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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on 3/9/26 is acknowledged.
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, 3, 6 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada (JP 2021-35153 A – see translation provided by Applicant).
With respect to claim 1, Okada teaches an actuator (Figures 1-4, #1) comprising: a polymer frame ([0027], defined by polymer material mixed with carbon black to form electrodes #11/21 and 12/22, the polymer material constituting the polymer frame) comprising a first pattern with a first comb shape (comb shape of #11/21 clearly seen in Figures 1-4) of a predetermined thickness and a second pattern with a second comb shape (comb shape of #12/22 clearly seen in Figures 1-4) of the predetermined thickness; an electrode ([0027], defined by carbon black mixed with polymer material to form electrodes #21/22, the carbon black material constituting the electrode) comprising a first electrode (defined by carbon black of #11/21) formed on a portion of the first pattern (21) and a second electrode (defined by carbon black of #12/22) formed on a portion of the second pattern (22); and a dielectric elastic portion (23) formed between the first electrode (11/21) and the second electrode (12/22) and comprising a dielectric elastomer ([0029]-[0031]).
With respect to claim 3, Okada teaches wherein the first comb shape (11/21) comprises a first combteeth (21) and a first support member (11) supporting the first combteeth (21), the second comb shape (12/22) comprises a second combteeth (22) and a second support member (12) supporting the second combteeth (22), and the first combteeth (21) and the second combteeth (22) are laterally positioned alternately.
With respect to claim 6, Okada teaches wherein the first electrode (defined by carbon black of #11/21) comprises a first combteeth electrode (defined by carbon black of #21) formed on walls of the first combteeth (21) and a first support member electrode (defined by carbon black of #11) formed on the upper surface of the first support member (11), the first combteeth electrode (defined by carbon black of #21) and the first support member electrode (defined by carbon black of #11) are electrically connected to each other, the second electrode (defined by carbon black of #12/22) comprises a second combteeth electrode (defined by carbon black of #22) formed on walls of the second combteeth (22) and a second support member electrode (defined by carbon black of #12) formed on the upper surface of the second support member (12), and the second combteeth electrode (defined by carbon black of #22) and the second support member electrode (defined by carbon black of #12) are electrically connected to each other. It is noted that at least some of the carbon black material forming components #11/21 and #12/22 as electrodes will inherently be formed/located on walls of the combteeth and upper surface of the support members #11/12 such that the material is conductive and not fully enclosed and insulated by the polymer material with which the carbon black material is mixed ([0027]).
With respect to claim 13, Okada teaches wherein an electrostatic force is generated between the first electrode (defined by carbon black of #11/21) and the second electrode (defined by carbon black of #12/22) when the electrodes (11/21, 12/22) of the actuator are applied with a voltage, and the electrostatic force compresses the dielectric elastic portion (23) disposed between the first electrode (11/21) and the second electrode (11/22) (clearly seen in Figure 4, [0040]-[0044]).
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 are 2, 4-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Okada (JP 2021-35153 A – see translation provided by Applicant).
With respect to claim 2, Okada teaches the actuator of claim 1. Okada further teaches wherein the dielectric elastic portion and the polymer frame each have an obvious, but unspecified thickness, with the dielectric elastic portion being of a variable thickness based on thickness such that more or less voltage can be used in order to generate a desired force generated by the actuator ([0026]-[0030], [0035]).
Okada fails to explicitly teach wherein the dielectric elastic portion has a thickness equal to the predetermined thickness of the polymer frame, and the predetermined thickness is in a range of 2 µm to 100 µm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein the dielectric elastic portion has a thickness equal to the predetermined thickness of the polymer frame, and the predetermined thickness is in a range of 2 µm to 100 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, forming the dielectric elastic portion has a thickness equal to the predetermined thickness of the polymer frame and in a range of 2 µm to 100 µm would have been obvious to one of ordinary skill in the art, so as to adjust the amount of voltage necessary to achieve a desired force of the actuator.
With respect to claim 4, Okada teaches the actuator of claim 3. Okada further teaches wherein a ratio of a length of the first combteeth (21) to a height of the first electrode (defined by carbon black of #11/21) and a ratio of a length of the second combteeth (22) to a height of the second electrode (defined by carbon black of #12/22) are each independently of an obvious, but unspecified amount.
Okada fails to explicitly teach wherein a ratio of a length of the first combteeth to a height of the first electrode and a ratio of a length of the second combteeth to a height of the second electrode are each independently in a range of 10 to 10,000.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein a ratio of a length of the first combteeth to a height of the first electrode and a ratio of a length of the second combteeth to a height of the second electrode are each independently in a range of 10 to 10,000, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, selecting a ratio of a length of the first combteeth to a height of the first electrode and a ratio of a length of the second combteeth to a height of the second electrode are each independently in a range of 10 to 10,000 would have been well known, and obvious to one of ordinary skill.
With respect to claim 5, Okada teaches the actuator of claim 3. Okada further teaches wherein a width of the first combteeth (21) and a width of the second combteeth (22) are each independently of an obvious, but unspecified amount/range, and the length of the first combteeth (21) and the length of the second combteeth (22) are each independently in an obvious, but unspecified range/amount.
Okada fails to explicitly teach wherein a width of the first combteeth and a width of the second combteeth are each independently in a range of 1 µm to 100 µm, and the length of the first combteeth and the length of the second combteeth are each independently in a range of 1 mm to 50 mm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein a width of the first combteeth and a width of the second combteeth are each independently in a range of 1 µm to 100 µm, and the length of the first combteeth and the length of the second combteeth are each independently in a range of 1 mm to 50 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, selecting a width of the first combteeth and a width of the second combteeth that are each independently in a range of 1 µm to 100 µm, and selecting the length of the first combteeth and the length of the second combteeth that are each independently in a range of 1 mm to 50 mm would have been well known, and obvious to one of ordinary skill.
With respect to claim 7, Okada teaches the actuator of claim 6. Okada further teaches wherein a distance between the first combteeth electrode (21) and the second combteeth electrode (22) is in an obvious, but unspecified amount/range, and a distance between the first combteeth electrode (21) and the second support member (12) and a distance between the second combteeth electrode (22) and the first support member (11) are each independently in an obvious, but unspecified range/amount.
Okada fails to explicitly teach wherein a distance between the first combteeth electrode and the second combteeth electrode is in a range of 1 µm to 100 µm, anda distance between the first combteeth electrode and the second support member and a distance between the second combteeth electrode and the first support member are each independently in a range of 0.025 mm to 25 mm.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein a distance between the first combteeth electrode and the second combteeth electrode is in a range of 1 µm to 100 µm, anda distance between the first combteeth electrode and the second support member and a distance between the second combteeth electrode and the first support member are each independently in a range of 0.025 mm to 25 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, selecting dimensions for the dielectric material #23, which is variable, and defines the distance amounted between components 11, 12, 21 and 22, such that a distance between the first combteeth electrode and the second combteeth electrode is in a range of 1 µm to 100 µm, anda distance between the first combteeth electrode and the second support member and a distance between the second combteeth electrode and the first support member are each independently in a range of 0.025 mm to 25 mm would have been well known and obvious to one of ordinary skill in the art.
With respect to claim 8, Okada teaches the actuator of claim 6. Okada further teaches wherein a ratio of the length of the first combteeth (21) to a distance between the first combteeth electrode (defined by carbon black of #21) and the second support member (12) and a ratio of the length of the second combteeth (22) to a distance between the second combteeth electrode (defined by carbon black of #22) and the first support member (11) are each independently of an obvious, but unspecified range/amount.
Okada fails to explicitly teach wherein a ratio of the length of the first combteeth to a distance between the first combteeth electrode and the second support member and a ratio of the length of the second combteeth to a distance between the second combteeth electrode and the first support member are each independently in a range of 2 to 40.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein a ratio of the length of the first combteeth to a distance between the first combteeth electrode and the second support member and a ratio of the length of the second combteeth to a distance between the second combteeth electrode and the first support member are each independently in a range of 2 to 40, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, selecting dimensions for the dielectric material #23, which is variable, and defines the distance amounted between components 11, 12, 21 and 22, such that wherein a ratio of the length of the first combteeth to a distance between the first combteeth electrode and the second support member and a ratio of the length of the second combteeth to a distance between the second combteeth electrode and the first support member are each independently in a range of 2 to 40 would have been well known and obvious to one of ordinary skill in the art.
With respect to claim 9, Okada teaches the actuator of claim 6. Okada further teaches wherein a ratio of a distance between the first combteeth electrode (defined by carbon black of #21) and the second combteeth electrode (defined by carbon black of #22) to a height of the first electrode (defined by carbon black of #11/21) and a ratio of a distance between the first combteeth electrode (defined by carbon black of #21) and the second combteeth electrode (defined by carbon black of #22) to a height of the second electrode (defined by carbon black of #12/22) are each independently of an obvious, but unspecified range/amount.
Okada fails to explicitly teach wherein a ratio of a distance between the first combteeth electrode and the second combteeth electrode to a height of the first electrode and a ratio of a distance between the first combteeth electrode and the second combteeth electrode to a height of the second electrode are each independently in a range of 0.01 to 40.
It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to provide wherein a ratio of a distance between the first combteeth electrode and the second combteeth electrode to a height of the first electrode and a ratio of a distance between the first combteeth electrode and the second combteeth electrode to a height of the second electrode are each independently in a range of 0.01 to 40, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working range involves only routine skill in the art. In re Aller, 105 USPQ 233. In this case, selecting dimensions such that a ratio of a distance between the first combteeth electrode and the second combteeth electrode to a height of the first electrode and a ratio of a distance between the first combteeth electrode and the second combteeth electrode to a height of the second electrode are each independently in a range of 0.01 to 40 would have been well known and obvious to one of ordinary skill in the art.
With respect to claims 10-12, Okada teaches the actuator of claim 1. Okada further teaches a dielectric elastic portion made from a number of possible materials ([0029], [0031]).
Okada fails to teach wherein the dielectric elastic portion further comprises at least one selected from the group consisting of ionic liquid and conductive nanoparticles, or wherein the dielectric elastic portion comprises the dielectric elastomer and is porous with a plurality of pores, or wherein the dielectric elastic portion further comprises conductive nanoparticles located on the surface of the pores.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the dielectric elastic portion further comprises at least one selected from the group consisting of ionic liquid and conductive nanoparticles, or wherein the dielectric elastic portion comprises the dielectric elastomer and is porous with a plurality of pores, or wherein the dielectric elastic portion further comprises conductive nanoparticles located on the surface of the pores, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, the claimed dielectric materials are well known, and selecting a particular material would have been obvious and involves routine skill.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pertinent arts of record relating to Applicant’s disclosure are disclosed in the PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY AUSTIN LUKS whose telephone number is (571)272-2707. The examiner can normally be reached Monday-Friday (9:00-5:00).
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/JEREMY A LUKS/Primary Examiner, Art Unit 2837
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