DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a CON of App. No. 17/474.162 , filed on 09/14/2021, now ABN on 06/18/2025, which is entitled to and claims the benefit of priority of U.S. Provisional App. No. 63/078,476, filed 09/15/2020. The preliminary amendment filed on 03/04/2025 is entered and acknowledged by the Examiner.
3. Claims 1-20 are pending. Claims 1-20 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statement submitted on 04/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 03/04/2025. These drawings are acceptable.
Claim Objections
6. Claim 4 is objected to because of the following informalities: It is suggested that “wherein the filer" be deleted and "wherein the filler" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-20 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 pre-AIA the applicant regards as the invention. Claim 1 recites the limitation "the filler particles" in line 17. There is insufficient antecedent basis for this limitation in the claim. Claims 2-20 being depended on claim 1 are rejected as well.
For the purpose of examination against the prior art, claim 1 is construed to recite “an electrically conductive filler comprising particles” in line 2.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1-7, 9-12, 14, 19-20 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Molly Hladik (US Pub. No. 2013/0288064 A1, hereinafter “Hladik”) in view of Lou et al. (Synthesis of Pyrene-Containing Polymers and Noncovalent Sidewall Functionalization of Multiwalled Carbon Nanotubes, Chem. Mater. 2004, 16, 4005-4011, hereinafter “Lou”), and Amundson et al. (US Pub. No. 2007/0035808 A1, hereinafter “Amundson”).
Regarding claims 1-2: Hladik teaches a method of preparing a carbon nanotube film (Page 1, [0012]), the method comprising: providing a dispersion comprising carbon nanotubes mixed with a multifunctional alcohol said surfactants (Page 1, [0012]; Page 4, Claim 15), wherein the carbon nanotubes being noncovalently bonded to compounds comprising polyaromatic moieties (Page 2, [0016]; Page 4, Claim 9), and forming the dispersion into a film (Page 4, Claim 15), and the film is formed on a substrate.(Page 2, [0023]; Page 5, Claim 16). Hladik teaches the method further comprising heating said film (i.e., read on curing; Page 2, [0024]; Page 5, Claims 20-21). Hladik does not expressly teach i) composition comprising (b) a polymerizable monomer or oligomer and (c) an additive that is represented by Formula I as set forth, and ii) applying an electric field across the wet film to align the filler particles in the wet film at a Z direction perpendicular to a plane of the applied wet film.
Referring to i), however Lou teaches a simple and versatile nondestructive strategy for the noncovalent functionalization of multiwalled carbon nanotubes (MWNTs) by polymers containing pendant pyrene groups. (1-Pyrene)-methyl 2-methyl-2-propenoate (PyMMP) is prepared in high yield and copolymerized with methyl methacrylate (MMA) by a radical initiator. Diblock copolymer (Page 4004, Schemes 1-2, Page 4008, Scheme 3) consisting of this random copolymer and a preformed poly(ethylene-co-butylene) chain is also synthesized (Page 4006, left Col., 2nd para, lines 1-10) with benefit of providing a dispersion composition, wherein the composition is dispersible in a variety of organic solvents (Page 4405, Abstract, lines 4-5; Page 4011, left col., Conclusions, lines 1-5).
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Referring to ii), Amundson teaches a process for forming a layer of an anisotropic adhesive having greater conductivity perpendicular to the plane of the layer than in this plane, the process comprising: dispersing a plurality of conductive particles in an adhesive matrix, the particles having a complex conductivity differing from that of the matrix; applying to the particles/matrix mixture an electric or magnetic field effective to cause the particles to form conductive strands extending substantially perpendicular to the plane of the layer; and increasing the viscosity of the matrix to prevent the particles moving out of the strands (Page 7, [0055]; Page 7, [0058]).
In an analogous art of the dispersion composition for electro-optic device comprising pyrene-containing polymers with carbon nanotubes, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify themethod of preparing a carbon nanotube film by Hladik, so as to include a dispersion composition comprising: an electrically conductive filler comprising particles, a polymerizable monomer or oligomer, and an additive that is represented by Formula I as taught by Lou, and would have been motivated to do so with reasonable expectation that this would result in providing to obtain a dispersion composition, wherein the composition is dispersible in a variety of organic solvents as suggested by Lou (Page 4405, Abstract, lines 4-5; Page 4011, left col., Conclusions, lines 1-5).
In an analogous art of the dispersion composition for electro-optic device comprising pyrene-containing polymers with carbon nanotubes, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the method of preparing a carbon nanotube film by Hladik, so as to
apply an electric field across the wet film to align the filler particles in the wet film at a Z direction perpendicular to a plane of the applied wet film as taught by Amundson, and would have been motivated to do so with reasonable expectation that this would result in providing the particles to form conductive strands extending substantially perpendicular to the plane of the layer; and increasing the viscosity of the matrix to prevent the particles moving out of the strands as suggested by Amundson (Page 7, [0055]; Page 7, [0058]).
Regarding claims 3,9-11: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Lou teaches poly(MMA-ci-PyMMP), wherein R1 is polycyclic aromatic pyrene group, Y is -O-C(O)-, and Z is methacrylate group )Page 4007, Fig. 1).
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Regarding claim 4: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches the filler is selected from the group consisting of carbon nanotube (Page 1, [0015]; Page 4, Claim 11).
Regarding claim 5: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches the composition comprises a liquid carrier selected from the group consisting of an aqueous carrier, a non-aqueous carrier, and a combination thereof (Page 2, [0020]-[0021]).
Regarding claim 6: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches the polycyclic aromatic group R1 of the additive comprises an aromatic system selected from the group consisting of naphthalene, anthracene, phenanthracene, pyrene, tetracene, tetraphene, chrysene, triphenylene, pentacene, pentaphene, perylene, benzo[a]pyrene, coronene, antanthrene, corannulene, ovalene, graphene, fullerene, cycloparaphenylene, polypara phenylene, cyclophene, and compounds containing moieties of the foregoing (Page 2, {0016]; Page 4, Claim 12).
Regarding claim 7: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Lou teaches (1-Pyrene) methyl 2-methyl-2-propenoate (PyMMP) is synthesized by reaction of 1-pyrenemethanol with methylacryloyl chloride in THF, as shown in Scheme 1 (Page 4007, 1st Col., Synthesis of Pyrene-Containing Polymers).
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Regarding claim 12: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches the composition comprises a crosslinker in the synthesis of PEB-b-poly(MMA-co-PyMMP) (Page 4007, 2nd Col., Scheme 2
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Regarding claim 14: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches the content of the electrically conductive filler is from 0.01 weight percent to 15 weight percent by weight of the composition (Page 1, [0014]; Page 4, Claim 5).
Regarding claim 19: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches
the polymer film is a conductive film (Page 2, [0025]).
Regarding claim 20: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph above and is incorporated herein by reference. Hladik teaches
the polymer film is a conductive film (Page 2, [0025]). It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
11. Claim 8 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Molly Hladik (US Pub. No. 2013/0288064 A1, hereinafter “Hladik”) in view of Lou et al. (Synthesis of Pyrene-Containing Polymers and Noncovalent Sidewall Functionalization of Multiwalled Carbon Nanotubes, Chem. Mater. 2004, 16, 4005-4011, hereinafter “Lou”), and Amundson et al. (US Pub. No. 2007/0035808 A1, hereinafter “Amundson”) as applied to claim 1 above, and further in view of Anzai et al.(US Pat. No. 5,489,495, hereinafter “Anzai”).
Regarding claim 8: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph 10 above and is incorporated herein by reference. Hladik in view of Lou and Amundson does not expressly teach Hladik teaches the synthesis of PEB-b-poly(MMA-co-PyMMP) (Page 4007, 2nd Col., Scheme 2). Hladik does not expressly teach the polycyclic aromatic group R1 of the additive further comprises another substituent R8 directly bonded to an aromatic ring of the additive.
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However, Anzai teaches an electrophotographic photoconductor includes an electroconductive support and a photoconductive layer formed thereon containing a diamine compound represented by formula (I):
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wherein R1, R2, and R3 each is independently a substituted or unsubstituted alkyl group or aryl group; R4 is hydrogen, an alkyl group or an alkoxyl group; n is an integer of 1 to 3; and -X- is a substituted or unsubstituted bivalent arylene group or a bivalent heterocyclic group. This diamine compound is useful as a photoconductive material for electrophotographic photoconductors.
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
12. Claim 13 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Molly Hladik (US Pub. No. 2013/0288064 A1, hereinafter “Hladik”) in view of Lou et al. (Synthesis of Pyrene-Containing Polymers and Noncovalent Sidewall Functionalization of Multiwalled Carbon Nanotubes, Chem. Mater. 2004, 16, 4005-4011, hereinafter “Lou”), and Amundson et al. (US Pub. No. 2007/0035808 A1, hereinafter “Amundson”) as applied to claim 1 above, and further in view of Lin et al.(US Pub. No. 2015/0378235 A1, hereinafter “Lin”).
Regarding claim 13: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph 10 above and is incorporated herein by reference. Hladik in view of Lou and Amundson does not expressly teach the polymer film has a thickness of from 0.1 µm to 5 mm.
However, Lin teaches an anisotropic conductive dielectric layer for an electrophoretic display device (Page 1, [0002]). Lin teaches the microcell forming material, the sealing layer, the adhesive layer and the primer layer (if present) are collectively referred to as “dielectric layer” (Page 1, [0016]). Furthermore, Lin teaches for the sealing and adhesive layers, there are two options to achieve anisotropic conductivity. As shown in FIG. 3(a), a sealing layer (34) which is thicker has anisotropic conductivity while an adhesive layer (35) is isotropic. In FIG. 3(a), the sealing layer may have a thickness of 8-20 µm and the adhesive layer may have a thickness of 2-6 µm In FIG. 3(b), an adhesive layer (35) with a thickness of 2-10 µm, has anisotropic conductivity and a sealing layer (34), with a thickness of 5-10 µm is isotropic. The total thickness of sealing and adhesive layer in FIGS. 3(a) and 3(b) is preferred to be less than 25 µm (Page 2, [0026]).
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Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since selection of an appropriate thickness of the polymer film of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
13. Claims 15-18 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Molly Hladik (US Pub. No. 2013/0288064 A1, hereinafter “Hladik”) in view of Lou et al. (Synthesis of Pyrene-Containing Polymers and Noncovalent Sidewall Functionalization of Multiwalled Carbon Nanotubes, Chem. Mater. 2004, 16, 4005-4011, hereinafter “Lou”), and Amundson et al. (US Pub. No. 2007/0035808 A1, hereinafter “Amundson”) as applied to claim 1 above, and further in view of Elkovitch et al.(US Pub. No. 2011/0152431 A1, hereinafter “Elkovitch”) or Himizu et al.(US Pub. No. 2020/0131379 A1, hereinafter “Himizu”) or Bartow et al.(US Pub. No. 2019/0344496 A1, hereinafter “Batow”) or Zhamu et al.(US Pub. No. 2018/0019069 A1, hereinafter “Zhamu”).
Regarding claims15-18: The disclosure of Hladik in view of Lou and Amundson is adequately set forth in paragraph 10 above and is incorporated herein by reference. Hladik in view of Lou and Amundson does not expressly teach the electrically conductive filler is carbon black, the carbon black having specific surface area that is higher than 120 m²/g measured via BET or the electrically conductive filler is single-wall carbon nanotubes or multi-wall carbon nanotubes, which are cylindrical particles with diameter of less than 100 nm or the electrically conductive filler is carbon nanofibers with diameter of from 5 µm to 10 µm or wherein the electrically conductive filler is graphene having specific surface area of from 300 m²/g to 2600 m²/g.
However, Elkovitch teaches a composition (Page 1, [0008]) comprising the electrically conductive filler which is carbon black, the carbon black having specific surface area that is higher than 120 m²/g measured via BET (Page 12,[0091]).
Himizu teaches a dispersant which has a good dispersibility and reduced electronic resistance (Page 5, [0091]) comprising the electrically conductive filler which is single-wall carbon nanotubes or multi-wall carbon nanotubes, which are cylindrical particles with diameter of less than 100 nm (Page 5, [0094]).
Bartow teaches the method of making a 3-D article incudes heating a composition (Page 9, [0073]) comprising the electrically conductive filler is carbon nanofibers with diameter of from 5 µm to 10 µm (Page 10, [0078]).
Zhamu teaches a method of producing graphene-based supercapacitor electrode (Page 1, [0001]) comprising the electrically conductive filler which is graphene having specific surface area of from 300 m²/g to 2600 m²/g (Page 6, [0069]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two electrically conductive filler) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Examiner Information
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
06/30/2026
bijan.ahvazi@uspto.gov
Prosecution Insights