DETAILED ACTION
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 24 March 2026, Claim(s) 1 and 3 is/are amended and Claim(s) 2 and 4-7 is/are cancelled. The currently pending claims are Claims 1,3 and 8-14.
Based on applicants’ remarks and amendments (e.g. the specific anionic surfactant), the 102 and 103 rejections are withdrawn. However, new grounds of rejections are provided necessitated by the amendments.
Citation Notation
The following citations are made for the convenience of the reader:
Citations to PG publications are made to paragraph number under the ¶ format. Citations to other publications made under the format “ col 1/2” or pp 1 are directed to column and line number or to a page - whichever is appropriate. It is noted that any reference to a figure or a table is also directed to any accompanying text in the specification or the document. Notwithstanding those citations, the reference(s) is (are) relied upon for the teachings as a whole.
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.
Claims 1,3 and 8-14 are 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.
Regarding claim 1, the phrase "phosphate ester-type" renders the claim indefinite because it is unclear as to the metes and bounds of the claimed “type” limitation. It is noted that the specification recites the phrase "phosphate ester-type" accompanied by various examples; however, no definition is provided to explicitly describe the claimed "phosphate ester-type" limitation. Claims 3 and 8-14 are dependent on claim 1 thus inherit the same deficiency.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3, 8, 9, 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noda (JP-2020189770-A, a translation is provided).
Claims 1, 3 and 14: Noda discloses a carbon nanotube dispersion with a phosphate ester anionic surfactant and a binder (abs, pg. 4, 13 and Tables 1-4 with accompanying text). Noda disclose the conductive material (pg. 1, 2 and examples). The Noda reference discloses the claimed invention with the feature of phosphate ester anionic surfactant but does not disclose the composition with the claimed feature with enough specificity to anticipate the claimed invention. Nevertheless, given that Noda discloses the phosphate ester anionic surfactant, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught components since Noda teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the phosphate ester anionic surfactant, less obvious. Here, Noda discloses each of the claimed components and is motivated excellent dispersibility and stability and there is no evidence nor teaching that the selection of the claimed components/steps would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 8 and 9: Noda discloses the claimed acrylic and epoxy resin (pg. 17 and examples).
Claims 12 and 13: Noda discloses the claimed loading for the CNTs, dispersant and binder (Tables 1-4 with accompanying text).
Claim(s) 1, 3, 8, 9 and 11-14 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Izumiya (WO-2022102727-A1, the US English equivalent US-20230307642-A1 is recited) in view of Abe.
Claims 1 and 3: Izumiya discloses a carbon nanotube dispersion with an anionic surfactant dispersant and a polymeric binder (abs, ¶53-63, 84, 112 and Tables 1-13 with accompanying text). The Izumiya reference discloses the claimed invention but does not explicitly disclose the polyether phosphate ester anionic surfactant. It is noted that the Izumiya reference discloses anionic surfactants and the claim(s) call(s) for a specific polyether phosphate ester anionic surfactant. In an analogous art, the Abe reference discloses that polyether phosphate ester as dispersant for composition comprising carbon nanotubes and a binder is well known in the art (¶ 16-20, 33, 47, 61). One of ordinary skill in the art would have recognized that applying the known component of Abe to the teachings of Izumiya 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 and compositions for the benefit gain of enhanced stability. 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 and/or optimization would be repugnant to a skilled artisan.
Claims 8, 9, 11-14: Izumiya and Abe disclose SWCNTs, epoxy, acrylic resin, various loading amounts of the CNTs/binder components and the resulting conductive material (Izumiya: ¶2-6, 53-56, 63, 84, examples and Tables 1-13 with accompanying text).
Claim(s) 1, 3, 8, 9, 11-14 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Sakurai (JP2019189858A, cited in the IDS and the ISR) in view of Abe
Claims 1, 3, 8-9: Sakurai discloses a carbon nanotube dispersion with an anionic dispersant such and a polymeric binder such as an acrylic resin (abs, ¶108-124 and examples and tables 1 and 2 with accompanying text). The Sakurai reference discloses the claimed invention but does not explicitly disclose the polyether phosphate ester anionic surfactant and the SWCNTs. It is noted that the Izu Sakurai reference discloses anionic surfactants and CNTs and the claim(s) call(s) for a specific polyether phosphate ester anionic surfactant and SWCNTs. In an analogous art, the Abe reference discloses that polyether phosphate ester as dispersant for composition comprising single walled carbon nanotubes and a binder is well known in the art (¶ 16-20, 33, 47, 61). One of ordinary skill in the art would have recognized that applying the known components of Abe to the teachings of Sakurai 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 and compositions for the benefit gain of enhanced stability. 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 and/or optimization would be repugnant to a skilled artisan.
Claims 11-14: Sakurai and Abe discloses SWCNTs, various loading amounts of the CNTs/binder components and the resulting conductive material (Sakurai: examples and Tables 1-2 with accompanying text).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noda OR Izumiya or Sakurai in view of Abe as applied to claim 1 above, and further in view of Ube (JP2014-19619A, cited in the IDS) or Kim (US-20240287230-A1).
The Noda, Izumiya or Sakurai and Abe references disclose the claimed invention but do not explicitly disclose the polyvinyl ether binder component. It is noted that the Noda, Izumiya or Sakurai and Abe references disclose employing known binder and the claim(s) call(s) for a specific polyvinyl ether binder. In an analogous art, the Ube or Kim reference discloses that dispersions with carbon nanotubes and a polyvinyl ether binder is well known in the art (Ube: abs, ¶43-65 & Kim: ¶72-78). One of ordinary skill in the art would have recognized that applying the known component of Ube or Kim to the teachings of Noda, Izumiya or Sakurai and Abe 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 and compositions for the benefit gain of enhanced dispersion stability and non-aggregation. 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 and/or optimization would be repugnant to a skilled artisan.
Response to Arguments
Applicant’s arguments, see pg. 5, filed 24 March 2026, with respect to the anticipation rejections have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments filed 24 March 2026 regarding the combination of Izumiya or Sakurai and Abe have been fully considered but they are not persuasive.
Applicant argues that Abe does not disclose the phosphate ester anionic surfactant (pg. 5-7).
The examiner respectfully disagrees and notes that Abe recites “[…] dispersant is not particularly limited as long as the effect as a dispersant is exhibited, but examples thereof include […] a phosphate ester-based compound, a polyether phosphate ester-based compound” in ¶61.
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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