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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/04/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 12/4/2025 is acknowledged.
Claims 9-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/4/2025.
Specification
The substitute specification filed 9/4/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 8/24/2022 are accepted.
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(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (US 2016/023411) in view of Han et al (US 2021/0207939), as evidenced by US 2010/200146.
With regards to claim 1, Li teaches a film comprising an organic material layer and a carbon nanotube paper (herein understood to read on the claimed “inorganic material layer”) stacked together wherein a thermal expansion coefficient of the organic material layer is different from a thermal expansion coefficient of the inorganic material layer (claim 1). The inorganic material layer comprises carbon nanotube, which is known in the art to comprise rolled layers of graphene.
With regards to the preamble limitation stating, “An assembling film… has a photothermal deformation effect,” said limitation is understood to be a preamble limitation that does not further limit the claimed invention. Alternatively, the invention of Li is understood to have a photothermal deformation effect because said layer comprises carbon nanotubes (one of applicant’s referred materials) and carbon based materials are known in the art to exhibit photothermal deformation. Furthermore, with regards to the preamble limitation “configured for assembling display,” said limitation is understood to be an intended use limitation which does not further limit the claimed invention (see MPEP 2111.02 stating where “the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” Shoes by Firebug LLC v. Stride Rite Children’s Grp.)
Li teaches the polymer should comprise a flexible binder such as a silicone rubber but does not explicitly teach that the binder should be a dimethylsiloxane. However, Han taches that polydimethylsiloxane materials are useful as flexible polymers for use in actuators (0018). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize dimethylsiloxane as the flexible polymer disclosed in Li. The motivation for doing so would have been that Han teaches polydimethylsiloxane are useful flexible polymers for use in actuators. Said “polydimethylsiloxane” is herein understood to read on the claimed “”polysiloxane” of claim 1.
With regards to claim 2, Li teaches the ratio of the thermal expansion coefficient of the organic material layer to the thermal expansion coefficient of the inorganic material layer is greater than 100:1 (claim 2).
With regards to claim 3, polydimethylsiloxanes are known to have a thermal expansion coefficient of the organic material layer is between 200 and 600 ppm/°C (see US 2010/0200146 @0008).
With regards to claim 4, LI teaches the inorganic layer may be carbon nanotube, which is comprised of graphene. Said material is known to have a thermal expansion coefficient of the inorganic material layer is between 5 and 30 ppm/°C.
With regards to claim 5, Li teaches the organic material layer has a thickness of between 270-450um (0026). Alternatively, Li does not explicitly teach the polymer thickness limitation of claim 5. However, Li teaches the thickness of the polymer layer is a result effective variable (0080) selected to control the thermal response rate of the composite. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the thickness of the polymer layer in order to optimize the thermal response rate of the composite.
With regards to claim 6, Li is relied upon as above. Li does not explicitly teach the inorganic layer thickness limitation of claim 6. However, Li teaches the thickness of the inorganic layer is a result effective variable (0064) selected to control the strength of the paper. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the thickness of the inorganic layer in order to optimize the strength of the carbon nanotube paper.
Response to Arguments
Applicant’s arguments filed 09/04/2026 have been fully considered but are not persuasive.
Rejections under 35 U.S.C. §103
With regards to the rejection of claims 1-6 under 35 U.S.C. § 103 as unpatentable over U.S. Patent Application Publication No. 2016/023411 ("Li") in view of U.S. Patent Application Publication No. 2021/0207939 ("Han") as evidenced by U.S. Patent Application Publication No. 2010/0200146, Applicant has amended claim 1 by deleting "a polyvinylidene fluoride, a polydimethylsiloxane" from claim 1. Applicant argues none of the cited references teaches or suggests that the organic material layer is made from a material comprising at least one selected from the group consisting of a chitosan, a cellulose, a polysiloxane, a polytetrafluoroethylene, a polyvinylpyrrolidone, and any combination thereof, as required by claim 1. Specifically, Applicant acknowledges that Li teaches the flexible polymer layer may be silicone rubber but argues silicone rubber has been explicitly excluded from the organic material layer of the present invention. Said argument is noted but is not persuasive for the reasons noted above; specifically, Han (not Li) is relied upon to render obvious the use of the claimed polysiloxane.
Applicant argues Han does not disclose the above distinguishing technical features. Specifically, applicants argue during the preparation process of the stimuli-response layer disclosed in Han, "multi-walled carbon nanotubes" and "polyvinylidene fluoride" are formed by mixing together and evaporating the solvent. Therefore, the stimuli-response layer is not formed by stacking an inorganic material layer (multi-walled carbon nanotubes) and an organic material layer (polyvinylidene fluoride). Similarly, with regards to Zhu, applicant argues Zhu focuses entirely on PDMS and its crosslinking systems and does not mention the above distinguishing technical features. Said arguments are noted but are not persuasive as Li, not Han or Zhu, was relied upon to teach said claimed features. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues the flexible material layer may comprise “[0016] at least one selected from the group consisting of polydimethylsiloxane, biaxially-oriented polypropylene, polypropylene, polyethylene, silicone rubber, fluorosilicone rubber, polymethyl methacrylate, polyethylene terephthalate, polyurethane, epoxy resin, polyethylene acrylate, polybutyl acrylate, polystyrene, polybutadiene, and polyacrylonitrile.” Applicants argues Han mentions polydimethylsiloxane and polyvinylidene fluoride, but it does not disclose the organic material layer as defined in claim 1 of the present application. The examiner respectfully disagrees for the reasons noted in the rejection; specifically, polydimethylsiloxane is a polysiloxane.
Applicants further argue the claimed invention of amended claim 1 offers significant advantages over the electrothermal actuator disclosed in Li. Specifically, applicant argues the bilayer structure formed by the specific organic material layer 11 and the specific inorganic material layer 12 achieves a unique photothermal deformation effect through the selection of the above specific materials. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the claims. The claims do not implicitly or explicitly require “unique” photothermal deformation effects. Furthermore, said argument fails to establish patentability based upon secondary considerations/unexpected results as applicant has not discussed in sufficient detail the data proffered to establish such results; has not shown the results are commensurate in scope with the claims; and have not established the results are unexpected.
For the reasons noted herein, applicants’ arguments are not persuasive, and the claims remain rejected for the reasons set forth herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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