DETAILED ACTION
Notice of 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 .
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.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6 May 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to the nonelected inventions, there being no allowable generic or linking claim.
The applicant timely traversed the restriction (election) requirement and further amended the independent claim 13 to depend on claim 1 in the reply filed on 3 August 2026.
However, the applicant did not distinctly and specifically point out the supposed errors in the restriction requirement or the reason of electing with traverse. Therefore, the election has been treated as an election without traverse (MPEP § 818.01(a)) and claims 13-20 are not examined and addressed by this Office Action.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation “the at least two electrodes are structured on at least one side so that they have recesses in the form of troughs.” must be shown or the feature(s) canceled from the claim 2. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: “the at least two electrodes are structured on at least one side so that they have recesses in the form of troughs.” The specification generally discussed the electrodes, the recesses and the form of troughs in paragraph [0019], this paragraph doesn’t disclose what is “on at least one side” of the at least two electrodes that must have many sides.
The Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
The Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. The Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-12 discloses the numbers in parentheses, they should be removed from the claims.
Claims 2-4 and 6-12 recite “characterized in that” raising a question as to the limiting effect of the language in a claim because it appears to suggest or make optional instead of positively reciting claimed limitations.
Claim 5 recites in lines 2-3 “which terminates the stack of at least two electrodes and at least one elastomer film”, this limitation should be changed to “which terminates the stack of the at least two electrodes and the at least one elastomer film”.
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.
Claim 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 discloses in lines 10-12 “in which the electrodes and elastomer films are arranged alternately, and the electrodes are conductively connected”. It is unclear whether “the electrodes” are the same with or additional to “at least two electrodes” disclosed in line 6 of claim 1. It is also unclear whether “elastomer films” are the same with or additional to “at least one elastomer film” previously disclosed in line 5 of claim 1, the inconsistence of singular and plurality is not acceptable.
Claims 2-12 depend directly or indirectly on a rejected claim 1 and are, therefore, also rejected under 35 U.S.C. 112(b) for the reason set above.
Claim 2 discloses "the at least two electrodes are structured on at least one side so that they have recesses in the form of troughs." in lines 2-3. There is insufficient antecedent basis in the claim, in the specification and in the drawings for this limitation.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-5 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ham et al. (U. S. 20170192560).
Regarding independent claim 1, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0076] - [0079]) discloses a transducer element based on dielectric elastomers, comprising a carrier board (151), wherein the carrier board (151) comprises first contact surfaces, which are conductively connected to a first connector (151A, 151B) , and second contact surfaces, which are conductively connected to a second connector (151A, 151B) contact, at least one elastomer film (133), consisting of a dielectric material, at least two electrodes (131, 132), wherein the electrodes (131, 132) are at least partially air-permeable and each have at least one contact surface for conductively connecting to the first or second contact surfaces of the carrier board (151), wherein the at least two electrodes (131, 132) and the at least one elastomer film (133) are arranged on the carrier board (151) so that a stack is 132)formed, in which the electrodes (131, 132) and elastomer films (133) are arranged alternately, and the electrodes (131, 132) are conductively connected alternately to the first contact surfaces and the second contact surfaces of the carrier board (151).
Regarding claim 3, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0076] - [0079]) discloses the at least two electrodes (131, 132) are perforated (it is well known in the art that the electrodes are perforated to improve the conductivity).
Regarding claim 4, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0076] - [0079]) discloses the carrier board (151) has a shielding surface, which is conductively connected to a third connector contact (112).
Regarding claim 5, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0059] and [0076] - [0079]) discloses a shield board (124), which terminates the stack of at least two electrodes (131, 132) and at least one elastomer film (133) on a side facing away from the carrier board (151).
Regarding claim 9, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0076] - [0079]) discloses the at least two electrodes (131, 132) each have two spatially separated contact surfaces.
Regarding claim 10, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0076] - [0079]) discloses the carrier board (151) and/or the shield board (124) are configured as flexible circuit boards.
Regarding claim 11, Ham et al. (e. g. see FIG. 1, FIG. 3, paragraphs [0076] - [0079]) discloses the carrier board (151, 152) is segmented.
Regarding claim 12, Ham et al. (e. g. see paragraphs [0078] - [0080]) discloses the carrier board (151) is configured to accommodate electronic components (180, 192).
Examiner’s Remark:
In this Office Action, Examiner has cited particular figures, column numbers, paragraph numbers, and line numbers of the prior arts applied in the rejections. However, other figures and passages of the same prior arts may anticipate the claim limitations as well. Therefore, Applicants are respectfully requested to consider the prior arts in their entirety as potentially teaching claimed invention.
For amendment purpose, Applicants are very much appreciated for indicating the portion(s) of the specification which dictates the structure(s) relied on for proper interpretation as well as for verification and determination of the metes and bounds of the claimed invention. Applicants’ indication of the specific figures and items of figures which represent features of the invention disclosed in the amended claims, is also expected.
Additionally, in the event that other prior art(s) is/are provided and made of record by the Examiner as being relevant or pertinent to applicant's disclosure but not relied upon, the examiner requests that the reference(s) be considered in any subsequent amendments, as the reference(s) is also representative of the teachings of the art and may apply to the specific limitations of any newly amended claim(s).
Allowable Subject Matter
Claims 6-8 would be allowable if rewritten in independent form including all limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hasegawa (U. S. Patent 7841862) discloses a dielectric sheet used as an elastomer connector (151A, 151B) of highly integrated circuit board and fine pitch electrical components.
Gwin et al. (U. S. Pre-Grant Publication No. 20170086704) discloses an electronic skin comprising a flexible capacitive sensor to capture a change in capacitance, wherein the change in capacitance is to translate to sheer, tensile, and torsion values. The electronic skin also comprises at least one section, wherein the one section is dielectrically separated from another section and the sheer, tensile, compression and torsion values are continuous across the at least one section and another section.
Mathieu et al. (U. S. Pre-Grant Publication No. 20170176266) discloses a system and a process for manufacturing the system having a network of sensors including a sheet of dielectric material that is elastically deformable under compressive and shear stress. The system includes a first electrode fixed to the first side of the sheet of dielectric material and a second electrode fixed to the second side of the sheet of dielectric material, the first electrodes (131, 132) of the capacitive sensors of a given cell being connected in series to a first electrically conductive track connecting a row of cells of a network of sensors.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY P. PHAM whose telephone number is (571) 270-3046. The examiner can normally be reached on MON-FRI 8:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, DEDEI HAMMOND, can be reached at (571) 270-7938. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
9 September 2026
/EMILY P PHAM/ Primary Examiner, Art Unit 2837
Prosecution Insights