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 .
Claim Analysis
Summary of Claim 1:
An actuator comprising:
a plurality of elastomer layers; and
a plurality of electrode layers, wherein the elastomer layers and the electrode layers are alternately laminated,
the electrode layer contains carbon black and a binder,
a content of the carbon black in the electrode layer is 10% by mass or more and 20% by mass or less, and
a specific surface area of the carbon black is 380 g/m2 or more and 800 m2/g or less.
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 1, 2, 4, 5-9, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Krause et al. (US 20180159022 as listed on IDS dated July 31, 2024).
Regarding claim 1, Krause et al. disclose a multilayer actuator comprising a laminate comprising at least one first electrode unit on a dielectric elastomer film and a second electrode unit on the side of the dielectric elastomer film remote from the first electrode unit, wherein the electrode layer consists of a matrix polymer and 1% to 60% by weight of carbon black having a BET surface area of <1000 m2/g [0058-0071], thereby reading on the plurality of the elastomer and electrode layers and overlapping with the claimed amount and specific surface area of carbon black.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Krause et al.
Regarding claim 2, Krause et al. teach the carbon black used in the examples have an Oil Absorption Number (Table 2), which is a measure of the volume of oil per unit mass of carbon black and thereby reads on the carbon black having a porous structures.
Regarding claim 4, Krause et al. teach the thickness of the electrode layer is 0.1 µm to 5 µm [0093], thereby lying within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Krause et al.
Regarding claim 5, Krause et al. broadly teach the electrode should have a modulus of <10 MPa [0021], thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the broad range of the Young’s modulus as taught by Krause et al.
Regarding claim 7, Krause et al. teach the elastomer of the elastomer may be silicone elastomers [0096], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to use the silicone elastomer as taught by Krause et al.
Regarding claim 8, Krause et al. teach the binder of the electrode layer may be silicones [0109], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to use the silicone as a binder as taught by Krause et al.
Regarding claim 9, Krause et al. teach the elastomer layer has a thickness of 1 µm to 200 µm [0099]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Krause et al.
Regarding claim 12, Krause et al is silent on the displacement rate as recited in the instant claim.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. displacement rate would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 13, Krause et al. broadly teach a component such as an electronic or electrical device comprising the electromechanical transducer, wherein the electromechanical transducer is an actuator, sensor, and/or generator [0133-0134]. Therefore, it would have been obvious to one of ordinary skill in the art to install an actuator in an electrical device as taught by Krause et al.
Claims 3, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Krause et al. (US 20180159022 as listed on IDS dated July 31, 2024) in view of Nakamaru et al. (EP 3565103 as listed on IDS dated July 31, 2024).
The actuator of claim 1 is incorporated herein by reference.
Regarding claim 3, Krause et al. is silent on the electrode layer having an electrical resistance as resistance as recited in the instant claim.
Nakamaru et al. teach an actuator comprising an electrode that has a resistance of 10 MΩ∙cm or less [0030], equivalent to 10,000,000 Ω∙cm or less and thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select an electrode having a resistance as taught by Nakamaru et al. since both are related to actuators comprising an electrode layer.
Regarding claim 10 and 11, Krause et al. is silent on the Young’s modulus of the elastomer layer as recited in the instant claims.
Nakamaru et al. teach an actuator comprising an electrode that has a Young’s modulus of 10 MPa or less and an elastomer layer that has a Young’s modulus of 10 MPa or less [0024, 0029], thereby overlapping the claimed range of instant claim 10 and 11. Nakamaru et al. offer the motivation that a Young’s modulus within this range makes it easier to stretch the layers [0024, 0029]. Krause et al. is also concerned with the extensiblity of the layers [0018]. Therefore, it would have been obvious to one of ordinary skill in the art to add an elastomer layer having the Young’s modulus of Nakamaru et al. with the actuator of Krause et al. with reasonable expectation that the extensibility would improve.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamaru et al. (EP 3565103 as listed on IDS dated July 31, 2024) in view of Krause et al. (US 20180159022 as listed on IDS dated July 31, 2024).
Regarding claim 1, Nakamaru et al. disclose in Sample 7-1 an actuator comprising a silicone elastomer sheet and a carbon silicone solution electrode layer sprayed onto the elastomer sheet ([0184-0189], Figs 22A, 22B, 23A, and 23B), thereby reading on the instant claim.
Nakamaru et al. is silent on the surface area of the carbon black.
Krause et al. teach an actuator comprising an electrode layer wherein the electrode layer consists of a matrix polymer and 1% to 60% by weight of carbon black having a BET surface area of <1000 m2/g [0058-0071]. Therefore, it would have been obvious to one of ordinary skill in the art to use a carbon black having the surface area as recited by Krause et al. with the actuator of Nakamaru et al. since both are related to actuators.
Regarding claim 2, Nakamaru et al. is silent on if the carbon black is porous.
Krause et al. teach the carbon black used in the examples have an Oil Absorption Number (Table 2), which is a measure of the volume of oil per unit mass of carbon black and thereby reads on the carbon black having a porous structures. Therefore, it would have been obvious to one of ordinary skill in the art to use the porous carbon black of Krause et al. with the actuator of Nakamaru et al. since both are related to actuators comprising an electrode layer comprising carbon black.
Regarding claim 3, Nakamaru et al. is silent on the electrode resistance of Sample 7-1.
However, Nakamaru et al. broadly teach an actuator comprising an electrode that has a resistance of 10 MΩ∙cm or less [0030], equivalent to 10,000,000 Ω∙cm or less and thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select an electrode having a resistance as taught by Nakamaru et al.
Regarding claim 4, Nakamaru et al. is silent on the thickness of the elastomer layer of Sample 7-1 as recited in the instant claim.
However, Nakamaru et al. broadly teach the thickness of the elastomer layer is 50 µm or less [0028], thereby overlapping with the claimed range of 0.5 µm or more and 20 µm or less.
Regarding claim 5, 10, and 11, Nakamaru et al. is silent on the Young’s Modulus of the electrode and elastomer layer in Sample 7-1.
However, Nakamaru et al. broadly teach an actuator comprising an electrode that has a Young’s modulus of 10 MPa or less and an elastomer layer that has a Young’s modulus of 10 MPa or less [0024, 0029], thereby overlapping the claimed range of instant claim 5, 10, and 11. Therefore, it would have been obvious to one of ordinary skill in the art to select a Young’s modulus as taught by Nakamaru et al.
Regarding claim 6, Nakamaru et al. do not teach Sample 7-1 comprises a dispersant [0184-0189], thereby reading on the instant claim.
Regarding claim 7 and 8, Nakamaru et al. disclose in Sample 7-1 a silicone elastomer sheet and a carbon silicon electrode layer [0184-0189], thereby reading on the instant claim.
Regarding claim 9, Nakamaru et al. disclose the thickness of the elastomer layer in Sample 7-1 is 10 µm [0184-0189], thereby lying within the claimed range.
Regarding claim 12, Nakamaru et al is silent on the displacement rate in Sample 7-1 as recited in the instant claim.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. displacement rate would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 13, Nakamaru et al. does not teach an electronic equipment comprising the actuator of Sample 7-1.
However, Nakamaru et al. broadly teach the actuator is installed in an electronic device [0073], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to install the actuator into an electronic device as taught by Nakamaru et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763