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
Examiner acknowledges canceled Claims 1-21, amended Claims 22, 36, 40, 43, and 44, and canceled Claim 39 in the response filed on 6/10/2026.
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
Applicant respectfully traverse of the “patch” of Matitsine (interpreted by the Examiner as the spacing between parallel wires) to be a conductive patch as required by amended Claim 22 and previously presented Claim 44. If the insulation-filled spacing between Matitsine’s parallel wires were replaced with conductive patches bounded by those same wires, the wires would be short circuited together, forming a single, continuous conductive layer. Matitsine explicitly relies on the distinct, isolated parallel wire geometry to achieve its specific effective permittivity and plasmonic properties. Converting the gaps between the wires into conductive patches would destroy the structural integrity and underlying physics of Matitsine’s invention.
However, Applicant’s arguments are unpersuasive. The Examiner notes that attorney arguments cannot take the place of evidence. There is no evidence of record that converting the gaps between the wires into conductive patches would short circuit the wires, nor would destroy Matitsine’s invention. Matitsine teaches a first contiguous sheet of a first conductor material comprising a plurality of wires/fibres ([0017]-[0022]). Matitsine further teaches that different materials may be used for the conductive wires/fibres in the each of the basic units [0029]. Thus, one of ordinary skill in the art would recognize that one of the outer conductive fibres may correspond to Applicants’ piece of a first contiguous sheet of a first conductor material, and another materially different inner conductive wire/fibre corresponds to the first patch of a conductive or magnetic material. Therefore, Matitsine broadly disclose a contiguous sheet having a plurality of different conductive materials.
Please note that the claims do not preclude the first contiguous sheet or second contiguous sheet from having unrecited materials, such as an insulating material within the respective contiguous sheet. Moreover, the limitation(s) "insulating" and "conductive" in the claims, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that the magnitude of the conductivity that would place a component into the category of "insulating" or "conducting" is not positively recited or claimed. As such, the Examiner has given these terms the broadest reasonable interpretation consistent with applicants' as-filed disclosure as it would be interpreted by one of ordinary skill. Specifically, "insulating" is deemed to read on any component which is not exclusively formed of metal and "conductive" is deemed to read on any component which contains metal, metallic or known conductive particles (e.g. a polymer film containing a metal or carbon black particles would meet both the limitations of an "insulating" and a "conductive", but a polymer film containing AI203 particles would only read on the limitation "insulating" since AI203 is a known insulating material).
Examiner’s Comment
Regarding the limitation(s) "a piece of a first contiguous sheet of a first conductor material sandwiched between” first and second sheets of insulating material in Claim 22, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes the instant limitation merely requires that a small portion of a first contiguous sheet of a first conductor material is present between the first and second sheets of insulating material, not necessarily an overall/entire first contiguous sheet of a first conductor material.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 44 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 22-35 and 36-44 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20110003131 ("Matitsine"), in view of US Pub. No. 20030002045 ("Nemat-Nasser et al."), and US Pub. No. 20120228563 (“Fuller et al.”).
With regards to Claims 22, 28-30, 32, 43, and 44, Matitsine teaches a collection of randomly distributed artificial magneto-dielectric basic units, wherein each of the units comprises a piece of a first contiguous sheet of a first conductor material that is sandwiched between a first sheet of a first insulating material and a second sheet of a second insulating material, the collection contained within a container (Abstract, Figs. 2, 4, and 8, [0017], [0053], [0054], and [0061]). Matitsine teaches its first conductor material is selected from the group consisting of copper, silver, aluminum, nickel (magnetic) or the like [0061].
Matitsine’s first conductor material comprises at least two conductive metal wires that are spaced apart and are in a same plane within a basic unit. The insulating (dielectric) material that is directly between the spaced apart conductive wires in the conductor material may correspond to the claimed patches having the same identical shape (Fig. 8, [0013], and [0017]). Additionally, Matitsine teaches its basic unit comprising an array comprising a plurality of conductive metal wires, and recognizes that the conductive metal wires can have different materials. Thus, an inner conductive wire between at least two conductive metal wires may also correspond to the claimed patches having the same identical shape (Figs. 4 and 8; [0018]-[0023] and [0029]). Therefore, Matitsine teaches a first patch disposed in the first contiguous sheet of the first conductor material, wherein the first patch is bounded by the first contiguous sheet of the first conductor material and in direct contact with the first sheet of the first insulating material.
Matitsine does not explicitly teach its first conductor material is a piece of a first contiguous sheet. Matitsine does not teach the first patch has an irregular shape and that it is different from a second patch.
Nemat-Nasser et al. teaches a basic unit comprising a plurality of contiguous flat sheets of conductor metal material (Abstract, Figs. 1-6 and 9(c), [0036], [0057], and [0061]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Matitsine's basic units comprise a plurality of contiguous sheets, as demonstrated by Nemat-Nasser et al., in order to achieve advantageous structural and mechanical properties suited for many different applications [0017].
Fuller recognizes that its patches may be formed in a variety of shapes, regular and irregular shapes, and comprises a conductor material or a magnetic material different than its interstitial conductive material that it is bounded thereto (Fig. 4, [0027], and [0030]-[0032]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Matitsine’s patches have different shapes from each other and comprise of a different conductor or magnetic material than the contiguous sheet of a conductor material in order to achieve desirable characteristics in its unit as disclosed in paragraph [0032]. Examiner further notes that it has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art, In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
With regards to Claim 23, Matitsine teaches the collection of randomly distributed basic units has at least first and second parallel sides (Fig. 2).
With regards to Claim 24, Matitsine teaches portions of the first sheet of the first conductor material extend to both of the first and second parallel sides of the basic units, respectively (Figs. 2, 4, and 8).
With regards to Claims 25-27, Matitsine teaches at least one of the basic units has first and second parallel sides with a length of 1.5 mm [0077], and a thickness of the first sheet of the first conductor material is in the range of 0.005 mm to 1 mm ([0016] and[0073]).
With regards to Claim 31, Matitsine teaches a second conductor material is disposed between the first insulating material and the first sheet of the first conductor material, wherein the second conductor material has a different composition from the first conductor material (Figs. 2, 5, and 8, [0017], [0029], and [0061]).
With regards to Claims 33 and 34, Matitsine teaches the first insulating material comprises a polymer, a polystyrene foam ([0012] and [0013]).
With regards to Claim 35, Matitsine teaches the first insulating material has a typical density of 0.005 to 0.4 g/cm3 [0011].
With regards to Claim 36, due to the prior art disclosing its first patch having an irregular shape and comprise of a magnetic material, the first patch is configured to act as a magnetic resonator (please see [0061] in Matitsine and Fig. 4, [0027], and [0030]-[0032] in Fuller et al.).
With regards to Claims 37 and 38, Matitsine teaches a second sheet of a second conductor material that is parallel to the first sheet (Figs. 2 and 8).
With regards to Claim 40, the prior art of record teaches a second patch disposed within and bounded on all lateral sides by the second conductor material, wherein the first patch is identical in shape to the second patch (Figs. 2 and 8 of Matitsine and Abstract, Figs. 1-6 and 9(c), [0036], [0057], and [0061] of Nemat-Nasser et al.).
With regards to Claims 41 and 42, Matitsine teaches a lens comprising the collection of randomly distributed basic units, wherein each of the basic units has a side length of 1.5 mm ([0077] and [0091]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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, Mark Ruthkosky can be reached at (571) 272-1291. 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.
/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
Prosecution Insights