DETAILED ACTION
Claims 1-10 of U.S. Application No. 18271860 filed on 11/20/2023 are presented for examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/12/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 10 is 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 10: the limitation in lines 13-14, “…generating a novel processing instruction…”. It is not clear what meant by the word “novel”, is it a patentably novel software? Or newer instructions than those of previously produced in S1?
The examiner suggest amending the limitation to read “…generating
Claim Rejections - 35 USC § 102
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 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 1-2, 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gao et al. (CN 108964511; Hereinafter, “Gao”).
Regarding claim 1: Gao discloses a triboelectric nanogenerator based on a 4D printing technology, comprising:
a first substrate layer (7) and a second substrate layer (3), arranged parallelly up and down (fig. 1-3); a first conducting layer (6), arranged on a lower surface of the first substrate layer (7); a second conducting layer (4), arranged on an upper surface of the second substrate layer (3); and a first friction layer (5), arranged on a lower surface of the first conducting layer (6) or an upper surface of the second conducting layer, wherein the first conducting layer (6) and the second conducting layer (4) are electrically connected (fig. 7); the first substrate layer (7), the second substrate layer (3) and the first friction layer (5) are formed by adopting the 4D printing technology; and a gap (fig. 7) is formed between the first friction layer (5) and the second conducting layer (4) or between the first friction layer and the first conducting layer, and a contacting-separating reciprocating motion (fig. 7, and paragraph [0053]) is performed between the first frictional layer (5) and the second conducting layer (4) or between the first frictional layer and the first conducting layer.
The Examiner notes that the limitations “based on a 4D printing technology”, and “formed by adopting the 4D printing technology” have not been given a patentable weight since they are a product by process limitations in a device claim.
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777F, 2d 659, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see also MPEP 2113.
Further, the Examiner notes that it is well known that 4D printing is an additive manufacturing process that builds objects from smart materials that can change shape over time after printing in response to a stimulus like heat, water, or light. The "fourth dimension" is time, and the ability of the printed object to morph from one 3D shape into another is enabled by using responsive materials, such as shape-memory polymers or hydrogels.
And since Gao discloses 3D printing of a raw material like polyurethane, which is a shape memory polymer (paragraph [0021]). Gao is indeed disclosing the 4D printing technology.
Regarding claim 2/1: Gao disclose the limitations of claim 1 and further discloses that the first substrate layer (7), the second substrate layer (3) and the first friction layer (5) are made of a shape memory polymer layer (polyurethane material; paragraph [0021]) or a self-repair material layer.
Regarding claim 6/1: Gao disclose the limitations of claim 1 and further discloses that there are bulges or grooves (fig. 4-6) on a surface of the first friction layer (5).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gao in view of Chandrasekaran et al. (US 2018/0015436; Hereinafter, “Chandrasekaran”).
Regarding claim 3/1: Gao disclose the limitations of claim 1 but does not specifically disclose that the 4D printing technology is fused deposition printing, direct ink writing printing or digital photocuring.
Chandrasekaran discloses using direct ink writing printing (para [0039]).
Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the invention to have configured the 3D printing of shape memory polymer material (i.e. 4D printing) of Gao as direct ink writing printing as disclosed by Chandrasekaran as a known method for its reliability.
Claim 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Gao in view of Park et al. (US 2015/0001993; Hereinafter, “Park”).
Regarding claim 7/1, and 8/7/1: Gao disclose the limitations of claim 1 but does not specifically disclose that ends of both sides of the first substrate layer and the second substrate layer are connected by a connecting portion to form an annular structure; the connecting portion, the first substrate layer and the second substrate layer are integrally printed.
Park discloses ends of both sides of the first substrate layer (510) and the second substrate layer (520) are connected by a connecting portion to form an annular structure (fig. 11); the connecting portion, the first substrate layer and the second substrate layer are integrally (fig. 11) printed (product by process limitations that has no patentable weight).
Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the invention to have provided the triboelectric nanogenerator of Gao such that ends of both sides of the first substrate layer and the second substrate layer are connected by a connecting portion to form an annular structure; the connecting portion, the first substrate layer and the second substrate layer are integrally printed as disclosed by Park to be able to keep the desired distance between the harvesting surfaces.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gao in view of Kim et al. (US 2019/0288613; Hereinafter, “Kim”).
Regarding claim 9/1: Gao disclose the limitations of claim 1 but does not disclose that the triboelectric nanogenerator is prepared in a shoe-pad shape for harvesting mechanical energy generated by walking of a human body.
Kim discloses (para [0048, 0148, 0149, 150]) triboelectric nanogenerator is prepared in a shoe-pad shape (fig. 29) for harvesting mechanical energy generated by walking of a human body (para [0005]).
Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the invention to have prepared the triboelectric nanogenerator of Gao to be in a shoe-pad shape for harvesting mechanical energy generated by walking of a human body as disclosed by Kim to take the shape that fit for the intended application of the triboelectric nanogenerator.
Allowable Subject Matter
Claims 4-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 4/1: the limitations of claim 4, “…a volatile solution with a conducting substance is sprayed to surfaces of the first substrate layer and the second substrate layer, and the first conducting layer and the second conducting layer are obtained by volatilizing a solvent.
Claim 5 is also objected as it depend directly on claim 4.
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 10: the limitations of claim 10, “…S5: spraying a volatile solution doped with a conducting substance to a bottom surface of the first substrate layer and a top surface of the second substrate layer by using a spraying machine after print processing, and volatilizing a solvent to obtain the first conducting layer and the second conducting layer;…” in the combination as claimed are neither anticipated nor obvious over the prior arts in record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED ELNAKIB whose telephone number is (571)270-0638. The examiner can normally be reached 8:00AM-4:00PM.
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/AHMED ELNAKIB/Primary Examiner,
Art Unit 2834