DETAILED ACTION
Summary
This is the initial Office Action based on the Composite, Layer Including the Composite, and Module Including the Layer filed September 5, 2024.
Claims 1-8 are currently pending.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 18/696,561 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in instant claims 1-3 are recited in claims 1 and 5 of copending Application No. 18/696,561.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18/840,818 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in instant claims 1-3 are recited in claims 1 and 4 of copending Application No. 18/840,818.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 8 is 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 8 recites the limitation "the first layer" on line 4-5. There is insufficient antecedent basis for this limitation in the claim.
It is unclear if “the first layer” recited on line 4-5 of claim 8 is referring to “the layer” recited on line 1 of claim 8 or if “the first layer” recited on line 4-5 of claim 8 is referring to an entirely different first layer altogether.
Amending “the first layer” to “the layer” would overcome the rejection.
Claim 8 recites the limitation "the second main face" on line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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, 4-6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uchida et al. (WO 2018143185 A1).
With regard to claim 1, Uchida et al. discloses a composite comprising:
carbon nanotubes; and a conductive polymer that is different from the carbon nanotubes (see [0027] teaching “conductive polymer compounds, conductive fibers, and composite materials thereof” and teaching the conductive fibers are preferably “carbon nanotubes”).
With regard to claim 4, Uchida et al. discloses wherein
the carbon nanotubes include a single-walled carbon nanotube (see [0027]).
With regard to claim 5, Uchida et al. discloses wherein
the carbon nanotubes and the conductive polymer aggregate (as disclosed in [0027], the cited carbon nanotubes and the cited conductive polymer are cited to read on the claimed “aggregate” because they form a “composite material” in a thermoelectric conversion element).
With regard to claim 6, Uchida et al. discloses a layer comprising
the composite according to claim 1 (recall rejection of claim 1 above, and see Fig. 1 depicting layer 2).
With regard to claim 8, Uchida et al. discloses a module including
the layer according to claim 6 (recall rejection of claim 6 above), the module comprising:
a substrate including a first main face on which the layer is located (as depicted in Fig. 1, a substrate 11 including a first main face/top surface on which the cited layer 2 is located);
a second layer on the first main face and in contact with the first layer (as depicted in Fig. 1, a second layer 1 on the cited first main face/top surface and in contact with a first layer/cited layer 2);
a first electrode on the first main face and electrically connected to the first layer (as depicted in Fig. 1, a first electrode 3 on the cited first main face/top surface and electrically connected to the cited first layer 2; see [0032] teaching junction 3 of metal material);
a second electrode on the first main face and electrically connected to the second layer (as depicted in Fig. 1, a second electrode 3 on the cited first main face/top surface and electrically connected to the cited second layer 1; see [0032] teaching junction 3 of metal material); and
a sheet member in contact with the second main face (as depicted in Fig. 1, a sheet member 4/6 in contact with a second main face/bottom surface of substrate 11).
Claim(s) 1-3, 6, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kano (WO 2015/008727 A1).
With regard to claims 1-3, 6, and 7, Kano discloses a layer comprising a composite comprising:
carbon nanotubes; and a conductive polymer that is different from the carbon nanotubes (see Kano teaching “The thermoelectric conversion layer may contain…both of the carbon nanotubes and the conductive polymer”; see Kano teaching conductive polymer may be “poly-(3,4-ethylenedioxythiophene)”), wherein
the layer has a porous structure (see Kano teaching inclusion of hollow particles provides for “a porous thermoelectric conversion layer is formed”), and wherein
the carbon nanotubes are bonded to each other via the conductive polymer (ass Kano teaching a thermoelectric conversion layer including “both of the carbon nanotubes and the conductive polymer” and hollow particles which is cited to read on the claimed “the carbon nanotubes are bonded to each other via the conductive polymer” because the cited carbon nanotubes are physically bonded to each other via the cited conductive polymer in the composite material of the thermoelectric conversion layer).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUSTIN Q DAM whose telephone number is (571)270-5120. The examiner can normally be reached Monday through Friday, 6:00 AM to 2:00 PM.
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/DUSTIN Q DAM/Primary Examiner, Art Unit 1721 September 3, 2025