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 .
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.
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.
Claims 1, 3, 10-14, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Tseng et al. (US 2019/0054659) in view of Aliane et al. (US 2017/0141291) and Miyoshi (US 2014/0210309).
Regarding claim 1, Tseng teaches methods, devices and compositions for 3D printing of piezoelectric devices which are composites of PVDF and barium titanate (Pg. 3, Paragraph [0041]). The devices may be films formed from 3D printing the compositions (Pg. 2, Paragraph [0012]; Pg. 3, Paragraph [0041]). The PVDF is a fluoropolymer matrix (“polymeric matrix”) and the barium titanate is a ceramic filler (“lead-free piezoelectric material”) (Pg. 2, Paragraph [0012]).
Tseng is silent with respect to the PVDF matrix having a dielectric constant greater than 30 at 20°C. However, applicant’s specification lists PVDF-TrFE-CFE as being an appropriate material for the polymer matrix having a dielectric constant of greater than 30 at 20°C (Instant Specification, PGPUB, Pg. 3, Paragraph [0031]).
Aliane teaches a method of manufacturing an electronic device comprising a film formed from a copolymer of PVDF (Pg. 1, Paragraph [0002]). The PVDF of the film is a PVDF-TrFE-CFE and has a specific thermal treatment allowing for significant piezoelectric and pyroelectric properties in addition to a dielectric constant of greater than 65 (Pg. 2, Paragraph [0038]-[0039]; Pg. 3, Paragraph [0048]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVDF matrix as the PVDF-TrFE-CFE of Aliane which allows for significant piezoelectric and pyroelectric properties in addition to a dielectric constant of greater than 65 and is recognized as a suitable material for the polymer matrix having a dielectric constant of greater than 30 at 20°C.
Tseng is further silent with respect to the barium titanate being present in a volume percent of 40 to 60 vol%.
Miyoshi teaches an electroacoustic converter film including a polymeric composite piezoelectric body having piezoelectric particles dispersed in a viscoelastic matrix (Abstract). The particles may be barium titanate and the matrix may include PVDF (Pg. 5, Paragraph [0104]; Pg. 7, Paragraph [0150]). The content of the barium titanate is in the range of 30 to 70% by volume which allows for obtaining desirable piezoelectric properties while maintaining high flexibility (Pg. 5, Paragraphs [0110]-[0111]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Tseng such that the barium titanate is present between 30 and 70 vol% allowing for desirable piezoelectric properties while maintaining high flexibility as taught by Miyoshi.
Tseng is silent with respect to the devices having an elastic modulus of less than 1 GPa, a piezoelectric constant of 30 to 60 pC/N, and wherein the devices retain their d33 values at a temperature of greater than 90°C.
However, one of ordinary skill in the art would recognize that these properties are dependent on the materials forming the composite and an identical structure would result in identical properties. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, the composites require the polymer matrix, being a polymer having a dielectric greater than 30 at 20°C such as PVDF-TrFE-CFE, with piezoelectric particle, such as barium titanate, in a volume percent of 40 to 60%. As discussed above, the combination of Tseng in view of Aliane and Miyoshi teaches each of these features and, as such, one of ordinary skill in the art would have found it obvious that the resulting devices of Tseng would have substantially identical properties to that of the composites of claim 1, including having an elastic modulus of less than 1 GPa, a piezoelectric constant of 30 to 60 pC/N, and wherein the devices retain their d33 values at a temperature of greater than 90°C.
Regarding claim 3, Tseng teaches the devices as discussed above with respect to claim 1. As discussed above, the PVDF matrix is PVDF-TrFE-CFE.
Regarding claim 10, Tseng teaches the devices as discussed above with respect to claim 1. As discussed above, Tseng in view of Aliane and Miyoshi teaches the devices as having substantially identical properties as the composites of the instant claims. This includes the property being oriented at an electric polarization voltage lower when compared with the same polymer matrix in the absence of the lead-free piezoelectric filler when subject to an electric field.
Regarding claim 11, Tseng teaches the devices, which may be in the form of films, as discussed above with respect to claim 1.
Regarding claim 12, Tseng teaches the devices as discussed above with respect to claim 11.
Tseng is silent with respect to the films having a thickness of 50 to 200 microns.
Miyoshi teaches the films as discussed above. The films are further taught to have thicknesses of 20 to 200 microns ensuring rigidity and pliability (Pgs. 5-6, Paragraphs [0113]-[0114]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the devices, being films, of Tseng with thicknesses of 20 to 200 microns in order to ensure rigidity and pliability as taught by Miyoshi.
Regarding claims 13-14, Tseng teaches the devices as discussed above with respect to claim 1. It is noted that the claims are directed towards a composite and not a device including the composite. The limitations of the composite being included in an article of manufacture and then article being a component of a touch panel, a human machine interface, an integrated keyboard, or a wearable device defines an intended use of the composite of claim 1 and does not further limit or structurally define the composite of claim 1. Therefore, the combination of Tseng, Aliane and Miyoshi teaches the final products of claims 13-14 which is the composite of claim 1.
Regarding claim 21, Tseng teaches the devices as discussed above with respect to claim 1. Tseng further teaches the ceramic filler being present in the composites in a size range of 0.2 to 1.5 microns (200 to 1500 nm), which overlaps with the instantly claimed range (Paragraph [0043]).
Regarding claim 23, Tseng teaches the devices as discussed above with respect to claim 1. As discussed above, the devices are formed from substantially identical materials which results in an identical structure having identical properties. These properties would include having a poling voltage of 8 to 12 KV/mm.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tseng et al. (US 2019/0054659) in view of Aliane et al. (US 2017/0141291) and Miyoshi (US 2014/0210309) as applied to claim 1 above, and further in view of Friis et al. (US 2015/0134061).
Regarding claim 4, Tseng teaches the devices as discussed above with respect to claim 1.
Tseng is silent with respect to the plurality of ceramic materials being used in combination.
Friis teaches piezoelectric composites comprising polymerizable matrices and piezoelectric particles dispersed therein (Paragraph [0002]). The matrices may be PVDF and PVDF-Trfe-CFE (Paragraph [0074]; [0244]). The piezoelectric particles may be barium titanate, sodium potassium niobate, quartz and polyvinylidene difluoride fibers wherein they may be used singly or in mixtures (Paragraph [0075]). The particles may have sizes of less than 500 microns (Paragraph [0075]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the devices of Tseng, which are also piezoelectric devices comprising a combination of a polymeric matrix and ceramic particles, such that the particles are a mixture of barium titanate and sodium potassium niobate, quartz or polyvinylidene difluoride fibers. Furthermore, as discussed above, the content of the ceramic particles is 30% to 70% as taught by Miyoshi.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Tseng et al. (US 2019/0054659) in view of Aliane et al. (US 2017/0141291) and Miyoshi (US 2014/0210309).
Regarding claim 22, Tseng teaches methods, devices and compositions for 3D printing of piezoelectric devices which are composites of PVDF and barium titanate (Pg. 3, Paragraph [0041]). The devices may be films formed from 3D printing the compositions (Pg. 2, Paragraph [0012]; Pg. 3, Paragraph [0041]). The PVDF is a fluoropolymer matrix (“polymeric matrix”) and the barium titanate is a ceramic filler (“lead-free piezoelectric material”) (Pg. 2, Paragraph [0012]).
Tseng is silent with respect to the PVDF matrix having a dielectric constant greater than 30 at 20°C. However, applicant’s specification lists PVDF-TrFE-CFE as being an appropriate material for the polymer matrix having a dielectric constant of greater than 30 at 20°C (Instant Specification, PGPUB, Pg. 3, Paragraph [0031]).
Aliane teaches a method of manufacturing an electronic device comprising a film formed from a copolymer of PVDF (Pg. 1, Paragraph [0002]). The PVDF of the film is a PVDF-TrFE-CFE and has a specific thermal treatment allowing for significant piezoelectric and pyroelectric properties in addition to a dielectric constant of greater than 65 (Pg. 2, Paragraph [0038]-[0039]; Pg. 3, Paragraph [0048]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVDF matrix as the PVDF-TrFE-CFE of Aliane which allows for significant piezoelectric and pyroelectric properties in addition to a dielectric constant of greater than 65 and is recognized as a suitable material for the polymer matrix having a dielectric constant of greater than 30 at 20°C, w.
Tseng is further silent with respect to the barium titanate being present in a volume percent of 40 to 60 vol%.
Miyoshi teaches an electroacoustic converter film including a polymeric composite piezoelectric body having piezoelectric particles dispersed in a viscoelastic matrix (Abstract). The particles may be barium titanate and the matrix may include PVDF (Pg. 5, Paragraph [0104]; Pg. 7, Paragraph [0150]). The content of the barium titanate is in the range of 30 to 70% by volume which allows for obtaining desirable piezoelectric properties while maintaining high flexibility (Pg. 5, Paragraphs [0110]-[0111]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Tseng such that the barium titanate is present between 30 and 70 vol% allowing for desirable piezoelectric properties while maintaining high flexibility as taught by Miyoshi.
Tseng is silent with respect to the devices having an elastic modulus of less than 1 GPa and a piezoelectric coefficient d33 of 30 to 60 pC/N, wherein the composite retains its d33 value at temperatures of 90°C to 130°C. Tseng is additionally silent with respect to the devices having a poling voltage of 8 to 12 KV/mm.
However, one of ordinary skill in the art would recognize that these properties are dependent on the materials forming the composite and an identical structure would result in identical properties. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, the composites require the polymer matrix, being a polymer having a dielectric greater than 30 at 20°C such as PVDF-TrFE-CFE, with piezoelectric particle, such as barium titanate, in a volume percent of 40 to 60%. As discussed above, the combination of Tseng in view of Aliane and Miyoshi teaches each of these features and, as such, one of ordinary skill in the art would have found it obvious that the resulting devices of Tseng would have substantially identical properties to that of the composites of claim 1, including having an elastic modulus of less than 1 GPa, a piezoelectric coefficient d33 of 30 to 60 pC/N, wherein the composite retains its d33 value at temperatures of 90°C to 130°C, and a poling voltage of 8 to 12 KV/mm.
Response to Arguments
Applicant's arguments filed 07/17/2026 have been fully considered but they are not persuasive.
On pages 6-12, applicant argues that the combination of Tseng, Aliane, and Miyoshi is improper and fails to teach or render obvious each of the limitations of claim 1. Specifically, the combination would fail to teach the properties of an elastic modulus of less than 1 GPa, a piezoelectric coefficient (d33) of 30 to 60 pC/N, retaining the d33 values at temperatures greater than 90°C (all required by claim 1), and a poling voltage of 8 to 12 KV/mm (required by claim 22).
Firstly, applicant argues that there is a lack of motivation to combine the various references. Tseng only concerns itself with 3D printing of PVDF/BTO nanocomposites whereas Aliane only concerns the UV treatment of PVDF-TrFE-CFE rather than 3D printing. Furthermore, one of ordinary skill in the art would not have increased the loading content of BTO to 40-60 vol% and be able to achieve the claimed elastic modulus. Applicant supports this argument with a reference of “Exploring the mechanical performance of BaTiO3 filled HDPE nanocomposites” which indicates that neat HDPE having a Young’s modulus of 1.2 GPa is significantly increased to 5.5 GPa when adding 40 vol% BTO. As such, adding BTO increases the elastic modulus and one of ordinary skill in the art would expect the same for the composites of Tseng. Furthermore, the preferred material in the composites of Miyoshi are cyanoethylated PVA rather than the claimed PVDF-TrFE-CFE. As such, one of ordinary skill in the art would not look to Miyoshi in order to increase the loading content of Tseng.
Applicant continues to argue that the inherency teachings are not taught by any of the prior art references. Tseng’s data reports d33 values of 0.01-0.101 pC/N which is significantly lower than the claimed 30-60 pC/N. Aliane’s examples further do not indicate that a high dielectric constant material with a BTO loading content of 40-60 vol% would achieve the claimed properties. As discussed above, Miyoshi teaches away from the desired elastic modulus such that the increased loading content of BTO would increase the mechanical stress of the composites.
Lastly, applicant argues that the instant application provides unexpected results which would further distinguished the instant invention from the prior art of Tseng. The unexpected results of the instant specification would indicate that the inherency rejection is improper.
The examiner first notes that each of the references are properly combinable. Referring to the combination of Tseng and Aliane, the examiner notes that both references refer to composite films utilizing a fluorinated compound along with ceramic particles. Tseng teaches print filaments of a piezoelectric particle (i.e. BTO) and a fluoropolymer (Paragraph [0009]). The filaments are used to form various films [Paragraph [0054]-[0058]). Aliane teaches the combination of PVDF-TrFE-CFE copolymers with BTO (Paragraph [0039]; [0058]). This combination may also be in the form of a film (Paragraph [0038]). Therefore, the examiner contends that both Tseng and Aliane teach the formation of films including fluoropolymers and piezoelectric ceramic fillers.
Concerning the combination of Tseng with Miyoshi, and the additional cited reference (“Atli”), the examiner is not persuaded that this combination is improper and would not result in the claimed invention. Firstly, it is noted that Atli is not directed to PVDF-TrFE-CFE, PVDF, or fluoropolymers as all. The experiments conducted only concern the relationship of loading content of BTO in HDPE which is a significantly different matrix material. While increasing the loading content of BTO may increase the Young’s modulus of various other matrix materials, there is no indication that the rate increases the same. For example, neat HDPE having a modulus of 1.2 GPa to 40 vol% BTO having a modulus of 5.5 GPa (4.3 difference). However, a different material may only experience an increase in modulus of 1 GPa. Furthermore, another material may start with a modulus of less than 1 (i.e. 0.1 GPa) and could have an increase in modulus that is still less than 1 (i.e. 0.9 GPa). As such, a comparison of BTO loading content in HDPE is not comparable to a BTO loading content in PVDF or PVDF-TrFE-CFE as taught by the already combined references of Tseng and Aliane.
With respect to the teachings of Tseng (with Aliane) and Miyoshi, the examiner notes that while a preferred material is the cyanoethylated PVA as argued by the applicant, the description of Miyoshi includes any polymers which would satisfy the properties of the desired polymer matrix which includes being viscoelastic at normal temperatures and having a dielectric constant of 10 or more at 25°C (Paragraphs [0035]; [0043]). MPEP 2123(II): Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Tseng teaches the filaments forming the films as being capable of bending, such as bending and pressing with fingers (Paragraphs [0009]; [0084]). Aliane teaches the PVDF-TrFE-CFE as having a dielectric constant of greater than 65 (Paragraph [0048]). Therefore, the combination, at the very least, provides motivation for the PVDF-TrFE-CFE of Tseng and Aliane to serve as the polymer matrix for the loading contents of BTO from Miyoshi.
Turning to applicant’s arguments concerning the inherent properties not being present in the prior art references, the examiner notes that applicant is citing to the examples of Tseng rather than addressing the combination. As noted above, the examples are considered preferred embodiments and do not provide a teaching away from the general aspects of the prior art inventions.
Ultimately, the combination of Tseng, Aliane, and Miyoshi teaches the key structural features of the claims, being a polymer matrix of PVDF-TrFE-CFE with a BTO loading content of 40 to 60 vol%. As indicated in the rejection above, Tseng teaches composites formed from a PVDF material and BTO (Paragraph [0047]), Aliane provides motivation for forming those copolymers as PVDF-TrFE-CFE, and Miyoshi provides motivation for having the loading content being in the range of 30-70 vol%, significantly overlapping with the claimed range. Furthermore, while the examples of Tseng have a low loading content of BTO, as argued by the applicant, the general teachings include contents of up to 80% by weight. As such, the reference of Miyoshi was necessary in order to teach the claimed volume content. MPEP 2112(IV): "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original). The court found that pharmacokinetic limitations of the asserted claims were inherently met by combining prior art references because the limitations were necessarily present in the prior art combination. Id. See also Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329-32, 2020 USPQ2d 6227 (Fed. Cir. 2020). Therefore, the examiner contends that the use of identical materials in significantly overlapping ranges would have a natural result of the claimed properties, including an elastic modulus of less than 1 GPa, a piezoelectric coefficient (d33) of 30 to 60 pC/N, retaining the d33 values at temperatures greater than 90°C (all required by claim 1), and a poling voltage of 8 to 12 KV/mm (required by claim 22).
Lastly, concerning applicant’s examples in the instant specification, the examiner notes that the examples fail to illustrate each of the claimed properties. Tables 2 and 3 only teach d33 values and fail to mention elastic modulus, d33 retention rates, nor poling voltage. Therefore, the examples in the specification are unpersuasive in overcoming the rejections above.
Ultimately, the examiner contends that the combination of Tseng, Aliane, and Miyoshi is proper and teaches or renders obvious each of the limitations of claims 1 and 22. The current rejection is made FINAL.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
