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 .
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.
Claim 1-28 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 19/046856 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to composition containing organic precursor resin, silver particles and reducible metal ions wherein the total metal content would meet the limitations of instant claim 1. The reference reads upon the instant claims in an anticipatory manner.
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 1-28 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.
In Claim 1 it is unclear to the Examiner whether the “total metal weight” includes only the weight of the metal particulates, the metal particulates and the reducible metal composition or the metal particulates and the reducible metal composition after a step of reduction has been completed. For purposes of examination, the limitation is taken as the weight of the metal particulates and the reducible metal composition.
Claims 8 and 9 recites the limitation “the precursor” in line 1 of the respective claims. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim is construed as reciting -- organic precursor --.
Claims 12 and 13 recites the limitation “the precursor” in line 1 of the respective claims. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim is construed as reciting -- organic precursor --.
In Claim 22, it is unclear to the Examiner whether the silver nanowires further limit the silver particles of Claim 1 or are in addition to the metal particulates of Claim 1. For purposes of examination, the nanowires are construed to be in addition to the metal particulates of Claim 1.
Claim 24 recites the limitation “precursor” in line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim is construed as reciting -- organic precursor --.
Claims 27 and 28 recites the limitation “ the precursor” in line 1 of the respective claims. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim is construed as reciting -- organic precursor --.
Claim Rejections - 35 USC § 102 and/or 103
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.
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) 1-5,7,14-17,24,27 and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 2487215 (EP ‘215).
As to Claim 1, EP ‘215 discloses an adhesive composition comprising 3-25 wt % thermosetting resin, 70-90 wt% metal particles which can be silver, 0.3-5 wt% metal precursor (para. 0034,0091) wherein the total metal content would meet the instant claimed limitation.
As to Claims 2-5, examples of silver precursor include silver acetate (para. 0053) at weight percentage discussed above.
As to Claim 7, the composition can further contain a thermosetting resin which is defined as a precursor monomer material (para. 0016) which can be acrylate resin (para. 0019) which the Examiner construes as equivalent to the instant claim limitation.
As to Claims 14-16, the reference disclose the use of bisphenol A epoxy resins which have been cured using anhydride curing agents (para. 0023, 0083).
As to Claim 17, the metal particles can be flake shaped (para. 0017) and can have diameters of 3 to 20 microns (para. 0038).
As to Claim 24, see discussion of Claim 1 above.
As to Claim 27, the prior art composition is thermally curable (para. 0001).
As to Claim 28, the Examiner respectfully submits due to the similarity of the prior art composition and those of the instant claims, the prior art composition would inherently be UV curable.
Claim(s) 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP ‘215.
As to Claims 25 and 26, EP ‘215 discloses the use of a solvent which includes alcohols (para. 0068), however, fails to disclose the wt % of the solvent used in the composition.
As to the difference, it would have been obvious to one of ordinary skill in the art to vary the amounts of solvent in the prior art composition for obvious advantages of improving the rheological properties of the adhesive composition when applying the prior art adhesive.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
As to Claim 8-13, pending resolution of the 112 issues discussed above, none of the prior art discloses the organic resin precursors as required by the claims used in conjunction with the composition of Claim 1 nor is there any teaching, suggestion or motivation as to why to use those specific resins over others in the prior art.
As to Claims 18-21, pending resolution of the 112 issues discussed above ,the prior art discloses silver flake loading levels which are considerably higher than the claimed range and there is no suggestion, teaching or motivation to optimize the prior art composition to the lower loading levels.
As to Claims 6,22 and 23, pending resolution of the 112 issues discussed above, the prior art is silent on utilizing the silver nanowires in conjunction with the composition of Claim 1 nor is a teaching, suggestion or motivation to utilize the silver nanowires to modify the prior art teaching.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAISON P THOMAS whose telephone number is (571)272-8917. The examiner can normally be reached Monday to Friday, 9:00 am-3:30 pm EST.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.P.T/Examiner, Art Unit 1762
/jt/ 3/5/2026
/MARK KOPEC/ Primary Examiner, Art Unit 1762