DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a final office action in response to Applicant’s remarks and amendments filed on April 14, 2026. Claim 1 is currently amended. Claims 1-3, 5 and 7-14 are pending review in this action.
New grounds of rejection necessitated by Applicant’s amendments are presented below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 7-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nanotechnol, 28, p 465302, hereinafter Ding in view of U.S. Pre-Grant Publication No. 2020/0001587, hereinafter Zhang, J. Mater. Chem. A, vol. 3, pp 23483-23492, hereinafter Dabol, U.S. Pre-Grant Publication No. 2018/0082796, hereinafter Mahrholz and U.S. Pre-Grant Publication No. 2019/0051639, hereinafter Hussain.
Regarding claim 1, Ding teaches a PDMS flexible substrate (abstract and figure 1).
A carbon-nanotube electrode is formed on one surface of the substrate (abstract and figure 3). The carbon-nanotube electrode includes an array of regularly arranged nanotubes (figure 1) – therefore it is “patterned”. The carbon-nanotube structure is porous due to the spacing between nanotubes and the lumen of each nanotube.
In the process of forming the structure, tips of the carbon nanotubes are partially immersed in the PDMS prior to curing (Section 2, 2nd paragraph). After curing, the carbon nanotubes are rooted into the PDMS (Section 2, 3rd paragraph). Thus, it is understood that PDMS is impregnated at least into the spaces (“pores”) between nanotubes.
The porous carbon-nanotube electrode includes reduced graphene oxide (Section 2, 5th paragraph and figure 1).
The carbon-nanotube electrode is a protruded structure. The protruded structure is derived from a precursor grown (“coated”) on a temporary substrate and transferred to the PDMS flexible substrate (Figure 1, steps a-c). A ratio of a thickness of the precursor to a thickness of the carbon-nanotube electrode is approximately 1:1 (Figure 1).
Ding’s flexible substrate is formed of PDMS – the same material as instantly disclosed and claimed. It is therefore expected to be capable of being repeatedly attached and detached from an object.
Ding teaches that the flexible electrode is suitable for energy devices (abstract).
Ding fails to teach: 1) that the pattern of the patterned porous electrode is an interdigitated shape; 2) a coating layer formed on another surface of the flexible substrate; and 3) that the electrode is “sticker-type”.
Regarding 1), Mahrholz teaches a supercapacitor (1) having two carbon nanotube electrodes (25 and 26) formed on a common substrate (2), such that each electrode (25/26) has an interdigitated shape (paragraphs [0062, 0064, 0067] and figure 4).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to apply Mahrholz’s interdigitated pattern to Ding’s electrode for the purpose of constructing a supercapacitor on Ding’s flexible substrate.
Regarding 2), the Zhang reference has the same authors as Ding and discloses the same porous electrode (abstract and figure 1). Zhang teaches a supercapacitor including the flexible electrode and a gel electrolyte (paragraph [0028]).
It is known in the art to include hydroquinone into a gel electrolyte used in a supercapacitor for the purpose of improving the supercapacitor’s performance – see, e.g. Dubal (p. 23489, Section “Effects of hydroquinone doping in gel-electrolyte”).
It is further well-known to fully enclose carbon nanotubes of supercapacitor electrodes in electrolyte (10) – see, e.g. Mahrholz (paragraphs [0044, 0073]).
Therefore, it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to include hydroquinone in the gel electrolyte of the supercapacitor in the combination of Ding and Zhang for the purpose of improving its performance and to form a coating layer of hydroquinone-doped gel electrolyte onto the flexible electrode such that it fully encloses the carbon nanotubes for the purpose of using the entire surfaces of the carbon nanotubes in the electrochemical reaction.
The structure of Ding as modified by Zhang, Dubal and Mahrholz would include the hydroquinone-doped gel electrolyte (“coating layer”) onto a surface of the flexible substrate that does not include the carbon nanotubes (“another surface”).
Regarding 3), the Zhang reference has the same authors as Ding and discloses the same porous electrode (abstract and figure 1). Zhang teaches a supercapacitor including the flexible electrode and teaches that it is suitable for the field of wearable electronics (paragraphs [0028, 0033]). Further, sticker electronics are well-known in the art – see, e.g. Hussain who teaches electronic stickers comprising flexible substrates and having an adhesive applied to one side to allow their attachment to suitable surfaces (abstract).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to configure the supercapacitor of Ding as modified by Zhang as a “sticker-type” for the purpose of allowing it to be used as a wearable device.
The examiner notes that the claim recites a product, but also includes a limitation directed to a particular method for obtaining the structure of the claimed product.
Specifically, claim 1 recites that: “the protruded structure is derived from a precursor of the porous electrode coated on a temporary substrate by laser irradiation and transferred to the flexible substrate, wherein a ratio of a thickness of the precursor of the porous electrode to a thickness of the patterned porous electrode is 1:1 to 1:10”.
Patentability of product-by-process claims is based on the product itself. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113 citing In re Thorpe, 777 F.2d 695,698, 227 USPQ964, 966 (Fed. Cir. 1985).
In the present case, Ding teaches the recited limitations directed to a method of obtaining the sticker-type flexible electrode substrate, except that the precursor (array of carbon nanotubes) is coated on the temporary substrate by laser irradiation. The precursor (array of carbon nanotubes) is capable of being grown (“coated”) on the temporary substrate through a laser irradiation process such as laser induced CVD.
The combination of Ding as modified by Zhang, Dubal, Mahrholz and Hussain satisfies all of the claimed structural limitations of the sticker-type flexible electrode substrate therefore it is considered to meet the claim.
Regarding claim 2, Ding teaches that the substrate is formed of PDMS (abstract). PDMS satisfies the instantly claimed formula 1 with R1 through R8 being CH3 (C1 alkyl groups).
Regarding claim 3, Ding teaches that an average spacing between the nanotubes is 50 nm (0.05 µm) (Section 2, 1st paragraph).
Regarding claim 5, Ding teaches that the porous carbon material includes carbon nanotubes (abstract).
Regarding claim 7, Ding as modified by Zhang and Dubal teaches a hydroquinone-doped gel electrolyte (“coating layer”).
Regarding claims 8 and 9, Ding as modified by Muhrholz teaches a supercapacitor comprising the flexible substrate. A part of the flexible substrate is a positive electrode and another part is a negative electrode.
Regarding claim 10, Ding teaches that the height of the carbon nanotubes is about 50 µm (Section 2, 1st paragraph).
Therefore a width of the porous electrode along the length of the carbon nanotubes is 50 µm (0.05 mm).
Regarding claim 12, Ding as modified by Muhrholz teaches that the supercapacitor includes a positive electrode and a negative electrode, each with an interdigitated shape and facing each other (Muhrholz’s figure 4). Electrolyte is positioned between the positive electrode and the negative electrode.
Regarding claim 13, Ding as modified by Zhang teaches that the electrolyte is a solid electrolyte (Zhang’s paragraph [0028]).
Regarding claim 14, Ding as modified by Zhang teaches a wearable device comprising the supercapacitor (Zhang’s paragraph [0033]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nanotechnol, 28, p 465302, hereinafter Ding, U.S. Pre-Grant Publication No. 2020/0001587, hereinafter Zhang, J. Mater. Chem. A, vol. 3, pp 23483-23492, hereinafter Dabol, U.S. Pre-Grant Publication No. 2018/0082796, hereinafter Mahrholz and U.S. Pre-Grant Publication No. 2019/0051639, hereinafter Hussain as applied to claim 8 above, and further in view of U.S. Pre-Grant Publication No. 2018/0277313, hereinafter Tabuchi.
Regarding claim 11, Ding as modified by Zhang teaches that in the supercapacitor the two electrodes are spaced apart by the gel electrolyte positioned between them (Zhang’s paragraph [0028]).
Ding as modified by Zhang does not report a thickness of the gel electrolyte.
Ding as modified by Zhang fails to teach the size of the distance between the two electrodes.
Tabuchi teaches a supercapacitor with carbon electrodes and a gel electrolyte positioned between them. Tabuchi teaches that the thickness of the gel electrolyte should be in the range 5 µm to 20 µm in order to ensure that the electrodes are adequately separated, while allowing for sufficient capacity (paragraph [0101]).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to select a thickness for the gel electrolyte in the range 5 µm (0.005 mm) to 20 µm (0.02 mm) in the supercapacitor of Ding as modified by Zhang for the purpose of ensuring that the electrodes are adequately separated, while the capacity of the supercapacitor can be sufficiently high. In the combination of Ding, Zhang and Tabuchi the distance between the two electrodes would be in the range 5 µm (0.005 mm) to 20 µm (0.02 mm).
The optimum range of Ding, Zhang and Tabuchi overlaps the instant application's optimum range of 0.01 mm to 1 mm. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nanotechnol, 28, p 465302, hereinafter Ding, U.S. Pre-Grant Publication No. 2020/0001587, hereinafter Zhang, J. Mater. Chem. A, vol. 3, pp 23483-23492, hereinafter Dabol, U.S. Pre-Grant Publication No. 2018/0082796, hereinafter Mahrholz and U.S. Pre-Grant Publication No. 2019/0051639, hereinafter Hussain as applied to claim 8 above, and further in view of U.S. Pre-Grant Publication No. 2015/0098167, hereinafter El-Kady.
Regarding claim 11, Ding as modified by Zhang and Mahrholz teaches that in the supercapacitor the two interdigitated electrodes are spaced apart by the gel electrolyte positioned between them (Zhang’s paragraph [0028]).
Ding as modified by Zhang and Mahrholz fails to teach the size of the distance between the two electrodes.
El-Kady teaches a supercapacitor with interdigitated electrodes. El-Kady teaches that a suitable distance between the electrodes is less than 150 µm (0.15 mm) (paragraph [0109] and figures 18A-20).
Therefore it would have been obvious to the ordinarily skilled artist before the effective filing date of the claimed invention to select a distance between the interdigitated electrodes of less than 150 µm (0.15 mm) for the purpose of ensuring that the electrodes are adequately separated, while the capacity of the supercapacitor can be sufficiently high.
The optimum range of Ding, Zhang, Mahrholz and El-Kady overlaps the instant application's optimum range of 0.01 mm to 1 mm. It has been held that in the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Response to Arguments
Applicant’s newly added limitations have been considered. However, after further search and consideration, the previously presented combination of the Ding, Zhang, Dubal, Mahrholz and Hussain references was found to address the amended claims.
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 LILIA V NEDIALKOVA whose telephone number is (571)270-1538. The examiner can normally be reached 8.30 - 5.00 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, Miriam Stagg can be reached at 571-270-5256. 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.
LILIA V. NEDIALKOVA
Examiner
Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
Prosecution Insights