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 Amendment
That the amendment to the claim languages filed on 11/6/25 has been fully considered and made of record. Claims 1-20 are now pending in that claims 18-20 is/are unelected and requested to be cancelled.
An OA on the merits of elected claims 1-17 as follow:
Claim Rejections - 35 USC § 112
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.
Claims 11-12 is/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.
“disposing a layer of high dielectric constant material over the primary electrode and between an adjacent pair of the ribs or pillars” (claim 11, line 1-2) appears to be indefinite because it is not known as to how “the disposing” can be practiced “. . . between an adjacent pair of the ribs or pillars”, since no forming of ribs or pillars found in the base claim 1 in order to make connection thereto.
Similar to claim 11 above applied to claim 12, since no forming of ribs or pillars found in the base claim 1 in order to have the configuration substrate set forth in claim 12.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11114952 to Wallin et al in view of Menguc et al (US20200186056) or Vann et al (9671365). Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully claimed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
The Wallin et al claims substantially every aspect method limitation of the present application comprising:
forming a shaped electroactive polymer layer over the primary electrode, the shaped electroactive polymer layer comprising a non-vertical sidewall with respect to a major surface of the primary electrode (compare claim 19, lines 2-4 of the Wallin et al);
forming a secondary electrode over the shaped electroactive polymer layer (compare claim 19, lines 5-7 of the Wallin et al).
Wallin et al is in silent regarding the newly added limitations where” forming a first substrate; forming a second substrate over the secondary electrode”. Either of Menguc et al or Vann et al discloses the above (see Fig. 6 of the Menguc et al as provided below which depicts such above forming a first substrate 120; and forming a second substrate 136 over the secondary electrode 134) or in Fig. 2A of the Vann et al as provided below which depicts forming a first substrate 25; and forming a second substrate 60 over the secondary electrode 75), respectively.
Fig. 6 of the Menguc et al
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Fig. 2A of the Vann et al
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Therefore, it would have been obvious to one having an ordinary skill int he art at the effective filing date of the invention to employ either of Menguc or Vann ‘s teachings in light of the discussion above in order to obtain the device having above configuration requirement by utilizing the known and available process facilitate operation would result.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-3, 6-10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jenninger et al (2014009039) in view of Menguc et al (20200186056) or WO2020106660 to Deist et al.
Jenninger et al discloses the claimed method of forming an actuator comprising:
forming a shaped electroactive polymer layer over the primary electrode (see discusses in ¶¶¶ [0005, 0030, 0042], the shaped electroactive polymer layer (see Figs. 1-2, portions 1-3, and discussed in ¶ [0047], comprising a non-vertical sidewall with respect to a major surface of the primary electrode (see Figs. 1-2, the non vertical side wall which boardly readable on connection portion which connecting portion 3 and portions 1 and 2). Jenninger et al, however is in silent regarding the newly added limitations of: forming a first substrate; forming a primary electrode over the first substrate; forming a secondary electrode over the shaped electroactive polymer layer. Regarding to this the Menguc et al discloses such above (see Fig. 6, which depict the configuration of forming a first substrate 120; forming a primary electrode 122 over the first substrate 120; forming a secondary electrode 130/134 over the shaped electroactive polymer layer 124 and forming a second substrate 136 over the secondary electrode 130/134, respectively).
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Or the Deist et al discloses the same as above (see Figs. 4A-4B, which depict the configuration of forming a first substrate 42; forming a primary electrode 44 over the first substrate 42; forming a secondary electrode 48 over the shaped electroactive polymer layer 40/46 and forming a second substrate 54 over the secondary electrode 48, respectively).
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Therefore, it would have been obvious to one having an ordinary skill int he art at the effective filing date of the invention to employ teachings of Menguc or Deist in light of the discussion above in order to obtain the device having above configuration requirement by utilizing the known and available process facilitate operation would result. The motivation for the combination can be found by either reference since they are in same field endeavor invention of the instant invention.
Claims 2-3 do not further limit the base claim since they directed to the associated material structure (polymer precursor) and lacking of method inventive features.
As applied to claim 6, refers to ¶ [0007] of the Jenninger further, the material as polymer includes a density of 90% density is an obvious choice for the skill in the art since material property is not an inventive method feature.
As applied to claims 7-9, refers to Figs. 1-2, portion 3 of the Jenninger.
As applied to claims 10, refers to Figs. 1-2, portion 3 of the Jenninger et al for the teaching of plurality of ribs are non-axisymmetric.
As applied to claim 13, refers to Fig. 1-2, where first width d2 adjacent to the primary electrode and a second width as other d2 which adjacent to secondary electrode, respectively.
Allowable Subject Matter
Claims 4-5, 15-17 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to rejected pending claims have been considered but are moot because the new ground rejection (see above).
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 MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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/MINH N TRINH/ Primary Examiner, Art Unit 3729 mt