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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in JP on 08/18/2023. It is noted, however, that applicant has not filed a certified copy of the JP application as required by 37 CFR 1.55. An attempt was made to electronically retrieve the priority document on 01/18/2025 but it failed.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/04/2024 and 03/17/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17, in the reply filed on 11/25/2025 is acknowledged.
Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/25/2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR101791645B1), herein Song.
The Examiner has provided a machine translation of (KR101791645B1). The citation of the prior art in this rejection refers to the machine translation.
In regards to claims 1-2, Song teaches a nonwoven fabric comprising: a fibrous layer made of nonmetal fiber and formed in the form of a glove; and a coating layer formed on an end portion of at least one of the fingers on a palm side surface of the fibrous layer [0009]. The coating layer comprises a conductive material and a polyurethane binder [0009]. Song teaches the conductive material is Ketjen black [0010].
Song does not expressly the primary particle size, the BET specific area nor the DBP oil absorption ranges. It is noted that Ketjen black is taught by the Instant Spec as being a conductive carbon black satisfying the primary particle size, the BET specific surface area, and the DBP oil absorption described above is commercially available [Instant Spec 0023]. Thus, the ranges are deemed met.
Song does not expressly the coating is porous but the coating is formed by substantially similar materials, polyurethane and Ketjen black, and process a wet coagulating process, that the coating is expected to be porous, see In re Best [0012].
Song differs from claim 1 by teaching Ketjen black in a list of possible conductive materials, such that it cannot be said that the Ketjen black is anticipated.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any of the conductive materials taught by Song, including Ketjen black. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
In regards to claim 2, Claim 2 defines the product by how the product was made. Thus, claim 2 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a porous conductive coating of Ketjen black and polyurethane. The reference suggests such a product. Additionally, Song teaches the coating is formed via a wet coagulating process [0012, 0054].
In regards to claims 9-10, Song teaches the surface resistivity is 1.0 x 105 to 1.0 x 106 ohm / sq [0012].
Claims 3-16 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR101791645B1), herein Song, as applied to claims 1, 2 above, and further in view of Kishihara (US 20220396688 A1) [IDS dated 09/04/2024].
In regards to claims 3-4, Song does not teach the polyurethane resin composition comprises 2.0 mass parts or more and 6.0 mass parts or less of the conductive carbon black based on 100 mass parts of a polyurethane resin component.
Kishihara teaches a knitted glove which is superior in terms of touch panel responsiveness [Abstract, claim 8].
Kishihara teaches the carbon used in the glove has a DBP oil absorption of the carbon black is no less than 250 ml/100 g and no greater than 600 ml/100 g [Abstract]. Kishihara further teaches amount of addition of the carbon black with respect to 100 parts by mass of a solid content of the rubber latex/polymer is no less than 0.6 parts by mass and no greater than 9.5 parts by mass [0011, Claim 2]. When the amount of addition of the carbon black thus falls within the above range, the electrical conductivity can be enhanced while maintaining the superior flexibility of the coating film to be formed [0011]. This overlaps the claimed range.
Kishihara differs from the claim by failing to disclose an anticipatory examples or ranges that are sufficiently specific to anticipate the claimed ranges.
However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used modified the amount of carbon black added to the coating layer of Song to be in the overlapping portion of the range taught by Kishihara. One would have been motivated to do so as the electrical conductivity can be enhanced while maintaining the superior flexibility of the coating film for the desired application such as touch panel response. Further, as Kishihara teaches the range is conventionally known one, then one would have had a reasonable expectation of success.
In regards to claims 5-8, Song does not teach the thickness between an inner surface and an outer surface of the glove in a portion where the porous coating layer is formed in the glove body is 0.95 mm or less.
Kishihara further teaches the lower limit of an average thickness of the electrically conductive portion is preferably 0.15 mm. On the other hand, the upper limit of the average thickness of the electrically conductive portion is 0.8 mm [0097]. This range is encompassed by the claimed range.
Kishihara teaches when the average thickness of the electrically conductive portion is less than the lower limit, abrasion resistance of the electrically conductive portion may deteriorate, and/or it may be difficult to secure electrical conductivity. Conversely, when the average thickness of the electrically conductive portion is greater than the upper limit, the flexibility may be lacking, whereby, for example, the operational feeling of the touch panel may deteriorate [0097].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured the conductive coating of Song is within the range taught by Kishihara. One would have been motivated to do so based on the ensuring the abrasion resistance of the electrically conductive portion as well as the operational feeling afforded by the range.
In regards to claims 11-16, Song teaches the surface resistivity is 1.0 x 105 to 1.0 x 106 ohm / sq [0012].
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (KR101791645B1), herein Song, as applied to claim 1 above, and further in view of Nouryon (Ketjenblack EC-300J Product Data Sheet).
In regards to claim 17, Song teaches the conductive material is Ketjen black but does not teach the specific Ketjen black to use.
Nouryon teaches Ketjenblack EC-300J, a pure electroconductive carbon black extremely suitable for antistatic and electroconductive applications and when combined with polymers it can create conductive coatings [Pg. 1]. The DBP is 310-345 ml/ 100g, and the BET is approximately 800 m2/g [Pg. 1]. Nouryon does not expressly teach the particle size, however, the Instant Spec. teaches the particle size for Ketjen Black EC300J is 40 nm [Instant Spec 0024].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used Ketjenblack EC-300J as the conductive carbon black of Song. One would have been motivated to do so as it would have been the simple substitution of Ketjenblack for another to obtain predictable results. Additionally, the motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784