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 .
Priority
This application is a 371 of PCT/JP2023/030335 (filed 08/23/23), which application claims priority to JP 2022-158528 (filed 09/30/22).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Amendment(s)
The Preliminary Amendment filed 03/21/25 is entered.
Claims 1-10 are pending.
Drawings
No Drawings have been filed in this application.
Information Disclosure Statement
The IDS statement filed 03/21/25 has been considered. An initialed copy accompanies this action.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or by applicant on form PTO-1449, they have not been considered.
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 2, 4, 9 and 10 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.
In dependent claims 2 and 4, it is unclear as to what the claimed “average particle diameter” refers. Specifically, does such refer/require that primary particles fall within the claimed range, or does such refer to secondary particles. Also, does such refer to D50, D90, or something else. Clarification is required.
For examination purposes, the examine construes such to refer to volume-based average of the primary particles (instant specification para 0065).
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a))1_ as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over either JP 2019-87396A or WO 2020/106120 A1.
JP 2019-87396A discloses (Abstract):
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The reference teaches amine dispersant (para 0013; 0044), a primary particle size of 50-100 nm (0024), and organic solvent (0047). While the reference does not disclose the claimed SPAN values calculated from sedimentation velocity (V10-V90), the reference teaches D10, D50, and D90 values for the particles. As stated in form PCT/ISA/237 (IDS), when converted to sedimentation rate (V) as known in the art (Stokes law), example 1 of the reference contains a SPAN value of 1.4 (within the instantly claimed range). "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)). With respect to dependent claims 5-10, the reference teaches use as an adhesive (bonding) layer (para 0054; examples).
Likewise, WO 2020/106120 A1 discloses a method for producing silver powder (Abstract). The reference teaches amine dispersant (page 6 of machine translation), a primary particle size 300-1300 nm(page 7), and organic solvent (page 8). While the reference does not disclose the claimed SPAN values calculated from sedimentation velocity (V10-V90), the reference teaches narrow SPAN and D10, D50, and D90 values for the particles (Table 2). As stated in form PCT/ISA/237 (IDS), when converted to sedimentation rate (V) as known in the art (Stokes law), example 1 of the reference contains a SPAN value of 0.4 (within the instantly claimed range). "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962))
The reference is anticipatory.
The examiner submits that even if the above disclosures are somehow insufficient to anticipated the above listed claims, the examiner respectfully submits that the skilled artisan would have to utilize only routine testing in order to arrive at the claimed SPAN values (calculated from centrifugal sedimentation) as the prior art above recognizes the importance of low/narrow SPAN values in order to improved conductive properties of the resultant dispersions and articles. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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.
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.
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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.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
October 7, 2026
