DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/13/2026 has been entered.
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.
Claims 7 and 17-20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 7, the limitation “surface resistance” lacks adequate written description. Specifically, the limitation of claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing. The feature of the surface resistance appears to be essential or critical, but the defining variables associated with the surface resistance are not adequately described in the specification. See MPEP2163.1.A.
Regarding claim 18, the limitation “wherein the first encapsulation layer has a refractive index between 1.6 and 2.0,” does not appear to have support in the originally filed disclosure in combination with the range of surface resistance required by claim 7.
Regarding claim 19, the limitation “wherein the second encapsulation layer has a refractive index between 1.6 and 2.0,” does not appear to have support in the originally filed disclosure in combination with the range of surface resistance required by claim 7.
Regarding claim 20, the limitation “wherein the functional material is the electrically conductive material, the high dielectric material or a combination thereof, the first encapsulation layer includes 0.01-10 wt% the first functional material, and the second encapsulation layer includes 0.01- 10 wt% the second functional material” does not appear to have support in the originally filed disclosure in combination with the range of surface resistance required by claim 7.
Note the dependent claims do not cure the deficiencies of the claims on which they depend.
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 7 and 17-20 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.
Regarding claim 7, the limitation “a surface resistance of 104Ω” is unclear as to what is required by the claimed invention. Specifically, it is noted that surface resistance is understood to vary based on the material and geometry of the electrodes used to measure it (see Maryniak et al. pg. 1, col. 2, para. 1), and therefore is not understood as a characteristic of the device itself or of the material itself. Accordingly the scope of the claim is indefinite because it cannot be ascertained what layer of the prior art would or would not read on the claimed limitation. Additionally, it is unclear as to how it is related to the “sheet resistance.” Specifically, Applicant argues (see pg. 6-7, Arguments filed 12/9/2025) that surface resistance and sheet resistance are the same, however the units of the claimed “surface resistance” are Ω, which is not an art recognized unit for sheet resistance. Applicant has further disclosed “sheet resistance” elsewhere in the specification as a distinct characteristic of the device different from the “surface resistance,” and the use of different terms indicates a different characteristic and not the same characteristic as applicant argues.
Regarding claim 17, the limitation “the functional material comprises a first functional material and a second functional material…and the first encapsulation layer comprises…the first functional material, the second encapsulation layer comprises…the second functional material and the first functional material and the second functional material are different materials,” is unclear as to how the first and second functional materials are related to the materials recited in claim 7.
Regarding claim 18, the limitation “wherein the first encapsulation layer has a refractive index between 1.6 and 2.0,” is unclear as to how it is compatible with the surface resistance and materials required by claim 7.
Regarding claim 19, the limitation “wherein the second encapsulation layer has a refractive index between 1.6 and 2.0,” is unclear as to how it is compatible with the surface resistance and materials required by claim 7.
Regarding claim 20, the limitation “wherein the functional material is the electrically conductive material, the high dielectric material or a combination thereof, the first encapsulation layer includes 0.01-10 wt% the first functional material, and the second encapsulation layer includes 0.01- 10 wt% the second functional material” is unclear as to how it is compatible with the surface resistance and materials required by claim 7.
Note the dependent claims necessarily inherit the indefiniteness of the claims on which they depend.
Note that the claims have not been rejected over the prior art because, in light of the 35 U.S.C. 112 rejections supra, there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claims; hence, it would not be proper to reject the claims on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive.
Applicant argues (page 5-6) that “surface resistance” does not create a 112a issue because the submitted Mitsubishi instrument manual shows ”a four-pin probe may be fixed on the surface of a sample to obtain a measured resistance, and a correction factor may be applied where appropriate,” and “[t]he instrument manual also shows that resistance-related values for thin-film surface measurements may be displayed in different units, including Ω, Ω/□, and Ω/cm,” and therefore “in the context of a thin encapsulation layer, a person skilled in the art would understand the claimed ‘surface resistance’ expressed in Ω as referring to a surface electrical resistance value of the encapsulation layer obtained under a conventional four-point probe measurement context.”
It is first noted that the reference listed in the arguments is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states the list must be submitted in a separate paper. Since a proper IDS has not been submitted, the information referred to in the arguments has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained therein will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Additionally, any information found in submitted references does not alleviate the requirement that “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 limitation “surface resistance” lacks adequate written description because the feature appears to be essential or critical, but the defining variables associated with the surface resistance are not adequately described in the specification. See MPEP2163.1.A. Accordingly, it has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing.
Applicant argues (page 5-) that “surface resistance” does not create a 112b issue because “for at least the reasons discussed above, the term is reasonably clear when read in light of the present specification and the ordinary understanding in the relevant art,” and because the cited Mitsubishi instrument manual “confirms that surface resistance may be expressed as Ω/□, Ω/sq, or Ω, and that such values may be obtained using a four-point probe measurement method.”
In response, the examiner notes again that, for the reasons outlined above, the reference has not been considered. Additionally, the limitation “a surface resistance of 104Ω” is indefinite because “surface resistance” is understood to vary based on the material and geometry of the electrodes used to measure it (see Maryniak et al. pg. 1, col. 2, para. 1), and therefore is not understood as a characteristic of the device itself or of the material itself. Because the value varies based on external factors which are not claimed and not even part of the claimed device, e.g. the geometry of the measurement electrodes, the scope of the claim cannot be ascertained. For example, according to Marynik, the electrodes of the configuration of the testing electrodes could merely be changed to achieve a surface resistance that is larger or smaller. The surface resistance is therefore not understood as a defined characteristic of the device, but rather appears to be a function of how it is tested.
Additionally, Applicant has argued (see pg. 6-7, Arguments filed 12/9/2025) that surface resistance and sheet resistance are the same, however the units of the claimed “surface resistance” are Ω, which is not an art recognized unit for sheet resistance and Applicant’s disclosure has indicated “sheet resistance” as a distinct characteristic of the device different from the “surface resistance.” Despite the previous Office action detailing this apparent contradiction, Applicant has failed to address this and therefore the record remains unclear.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Lauren R Bell whose telephone number is (571)272-7199. The examiner can normally be reached M-F 8am-5pm.
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/LAUREN R BELL/Primary Examiner, Art Unit 2896
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