DETAILED 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.
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 7, the limitation “a surface resistance of 104-8.210Ω” does not appear to have support in the originally filed disclosure. Specifically, there is no disclosure of a surface resistance of 8.210Ω. It is additionally noted that, while the specification provides an example device having a surface resistance of 8.2x1010Ω, it is not construed as a range endpoint for the device having a functional material as claimed because it is disclosed only in accordance with a zirconium oxide functional material (see [0072]-[0073] of published version of Applicant’s disclosure).
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 104-8.210Ω” 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. Additionally, it is noted that if a surface resistance of 8.2x1010Ω was intended, it is unclear as to how the range of surface resistance is compatible with the claimed functionals, as this surface resistance is disclosed only in accordance with a zirconium oxide functional material (see [0072]-[0073] of published version of Applicant’s disclosure).
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, and the second encapsulation layer comprises the second functional material; wherein 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 12/9/2025 have been fully considered but they are not persuasive.
Applicant argues (page 6-7 and 7-8) that “surface resistance” does not create a 112a or a 112b issue because the term is “well-established” in the field and “does not require explicit definition,” because “one skilled in the art would readily understand that ‘surface resistance’ refers to the sheet resistance” and is “determined only by material resistivity and film thickness.”
In response, the examiner disagrees. 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), whereas sheet resistance (i.e. surface resistivity) is understood as an inherent property of a material. It is noted that while applicant argues that the two terms are the same, argument does not replace evidence (see MPEP 2145). It is noted that the units of the claimed “surface resistance” are Ω, which is not an art recognized unit for sheet resistance and applicant has disclosed “sheet resistance” elsewhere in the specification as a distinct characteristic of the device different from the “surface resistance.” Each of these facts would indicate that the two terms represent different characteristic and not the same characteristic as applicant argues. Since applicant is employing the “surface resistance” with units which are consistent with a resistance rather than a resistivity, and in a manner which is not consistent with the well-known concept of sheet resistance, the term is not described in the original disclosure 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. Additionally, since applicant is employing the “surface resistance” with units which are consistent with a resistance rather than a resistivity, and in a manner which is not consistent with the well-known concept of sheet resistance, but argues that the terms have the same meaning, the proper interpretation of the term cannot be ascertained and the term is indefinite.
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 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 2/11/2026