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 .
Response to Amendment
Applicant’s amendment filed 08 January 2026 is found to be supported at least in Paragraph 22 of the originally filed specification.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, 10-13, 15-16, and 18-20 of U.S. Patent No. 11,393,607 and claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,393,607 in view of Shim et al. (US 2014/0308524). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a transparent conductive film comprising a substrate, a first layer of metal nanowires that are sub-micron wide and have an aspect ratio of greater than one on the surface of the substrate, a second outer layer of CNT’s and a binder in a coverage of about 0.5-5 mg/m2, and the 1st and 2nd layers have a visible light transmission from about 95-100%. This is patentably indistinct of claim 1 of the ‘607 patent which recites a transparent conductive film comprising a substrate, a layer of metal nanowires partially on the surface of the substrate, a conductive layer partially on the metal nanowires of an ink of CNT’s and a binder with a ratio of binder/CNT ranging from 10:1 – 50:1, and a coverage of CNT’s about 3-10 mg/m2, and the metal nanowires and conductive layers have a visible light transmission from about 95-100%
The instant claims and those of the ‘607 patent recite substantially overlapping TCF’s with materials, compositions, and visible light transmissions and the courts have held that where claimed ranges overlap or lie inside of each other a prima facie case of obviousness exists. See MPEP 2144.05. Accordingly, the instant claims are obvious in view of those of the ‘607 patent.
Instant claim 3 recites Ag and Cu nanowires overlapping claim 2 of the ‘607 patent. Instant claim 4 recites nanowire coverage overlapping claim 5 of the ‘607 patent. Instant claim 5 recites a polymer overlapping claim 6 of the ‘607 patent. Instant claim 7 recites an index of refraction overlapping claim 9 of the ‘607 patent. Instant claim 8 recites a viscosity modifier overlapping claim 10 of the ‘607 patent. Instant claim 9 recites nanoparticles and graphene overlapping claim 11 of the ‘607 patent. Instant claim 10 recites a tie layer overlapping claim 12 of the ‘607 patent. Instant claim 11 recites an additive overlapping claim 13 of the ‘607 patent. Instant claim 12 recites a methacrylic copolymer overlapping claim 15 of the ‘607 patent. Instant claim 13 recites a CNT coverage overlapping claim 1 of the ‘607 patent. Instant claim 14 recites a structure overlapping claim 16 of the ‘607 patent. Instant claim 15 recites a sheet resistance not expressly overlapping claim 1 of the ‘607 patent, but is considered to overlap claim 1 of the ‘607 patent as the two claims recite substantially identical materials and a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01. Instant claims 16-17 recite a binder ratio overlapping claims 1 and 18-19 of the ‘607 patent. Instant claim 18 recites a visible light transmission overlapping claims 1 and 20 of the ‘607 patent. Instant claim 19 recites a transparent conductive film comprising a substrate, a first layer of Ag or Cu nanowires on the surface of the substrate, a second outer layer of CNT’s, and the 1st and 2nd layers have a visible light transmission at least about 98% overlapping claims 2 and 18 of the ‘607 patent. Instant claim 20 recites a sheet resistance overlapping claims 1 and 20 using the rationale of instant claim 15 above. Instant claim 21 recites a CNT/binder ratio and overlaps claims 1 and 18 of the ‘607 patent.
Instant claim 6 recites a methacrylic copolymer not expressly overlapping claim 7 of the ‘607 patent. The difference between the claims is the recited methacrylic copolymer. However, Shim teaches a stacked transparent electrode (i.e. a conductive film) comprising a base substrate with a surface coated with a first layer of metal nanowires and where the metal nanowires are coated with a layer of carbon nanotubes (CNT) (abstract; Figure 1). The carbon nanotubes comprise a binder resin (Paragraph 15) and the use of polyacryl-based binder resin for the CNT (Paragraph 65). Shim also teaches a sheet resistance of 500 Ω/sq or less and a transmittance of 85% or more measured at 550 nm (i.e. visible light) (Paragraph 34). As such, this is considered a conventionally known substitution of one binder for another and one would have had a reasonable expectation of success and instant claim 6 is considered obvious in view of claim 7 of the ‘607 patent in view of the teachings of Shim.
Claims 1 and 3-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17, of U.S. Patent No. 12,046,392. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a transparent conductive film comprising a substrate, a first layer of metal nanowires that are sub-micron wide and have an aspect ratio of greater than one on the surface of the substrate, a second outer layer of CNT’s and a binder in a coverage of about 0.5-5 mg/m2, and the 1st and 2nd layers have a visible light transmission from about 95-100%. Claims 1, 6, and 17 of the ‘392 application recite a transparent conductive film comprising a substrate, a first layer of metal nanowires and a solvent on the surface of the substrate, a second outer layer of CNT’s and a binder in a coverage of about 1-10 mg/m2, and the 1st and 2nd layers have a visible light transmission from about 90-100% and the sheet resistance of up to about 100 Ω/sq. The instant claims and those of the ‘392 patent recite substantially overlapping TCF’s with materials, compositions, and visible light transmissions and the courts have held that where claimed ranges overlap or lie inside of each other a prima facie case of obviousness exists. See MPEP 2144.05. Accordingly, the instant claims are obvious in view of those of the ‘392 patent.
Instant claim 3 recites Ag and Cu nanowires overlapping claim 2 of the ‘392 patent. Instant claim 4 recites nanowire coverage overlapping claim 3 of the ‘392 patent. Instant claim 5 recites a polymer overlapping claim 4 of the ‘392 patent. Instant claim 6 recites a methacrylic copolymer overlapping claim 5 of the ‘392 patent. Instant claim 7 recites an index of refraction overlapping claim 7 of the ‘392 patent. Instant claim 8 recites a viscosity modifier overlapping claim 8 of the ‘392 patent. Instant claim 9 recites nanoparticles and graphene overlapping claim 9 of the ‘392 patent. Instant claim 10 recites a tie layer overlapping claim 10 of the ‘392 patent. Instant claim 11 recites an additive overlapping claim 11 of the ‘392 patent. Instant claim 12 recites a methacrylic copolymer overlapping claim 12 of the ‘392 patent. Instant claim 13 recites a CNT coverage overlapping claim 13 of the ‘392 patent. Instant claim 14 recites a structure overlapping claim 14 of the ‘392 patent. Instant claim 15 recites sheet resistance overlapping claim 1 of the ‘392 patent. Instant claims 16-17 recite a binder ratio overlapping claim 15 of the ‘392 patent. Instant claim 18 recites a visible light transmission overlapping claim 16 of the ‘392 patent. Instant claim 19 recites a transparent conductive film comprising a substrate, a first layer of Ag or Cu nanowires on the surface of the substrate, a second outer layer of CNT’s, and the 1st and 2nd layers have a visible light transmission at least about 98% overlapping claim 15 of the ‘392 patent. Instant claim 20 recites a sheet resistance overlapping 15 of the ‘392 patent. Instant claim 21 recites a CNT/binder ratio which overlaps claim 15 of the ‘392 patent.
Allowable Subject Matter
Claims 1 and 3-21 may be placed in condition for allowance if a terminal disclaimer were filed over the ‘607 and ‘392 patents as outlined above.
Response to Arguments
Applicant’s arguments, see remarks p.1, filed 08 January 2026, with respect to 35 USC 112(a) have been fully considered and are persuasive. The rejection of claims 1-20 has been withdrawn. Applicant has removed the new matter.
Applicant’s arguments, see remarks pp. 1-2, filed 08 January 2026, with respect to 35 USC 103 have been fully considered and are persuasive. The rejection of claims 1-2 has been withdrawn. Applicant has amended the claims to recite combinations of coverage and light transmission not recognized by the prior art.
Applicant's arguments filed 08 January 2026 have been fully considered but they are not persuasive. Applicant indicates the Double Patenting rejection will be deferred until allowable subject matter (remarks p.1). This is not persuasive, as outlined above, the instant claims and those of the ‘607 and ‘392 patents are not patentably distinct and therefore the rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784