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 .
Response to Amendment
Receipt is acknowledged of the amendment filed 5/05/2026. Claims 1, 4-5, 12-13, 20 are amended, claims 3 and 7-11 are canceled and claims 1-2, 4-6, and 12-20 are currently pending.
Response to Arguments
Applicant's arguments filed 5/05/2026 have been fully considered but they are not persuasive.
On page 20 of the 5/05/2026 Remarks, Applicant argues “Applicant disagrees that the frequency of the AC waveform expressed in Hz is a unitless number; the units as indicated are Hz, and this rejection should therefore be withdrawn”. Examiner respectfully disagrees and maintains that the limitation “the AC waveform having a frequency, …wherein the ratio of the frequency of the AC waveform expressed in Hz to content of the charge control agent in the electrophoretic medium expressed in weight percent of the charge control agent by weight of the electrophoretic medium is from 400 to 2000 Hz” is indefinite in light of the original disclosure and arguments presented in the record. The matter comes down to that which a person having ordinary skill in the art would understand conveyed by “expressed in [units]”. If one agrees Applicant’s argument on page 20 of the 5/5/2026 Remarks, then the phrase “expressed in [units]” is not a unitless numeral but rather provides an expression that includes the recited units. By this logic, the phrase “expressed in Hz” is a numerical representation of frequency including units and the phrase “expressed in weight percentage” is an numerical representation of content including units of weight percentage or wt%. Under this interpretation, the ratio between frequency and weight percentage should be expressed as a numeric value of “Hz / wt%”. Under a more common interpretation of “expressed in [units]”, the frequency and content of the claimed ratio are both unitless values and thus the ratio is a unitless value. The distinction is substantively important, given the explicitly disclosed ranges and compliance under 35 U.S.C. 112 for that which the claim captures. In the Specifications, Applicant discloses an AC waveform from 0.1 Hz to 6000 Hz and CCA content “0.1 weight percent to 10 weight percent by weight of the electrophoretic medium”. An artisan would understand the metes and bounds of the frequency range, but the weight percentage becomes muddled based on the phrase “expressed in” as extrema are orders of magnitude different under different interpretations. When the disclosed “0.1 weight percent” “is expressed in weight percentage”, as claimed, it becomes unclear if the numeric value is 0.001 or 0.1. The former is a numerical representation of percentage without units and the latter is a numerical representation of “weight percent”. Taking the extrema of respective ranges for the ratio, the frequency and content ratio may be as follows:
0.1 Hz / 10 weight percent = 0.01 Hz / weight percent
6000 Hz / 0.1 weight percent = 60,000 Hz / weight percent
0.01 Hz / weight percent < ratio < 60,000 Hz / weight percent
0.1 Hz / 0.10 = 1.0 Hz
6000 Hz / 0.001 = 6,000,000 Hz
1 Hz < ratio < 6,000,000 Hz
In (1), the numerical values are expressed explicitly in the Specifications are used to represent the range of ratio of “frequency of the AC waveform expressed in Hz to content of the charge control agent in the electrophoretic medium expressed in weight percent”. This expressed ratio range provides a numerical value that is clearly a ratio of Hz and weight percent. In (2), the numerical values are a combination of frequencies expressed explicitly in the Specifications and weight percent expressed as a unitless value as would be understood by a person having ordinary skill in the art. The ratio ranges are substantively different, though both include the claimed “400 to 2000”. In other words, the ratio range values recited in the claims do not bring clarity to the method of calculating the claimed ratio.
Examiner maintains that a person having ordinary skill in the art would understand that a measure “expressed in [units]” is phrasing to denote when a numeral should be understood as a measure. For example, in US Pat. 9,671,599 in column 22, ingredient contents are “expressed by wt%” in tables providing only numerals. In US Pat. 8,482,839, the table of Example 3 in column 6 provides “content of constituents, expressed in weight %” as numerals. In US Pat. 8,333,551, vibration frequency “expressed in Hertz (Hz)” is shown in Fig. 8 and recited in col. 7, ll. 20-33. In US PG Pub. 20240184144, electromagnetic radiation in Fig. 3 is “expressed in Hertz” and depicted as a unitless numeral.
In summary, a person having ordinary skill in the art would not be able to determined infringement of a 100 Hz and 1 weight percent embodiment, for example, as these values would either be associated with a ratio of “100 Hz” (within the claimed range) or “10,000 Hz” (out of the claimed range).
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 1-2, 4-6, and 12-20 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 and 20 recites “the AC waveform having a frequency, …wherein the ratio of the frequency of the AC waveform expressed in Hz to content of the charge control agent in the electrophoretic medium expressed in weight percent of the charge control agent by weight of the electrophoretic medium is from 400 to 2000 Hz”. The metes and bounds of this expression would not be clear to a person having ordinary skill in the art in light of the Specifications, Applicant’s 5/5/2026 Remarks, and that which has been routinely published in the art. Applicant argues “Applicant disagrees that the frequency of the AC waveform expressed in Hz is a unitless number; the units as indicated are Hz, and this rejection should therefore be withdrawn”. The matter comes down to that which a person having ordinary skill in the art would understand conveyed by “expressed in [units]”. If one agrees with Applicant’s argument on page 20 of the 5/5/2026 Remarks, then a measure “expressed in [units]” is not a unitless numeral but rather provides an expression that includes the recited units. By this logic, the phrase “frequency expressed in Hz” is a numerical representation of frequency including units and the phrase “content … expressed in weight percentage” is an numerical representation of content including units of weight percentage or wt%. Under this interpretation, the ratio between frequency and weight percentage should be expressed as a numeric value of “Hz / wt%”. Under a more common interpretation of a measure “expressed in [units]”, the frequency and content of the claimed ratio are both unitless values and thus the ratio is a unitless value. The distinction is substantively important to defining the metes and bounds of the claimed invention. In the Specifications, Applicant discloses an AC waveform from 0.1 Hz to 6000 Hz and CCA content “0.1 weight percent to 10 weight percent by weight of the electrophoretic medium”. An artisan would understand the metes and bounds of the frequency range, but the weight percentage becomes muddled based on the phrase “expressed in” as extrema are orders of magnitude different under different interpretations. When the disclosed “0.1 weight percent” “is expressed in weight percentage”, as claimed, it becomes unclear if the numeric value is 0.001 or 0.1. The former is a numerical representation of percentage without units and the latter is a numerical representation of “weight percent”. Taking the extrema of respective ranges for the ratio, the frequency and content ratio may be as follows:
0.1 Hz / 10 weight percent = 0.01 Hz / weight percent
6000 Hz / 0.1 weight percent = 60,000 Hz / weight percent
0.01 Hz / weight percent < ratio < 60,000 Hz / weight percent
0.1 Hz / 0.10 = 1.0 Hz
6000 Hz / 0.001 = 6,000,000 Hz
1 Hz < ratio < 6,000,000 Hz
In (1), the numerical values are expressed explicitly in the Specifications are used to represent the range of ratio of “frequency of the AC waveform expressed in Hz to content of the charge control agent in the electrophoretic medium expressed in weight percent”. This expressed ratio range provides a numerical value that is clearly a ratio of Hz and weight percent. In (2), the numerical values are a combination of frequencies expressed explicitly in the Specifications and weight percent expressed as a unitless value as would be understood by a person having ordinary skill in the art. The ratio ranges are substantively different, though both include the claimed “400 to 2000”. In other words, the ratio range values recited in the claims do not bring clarity to the method of calculating the claimed ratio.
Examiner maintains that a person having ordinary skill in the art would understand that a measure “expressed in [units]” is phrasing to denote when a numeral should be understood as a measure. For example, in US Pat. 9,671,599 in column 22, ingredient contents are “expressed by wt%” in tables providing only numerals. In US Pat. 8,482,839, the table of Example 3 in column 6 provides “content of constituents, expressed in weight %” as numerals. In US Pat. 8,333,551, vibration frequency “expressed in Hertz (Hz)” is shown in Fig. 8 and recited in col. 7, ll. 20-33. In US PG Pub. 20240184144, electromagnetic radiation in Fig. 3 is “expressed in Hertz” and depicted as a unitless numeral.
In summary, a person having ordinary skill in the art would not be able to determined infringement of a 100 Hz and 1 weight percent embodiment, for example, as these values would either be associated with a ratio of “100 Hz” (within the claimed range) or “10,000 Hz” (out of the claimed range).
Dependent claims are rejected for failing to cure the deficiencies of the base claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER STANFORD/ Primary Examiner, Art Unit 2872
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