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 § 102
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.
Claims 13-15 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2017/0232725 Lin et al.
Regarding claim 13, Lin teaches a stretchable (paragraph 0020) wrinkled (paragraph 0019) electrode (paragraph 0002) comprising:
a) an elastomer (paragraph 0021); and
b) a shrunken (paragraph 0019) metallic film (paragraph 0018) comprising a surface that is functionalized with materials (paragraph 0025 teaching that the film is modifiable, paragraph 0004 teaching that the wrinkled structure allows or a greater number of electrochemical active sites, where each site is a location for functionalization) for selective sensing of specific analytes using capacitive detection methods (paragraph 0002);
wherein the shrunken metallic film is fabricated by
depositing a metallic film 304 (paragraph 0018) on top of a polymer layer 104 (paragraph 0016) by a sacrificial layer 204 (paragraph 0017),
placing the polymer layer, the sacrificial layer, and the metallic film in an oven such that a shrunken polymer layer, a shrunken sacrificial layer, and the shrunken metallic film are created (paragraph 0019), and
dissolving the shrunken sacrificial layer to detach the shrunken polymer layer (paragraph 0023);
wherein the shrunken metallic film has been treated with a first solution, such that the first solution promotes bonding between the shrunken metallic film and the elastomer (paragraph 0020);
wherein the shrunken metallic film attaches to the elastomer (paragraph 0021); and
wherein the electrode is placed in a chemical bath and dried after construction and prior to use (paragraph 0023).
Regarding claim 14, Lin teaches that the polymer layer and the shrunken polymer layer comprise polyolefin (paragraph 0016).
Regarding claim 15, Lin teaches that the metallic film and the shrunken metallic film comprise gold (paragraph 0018).
Regarding claim 17, Lin teaches that the shrunken sacrificial layer is dissolved using a second solution comprising acetone (paragraph 0023).
Regarding claim 18, Lin teaches that the first solution comprises silane (paragraph 0020).
Regarding claim 19, Lin teaches that the chemical bath comprises acetone (paragraph 0023).
Regarding claim 20, Lin teaches that the elastomer is silicon-based (paragraph 0020).
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0232725 Lin et al.
Regarding claim 16, Lin teaches that the sacrificial layer and the shrunken sacrificial layer comprise poly(methyl methacrylate) (PMMA) (paragraph 0017). Lin does not teach the use of toluene. However, this is product by process language.
The discussion above tends to show the claimed product is the same as what is taught by the prior art. “[E]ven 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. In this case, the process of Lin appears to form the same product as that of the instant invention. Applicant may provide evidence proving an unobvious difference between the products. dissolved in toluene.
Response to Arguments
Applicant's arguments filed September 18, 2025, have been fully considered but they are not persuasive. Applicant argues that Lin does not teach a functionalized surface. However, Lin teaches electrochemically active sites, where the “chemical” portion refers to chemical interaction, as a moiety would exhibit in attaching to a surface. The wrinkled surface of Lin explicitly allows for these active sites, along with modifiability (paragraph 0025) to be used in various applications.
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 Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781