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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-20 in the reply filed on 1/12/26 is acknowledged. Thus, claims 21-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Inventions II-IV, there being no allowable generic or linking claim. Election was made without traverse dated 1/12/26.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
NOTE: The following changes to the claims were necessary to correct minor informalities with the claim language by ensuring that certain terms or phrases were recited consistently throughout all of the claims. In no way do these changes affect the scope of the claimed invention.
“, comprising:” (see preamble of claim 1, line 1) should be updated to method forming formats:
--“, the method comprising subsequently order steps of: --
“(a):”; (b);”; (c):”; “(d):” (occurrence in claim 1, lines 2, 4, claim 2, line 2, and claim 3, about line 2) should be deleted to reflect changes as suggested in the preamble of claim 1 above.
terms or phrases: “or metallic thin film” (occurrence in claim 1, line 4; claim 2, line 2) should be deleted for clarity of the claim.
“(d): after (c), contacting” (claim 3, line 2) should be updated to: --"contacting” --, to reflect changes in base claim 1 above.
“wherein (a)” (claim 6, line 1) should be updated to: --“wherein the forming of the electrically conductive layer on the substrate” --, for clarity of the method claim formats.
“or coating” (claim 6, line 1) should be deleted for clarity of the process.
“is performed” (claim 7, line 1) should be updated to: --“by” --, for clarity of the claim.
“or metallic thin film” (claim 8, line 1) should be deleted
“wherein (b)” (claim 12, line 1) should be rewritten to: --" forming a ceramic or metallic thin film on the electrically conductive layer” --, instead of merely referring (b)
“(b1):”; (b2);”; (b3):” (see claim 12, lines 3-5) should be deleted.
Similar to the above, claims 13-15 should be updated to reflect changes as noted in claim 12 above and rewritten the steps of “(b1):”; (b2);”; (b3) in full text instead of merely referring to, for clarity of the method claim formats.
“(c1):”; “(c2:” (occurrence in claims 16-17) should be deleted. Also, “wherein (d) in claim 18 should be updated to: --“wherein after the contacting the interface between the substrate” --, as so to reflect changes that occurrence in claim 3, respectively.
Similar to claims above applied to claims 18-20 where the alphabetical (a): (b); . . .(c); should be fully replaced with proper means of steps instead of merely referring to (a): (b); . . .(c); or the like steps. Appropriate correction is required.
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 1-19 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.
“wherein the electrically conductive layer and the substrate are arranged such that when an interface between them contacts a water-based liquid, the water-based liquid facilitates or causes release of the electrically conductive layer from the substrate, substantially without damaging the substrate” (claim 1, lines 6-9, and claim 3 entirely) is/are condition statement which is/are not inventive method feature also, an alternative condition following “or” has not been considered on the merits.
term “or” existed in claim 1, line 3 which made scope of the claim unclear, since it is uncertain as to exactly what material applicant intend to claim before or after term ”or”.
Similar to the above “or” (occurrence between line 7-8 of claim 1), is uncertain as to what exactly causes applicant intent to pursue before or after “or” since they are distinctive processes (e.g., facilitate versus causes). For clarity of the process claim formats it is suggested delete of “or and the phase after it entirely”.
“or metallic thin film, “ (claim 2, line 2; claim 8, line 1; ); “or coating” (claim 3, line 2); “ also raise same issue as above and should be deleted.
“or cause release” (claim 3, line 3) should be: --” to release”--.
“or coating is performed using ”(claim 7, line 1) should be updated to:--“by”--.
“the one or more ceramic materials comprise one or more piezoceramic materials” (claim 9, line 3) lacks proper antecedent basis.
” the one or more piezoceramic materials” (see claim 10, line 1) lacks proper antecedent basis.
“or any of their combination” (claim 11, line 2) in an alternative should be delete. Also, it is uncertain as to what exactly materials being refer as “their combination”?
“or metallic thin film” (claim 15, line 3) “or coating” (claim 16, line 2) in an alternative form which made scope of the claim unclear and should be deleted.
Step associated with phrases or terms such as “causing he substrate” (claim 18, line 2), and “causing the water” (claim 18, line 4) is/are vague and indefinite since there is lacking of what happen or trigger to produce such result for each causing as mentioned above. Please be more specific in term of positive inventive method steps.
“and/or” (occurrence in many places in claim 18, lines 2-3, 4, and claim 19, lines 4) made scope of the claim unclear because of an alternatively formats, thus, it is not known as to which exactly process Applicant intend to claim (e.g., before or after and/or both). The use of: --“and” -- is suggested.
Claim 19 is awkwardly warded and confusing in that it is uncertain as to exactly what material applicant intent to claim since support cannot be a separate number of materials as improperly cited in claim 19. Further, claim 19 is directed to materials and optional intended use following the material does not seem to further the claimed method.
Claim 20 appears to be redundant of claim 1-2 is/are raise similar 112 issues (see discussion under base claims 1-2 above).
Claim Rejections - 35 USC § 102/103
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 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.
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 as best understood is/are rejected under 35 U.S.C. 102a1 as being anticipated by WO 2012161660 to Chua et al. In an alternatively claim(s) 1 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Chua et al.
Chua et al discloses the claimed method of making a thin film structure, comprising:
(a): forming an electrically conductive layer on a substrate such that the electrically conductive layer is releasably attached to the substrate (see process Fig. 1A step 102); and
(b): forming a ceramic/ metal thin film on the electrically conductive layer, on a side opposite the substrate (see Fig. 1A, step 104);
Regarding to the recites of: “wherein the electrically conductive layer and the substrate are arranged such that when an interface between them contacts a water-based liquid, the water-based liquid facilitates or causes release of the electrically conductive layer from the substrate, substantially without damaging the substrate” is condition statement which is/are not inventive method feature and do not further limit the claimed method. Further, Applicant refers to Chua under heading “Background” invention (see page 2, ¶ [0001], lines 12-15 and/or ¶ [0003], lines 30-32) for the teaching of the “causes release of the electrically conductive layer from the substrate substantially without damaging the substrate” (e.g., by simply peeling off substrate from the assembly without damaging the substrate”).
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) 1-2, 4-11, 16, 19 as best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Hajati et al (20150200350) in view of Chua et al.
Hajati et al discloses the claimed method of making a thin film based structure, comprising:
(a): forming an electrically conductive layer 120 on a substrate 110 such that the electrically conductive layer 120 is releasably attached to the substrate 110 (see process Fig. 1); and
(b): forming a ceramic 130 on the electrically conductive layer 120, on a side opposite the substrate 110 (see Fig. 1);
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Regarding to the recites of: “wherein the electrically conductive layer 120 and the substrate 110 are arranged such that when an interface between them contacts a water-based liquid, the water-based liquid facilitates or causes release of the electrically conductive layer from the substrate, substantially without damaging the substrate. Applicant refers to Chua et al under heading “Background” invention (see page 2, ¶ [0001], lines 12-15 and/or ¶ [0003], lines 30-32) for teaching or causes of release in term of peeling the electrically conductive layer from the substrate. Therefore, it would have been obvious to one having an ordinary skill in the art at the effective filing date of the invention to employ the Chua et al teaching as mentioned above onto the Hajati et al in order to facilitate the fabrication process by utilizing the commonly known and available process.
As applied to claim 2, refer to embodiment of Fig. 2K (see related embodiment as below) for support structure 280 associated with the process as discussed in base claim 1 above.
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As applied to claim 4, regarding the substrate is mica. It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention to select a material from a host of available includes mica as a substrate, since substrate in form of mica is selected based on design considerations and tradeoffs between cost, mechanical properties, and dielectric properties.
As applied to claim 5, regarding, conductive layer comprises a metallic layer is well known therefore not inventive when departing from the modified Hajati et al as noted above and common general knowledge without exercising any inventive skills.
Hajati et al further discloses, regarding,
Claim 6, wherein (a) comprises depositing or coating the electrically conductive layer on the substrate (see discussed in ¶ [0013, lines 8-12].
Claim 7, wherein the depositing or coating is performed using magnetron sputtering technique (see discussed on bottom of ¶ [0013] for sputtering depositing assisted the process).
Claim 8, wherein the ceramic or metallic thin film comprises a ceramic layer made of one or more ceramic materials (is met by the 130 of the Fig.1).
As applied to claims 9-11, regarding, “piezoceramic materials comprise a sol-gel-derived ceramic material”, since “sol-gel-derived ceramic” chosen as piezoelectric material is commonly known in making thin film layer device, therefore above material is/are not inventive method feature when departing from the modified Hajati et al as noted above and common general knowledge without exercising any inventive skills.
Hajati et al further discloses, regarding,
Claim 16, wherein (a) comprises depositing or coating on the ceramic 130 (see discussed in ¶ [0013, lines 8-12]).
Claim 19, wherein the support layer is elastic; wherein the support layer is made of one or more polymer materials. It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention to select a material from a host of available includes that as listed in claim 19 above, since material selected based on design considerations and tradeoffs between cost, mechanical properties, and dielectric properties.
Further regarding, wherein the support layer can be chemically dissolved and/or thermally decomposed (e.g., peeling with heat assisting is commonly known) refer to (APA) about page 2, in light of ¶[0003] for the teaching includes condition statement above (e.g., peeling off substrate from the assembly without damaging the substrate”).
Therefore, it would have been obvious to one having an ordinary skill in the art at the effective filing date of the invention to employ the APA’s teaching as mentioned above onto the Hajati et al in order to facilitate the fabrication process by utilizing the known and available process.
Allowable Subject Matter
Claims 3, 12-15, 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/MINH N TRINH/ Primary Examiner, Art Unit 3729 mt