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 Arguments
Applicant’s arguments with respect to claim 116 have been considered but they are not persuasive. First, the applicant argues that the combination of Fouet in view of Antkowiak does not teach all the limitations of the claims, particularly the limitation of “to protect the electronic material from water,” since Antkowiak teaches uses water as the wetting liquid. The examiner respectfully disagrees. Antkowiak teaches using water as a wetting liquid, this wetting liquid is used as the encapsulating liquid that is infused into the polymer matrix. Antkowiak teaches that this infusion step results in a “a wetted membrane” that is further infused with an immiscible fluid B (air) to create an A/B interface between the wetting liquid and the immiscible fluid. See ¶ [0066]-[0067]. The result of this A/B interface material is a material (SLIPS) that is hydrophobic. Fig. 4 and paragraph [0074]-[0078] illustrates that “a droplet of water falling onto the glass does not attach thereto.”1 To state it in another way, Antkowiak teaches that even though a water was used to create the SLIPS material, the resulting SLIPS material becomes hydrophobic. Hence, Antkowiak, combined with Fouet, teaches the SLIPS material used “to protect the electronic material from water.”
Furthermore, the limitation of “to protect the electronic material from water” is a recitation of intended use of the encapsulating liquid. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114 (II).
Second, the applicant argues that Fouet and Antkowiak would not have provided sufficient motivation for an ordinary skilled artisan to combine the two references. In support of the argument, the applicant stated that the instant application is concerned about sealing halide perovskite solar cells from water, a claimed invention that is different from Fouet and Antkowiak. Also, Fouet teaches away from Antkowiak because Fouet requires the invention to be “devoid of volatile compounds such as solvents” while Antkowiak teaches the use of water and hence the latter’s invention requires a solvent. The examiner respectfully disagrees. As stated above, Antkowiak uses water to form the SLIPS material, with the resulting SLIPS material being hydrophobic. Due to that, a person of ordinary skill would not consider the SLIPS material to be a solvent or a volatile compound since it can no longer be mixed with water. Instead, the ordinary artisan would consider the SLIPS material to conform to Fouet’s requirement of not having any “volatile compounds, such as, for example, solvents.” Also, the language of claim 1 does not require halide perovskite solar cells. Furthermore, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). See MPEP 2144 (IV).
Lastly, the applicant argues that because Antkowiak teaches using water to wet the fibrous fabric polymer, then neither Antkowiak nor Fouet teaches the encapsulation material “should seal out water.” The examiner respectfully disagrees and considers this argument moot due to the same reason used in the first argument above.
Applicant’s arguments with respect to claims 119, 123, 127, and 136 have been considered but they are not persuasive. The applicant argues that none of the references used to reject these dependent claims rectify the allege deficiencies of Fouet or Antkowiak. The examiner respectfully disagrees and considers this argument moot due to the same reasons used in support of the rejection of claim 116.
In summary, this application is not placed in a condition for an allowance.
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 116, 120-122, 124-126, 128, and 130-132 are rejected under 35 U.S.C. 103 as being unpatentable over Fouet (US 2018/0312640 A1) and further in view of Antkowiak (US 2020/0010989 A1).
Regarding claim 116, Fouet teaches a liquid-based encapsulation system comprising
an electronic material (4),
a coating material (3) conformally surrounding the electronic material, wherein the coating material comprises a polymer (3 is a polyorganosiloxine resin; see ¶ 0002) comprising a polymer matrix (¶ 0053: “Component C1… chloroplatinic acid, chloroplatinic acid hexahydrate, platinum dichloride and complexes of these compounds with organopolysiloxanes of low molecular weight or microencapsulated platinum compounds in a matrix”; ¶ 0028-0058: coating material 3 is made of three parts A, B, and C).
However, Fouet does not teach:
an encapsulating liquid infused into the polymer matrix to prevent diffusion of water past the encapsulating liquid or the coating material and to protect the electronic material from water.
Antkowiak, in the same field of invention, teaches an encapsulating system for an electronic device (Fig. 3, ¶ 0073) comprising
an encapsulating liquid (A; see abstract; ¶ 0066: “fibrous fabric 1 thus obtained is wetted (cf. photograph D of FIG. 2B) with a wetting liquid A (in this case water)”) infused into the polymer matrix (2; see ¶ 0064: polymer solution 2 made into fibrous fabric 1 consisting of nanofibers; ¶ 0043-¶ 0044: polymer-inorganic network formed between polymer materials and SiO2, TiO2, Fe2O3) to prevent diffusion of water past the encapsulating liquid or the coating material (¶ 0075: “a droplet of water falling onto the glass does not attach thereto"; also see ¶ 0076-¶ 0078) and to protect the electronic material from water (Fouet in view of Antkowiak teaches this; also see ¶0073 where Antkowiak teaches using this encapsulating liquid with electronic devices ).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Antkowiak into the device of Fouet to infuse an encapsulating liquid into the polymer matrix to prevent diffusion of water past the encapsulating liquid or the coating material and to protect the electronic material from water. The ordinary artisan would have been motivated to modify Fouet in the manner set forth above for at least the purpose of improving the encapsulating system for protecting electronic devices from mechanical stress and fatigue by making said devices stretchable (¶ 0073) and for the further purpose of having a self-cleaning surface (¶ 0074).
Regarding claim 120, the liquid-based encapsulation system of claim 116, wherein the polymer is selected from the group consisting of fluoropolymers (Antkowiak ¶ 0045: polyvinylidene fluoride-co-hexafluoropropylene; ¶ 0049: polyvinylidene fluoride ), butyl rubbers, silicones, polyethylene (¶ 0048: polyethylene oxide ), polystyrene, polyvinyl chloride, and combinations thereof.
Regarding claim 121, the liquid-based encapsulation system of claim 116, wherein the electronic material, the polymer, and the encapsulating liquid are disposed within a container (2; see Fouet Fig. 1 and ¶ 0062; note: Fouet in view of Antkowiak teaches replacing polymer 3 of Fouet with the polymer-infused liquid of Antkowiak).
Regarding claim 122, the liquid-based encapsulation system of claim 121, wherein the container is flexible (Antkowiak ¶ 0024, ¶ 0073: stretchable electronic circuit; also see ¶ 0018 )
Regarding claim 124, the liquid-based encapsulation system of claim 116, wherein the encapsulating liquid forms an overlayer (¶ 0067: A/B interface; plain meaning of overlay: to cover the surface of something) over the polymer (Antkowiak ¶ 0066-¶ 0067: fibrous fabric 1 is wetted, i.e., covered with a wetting liquid A and then immersed in fluid B, which is immiscible with the wetting liquid A, creating an A/B interface; ).
Regarding claim 125, the liquid-based encapsulation system of claim 124, wherein the overlayer protects the electronic material from water droplets and debris (Antkowiak ¶ 0075, ¶ 0077, ¶ 0078).
Regarding claim 126, the liquid-based encapsulation system of claim 124, wherein the polymer and overlayer are transparent (see Antkowiak Fig. 4: glasses with SLIPS (avec SLIPs) and without SLIPS (sans SLIPs) are both transparent ).
Regarding claim 128, the liquid-based encapsulation system of claim 116, wherein the coating material is a porous material (Antkowiak ¶ 0024: “Slippery Liquid-Infused Porous Surfaces”).
Regarding claim 130, the liquid-based encapsulation system of claim 116, wherein the electronic material is disposed within a container (2; see Fouet Fig. 1 and ¶ 0062).
Regarding claim 131, the liquid-based encapsulation system of claim 116, wherein the encapsulating liquid is selected from a group consisting of polyfluorinated oils, perfluorinated liquids, partially fluorinated liquids, hydrocarbons (Antkowiak ¶ 0016, ¶ 0038: oil, which is known in the art as hydrocarbons), organosilanes, silicone oils (Antkowiak ¶ 0074: silicone oil) , mineral oils, plant oils, and combinations thereof.
Regarding claim 132, the liquid-based encapsulation system of claim 116, wherein the electronic material is selected from a group consisting of photovoltaic cells, perovskite photovoltaic cells, integrated circuits, flexible circuits (Antkowiak ¶ 0073: a stretchable electronic circuit), and combinations thereof.
Claim 119 is rejected under 35 U.S.C. 103 as being unpatentable over Fouet (US 2018/0312640 A1) in view of Antkowiak (US 2020/0010989 A1) as applied to claim 121 above, and further in view of Ferrer (US 2009/0032475 A1).
Regarding claim 119, Fouet in view of Antkowiak teaches the liquid-based encapsulation system of claim 116, and further teaches the polymer to be a fluoropolymer (Antkowiak ¶ 0045: polyvinylidene fluoride-co-hexafluoropropylene) fiber (¶ 0064). However, they do not teach: wherein the polymer is crosslinked.
Ferrer, in the same field of invention, teaches the polymer fiber (abstract: a fluoropolymer) that is crosslinked (¶ 0026).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Ferrer into the liquid-based encapsulation system of Fouet in view of Antkowiak to crosslink the polymer. The ordinary artisan would have been motivated to modify Fouet in view of Antkowiak in the manner set forth above for at least the purpose of improving the thermal and dimensional stability of the polymer by crosslinking (Ferrer ¶ 0026).
Claim 123 is rejected under 35 U.S.C. 103 as being unpatentable over Fouet (US 2018/0312640 A1) in view of Antkowiak (US 2020/0010989 A1) as applied to claim 121 above, and further in view of Chiu (US 2020/0328139 A1).
Regarding claim 123, Fouet in view of Antkowiak teaches liquid-based encapsulation system of claim 121, but does not teach the device further comprising a water-removal unit fluidically connected to the container by an inlet and an outlet.
Chiu, in the same field of invention, teaches a device further comprising a water-removal unit (242; ¶ 0044: chilled water) fluidically connected to the container (240, 241) by an inlet (208) and an outlet (209).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Chiu into the liquid-based encapsulation system of Fouet in view of Antkowiak to add a water-removal unit connected to the container by an inlet and an outlet. The ordinary artisan would have been motivated to modify Fouet in view of Antkowiak in the manner set forth above for at least the purpose of using the water-removal unit as a pump (Chiu ¶ 0054) that circulates chilled water in a manifold (252; see Chiu ¶ 0047) that is surrounding the electronic material (205a, 205b) for the further purpose of improving heat dissipation (Chiu ¶ 0003).
Claim 127 and 136 is rejected under 35 U.S.C. 103 as being unpatentable over Fouet (US 2018/0312640 A1) in view of Antkowiak (US 2020/0010989 A1), as applied to claim 116 above, and further in view of Aizenberg (US 2016/0032074 A1).
Regarding claim 127, Fouet in view of Antkowiak teaches the liquid-based encapsulation system of claim 116, but does not teach: wherein the encapsulating liquid comprises a plurality of encapsulating liquids forming a multi-layered system.
Aizenberg, in the same field of invention, teaches a liquid-based encapsulation system wherein the encapsulating liquid comprises a plurality of encapsulating liquids forming a multi-layered system (¶ 0193).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Aizenberg into the device of Fouet in view of Antkowiak to have the encapsulating liquid be comprised of a plurality of encapsulating liquids forming a multi-layered system. The ordinary artisan would have been motivated to modify Fouet in view of Antkowiak in the manner set forth above for at least the purpose of embodying desired gradient properties, such as non-porous glossy finish (Aizenberg ¶ 0193).
Regarding claim 136, Fouet in view of Antkowiak teaches the liquid-based encapsulation system of claim 116, but does not teach: wherein the encapsulating liquid is configured to be replenishable.
Aizenberg, in the same field of invention, teaches a liquid-based encapsulation system wherein the encapsulating liquid is configured to be replenishable (¶ 0181: “The lubricant-filled pores serve as reservoirs of lubricant to continuously replenish the lubricant at the interface and increase the service life of slippery materials/coatings.”)
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Aizenberg into the device of Fouet in view of Antkowiak to configure the encapsulating liquid to be replenishable. The ordinary artisan would have been motivated to modify Fouet in view of Antkowiak in the manner set forth above for at least the purpose of improving the service life and longevity of slipperiness of the encapsulating liquid (Aizenberg ¶ 0181).
Furthermore, configuring the encapsulating liquid to be replenishable renders the claim to a product-by-process claim. Product-By-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113 (I).
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 DOUGLAS YAP whose telephone number is (703)756-1946. The examiner can normally be reached Monday - Friday 8:00 AM - 5:00 PM ET.
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, Zandra Smith can be reached at (571) 272-2429. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS YAP/Assistant Examiner, Art Unit 2899
/ZANDRA V SMITH/Supervisory Patent Examiner, Art Unit 2899
1 This reference is also made in page 4 of the non-final office action mailed on November 21, 2025 in to treat the limitation of “to prevent diffusion of water past the encapsulating liquid or coating material.”
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