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 .
Information Disclosure Statement
In the instant application, several Information Disclosure Sheets (IDS) have been submitted to date citing a usual high number of documents.
It is desirable to avoid the submission of long lists of documents if it can be avoided. Clearly irrelevant and marginally pertinent cumulative information should be eliminated. If a long list is submitted, those documents which have been specifically brought to applicant's attention and/or are known to be of most significance should be highlighted. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), affd, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert, denied, 414 U.S. 874 (1974). But of. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). See MPEP 2004.
Applicant's duty of disclosure of material and information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant [material] from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical [material]. It ignores the real world conditions under which examiners examines. Applicant has a duty not just to disclose pertinent prior art references but to make a disclosure in such a way as not to "bury" it within other disclosures of less relevant prior art; See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 USPQ2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 USPQe2d 1889, at 1899 (D.Del 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 USPQ 260, at 272 (S.D. Fl. 1972).
The examiner is not afforded the time to thoroughly review each reference, given the number of references cited. By his initialing each of the cited references on the accompanying 1449 form(s), the examiner is relying that the Applicant has actually submitted these documents or that the USPTO internal systems has accurately generated string(s) that represent the US references submitted. The Examiner is not afforded enough time to even check that the references cited on the accompanying 1449 form(s) are being reviewed (see search list(s) for the US documents actually reviewed and IFW of the instant application for the foreign references, non-patent literature and the international search reports and written opinions that have been filed). With this vast number of references, the Examiner is able to perform at best, only a cursory review of the cited references. The Examiner believes that the Applicant spent more time generating the 1449 forms in the instant application, then the Examiner is allotted to review the references cited on these 1449 forms.
The Examiner has reviewed cursorily each reference cited. Due to the high number of documents presented and the limited time provided for examination, the Examiner was unable to determined how material or not, each of the references is specifically related to the invention(s) claimed.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, - the substrate; and the first electrode on a substrate; and the piezoelectric material disposed on the first electrode as disclosed in claims 1, 9, 20; and - the second electrode disposed on the piezoelectric material as disclosed in claims 7, 17; must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 – 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.
Claims 1, 9, 20 disclose that the first electrode is disclosed within or on a portion of the substrate. It is not clear how a first electrode could be within the substate and yet function separately from the substrate. If the electrode is within the substrate, it is not clear if the substrate and electrode form a single component.
Also, it is disclosed that the piezoelectric material is disposed within the first electrode. It is not clear how the device is going to function if the piezoelectric material is inside the electrode. Such procedure would cause a short circuit or malfunction.
It is not clear how the substrate, first electrode and piezoelectric layer could be all mixed within each other.
In claim 19, the device is dependent on a method of making claim. It is unclear how a device claim is dependent on a method of making claim.
Claims 2 – 8, 10 – 19 are rejected due to their dependency on claims 1, 9.
In order to advance prosecution in the merits, the Prior Art will be applied
as best understood by the examiner.
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(s) 1 – 3, 5 – 11, 13, 15 – 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thirumalai et al (US 2022/0265302) in view of Polsky et al (US 2018/0338713) and Freeman et al (US 2012/0329958).
Thrimumalai et al discloses, regarding,
Claim 1, An ultrasound device comprising:
a) a first electrode 203, the first electrode being disposed within or on at least a portion of a substrate 404; and
b) a piezoelectric material 201 disposed on the first electrode 203 and within at least a portion of the material (first electrode).
The problem to be solve appears to use a specific material for the substrate and electrode. Such implementation is well-known in the art.
For example, Polky et al discloses, an electrode comprising porous graphene (Fig. 16; paragraphs 0069, 0211, 0236) and a substrate comprising a polyimide [0179] which has at least one aromatic ring [0132].
It is noted that Freeman et al is being cited for explicitly teaching that a polyimide has an aromatic ring [0010, 0011, 0043; see Figs. 1, 2, 6].
The Prior Art further discloses, regarding,
Claims 2, 10, the substrate is flexible (Polsky et al, 0122).
Claims 3, 11, the porous graphene has an average pore diameter of 1 µm or less
since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 5, 15, piezoelectric material comprises a polymer of vinyl fluoride 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.
Claims 6, 16, the polymer of vinyl fluoride is polyvinylidene fluoride (PVDF), polyvinylidene fluoride-trifluoroethylene (PVDF-TrFE), poly(vinylidene fluoride-trifluoroethylene-chlorofluoroethylene) (PVDF-TrFE-CFE), or a combination thereof 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.
Claims 7, 17, a second electrode 202 disposed on at least a portion of the piezoelectric material (Thirumalai et al, Figs. 4C, 6A).
Claims 8, 18, the second electrode comprises silver, nickel, chromium, gold, aluminum, or a combination thereof 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.
Claim 9, A method of making a device comprising:
a) graphitizing at least a portion of a substrate comprising a polyimide having at least one aromatic ring to form a first electrode comprising porous graphene disposed within or on the substrate; and
b) applying a piezoelectric material to at least a portion of the first electrode.
The method is disclosed mutatis mutandis per rejection for claim 1 above.
Claim 19, An ultrasound device (Thirumalai et al, abstract) prepared by the method of claim 9 (see rejection for claim 1 above).
Claim 20, A method of assessing an anatomical structure in a subject, comprising obtaining at least one ultrasound image from an ultrasound device (Thirumalai et al, abstract) applied to a target area of the subject, wherein the ultrasound device comprises:
a) a first electrode comprising porous graphene, the first electrode being disposed within or on at least a portion of a substrate comprising a polyimide which has at least one aromatic ring; and
b) a piezoelectric material disposed on the first electrode and within at least a portion of the porous graphene.
The method is disclosed mutatis mutandis per rejection for claim 1 above.
Claim 13, preparing the polyimide by thermally imidizing a precursor polyamic acid (Freeman et al, paragraphs 0030).
It would have been obvious before the effective filing date of the claimed invention to design the device/method as disclosed by Thirumalai et al and to modify the invention per the limitations disclosed by Polsky et al for the purpose of efficiently monitoring a human subject’s physiological state and to teach the limitations disclosed by Freeman et al for the purpose of improving the chemical result of a polymer.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thirumalai et al, Polsky et al, Freeman et al as applied to claim 9 above, and further in view of Tour et al (US 2017/0062821).
The combined device/method discloses all of the elements below. However, the combined device/method does not disclose the elements below.
On the other hand, Tour et al discloses, regarding,
Claim 14, the polyimide is graphitized by irradiating the polyimide with an infrared laser under conditions sufficient to form the porous graphene (Fig. 1A, 3A; paragraphs 0182).
It would have been obvious before the effective filing date of the claimed invention to design the combined device/method as disclosed above and to modify the invention per the limitations disclosed by Tour et al for the purpose of improving the manufacturing efficiency of graphene material.
Claim(s) 4, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thirumalai et al, Polsky et al, Freeman et al as applied to claims 1, 9 above, and further in view of the NPL Document “Polyimides and High Performance Organic Polymers” hereafter referred as the “NPL Document”.
The combined device/method discloses all of the elements below. However, the combined device/method does not disclose the elements below.
On the other hand, the NPL Document discloses, regarding,
Claims 4, 12, having a polyimide with the structure for formula I or II (as shown in the claims) and structure A or B (see Figs. 1.1 and Table 1.1 Fully aromatic; pages 3, 16 of NPL Document).
It would have been obvious before the effective filing date of the claimed invention to design the combined device/method as disclosed above and to modify the invention per the limitations disclosed by the NPL Document for the purpose of improving the strength and heat resistant of polymers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julio C. Gonzalez whose telephone number is (571)272-2024. The examiner can normally be reached M-F.
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/Julio C. Gonzalez/
Primary Examiner
Art Unit 2831
August 19, 2026
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