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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/14/2026 has been entered.
Response to Amendment
This office action is in response to the communication filed 7/14/2026.
Amendments to claims 11 and 14, filed 7/14/2026, are acknowledged and accepted.
Cancellation of claims 1-10, filed 7/18/2025, remains in effect.
Cancellation of claims 16 and 19-20, filed 10/20/2025, remains in effect.
Due to the amendment, prior rejections under 35 U.S.C. 112(b) are now withdrawn.
Information Disclosure Statement
The information disclosure statement submitted on 7/16/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant's arguments filed 7/14/2026 with respect to the rejection of claim 11 have been fully considered but they are not persuasive. On pgs. 2-3 of the arguments, Applicant rehashes prior arguments, first stating that
‘Applicant does not accept Examiner's further statements - made without evidentiary support that "such order is not particularly critical to the viability or to the basic structural and functional and functional aspects of the final product resulting from the claimed method”’
This indicates Applicant’s refusal to accept Examiner’s earlier finding – that Applicant’s declaration of patentability, premised merely on a claimed order of operations/methods that were already known in the art, is poorly justified.
In this regard, Applicant continues to reassert mere manufacturing/logistical benefits that the claimed order of operations is purported to achieve for Applicant’s business/production workflow – basic conveniences that Examiner had already considered, and that Examiner found would only amount to matters of trivial design consideration for those of ordinary skill in the art. Largely repeating earlier sentiments from their 10/20/2025 Remarks, Applicant argues
‘The claimed method simplifies the supply chain for delivering and incorporating such security markers. The provider of the films (i.e., E Ink Corporation) can make a single product to meet the needs of multiple customers who require distinctly different security features. Accordingly, the provider does not need to coordinate with the end customer for patterning before they deliver the product. The end customer can also hold undifferentiated inventory that can be patterned at a later time based upon demand. These are real, tangible benefits and inventive. The Examiner has dismissed these arguments – without evidence – as merely "convenience."’ – Remarks, pgs. 2-3
Accordingly, Examiner repeats his earlier finding: that the recited order of operations is of little functional significance, and neither does it solve any technically significant problem nor does it achieve any distinct or unexpected result. (1/14/2026 Final Rejection, ¶ 10).
Again, Examiner maintains that delaying customization procedures (poling/patterning) until a particular configuration is desired represents only mere matters of common sense in planning or logistics. This is not inventive, despite Applicant’s unsubstantiated claims to the contrary, and it would have been an obvious matter of routine design choice for one of ordinary skill in the art to simply select or adjust an order of operation so as to optimize business, production, or quality-control considerations – as Applicant was already informed (1/14/2026 Final Rejection, ¶ 11), and as Applicant’s asserted advantages have continued to demonstrate as they undermine their own arguments.
Now, it should be noted that Examiner has already (1) demonstrated that each process constituting the claimed method was already known at the time of filing, and (2) explained why the argued ordering of known processes was considered to be obvious – this all previously established in the 1/14/2026 Final Rejection (refer again to ¶s 22-34), and again rationalized/ reiterated above.
Instead of appropriately responding to such evidence/rationale, however, Applicant has opted instead to make vague criticisms alleging that “Examiner has dismissed [our] arguments – without evidence”, overlooking that such deficiency is only actually present in Applicant’s own refusal to properly engage with the rejection of record. Thus far, Applicant has consistently failed to present any substantive evidence of their own that would demonstrate the argued order of operations presents any particular difficulty or unexpected result to those practicing the art – despite Examiner specifically identifying this to be the core issue in ¶ 10 of the Final Rejection, as reiterated above.
Considering Applicant’s refusal to properly argue or engage with the rejection of record, and the continued absence of relevant evidence that would support any finding of nonobviousness, Applicant is reminded that
“The examiner bears the initial burden of using facts and reasoning to establish a prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence or arguments to show nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses properties not expected by the prior art, or rebuttal arguments” – MPEP 2142.
Examiner again reiterates that nothing comparable to what is emphasized here has been offered by Applicant – who has instead elected to disregard Examiner’s earlier findings, to level vague criticisms concerning Examiner’s effort to keep disputes focused on the technical merits of the claims, and to simply rehash prior arguments based on mere logistical benefits that were already considered/addressed in the Final Office Action.
Applicant is thus advised that Remarks which continue to offer little more than generalized assertions of patentability, without substantively engaging with the rejection or providing appropriately responsive evidence thereto, does not meaningfully rebut the rejection and will serve only to hinder prosecution efforts. Given the lack of any materially new technical reasoning or evidence, Examiner ultimately finds there to be no appropriate grounds on which to alter his previous position, and maintains that simply ordering the operations which were already known in the prior art would have been a matter of obvious decision-making for ordinary practitioners.
On pg. 3 of the Remarks, filed 7/14/2026, Applicant's remaining arguments with respect to claim 11 have been fully considered but are moot because the Applicant is arguing newly amended limitations, filed 7/14/2026, not the Final Rejection, filed 10/20/2025. Newly amended limitations are argued below.
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 11-15 and 17-18 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.
Regarding claim 11, lines 14-15 recite
“and without poling the film of polyvinylidene fluoride of the electrophoretic display film before the sealing step,”
as a parenthetical clause, which is inserted into the main clause spanning lines 14-17 and reciting
“after sealing,” (…) “patterning the film of polyvinylidene fluoride […] to create areas of differing polarization”.
The parenthetical limitation thus appears to only broadly restate the same temporal condition as the main limitation with respect to the order of operations (sealing prior to poling
=
?
patterning), but does so in a terminologically inconsistent and apparently redundant manner. This generates considerable confusion as to whether the parenthetical limitation is intended to impose some additional or material distinction, or whether it is simply reiterating much of the same information already present in the main limitation in an unnecessarily repetitive manner. For examination purposes, the parenthetical limitation is understood only to paraphrase the main limitation without further distinction.
Regarding claim 14, lines 1-3 reciting
“further comprising removing the first release film to produce the patterned electrophoretic display film that is less than 100 μm thick”
logically conflicts with the previous claim 11 – where the patterned electrophoretic display was already apparently “produced” (claim 11, lines 1-2: “A method of making a patterned electrophoretic display film”; claim 11, lines 17-18: “thereby creating the patterned electrophoretic display film”) and must have therefore already been present prior to “removing the first release film”. Examiner notes the limitation may be corrected to read
“further comprising removing the first release film, wherein the patterned electrophoretic display film is less than 100 μm thick after the first release film is removed”,
or some other appropriate and coherent alternative.
Regarding claim 15, line 2 introduces “a plurality of microcells” after lines 9-12 of the previous claim 11 had already introduced and made consistent references to “[an array of, the] microcells”. This renders confusion by improperly reintroducing an already established set of “microcells”. For examination purposes, “wherein the electrophoretic medium layer comprises a plurality of microcells containing […]” on lines 1-2 will simply be read as “wherein the microcells contain […]”.
Claims not specifically addressed in the rejection above inherit the indefiniteness of the claim from which they depend.
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.
Claims 11-15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Moran (US 20190016922 A1) in view of Gu et al (US 20190353973 A1, hereinafter “Gu”), LeCain et al (US 20040027327 A1, hereinafter “LeCain”), and Zhong et al (US 20180198055 A1, hereinafter “Zhong”).
Regarding claim 11, Moran discloses a method of making an electrophoretic display film (“electrophoretic [image] display” or “EPID”) comprising (see ¶s 48-59 detailing different methods for forming microcell arrays in electrophoretic displays, including both photopatterning and embossing presented as alternative methods (in ¶s 49-50, 53, 57); see also ¶s 65-68 and FIGs. 6(A-D) regarding “The preferred process of preparing electrophoretic microcells” for which “the microcell array (6) may be prepared by any of the alternative methods described above”):
providing a polymer film comprising acrylates, vinyl ethers, or epoxides to create a microcell precursor film (“curable [polymer,resin]”, “thermoplastic or thermoset precursor layer”, etc.);
coupling the microcell precursor film (“curable [polymer,resin]”, “thermoplastic or thermoset precursor layer”, etc.) onto an electrode layer (“conductor film”, corresponding to base electrode 62 in FIG. 6(A-D));
embossing the microcell precursor film (“curable [polymer,resin]”, “thermoplastic or thermoset precursor layer”, etc.) to create an array of microcells (i.e. of microcell array 60), wherein the microcells (i.e. of microcell array 60) have a bottom, walls (61), and a top opening (as shown in FIG. 6A);
(Regarding items A-C, note from the cited text –
¶ 49 statements generally applicable to either embossing or photo-patterning: “When used to construct an electrophoretic display, the substrate upon which the microcells are formed typically includes […] conductor film, such as ITO conductor lines. The conductor film is coated with a radiation curable polymer precursor layer.”
¶ 50 regarding embossing: “the microcell array may be prepared by a process including embossing a thermoplastic or thermoset precursor layer coated on a conductor film”;
See also ¶41 indicating Moran’s microcell precursor layer comprises the claimed materials: “an embossed set of containers may be constructed from acrylates […] vinylethers, […] epoxides, […] each small container may be part of a network, e.g. a microcell, as shown in FIG. 2”)
filling the microcells (i.e. of microcell array 60) with an electrophoretic medium (medium 64 with charged pigment particles 65) through the top opening;
sealing off the top opening of the filled microcells (i.e. of microcell array 60) with a water-soluble polymer (“second polymer”, A.K.A. second mixture or sealing layer 36 in FIGs. 3 and 6(C-D)) to create an electrophoretic medium layer of an electrophoretic display film (“electrophoretic [image] display” or “EPID”); and
(Regarding items D-E, see also ¶s 41-44 and FIGs. 2-3 in addition to those cited prior, and note –
¶s 41-43: “the second polymer mixture comprises a hydrophilic polymer”, “the filled microcell structure is over-coated with a second polymer, such as a hydroxymethylcellulose solution, which creates a robust seal on the microcell structure”
¶ 67: “As shown in FIG. 6C, after filling, the microcells are sealed by applying a second mixture (36)”)
Moran does not disclose a method of making a patterned electrophoretic display film comprising:
coupling a film of polyvinylidene fluoride (PVDF) to the polymer film to create a piezo-microcell precursor film;
a flexible, light-transmissive electrode layer;
coupling the light-transmissive electrode layer to a first release film with a first adhesive layer;
after sealing, and without poling the film of polyvinylidene fluoride of the electrophoretic display film before the sealing step, patterning the film of polyvinylidene fluoride of the electrophoretic display film with an electric field of a corona discharge to create areas of differing polarization in the film of polyvinylidene fluoride, thereby creating the patterned electrophoretic display film.
Moran and Gu commonly relate to microcell electrophoretic displays.
Gu discloses (see FIGs. (12-13)(A,B), ¶s 84-87; see also FIGs. 9-11(A,B) and ¶s 79-82 describing associated microcell manufacturing steps) a method of making a patterned electrophoretic display film (electrophoretic display 1200) comprising:
coupling a film (piezo(-)electric material (layer), or piezo film, 1202/902) of polyvinylidene fluoride (PVDF) to the polymer film (EPD film/layer, or display medium layer, 1204/900) to create a piezo-microcell precursor film (Note per ¶ 81: “the EPD layer 900 may be manufactured by pattern micro-cell structures… once the patterns have been defined, and after an embossing step, …”. Gu’s EPD film 1204/900 (with piezo film 1202/902) would thus correspond to Applicant’s/Moran’s precursor film/layer, which is to be patterned/embossed with microcells. See also ¶ 63 reciting suitable piezo materials including PVDF);
a flexible, light-transmissive electrode layer (electrode 2 1208; note the following – ¶ 86: “all the layers… including the electrode 1 and electrode 2 layers may be transparent”, ¶ 80: “flexible and transparent conductive coatings [i.e. for the electrodes] may be used”);
patterning the film (piezoelectric material layer 1202) of polyvinylidene fluoride of the electrophoretic display film (electrophoretic display 1200) to create areas of differing polarization in the film (piezoelectric material layer 1202) of polyvinylidene fluoride, thereby creating the patterned electrophoretic display film (electrophoretic display 1200). (Note ¶ 86 and FIGs. 13(A,B), with differing polarization PZ1 and PZ2 in the completed electrophoretic display film. Note Gu also recites, in ¶ 63, PVDF as a suitable piezo material.)
Moran and LeCain commonly relate to electrophoretic displays.
LeCain discloses (see FIG. 18, ¶s 160-162) coupling the light-transmissive electrode layer (substrate 12 with conductive layer 14) to a first release film (auxiliary release sheet 704) with a first adhesive layer (auxiliary adhesive layer 702)
Moran and Zhong commonly relate to thin-film electroactive structures for electronic and display applications.
Zhong discloses patterning the film of polyvinylidene fluoride with an electric field of a corona discharge. (See ¶ 41: “material of the piezoelectric layer to be poled may be any suitable piezoelectric material. Examples include [...] polymer-based piezoelectric materials such as polyvinylidene fluoride (PVDF)”; see also ¶ 54: “The high-voltage electric field ionizes the surrounding gases to generate a corona discharge including electrons, negative ions, positive ions, and neutral species. […] This causes the charged species (e.g., negative ions) to temporarily reside at a surface of a substrate with a piezoelectric layer to generate a strong electric field to pole the piezoelectric layer.”)
Moran in view of Gu, LeCain, and Zhong thus disclose the invention substantially as claimed, but does not explicitly disclose that patterning is done after sealing, and without poling the film of polyvinylidene fluoride of the electrophoretic display film before the sealing step. However, as already explained in the 1/14/2026 Final Rejection (¶s 8-11) and reiterated in the Response to Arguments above, this single distinction merely specifies an order for operations that were already known in the art, and it continues to present little of functional significance – relating, at most, to standard considerations including manufacturing convenience, process logistics, and quality-control.
It would have therefore been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Moran and Gu by incorporating suitable piezo materials and associated laminate structures, in order to achieve piezo-electrophoretic drive architecture that eliminates the need for an external power supply and simplifies the assembly (Gu ¶ 62).
It would have also been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify Moran with material/design aspects of LeCain, in order better adapt the display for display integration, quality testing, and mass production (LeCain ¶s 19-21).
It would have then been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to also modify Moran with aspects of Zhong’s poling approach, in order to promote uniformity in piezo films and scalability during the manufacturing process (Zhong ¶ 37)
It would have lastly been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to then modify the combined teaching of Moran, Gu, LeCain, and Zhong by simply selecting/adjusting an order of operations (patterning, sealing) in order to optimize business, production, or quality-control considerations.
Regarding claim 12, modified Moran discloses the method of claim 11.
Gu also discloses (see FIG. 9-11(A,B), ¶s 79-81) the method further comprising applying a primer to the polymer film (EPD film 900) before coupling the polymer film (EPD film 900) to the film (piezoelectric material layer 902) of polyvinylidene fluoride (PVDF). (FIG. 11A shows a primer applied to contact portions 1100 where EPD layer 900 meets the piezoelectric material 902.)
Moran further discloses the polymer film comprising acrylates, vinyl ethers, or epoxides (as established in regards to claim 11 above; see ¶ 41: “an embossed set of containers may be constructed from acrylates […] vinylethers, […] epoxides, […]”)
Regarding claim 13, modified Moran discloses the method of claim 11.
LeCain further discloses (see FIG. 18, ¶s 160-162) the method further comprising coupling the electrophoretic medium layer (electro-optic medium layer 16) to a second release film (release layer 28) with a second adhesive layer (adhesive layer 26).
And as established previously in regards to claim 11, Moran had disclosed sealing off the top opening of the filled microcells with the water-soluble polymer (“second polymer”, or second mixture 36 in FIGs. 3, 6(C-D)) to create the electrophoretic medium layer (see ¶s 41-44 with FIGs. 2-3 and also ¶s 65-68 with FIGs. 6(A-D)).
Modified Moran thus discloses the method further comprising coupling the water-soluble polymer (of the electrophoretic medium layer) to a second release film with a second adhesive layer.
Regarding claim 14, modified Moran discloses the method of claim 11.
LeCain further discloses (see FIG. 18, ¶s 160-162) the method further comprising removing the first release film (auxiliary release sheet 704) to produce the electrophoretic display film (comprising adhesive layer 26, electro-optic medium layer 16, and substrate 12 with conductive layer 14). (See also ¶ 164: “To manufacture the display 800, the auxiliary release sheet 704 is removed…”)
Gu further discloses (see FIGs. (12-13)(A,B), ¶s 84-87) the patterned electrophoretic display film (electrophoretic display 1200) that is less than 100 µm thick (¶ 87: “The embodiments shown… reduces the overall device thickness to be less than 50 μm”. Note ¶ 86 and FIGs. 13(A,B), with differing polarization PZ1 and PZ2 in the completed electrophoretic display film).
Regarding claim 15, modified Moran discloses the method of claim 11.
Gu further discloses (see FIGs. (12-13)(A,B), ¶s 84-87; see also FIGs. 9-11(A,B) and ¶s 79-81 describing associated microcell manufacturing methods) wherein the electrophoretic medium layer (EPD layer 1204/900) comprises a plurality of microcells (906) containing a non-polar fluid and charged pigment particles (see also ¶ 51: “In a microcell electrophoretic display, the charge particles and the fluid… are retained within the plurality of cavities [i.e. microcells]”) that move toward or away from the film (piezoelectric material layer 1202) of polyvinylidene fluoride when the patterned electrophoretic display film (electrophoretic display 1200) is flexed (per FIGs. (12-13)B and ¶ 85, charge separation occurs when force is applied to piezoelectric material layer 1202; EPD layer 1204’s positive (negative) charges move towards (away from) the piezo film PZ. Note Gu recites, in ¶ 63, PVDF as a suitable piezo material. See also FIGs. 8 and 14(B-E) depicting such flexing forces).
Regarding claim 17, modified Moran discloses the method of claim 11.
LeCain further discloses wherein the flexible, light-transmissive electrode layer (substrate 12 with conductive layer 14) comprises a metal oxide comprising tin or zinc. (See ¶ 101: “the preferred form of electrically-conductive layer comprises... a thin light-transmissive conductive layer […] the electrically-conductive layer is […] indium-tin-oxide”)
Regarding claim 18, modified Moran discloses the method of claim 11.
Gu further discloses wherein the flexible, light-transmissive electrode layer (electrode 1 1206) comprises poly(3,4-ethylenedioxythiophene) (PEDOT). (See ¶ 80: “flexible and transparent conductive coatings may be used [i.e. for the electrodes], such as PEDOT:PSS…”)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAI-GA D. HO whose telephone number is (571)270-1624. The examiner can normally be reached Monday through Friday, 10AM - 6PM E.T..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.D.H./Examiner, Art Unit 2872
/BRANDI N THOMAS/Primary Examiner, Art Unit 2872
Prosecution Insights