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 .
Continuing Data
This application is continuation of copending U.S. Patent Application No. 18/382,630 filed October 23, 2023 to Li et al., now U.S. Patent 12,227,661, entitled “Metal Nanowire Ink for the Formation of Transparent Conductive Films With Fused Networks”, which is a continuation of corresponding U.S. Patent Application No. 17/988,885 filed November 17, 2022 to Li et al., now U.S. Patent No. 11,814,531 B2, entitled “Metal Nanowire Ink for the Formation of Transparent Conductive Films with Fused Networks,” which is a continuation of corresponding 16/952,372, now U.S. Patent No. 11,512,215 B2, filed November 19, 2020 to Li et al., entitled “Metal Nanowire Ink and Method for Forming Conductive Film,” which is a continuation of U.S. patent application 16/127,462 filed September 11, 2018 to Li et al., now U.S. Patent No. 10,870,772 B2, entitled "Transparent Conductive Films with Fused Networks,” which is a continuation of U.S. patent application 15/247,533 filed on August 25, 2016 to Li et al., now U.S. Patent No. 10,100,213 B2, entitled "Metal Nanowire Inks for the Formation of Transparent Conductive Films with Fused Networks,” which is a continuation of U.S. patent application 14/848,697 filed on September 9, 2015 to Li et al., now U.S. Patent No. 9,447,301 B2, entitled “Metal Nanowire Inks for the Formation of Transparent Conductive Films with Fused Networks”, which is a continuation of U.S. patent application 14/464,332 filed on August 20, 2014 to Li et al., now U.S. Patent No. 9,150,746 B1, entitled "Metal Nanowire Inks for the Formation of Transparent Conductive Films With Fused Networks," which is a continuation of U.S. patent application 14/448,504 filed on July 31, 2014 to Li et al., now U.S. Patent No. 9,183,968 B1, entitled "Metal Nanowire Inks for the Formation of Transparent Conductive Films with Fused Networks".
Applicant should update the CON data at page 1 of the instant specification to reflect the above current data.
Claims 1-17 are pending.
Drawings
The Drawings filed 01/17/25 are approved by the examiner.
Information Disclosure Statement
The IDS statement(s)filed 01/24/25 (2) has been considered. An initialed copy accompanies this action.
Claim Interpretation
The examiner construes the claim terminology “metal ions” to include both ions present as metal salts and those present as free metal ions in solution. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).
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 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,814,531 (parent application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘531 are directed to metal nanowire aqueous ink compositions comprising metal (e.g. Ag, Pd) nanowires, metal ions, and hydrophilic polymer. The metal nanowire and polymer ranges disclosed in the issued patent are identical to those instantly claimed, and the range of metal ions overlaps with the instant amount(s). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The issued claims additionally require the presence of fluoride ions which are not excluded by the instant claim terminology.
Claims 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-23 of U.S. Patent No. 11,512,215 (parent application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘531 are directed to metal nanowire aqueous ink compositions comprising metal (e.g. Ag, Pd) nanowires, metal ions, and hydrophilic polymer. The metal nanowire, metal ions, and polymer ranges disclosed in the issued patent are identical to those instantly claimed. The instant claims are merely broader in scope (i.e. fully encompass) than the issued claims in reciting “hydrophilic polymer” as opposed to “polyol binder comprising functional groups”.
Claims 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,447,301 (parent application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘531 are directed to metal nanowire aqueous ink compositions comprising metal (e.g. Ag, Pd) nanowires, metal ions, and hydrophilic polymer. The metal nanowire and polymer ranges disclosed in the issued patent are identical to those instantly claimed, and the range of metal ions overlaps with the instant amount(s). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The instant claims are merely broader in scope (i.e. fully encompass) the issued claims in reciting “metal ions” as opposed to “soluble metal ions”.
Claims 1-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,150,746 (parent application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of US ‘531 are directed to metal nanowire aqueous ink compositions comprising metal (e.g. Ag, Pd) nanowires, metal ions, and hydrophilic polymer. The metal nanowire, metal ions, and polymer ranges disclosed in the issued patent are identical to those instantly claimed. The instant claims are merely broader in scope (i.e. fully encompass) than the issued claims in failing to require the presence of ethanol in the composition.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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) 1-6, 8, 9, 11-13, 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Allemand et al US 2011/0024159 A1.
Allemand et al US 2011/0024159 A1 discloses conductive films having low levels of silver complex ions (Abstract). The reference discloses the use of an ink, which may be aqueous (0035; 0116), comprising 0.05-1.4 wt% nanowires (Ag, Pd)(0030-32; 0110), binder (e.g. cellulose, hydroxy ethyl cellulose, pva)(0038-0039), wherein the ink compositions may comprise from 0.5 ppm to 2000 ppm (i.e. 0.00005-0.2 wt%) silver ions (0052; 0069; 0071; claim 2).
Although the reference does not disclose the claimed composition with sufficient specificity to constitute anticipation, the reference clearly teaches overlapping amounts of the instant claimed components. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). With respect to dependent claim 15, the reference teaches possible mixtures of H2O and alcohol (0110), and the examiner submits that determination of the appropriate ratio is well within the purview of the skilled artisan. With respect to dependent claim 16, the reference teaches the addition of surfactants (0036). With respect to dependent claim 17, it appears that the claimed property is the result of rheology modifier addition, which the above reference teaches (instant PGPUB 0050). Accordingly, the examiner submits that such would inherently occur in the prior art inks disclosed above.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Allowable Subject Matter
Instant claims 7, 10 and 14 are allowable over the prior art. The above reference does not disclose or fairly suggest the required components or modifications thereto.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p 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 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
April 23, 2026
Prosecution Insights