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 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 1, 5, 7, 14, 15, 17, 19, and 40 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.
Claim 1 recites “wherein at least a portion of the first electrode near a perimeter of the first electrode is unattached to the rigid element, wherein the portion of the first electrode near the perimeter is adapted to resist peeling from the second electrode under a load applied within the perimeter.” The standard for determining what constitutes resisting peeling is not set forth in the specification. Wouldn’t any two electrodes that have an attractive state resist peeling away from one another? What structure is required to be considered sufficient attraction, rigidity, flexibility, etc. to resist peeling? Alternatively, is the feature that creates the level of resistance the claim aimed at providing achieved by means of the portion of the first electrode near a perimeter having a lower bending stiffness than a middle portion of the electrode, as inferred in the arguments, pages 1-2? In addition, against which basis is the resisting peeling relative to? For example, if peeling is less in one arrangement than in a random arrangement of a competitor, could this be considered resisting peeling? Essentially, it is unclear what types of arrangements would or would not be sufficient to be considered resisting peeling and relative to what other option.
The specification discloses that the load being applied near its center helps prevent peel and that applying the load at the center creates a vacuum between the electrodes which helps further resist peeling (see paragraph [0007]). Another embodiment discloses the use of rails or slots that prevent peel (see paragraph [0014] and [0046]). In yet another embodiment, the specification discloses that the rigid element located in the middle of the flexible electrode and not at its perimeter, reduces peeling (see paragraph [0036]).
In addition, the specification describes low stiffness structures 146 such as elastic bands or small beam springs that do the opposite and allow for peeling (see paragraph [0057]).
In an effort to promote compact prosecution, and because the arguments are directed at the stiffness level difference between the perimeter and center (see arguments, paragraph spanning pages 1 and 2), this indefinite feature is interpreted as encompassing the subject stiffness difference for achieving the desired level of resistance to peeling that the claim was intended to cover and which was argued as the distinguishing feature.
Allowable Subject Matter
Claims 1, 5, 7, 14, 15, 17, 19, and 40 would be allowable if rewritten or amended 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. It is noted that the withdrawn claims would be rejoined by way of being dependent on an allowable claim if the claim is amended in a manner consistent with the allowable subject matter and to overcome the rejection under 112(b).
With reference to claim 1, the prior art does not disclose the combination of features including the flexible first electrode, rigid element that transmits force perpendicular to the conductive surface, unattached perimeter, and stiffness difference between the perimeter and center that causes the “resist peeling” feature as this is best understood.
Response to Arguments
Applicant's arguments filed May 27, 2025 have been fully considered and are partially persuasive and partially not persuasive. Applicant argues that the prior art does not include the stiffness gradient. As this is interpreted as the perimeter having the lower stiffness than the middle, the Examiner agrees. This precise language is not recited in claim 1, but the resistance to peeling relative to another options is interpreted as including this feature. Applicant also argues that the rigid element is not capable of transmitting any force in a direction perpendicular to the conductive surface. The Examiner disagrees since the rigid element is capable of transmitting a force in all directions. The claim does not recite from which source, the subject force is originated or from which direction the force is transmitted. As such, the rigid element must only be “capable of transmitting a force in a direction substantially perpendicular to the electrically conductive surface of the first electrode.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STACEY A FLUHART whose telephone number is (571)270-1851. The examiner can normally be reached M-Th 9AM-7PM.
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, Ernesto Suarez can be reached at 571-270-5565. 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.
/STACEY A FLUHART/Primary Examiner, Art Unit 3655