DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group I, claims 1-10, drawn to an encapsulated system, in the reply filed on 2/2/2026 is acknowledged. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Priority
3. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/344,758, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 is the elected, controlling claim and recites:
“An encapsulated system, comprising:
a non-permeable coating comprising a modulus of elasticity of up to 1 gigaPascals (GPa); and
at least a pair of leads coupled to an electronic device and protruding from the non-permeable coating.
The provisional application has no recitation of a modulus of elasticity range. For this reason alone, claim 1 and its dependent claims are not supported by the provisional.
Additionally, the provisional is specifically drawn to an encapsulated system in which the electronic device is a battery. The provisional does not demonstrate that the breadth of “an electronic device” was contemplated at the effective filing date thereof. The claims as presented are significantly broader and allow, for example, an encapsulated system in which the electronic device is a sensor, capacitor, solar cell, etc. Accordingly, this additional feature is an example of where a broad broad genus (“an electronic device”) is presented but the disclosure only describes a narrow species (“a battery”) with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc); MPEP 2163.
Furthermore, although the independent claim dictates that all claims dependent thereon are not supported, it is noted that some of the features presented in the dependent claims are also lacking support (e.g., it does not appear that at least a coated fabric is taught as the non-permeable coating option – see claim 4). Other limitations found in the dependent claims are also not taught by the provisional application.
Accordingly, the effective filing date of the claims under examination, namely claims 1-10, is that of the instant application (5/23/2023). Any arguments against this analysis should provide explicit citation to support by line/paragraph number for each limitation presented in the claim relative to the provisional application.
Claim Analysis
4. The independent claim recites in part, “…a non-permeable coating comprising a modulus of elasticity of up to 1 gigaPascals (GPa)…” A non-permeable coating of the prior art having no (zero) modulus of elasticity reads on one embodiment of the claimed range. It is highly recommended that a supported lower bound is added to the range if Applicant intends the non-permeable coating to have a modulus of elasticity that is not zero.
Claim Rejections - 35 USC § 112
5. The rejections of claim 1, and thus dependent claims 2-10, claim 9, and thus dependent claim 10; and claim 10 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 are withdrawn in view of the corrections filed on 7/2/2026.
Claim Rejections - 35 USC § 112
6. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claim 1, and thus dependent claims 2-10; claim 2, and thus dependent claim 3; claim 3; and claim 8 are each rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
One of ordinary skill in the art would have to engage in undue experimentation in order to make and use applicants claimed invention. See, In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Circ. 1988); see also, MPEP § 2164.01. MPEP 2164.01(a) sets forth the following factors, summarized from In re Wands, which should be considered when determining whether the claimed invention would require undue experimentation. The factors are as follows:
(A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; (H) and the quantity of experimentation needed to make and use the invention based on the content of the disclose.
An analysis follows with the above factors addressed. Claim 1 recites in part, “…a non-permeable coating comprising a modulus of elasticity of up to 1 gigaPascals (GPA)…” Claim 8 further limits the modulus of elasticity range to “up to 0.5 GPA.” Claim 2 further defines that the non-permeable coating is a vapor barrier with claim 3 requiring the vapor barrier preventing gas and moisture ingress to the electronic device.
The modulus of elasticity, or Young’s modulus, measures a material’s elasticity and quantifies a material’s resistance to non-permanent, or elastic deformation. Le Floch et al., “Stretchable Seal,” ACS Appl. Mater. Interfaces 2018, 10, 27333-27343 (copy provided) provides an analysis of materials of stretchable seals for electronic devices, quantifying “stretchable” using elastic modulus in pascals (Pa) (see Figs. 1a-1b), and teaches:
“…stretchable and low-permeability materials do not exist. At the molecular level, stretchability and permeability are inextricably linked. …We collect data on the permeability of water and oxygen for various materials and confirm that no stretchable materials has low enough permeability to serve as hermetic seals for electronics.” (p. 27333).
Le Floch plots the elastic modulus (Pa) against water and oxygen permeabilities (Figs. 1a-b), reproduced below, and there are no known materials that are simultaneously hermetic or non-permeable with an elastic modulus up to 1 GPA as claimed:
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A patent application disclosure must teach a person having ordinary skill in the art how to make and/or use the full scope of the invention claimed. In view of the evidence above, Le Floch demonstrates that stretchable and low-permeable materials do not exist. The instant independent claim goes a step further to claim non-permeable films (i.e., zero permeability), also termed “hermetic” materials. Given low-permeable materials with stretchability (i.e., having an elastic modulus) do not exist, then non-permeable materials with stretchability would appear to also be an impossibility.
Accordingly, based on the state of the prior art (factor C of the Wands factors) to Le Floch demonstrating that materials capable of simultaneously meeting the features presented in the independent claim (i.e., non-permeability and stretchability/elastic modulus up to 1 GPA) do not exist in the prior art, and given there is no direction, examples, or guidance on any specific material(s)1 within the instant application disclosure that simultaneously meet said features (i.e., factors F and G of the Wands factors), it is concluded that one of ordinary skill in the art would have to engage in undue experimentation in order to make and use applicants claimed invention.
As to the other Wands factors, the breadth of the claims and the state of the prior art (factors A and C) would not be problematic if there were known materials that one of ordinary skill in the art could implement to achieve the construct claimed; however, given said materials do not appear to exist based on the evidential reference cited, and the instant application is entirely silent on any specific material that achieves the features claimed, the breadth of the claims for which no materials are known in the state of the prior art or taught in the instant application militates against a finding of enablement.
As to the nature of the invention and the level of predictability in the art (factors B and E), the fields of chemistry and materials engineering are highly complex fields, wherein providing currently unknown materials that defy known scientific standards (see Le Floch’s description of how stretchability/elasticity of an elastomer or polymer is due to each individual polymer chain containing hundreds or more monomer units undergoing ceaseless thermal motion, wherein small molecules such as water and oxygen diffuse in an elastomer as readily as in polymer liquid – p. 27333) militates against a finding of enablement.
As to the level of ordinary skill in the art (factor D), this level of skill would be a person holding at least a bachelor’s degree in chemical engineering, material science, or chemistry. This factor militates against a finding of enablement given one having ordinary skill in the art would not be capable of achieving materials that satisfy the range presented of elasticity while simultaneously being non-permeable in view of the findings and evidence above without undue experimentation.
As to the amount of direction provided by the inventor and the existence of working examples (factors F And G), given no direction is provided in terms of achieving said materials that meet the full scope of the claim presented, and given there are no working examples provided, both of these factors militate against a finding of enablement. Accordingly, the
quantity of experimentation needed to make and use the invention based on the content of the disclose (factor H) would be extraordinary, if not impossible, in view of the evidential reference cited above.
Appropriate correction is required. Future claim amendments should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
Compact Prosecution – Prior Art Analysis
9. Per MPEP § 2143.03:
“"All words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). (The Board erred because it ignored claim language that it considered to be indefinite, and reached a conclusion that the claim would have been obvious based only on the rest of the claim.). However, an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The "considerable speculation" by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.)
The Examiner is not clear how to appropriately and definitively provide a proposal for the language of “a non-permeable coating” that is supported by the instant application disclosure. For example, it would not be appropriate to replace “a non-permeable coating” with “a coating with low [air and/or water] permeability” because low is a subjective term of approximation that does not have a standard within the instant application specification or within the state of the prior art, wherein such terms are indefinite without the specification providing some standard allowing for one of ordinary skill in the art to understand the scope of the term, or the prior art including a known standard that is recognized in the art for measuring the meaning of the term of degree. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." Packard, 751 F.3d at 1311.
Thus, the best proposal the Examiner can come up with for compact prosecution purposes that also addresses the Claim Analysis section above is to remove the “non-permeable” portion entirely:
“An encapsulated system, comprising:
a coating comprising a modulus of elasticity of 1 megapascal (MPA)2 to 1 gigaPascals (GPa); and
at least a pair of leads coupled to an electronic device and protruding from the coating.”
The above hypothetical claim omitting a claimed feature is analyzed below with respect to prior art for compact proseuctin purposes:
Yang et al. (US 2017/0149026) teaches a wearable electronic device (P36) including a rechargeable battery having excellent flexibility, wherein the disclosure is aimed at providing a case 35/215 (Fig. 3/Fig. 1) for a rechargeable battery having excellent chemical resistance and flexibility (P36-37).
The case 35/215 includes a a second resin layer 201 (“a coating”) that “…acts as a barrier layer that helps reduce the possibility of and/or prevent the electroltye solution from leaking out of the battery and moisture from penetrating into the battery” (P44) that is optimized to “ensure that moisture penetration resistance is not deteriorted…” (P45).
The second resin layer 201 (“coating”) of the case 35/215 includes a butyl-based resin and has a Young’s modulus of 0.05 MPa to 500 MPA (abstract; P49), and is provided as part of an encapsulated system in which at least a pair of leads 21, 22 (P69) coupled to an electronic device and protruding from the second resin layer 201 (“coating”) are provided (at least Figs. 1, 3, 4; P19, 57, 72). Figs. 1 & 3 of Yang are reproduced below:
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Ku et al. (US 2024/0106048) teaches an encapsulated system (Figs. 6-7; P108-112- both reproduced below), comprising:
a layer (“a coating”) [outer layer or aluminum layer of the described pouch layers] comprising a modulus of elasticity of in the range of 230-280 MPA for the outer layer that may be PET resin or nylon resin (P112) or 75-95 MPa for the aluminum thin film layer [all ranges recited lying within“1 megapascal (MPA) to 1 gigaPascals (GPa)” and thus establishing a prima facie case of obviousness given in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP § 2144.05); and
at least a pair of leads (150a, 150b) coupled to an electronic device 120 and protruding from the layer (“coating”).
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Kumaki et al. (WO 2023/022088) (copy of abstract provided) teaches a battery with a heat-resistant gas barrier layer 21 as part of the sheathing material that has a Young’s modulus of 1 GPA (abstract below; copy thereof provided) and surrounds an all-solid state battery:
The present invention provides a sheathing material for an all-solid-state battery that makes it possible to prevent the occurrence of defects such as damage. The present invention is directed to a sheathing material for an all-solid-state battery in which a solid-state battery body 5 is to be enclosed and which comprises: a base material layer 11; a metal foil layer 12 laminated on the inner surface side of the base material layer 11; and a sealant layer 13 laminated on the inner surface side of the metal foil layer 12. A heat-resistant gas barrier layer 21 made of resin is provided between the metal foil layer 12 and the sealant layer 13, and the heat-resistant gas barrier layer 21 has a Young's modulus of 1 GPa or more at 90°C in the MD and the TD.
Accordingly, the above three prior art references individually each teach all the subject matter of the hypothetical independent Examiner claim, wherein at least one if not all teaches the enabled subject matter of the dependent claims.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BARROW whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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, Ula Ruddock can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BARROW/Primary Examiner, Art Unit 1729
1 It is noted that only a broad list of genera of materials for the non-permeable coating (“an elastomer, a latex, or a coated fabric” – claim 4; P22, 29 of the instant application PGPUB).
2 P20 supports the lower bound of this proposed claim language; it would appear the goal of the instant application is to provide the coating with some flexibility to avoid the rigidity issue described at P2, the goal of the instant application to be utilized in wearable electronics that allow for batteries to be flexible (P3), with the “non-permebale coating” repeatedly being referred to as the flexible non-permeable coating (P18-25 of the PGPUB).
Prosecution Insights