DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The response dated 7/16/2025 has been received and will be entered.
Claim(s) 1-20 is/are pending.
Claim(s) 1 and 11 is/are currently amended.
Claim(s) 21-22 is/are acknowledged as cancelled.
The action is FINAL.
Response to Arguments
Claim Rejections – 35 U.S.C. §112
I. With respect to the rejection of Claims 1-21 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s) has not been disclosed, as best understood, the Remarks rely on deleting the statement in the Specification that the specific formulation of thermochromic paper used (to determine the various temperature thresholds in the claims) would be a trade secret. (Remarks of 7/16/2025 at 8 – “Applicant has amended paragraph ¶[0113] of the specification, as set forth above, to clarify that any general thermochromic paper may be used to determine thermal damage at the bottom surface of PI.”). The Remarks go on to argue certain paragraphs, stating:
The specification includes a full disclosure, including the best mode, of how a suitable thermochromic paper is used to empirically determine (e.g., visualize) the second temperature threshold, such that a person skilled in the art could practice the invention. See, for example, ¶¶[0061]-[0063], [0072]-[0075], [0084], [0102], [0113], [0120]-[0154] and Figs. 1D-1G of the application as filed. (E.g., compare the thermochromic paper 172 of Fig. 1E not heated above the temperature threshold vis-a-vis the thermochromic paper 182 of Fig. 1G heated above the temperature threshold and thus are discolored and damaged).
This has been considered but is not persuasive. The passages explain how the thermochromatic paper works in general terms (i.e. it changes color), and how it is used in the process. As understood, no color drawings were filed. Figures 1D-1G are of minimal value insofar as they are in black and white. None of these passages address the issue that gave rise to the rejection.
Independent Claim 1 requires determining various temperature thresholds. The Specification states that to simplify this process (i.e. the best way to do this process), thermochromic paper is used. Then, in the next sentence, the Specification states that the specific formulation of thermochromic paper is a trade secret.
It is rare to make a best mode rejection, as it is assumed it is disclosed. MPEP 2165.03 I. Here however, not only does the Specification state that the best mode is not disclosed, but that it is a trade secret. Applicants were invited to point out the best mode in the Non-Final Office Action. (Non-Final Office Action dated 4/24/2025 at 4: “As understood, the “simplification” discussed in the Specification is the “best mode,” however if there is a ““more simple”” or better (indeed, the best) way that is disclosed in the Specification, calling this out might be probative in withdrawing the rejection.”). In response, the reply would appear to attempt to remedy this by deleting the “trade secret” statement. Deletions or omissions can constitute new matter. MPEP 608.04(a) (“New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.”) (emphasis added, citations omitted). An objection to the Specification appears below.
The evidence of concealment still exists in the file. The rejection is MAINTAINED.
II. With respect to the rejection of Claims 1-21 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement, the traversal is on similar grounds. (Remarks of 7/16/2025 at 9). The Remarks provide lengthy string cites to vast swaths of the Specification, ostensibly pointing out where the “determining” step is carried out, and then conclude that the claims are enabled. (Remarks of 7/16/2025 at 9-10). Respectfully, it is not clear what the argument is. The Specification states that the thermochromic paper is needed to determine the “second temperature threshold.” Paragraph [0061]-[0062] states:
[0061] FIGS. 1D and 1E depict a schematic diagram illustrating an electronic sensor 170 comprising a porous graphene layer 176 formed across a portion of a polyimide (PI) film (precursor material layer) 174 on a thermochromic paper (substrate) 172 before and after peeling off the PI film 174 from the substrate 172 respectively according to an embodiment. It is noted that the temperature at which the PI film 174 graphitized is 1775K while the temperature at which the thermochromic paper will experience visible physical change in color is 353K.
[0062] In this embodiment, the operation parameters of a light source are determined and controlled such that the temperature at the top surface of the PI film 174 is higher than the 1775K (T.sub.top>T.sub.grphtn); whereas the bottom surface of the PI film layer 174 is maintained below 353K (T.sub.btm<T.sub.dmg). This results in a similar outcome as that in the first example 130 of FIG. 1C. In particular, the porous graphene layer 176 is formed as shown in FIG. 1D. Further, the thermochromic paper 172 does not experience a heating process to a temperature higher than the damage (discoloration) temperature, therefore it does not exhibit any damage or discoloration after the illumination and manufacturing process. This result can be seen in the clean substrate 172 as illustrated in FIG. 1E after peeling off the precursor material from the substrate 172.
[0063] On the other hand, FIGS. 1F and 1G depict a schematic diagram illustrating an electronic sensor 170 comprising a porous graphene layer 186 formed across a portion of a polyimide (PI) film (precursor material layer) 184 on a thermochromic paper (substrate) 182 before and after peeling off the PI film 184 from the substrate 182 respectively according to another embodiment. In this embodiment, the operation parameters of a light source may not be determined, controlled and optimized. After exposing the precursor material layer 184 under a beam of light generated from such light source, the temperature at the top surface and the bottom surface of the precursor material layer 184 may above 1775K (T.sub.top>T.sub.grphtn) and 353K (T.sub.btm>T.sub.dmg) respectively. This results in a similar outcome as that in the second example 140 of FIG. 1C. In particular, the porous graphene layer 184 is formed as shown in FIG. 1F. However, due to exposure to heat under a temperature higher than the damage temperature of the thermochromic paper, the thermochromic paper 182 experience damage and discoloration, as illustrated in FIG. 1E after peeling off the precursor material from the substrate 182. Such change in the physical properties of the substrate may affect the mechanical stability and reliability of the electronic sensor 180.
(S. 13: [0061] – 14: [0063]) (emphasis added). Whatever is going on, the “determining” would appear to involve the thermochromic paper. Is this correct or incorrect?
Stated another way – does the claimed invention need the thermochromic paper? The cited paragraphs have been considered, but what they are not understood as teaching is some alternate way of determining the temperature/light parameters. As understood, the Specification is not describing some thermometers/thermocouples, some laser thermometer, some other temperature measuring device/technique, etc. to carry out this method. The Specification is describing thermochromic paper.
Regardless of any amendment to delete the trade secret statement, the Specification states that this thermochromic paper is a trade secret. Is this correct or incorrect? Stated differently, if the thermochromic paper is needed to carry out the claimed invention and it is a secret, how does one of skill in the art practice the claimed invention? How would the public practice the claimed invention after the expiration of the patent term. This is the proverbial quid-pro-quo of the patent system: disclosure for limited monopoly.
The computer code was not addressed.
The Remarks were unpersuasive, but answering the questions above may be helpful in withdrawing the rejection. The rejection is MAINTAINED.
III. With respect to the rejection of Claims 1-21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, the Remarks rely on traversal of the best mode/enablement rejections. (Remarks of 7/16/2025 at 10). In response, and as noted in the rejection, the “determination” appears to rely, at least in part, on trade secrets, which by definition have not been disclosed. The rejection is MAINTAINED.
Claim Rejections – 35 U.S.C. §§ 102-103
I. With respect to the rejection of Claim(s) 21 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2019/0330064 to Tour, et al., the rejection is mooted by cancellation and is accordingly WITHDRAWN.
Specification
The amendment filed 7/16/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The material which is not supported by the original disclosure is as follows: The deletion of the “trade secret” information in paragraph [0113]. See MPEP 608.04(a) (“New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.”) (emphasis added, citations omitted).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
I. Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s) has not been disclosed.
Evidence of concealment of the best mode is based upon the statements in the Specification. The Specification states:
Determination of Thermal Damage at Bottom Surface of PI Tape
[0113] To simplify the determination of thermal damage at the bottom surface of PI, thermochromic paper, which changes colour upon heating at a similar temperature (348 K) can be used. While the specific formulation of thermochromic paper used would be a trade secret, thermochromic paper generally consist of two distinct parts, a base made of conventional paper, and a thermochromic coating that reacts upon heating to form coloured regions. The thermally sensitive coating is a three-part mixture of chiefly a colour developer, colour-changing leuco dye, and a solid-phase solvent with a melting point at the temperature where colour change is required. In this particular case, the required temperature is 343K. When heated above its melting point, the solvent melts and the developer and leuco dye are able to react, forming a coloured compound which is preserved as the solvent resolidifies. Without sufficient heating, the leuco dye cannot undergo a chemical reaction to its coloured form, and the coating remains uncoloured. Therefore, by attaching the PI film directly to the thermochromic coating and then subjecting the PI film to laser irradiation, whether Tbtm>Tdmg (second condition for LLG) can be determined by observing the presence of any colour changes to the thermochromic paper below.
(S. 9-10: [0113]) (emphasis added). Independent Claim 1, Claim 11, and Claim 21 all require “determining … a second temperature threshold … the second temperature threshold being one at which the substrate is likely to experience thermal damages above this temperature threshold,” computer code to carry out this “determining,” and the product resulting from this “determining.” Applicants have stated on and for the record that the testing protocol (thermochromic paper) needed “[t]o simplify the determination of the thermal damage” is a trade secret. By definition, trade secrets are secret, and not “set forth” as required by the statute. 35 U.S.C. 112(a).
As understood, the “simplification” discussed in the Specification is the “best mode,” however if there is a ““more simple”” or better (indeed, the best) way that is disclosed in the Specification, calling this out might be probative in withdrawing the rejection.
II. Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The analysis for determining whether a claim is supported by the disclosure is cast in terms of whether “undue experimentation” is necessary to practice the invention. See MPEP 2164.01. In examining the claims in light of the supporting disclosure, the Federal Circuit has provided a non-exclusive list of factors to consider in determining whether a disclosure is enabling. See generally In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors include:
The breadth of the claims;
The nature of the invention;
The state of the prior art;
The level of one of ordinary skill;
The level of predictability in the art;
The amount of direction provided by the inventor;
The existence of working examples; and
The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Id. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” Id. The Examiner has considered all factors in light of all claims rejected. For brevity’s sake, the Examiner will stipulate that laser induced graphene and related techniques are old and known. The Tour references made of record are representative. The claims however require multiple “determining” steps. At least one of these “determining” steps relies upon trade secret protection, understood to not be part of the prior art (Wands factor c, above). The discussion in “Rejection I” above is incorporated herein by reference. While the skill in the art is high (as evidenced by the Tour references), reliance upon trade secret protection supports a conclusion of undue experimentation to practice the claimed invention. Trade secret protection is given up to obtain a patent; i.e. the public is given an enabling disclosure in exchange for the limited monopoly.
The claims are separately non-enabled for providing scant guidance on the various “determining” steps recited in the claims. No computer code, so “configured” was set forth (Claim 11). How does one of skill in the art write a program to “determine” various things?
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
I. Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent Claims 1 and 11 require multiple “determining” steps. It is unclear what these means and the Specification provides scant guidance. Fig. 3B and (S.6: [0073] et seq.) are noted, but these passages rely on “sourcing” of empirical data. (S. 6: [0075]) and “using” a non-exclusive list of “material property data”. (S. 6: [0076]). No examples showing this “determination” or computer code that “determines” were provided. As noted above, the “determination” appears to rely, at least in part, on trade secrets, which by definition have not been disclosed.
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 C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736