantum dot, 4-hydroxybenazoic acid and propylene glycol monobutyl ether components but does not disclose the composition with the claimed components with enough specificity to anticipate the claimed invention. Nevertheless, given that Cao discloses the nickel quantum dot, 4-hydroxybenazoic acid and propylene glycol monobutyl ether components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Cao teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the nickel quantum dot, 4-hydroxybenazoic acid and propylene glycol monobutyl ether components, less obvious. Here, Cao discloses each of the claimed components and is motivated to achieve the benefit gain of outstanding performance, dispersibility and flexibility and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 5: Cao discloses quantum dots which typically have diameter range of 2-10 nm.
Claim 9: Cao does not require any carbon-based components.
Claims 10 and 11: The Cao reference discloses the claimed invention but does not explicitly disclose the claimed loading and viscosity ranges. It is noted that the claimed loading and viscosity is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Cao reference discloses a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the loading amounts and the viscosity, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Here, Cao is motivated to adjust the viscosity and amounts (pg. 2 and examples). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. loading amounts and viscosity, since the reference also discloses a similar ink. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim(s) 1, 3-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (JP-2011038128-A, a translation is provided).
Claims 1, 3, 4 and 6-7: Sasaki discloses an ink comprising nickel nanoparticles coated with 4-hydroxybenazoic acid and propylene glycol monobutyl ether (abs, pg. 1, 5-9, 11 and examples). The Sasaki reference discloses the claimed invention with the nickel nanoparticles, 4-hydroxybenazoic acid and propylene glycol monobutyl ether components but does not disclose the composition with the claimed components with enough specificity to anticipate the claimed invention. Nevertheless, given that Sasaki discloses the nickel nanoparticles, 4-hydroxybenazoic acid and propylene glycol monobutyl ether components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Sasaki teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the nickel nanoparticles, 4-hydroxybenazoic acid and propylene glycol monobutyl ether components, less obvious. Here, Sasaki discloses each of the claimed components and is motivated to achieve the benefit gain of outstanding performance, dispersibility and flexibility and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 5, 10 and 11: The Sasaki reference discloses the claimed invention but does not explicitly disclose the claimed diameter, loading and viscosity ranges. It is noted that the claimed diameter, loading and viscosity is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Sasaki reference discloses a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the diameter, loading amounts and the viscosity, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. For example, Sasaki discloses a diameter range of 1-100 nm (pg. 1). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. diameter, loading amounts and viscosity, since the reference also discloses a similar ink. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim 9: Sasaki does not require any carbon-based components.
Claim(s) 1, 3-5 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park (US-20080003363-A1).
Claims 1, 3 and 4: Park discloses an ink comprising nickel nanoparticles coated with salicyclic or benzoic acid and a solvent (abs, ¶32-49, 64-67 and examples). The Park reference discloses the claimed invention with the nickel nanoparticles and salicyclic or benzoic acid components but does not disclose the composition with the claimed components with enough specificity to anticipate the claimed invention. Nevertheless, given that Park discloses the nickel nanoparticles and salicyclic or benzoic acid components, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Park teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the nickel nanoparticles and salicyclic or benzoic acid components, less obvious. Here, Park discloses each of the claimed components and is motivated to achieve the benefit gain of outstanding performance, dispersibility and flexibility and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claim 5: Park discloses a diameter range of 3-8 nm (¶36).
Claim 9: Park does not require any carbon-based components.
Claims 10 and 11: The Park reference discloses the claimed invention but does not explicitly disclose the claimed loading and viscosity ranges. It is noted that the claimed loading and viscosity is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Park reference discloses a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the loading amounts and the viscosity, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. For example, Park discloses a loading range of 0.01-80 % wt. (¶41) and is motivated to adjust the viscosity (¶41-49). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. loading amounts and viscosity, since the reference also discloses a similar ink. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim(s) 1, 3, 5, 6 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaneda (US-20110253949-A1).
Claims 1, 3 and 6: Kaneda discloses an ink comprising metallic nanoparticles coated with p-hydroxybenzoic acid and a solvent (abs, ¶24-35, 42, 62-67 and examples). The Kaneda reference discloses the claimed invention with p-hydroxybenzoic acid but does not disclose the composition with the claimed components with enough specificity to anticipate the claimed invention. Nevertheless, given that Kaneda discloses the p-hydroxybenzoic acid, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Kaneda teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the p-hydroxybenzoic acid, less obvious. Here, Kaneda discloses each of the claimed components and is motivated to achieve the benefit gain of outstanding performance, dispersibility and flexibility and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 5 and 11: Kaneda discloses a diameter range of 5-100 nm (¶14, 23, 55). In particular, example 14 recites 20 nm and a loading amount of 94.3 g of silver nanoparticles.
Claim 9: Kaneda does not require any carbon-based components.
Claim 10: The Kaneda reference discloses the claimed invention but does not explicitly disclose the claimed viscosity range. It is noted that the claimed viscosity is construed as a result-effective variable, i.e., a variable which achieves a recognized result. Given that the Kaneda reference discloses a similar composition, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization such as varying the viscosity, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. viscosity, since the reference also discloses a similar ink. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed components would be repugnant to a skilled artisan.
Claim(s) 10 and 11 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Sato, Sasaki or Park as applied to claim 1 above, and further in view of Park 737 (WO-2014104737-A1, a translation is provided).
NOTE: this rejection is provided for compact prosecution.
The Sato, Sasaki or Park reference discloses the claimed invention but does not explicitly disclose the claimed viscosity and/or loading amounts. It is noted that the Sato, Sasaki or Park reference discloses an ink with all the components and the claim(s) call(s) for specific loading amounts and viscosities. In an analogous art, the Park 737 reference discloses that inks with the claimed loading amounts and viscosity ranges are well known in the art to gain the benefit of enhanced conductivity, stability and coatability (abs, see sections on metal nanoparticles, examples and claims). One of ordinary skill in the art would have recognized that applying the known technique of Park 737 to the teachings of Sato, Sasaki or Park would have yielded predictable results because the level of ordinary skill in the art demonstrated by the cited references shows the ability to apply such features into similar systems, methods and compositions for the benefit gain of enhanced conductivity, stability and coatability. See MPEP 2143. Further, it is noted that obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the substitution and/or optimization would be repugnant to a skilled artisan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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