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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 May 2026 has been entered.
Response to Amendment
Upon entry of the amendment filed on 29 May 2026, Claim(s) 1, 21 and 22 is/are amended; Claim(s) 13-17 and 19 is/are withdrawn; Claim(s) 25 is/are added and Claim(s) 7, 8, 12 and 20 is/are cancelled. The currently pending claims are Claims 1-6,9-11,13-17,19 and 21-25.
Based on applicants’ remarks and amendments (e.g. the loading amount of the PVP component), the 103 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 5, 6, 10 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko in view of Alsayed (US-20140178246-A1).
Claims 1-2, 21-23 and 25: Nusko discloses a composition with silver nanowires at least partially coated with a cellulose such as hydroxypropyl cellulose and nitrocellulose (abs, ¶5-8, 14-17, 84, 93, 121-128 and Fig 1 with accompanying text). The Nusko reference discloses the claimed invention but does not explicitly disclose the claimed chloride to bromide ratio/range. It is noted that the Nusko reference discloses the presence of bromide and chloride and the claim(s) call(s) for various loading molar ratios for bromide and chloride. In an analogous art, the Alsayed reference discloses that optimizing the amounts and concentration of bromide and chloride within the claimed amounts is well known in the art to gain the benefit of enhancing the structural configurations of the silver nanomaterial (abs, ¶62-72). One of ordinary skill in the art would have recognized that applying the known technique of Alsayed to the teachings of Nusko 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 enhancing and tuning the desired shape, morphology, dispersibility, conductivity and/or structure of the silver nanomaterial. 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/implementation would be repugnant to a skilled artisan.
Regarding the claimed stabilization property, if a prior art reference teaches a substantially identical material, it would be reasonable that the same function and/or property would be imparted or exhibited. See MPEP 2112.01. Here, the same components are present (i.e. cellulose and silver nanomaterial) thus the same stabilization is expected. Applicant is welcome to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present. It is noted that Nusko and Alsayed disclose a capping agent being PVP or PVA but do not explicitly disclose that the PVP is a required component - thus meeting the claimed loading threshold (Nusko: abs, ¶94-105 and claims & Alsayed: abs and claims).
Claims 5-6: Nusko and Alsayed disclose converting silver nitrate and the reducing agent feature (Nusko: pg. 2, 3, 5-6, 8 and Figs 1, 3, 4 and 8 with accompanying text & Alsayed: ¶61, 67 and 78).
Claim 10: Nusko and Alsayed disclose various diameters and lengths such as 40 nm and 120 microns respectively (Nusko: abs, Figs 1, 3, 4 and 8 with accompanying text & Alsayed: ¶139-141 and examples).
Claim(s) 3, 4 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko and Alsayed as applied to claims above, and further in view of El-Sheikh (NPL provided).
The Nusko and Alsayed references disclose the claimed invention but does not explicitly disclose the feature of the hydroxyethyl cellulose component and the MW of the cellulose. It is noted that the Nusko and Alsayed references disclose cellulose and the claim(s) call(s) for a hydroxyethyl cellulose and a MW range of 10k-20k. In an analogous art, the El-Sheikh reference discloses the claimed hydroxyethyl cellulose in a composition with silver nanomaterial and a MW of 180k is well known (abs, experimental and result sections). One of ordinary skill in the art would have recognized that applying the known technique of El-Sheikh to the teachings of Nusko and Alsayed 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 enhancing the dispersion, viscosity and structural parameters of the composition. 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 would be repugnant to a skilled artisan.
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko and Alsayed as applied to claim 1 above, and further in view of Bhatia (US-20110048170-A1).
The Nusko and Alsayed references disclose the claimed invention but do not explicitly disclose the feature of the silver nanomaterial having a bipyramid, cubic and/or faceted form. It is noted that the Nusko and Alsayed references disclose the silver nanomaterial having a nanowire structure and the claim(s) call(s) for a bipyramid, cubic and/or faceted form. In an analogous art, the Bhatia reference discloses that silver nanomaterial having various structural forms such as nanowires, nanocubes, bipyramids and/or faceted is well known (abs, ¶5, 41, 81). Bhatia discloses various capping agents such as PVP, polyacrylamide and PA but does not require PVP (¶58). One of ordinary skill in the art would have recognized that substituting the known morphologies of Bhatia to the teachings of Nusko and Alsayed 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 optimizing the opto-electric parameters desired in the composition. 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 would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 7-20, filed 29 May 2026, with respect to the obviousness rejections as presented in the final office action have been fully considered and are persuasive. All the rejections as presented in the final office action have been withdrawn.
Applicant's arguments filed 29 May 2026 regarding the Nusko reference have been fully considered but they are not persuasive:
Applicant agrees that Nusko discloses the capping agent being either PVP or PVA; however, applicant argues that it would not have been obvious to a skilled artisan to select PVA instead of PVP since all the examples recite PVP (pg. 9-11).
The examiner respectfully notes that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 169 USPQ 423, 426 (CCPA 1971). In the instant case, Nusko discloses both PVP and PVA and does not require PVP – thus meeting the claimed absence of the PVP component.
Applicant argues that the El-Sheikh reference does not teach the claimed silver structure (pg. 17).
The examiner respectfully notes that, while the El-Sheikh reference does not disclose all the features of the present claimed invention, it is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224,226 (CCPA 1973), In re Keller 624 F.2d 413,208 USPQ 871, 88 1 (CCPA 198 1). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention. Specifically, the El-Sheikh reference is relied upon to teach the feature of hydroxyethyl cellulose stabilizing agent having the claimed MW is known in the art, thus it would be obvious to a skilled artisan that applying the known technique of El-Sheikh to the teachings of Nusko and Alsayed 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 enhancing the dispersion, viscosity and structural parameters of the composition.
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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