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
Upon entry of the amendment filed on 31 December 2025, Claim(s) 1, 10, 13 and 14 is/are amended; Claim(s) 13-19 is/are withdrawn; Claim(s) 21-24 is/are added and Claim(s) 7, 8, 12 and 20 is/are cancelled. The currently pending claims are Claims 1-6,9-11,13-19 and 21-24.
Based on applicants’ remarks and amendments (e.g. the specific bromide to chloride molar ratio), the 112, 102 and 103 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-11, in the reply filed on 31 December 2025 is acknowledged. The traversal is on the ground(s) that there is a lack of undue burden. This is not found persuasive because Groups I-IV are directed to specific inventions (i.e. different process, nanomaterial and film) that require differing search strategies and databases (class/subclass) and/or the search for a particular invention would not necessarily lead to the same and overlapping prior art for the supplementary invention - thus leading to an undue burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
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) 1-3, 5, 6, 10 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Hu (US-20190172600-A1), Yamauchi (US-20240066596-A1) or Wang (NPL provided).
Claims 1-3 and 21: Li discloses a composition with silver nanowires at least partially coated with hydroxyethyl cellulose HEC and the chloride/bromide ions at various ratios (abs, pg. 2-4, Figs 1, 3, 4 and 8 with accompanying text). The Li reference discloses the claimed invention but does not explicitly disclose the claimed chloride to bromide ratio/range. It is noted that the Li 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 Yamauchi, Hu or Wang reference discloses that optimizing the amount 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 (Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text). One of ordinary skill in the art would have recognized that applying the known technique of Yamauchi, Hu or Wang to the teachings of Li 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 the 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 welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 5-6: Li and Yamauchi, Hu or Wang disclose converting silver nitrate and the reducing agent feature (Li: pg. 2, 3, 5-6, 8 and Figs 1, 3, 4 and 8 with accompanying text, Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text).
Claim 10: Li and Yamauchi, Hu or Wang disclose various diameters and lengths such as 40 nm and 120 microns respectively (Li: abs, Figs 1, 3, 4 and 8 with accompanying text, Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text).
Claim(s) 1-2, 5, 6, 10 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko in view of Hu (US-20190172600-A1), Yamauchi (US-20240066596-A1) or Wang (NPL provided).
Claims 1-2 and 21: 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 Yamauchi, Hu or Wang 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 (Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text). One of ordinary skill in the art would have recognized that applying the known technique of Yamauchi, Hu or Wang 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 the 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 welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 5-6: Nusko and Yamauchi, Hu or Wang 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, Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text).
Claim 10: Nusko and Yamauchi, Hu or Wang disclose various diameters and lengths such as 40 nm and 120 microns respectively (Nusko: abs, Figs 1, 3, 4 and 8 with accompanying text, Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text).
Claim(s) 1-2, 4-6, 10 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Hu (US-20190172600-A1), Yamauchi (US-20240066596-A1) or Wang (NPL provided).
Claims 1-2, 4 and 21: Sato discloses a composition with silver nanowires at least partially coated with a cellulose such as HEMC having a MW of 100-200K (abs, ¶14-30, examples and Fig 1 with accompanying text). The Sato reference discloses the claimed invention but does not explicitly disclose the feature of the chloride to bromide ratio. It is noted that the Sato 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 Yamauchi, Hu or Wang 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 (Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text). One of ordinary skill in the art would have recognized that applying the known technique of Yamauchi, Hu or Wang to the teachings of Sato 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 the 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 welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
Claims 5-6: Sato and Yamauchi, Hu or Wang disclose converting silver nitrate and the reducing agent feature (Sato: abs, ¶4, 14-30 and examples, Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text).
Claim 10: Sato and Yamauchi, Hu or Wang disclose various diameters and lengths such as 50 nm and 10 microns respectively (Sato: abs, ¶4, 43-46 and examples, Yamauchi: abs, ¶7, 59-77, Fig 2 with accompanying text; Hu: abs, ¶4-7, 58, 76-88 and examples or Wang: abs, pg. 3-7, Figs 1-4 and Scheme 2 with accompanying text).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko or Sato.
Nusko discloses a composition with silver nanowires at least partially coated with a cellulose such as hydroxypropyl cellulose and nitrocellulose and a diameter range of 1-900 nm and an aspect ratio greater than 5 (abs, ¶5-8, 14-17, 84, 93, 121-128 and Fig 1 with accompanying text). Similarly, Sato discloses a composition with silver nanowires at least partially coated with a cellulose such as HEMC having a MW of 100-200K, a diameter of less than 50 nm and a length greater than 10 microns (abs, ¶14-30, 43-46, examples and Fig 1 with accompanying text). The Nusko or Sato reference discloses the claimed invention but does not explicitly disclose the claimed sizes. Given that the Nusko or Sato reference discloses diameter and length ranges that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught sizes, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the length and diameter variables with the benefit gain of enhancing the conductivity, optical and dispersibility parameters. Further, obviousness only requires a reasonable expectation of success and there is no evidence nor teaching that the selection or optimization of the claimed silver nanomaterial would be repugnant to a skilled artisan.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko or Sato in view of Yamauchi, Hu or Wang as applied to claim 1 above, and further in view of El-Sheikh (NPL provided).
The Nusko or Sato reference discloses 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 or Sato reference discloses 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 or Sato 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 Sato, Li or Nusko in view of Yamauchi, Hu or Wang as applied to claim 1 above, and further in view of Zhang (NPL) or Wiley (NPL).
The Sato, Li or Nusko and Yamauchi, Hu or Wang 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 Sato, Li or Nusko and Yamauchi, Hu or Wang 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 Zhang reference discloses that silver nanomaterial having various structural forms such as nanowires, nanocubes, bipyramids and/or faceted is well known (abs, Figs 1-3 with accompanying text). Similarly, Wiley discloses the bipyramid or faceted morphology is well known (abs, Figs 1-3 with accompanying text). One of ordinary skill in the art would have recognized that substituting the known morphologies of Zhang or Wiley to the teachings of Sato, Li or Nusko and Yamauchi, Hu or Wang 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.
Claim(s) 23 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nusko or Sato as applied to claim 22 above, and further in view of El-Sheikh (NPL provided).
The Nusko or Sato reference discloses the claimed invention but does not explicitly disclose the feature of the hydroxyethyl cellulose component. It is noted that the Nusko or Sato reference discloses cellulose and the claim(s) call(s) for a hydroxyethyl cellulose. 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 or Sato 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.
Response to Arguments
Applicant’s arguments, see pg. 5-12, filed 31 December 2025, with respect to the chloride to bromide ratio have been fully considered and are persuasive. The 112, 102 and 103 rejections have been withdrawn; however, it is noted that the newly-added limitations have been rejected based on the combination with the newly-provided Yamauchi, Hu or Wang reference (see above).
Applicant's arguments filed 31 December 2025 regarding the stabilization property of the cellulose have been fully considered but they are not persuasive. In particular it is noted that, if a prior art reference teaches the 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 welcomed to provide any evidence that the disclosed material is exceedingly different from the claimed material - thus the claimed properties would inevitably not be present.
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.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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