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 § 102
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, 4, 6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coffey et al. (US 2010/112373 A1).
Regarding claim 1, Coffey discloses a method of forming a flexible electronic component, the method comprising: treating a flexible substrate (“stamp”: 300, 401, 421; and/or “substrate”) to increase a surface energy of the substrate to a specified surface energy (pars. 0065, 0198, 0233, 0267), the flexible substrate comprising a fluoroelastomer (pars. 0142, 0147-0148 and 0263); after the treating, printing, with an inkjet, a layer of conductive material (any of 206-220 or 474 and/or 476) onto the substrate (figs. 2 and 4F; pars. 0231, 0243, 0285 and 0294), the conductive material comprising a silver nanoparticle-based metallic ink (pars. 0029, 0102, 0107-0109, 0231, 0243 and 0285); after the printing, applying an encapsulant layer (“nanowire coating”) onto the substrate and the conductive material, the encapsulant layer comprising a fluoroelastomer (pars. 0110-0112, 0140 and 0191).
Regarding claim 4, Coffey discloses the method of claim 1, wherein the encapsulant layer comprises fluorine kautschuk material (FKM) (carbon fluorine polymers are fluoroelastomers: pars. 0110-0112, 0140 and 0191).
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NOTE: a fluorine kautschuk material (FKM) in the art is a broad and general term for fluoroelastomers, and not a single material. FKM includes carbon fluorine polymers.
Regarding claim 6, Coffey discloses the method of claim 1, wherein a thickness of the substrate, a thickness of the layer of conductive material, and a thickness of the encapsulant layer are such that a neutral axis in bending of the flexible electronic component passes through the layer of conductive material (annotated fig. 2, right). It is naturally understood that it would be impossible to bend the structure of fig. 2 without the neutral axis remaining within and through the conductive material; at least until the product were bent very far. Perhaps more importantly, this “limitation” has literally no bearing or effect whatsoever upon the method of manufacture. The Applicant is respectfully reminded that the clams are directed to a method of manufacture and not to a method of using the product formed in the method of manufacture and that the intended functionality of the product in this instance is not found to impart any new limitation onto the claimed method of manufacture.
Regarding claim 8, Coffey discloses the method of claim 1, wherein the encapsulant layer and the substrate isolate the conductive material from external fluids (par. 0110).
Regarding claim 21, Coffey discloses a method of forming a flexible electronic component, the method comprising: treating a flexible substrate (“stamp”: 300, 401, 421; and/or “substrate”) to increase a surface energy of the substrate to a specified surface energy (pars. 0065, 0198, 0233, 0267), the flexible substrate comprising a fluoroelastomer (pars. 0142, 0147-0148 and 0263); after the treating, printing, with an inkjet, a layer of conductive material (any of 206-220 or 474 and/or 476) onto the substrate (figs. 2 and 4F; pars. 0231, 0243, 0285 and 0294); after the printing, applying an encapsulant layer (“nanowire coating”) onto the substrate and the conductive material, the encapsulant layer comprising a fluoroelastomer (pars. 0110-0112, 0140 and 0191), wherein a thickness of the substrate, a thickness of the layer of conductive material, and a thickness of the encapsulant layer are such that a neutral axis in bending of the flexible electronic component passes through the layer of conductive material (annotated fig. 2, above). It is naturally understood that it would be impossible to bend the structure of fig. 2 without the neutral axis remaining within and through the conductive material; at least until the product were bent very far. Perhaps more importantly, this “limitation” has literally no bearing or effect whatsoever upon the method of manufacture. The Applicant is respectfully reminded that the clams are directed to a method of manufacture and not to a method of using the product formed in the method of manufacture and that the intended functionality of the product in this instance is not found to impart any new limitation onto the claimed method of manufacture.
Claim Rejections - 35 USC § 103
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 of this title, 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 5, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Coffey, in view of Vrijens (CN 115777237 A; translation provided previously by Examiner; citations of page and line numbers below are directed to the translation provided by Examiner).
Regarding claim 5, Coffey discloses all of the elements of the current invention as detailed above with respect to claim 1. Coffey further discloses that the flexible polymer substrate can be made from a wide variety of dozens of materials (pars. 0148-0156). Coffey, however, does not explicitly disclose that the substrate comprises FKM.
Vrijens teaches that it is well known to perform a similar a method of forming a flexible electronic component (pg. 2, lines 17-19), the method comprising: treating a flexible substrate (4) to increase a surface energy of the substrate to a specified surface energy (pg. 4, lines 22-26), the flexible substrate comprising a fluoroelastomer (pg. 4, lines 11-13 and 35-38); after the treating, printing, with an inkjet, a layer of conductive material (2) onto the substrate (pg. 4, lines 1-6); after the printing, applying an encapsulant layer (3, comprising: “coating”, and/or “elastomeric seal member” and/or “planar foil”, and/or “elastic sealing member”) onto the substrate and the conductive material, the encapsulant layer comprising a fluoroelastomer (pg. 4, lines 13-15, pg. 5, lines 4-12 and 18-29) (All steps of method: pg. 6, lines 3-10 and 14-30) wherein the substrate comprises FKM (e.g. fluorine elastomer: pg. 4, lines 35-38).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Coffey to incorporate the FKM substrate material of Vrijens, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill.. POSITA would have realized that any of a large variety of flexible substrate materials can be easily and readily used in the method of Coffey to achieve the desired adhesion, flexibility and avoidance of deleterious delamination or peeling. Moreover, there is no indication in the instant disclosure that any special step was devised to incorporate FKM substrate material or that any surprising results were derived from simply using the old method of Coffey with the well-known material choice of Vrijens. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. Additionally, it is not likely that the preferred FKM material of the product being formed would have any bearing or effect upon the steps of the method or its outcome. If the FKM substrate of Vrijens were incorporated in the intended product, the method of Coffey would be performed in the exact same manner as originally disclosed by Coffey and would have the same predictable outcome.
Regarding claim 7, Coffey in view of Vrijens teaches the method of claim 1 as detailed above, and Vrijens further teaches that it is well known that printing the layer of conductive material comprises printing the conductive material in an electronic circuit pattern (pg. 3, lines 5-8; pg. 4, lines 1-8).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Coffey to incorporate the printing of the conductive material in a circuit pattern of Vrijens. POSITA would have realized that a circuit pattern can be easily and readily incorporated into the method of Coffey to achieve the desired product functionality, footprint and electrical/electronic connectivity. Moreover, there is no indication in the instant disclosure that any special step (or any steps, as the claim only recites the generic application of the conductive material as a circuit pattern) was devised or that any surprising results were derived from simply using the old method of Coffey with the well-known circuit pattern formation step of Vrijens. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 9, Coffey in view of Vrijens teaches the method of claim 1 as detailed above, and Vrijens further teaches that it is well known that the treating comprises corona treating (pg. 4, lines 22-26).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Coffey to incorporate the use of corona treatment of Vrijens. POSITA would have realized that corona surface treatment techniques can be easily and readily employed in methods such as that of Coffey to achieve the desired surface activation, and therefore predictable, low-cost bonding adhesion enhancement known from the use of corona treatment. Moreover, there is no indication in the instant disclosure that any special corona treatment steps or method were devised or that any surprising results were derived from simply using the old method of Coffey with the well-known corona treatment technique of Vrijens. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Coffey in view of Vrijens, further in view of Remizov et al. (US 2010/0058585 A1).
Regarding claim 10, Coffey in view of Vrijens teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Coffey, however, does not appear to teach that after the treating, the specified surface energy is such that a contact angle between the conductive material and the substrate is less than 90˚.
Remizov teaches that it is well known to perform a similar method of forming an electronic component (Title; Abstract), the method comprising: treating (plasma treating) a substrate (110), the substrate comprising a fluoroelastomer (PTFE, FEP) (fig. 2; pars. 0028-0030 and 0034); after the treating, printing, with an inkjet, a layer of conductive material (130 and/or 140) onto the substrate (fig. 3; pars. 0032-0033 and/or 0036); wherein, after the treating, the specified surface energy is such that a contact angle between the conductive material and the substrate is less than 90˚ (45˚) (fig. 3; par. 0038).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Coffey to incorporate the preferred contact angle for the conductor of Remizov. First it is noted that this claim does not have any apparent impact on the actual steps of the method. The limitation of claim 10 is directed to the resultant form of the final product, but does not disclose any new step of the claimed process. POSITA would have realized that the desired contact angle can be easily and readily achieved by the well-known corona treatment of Vrijens to predictably result in a strong and resilient bond between the conductor and the substrate, thus reducing peeling and/or cracking when the flexible substrate is deformed during intended use. Moreover, there is no indication in the instant disclosure that any special step (or any step at all) was devised or that any surprising results were derived from simply using the old method of Vrijens with the well-known contact angle effect of surface treatment of Remizov. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Response to Arguments
Applicant’s arguments with respect to the 102 rejection of the claims as being anticipated by Vrijens have been considered but are moot because the new ground of rejection does not rely on Vrijens to disclose the features of argued claim 1.
Applicant's arguments filed 06/10/2026 with regards to the rejections of claims 1 and 6 as anticipated by Coffey have been fully considered but they are not persuasive. Regarding the newly added and argued limitation of claim 1 (imported from now cancelled claims 2 and 3), the Applicant has asserted that:
Nowhere in Coffey is a metallic nanoparticle-based ink disclosed that is printed with an inkjet. Instead, the portions of Coffey cited in the Office Action as disclosing nanoparticles specifically with respect to oriented mats of metallic nanowires. Only in paragraph [0294] of Coffey is there a brief mention of "ink jet printing." However, read in context, it is clear that this mention of ink jet printing in paragraph [0294] is merely a disclosure of among the ordinary ways polymer compositions can be applied to the stamp surfaces of the Coffey apparatus. There is no indication that any of the methods recited in paragraph [0294] alongside ink-jet printing (screen printing, syringe deposition, spraying, spin coating, brushing, atomizing, dipping, aerosol depositing, or capillary wicking) would be suitable for creating oriented mats of metallic nanowires; therefore, paragraph [0294], read in context, is clearly not related to the construction of the metallic nanowire mats.
Respectfully, these arguments are not found to be compelling as they appear to ignore any other cited portions of Coffey with regards to the claimed limitations. The Applicant conveniently focuses on par. [0294], while avoiding discussion of any of cited structures (206-220 or 474 and/or 476) and also ignoring all of (figs. 2 and 4F; pars. 0231, 0243, 0285), and avoiding the clear disclosure of the conductive material comprising a silver nanoparticle-based metallic ink (pars. 0029, 0102, 0107-0109, 0231, 0243 and 0285). In the cited portions of Coffey, it is quite clear that the conductive material can be a conductive polymer including silver nanoparticles. Par. [0102] discloses that the material may be silver oxide, and it is disclosed dozens of times that the wires are “nanowires”. It is literally impossible that any portion of the silver used could be larger than nano scale and still be used to form a nanowire, and as such the silver must be nanoscale. Moreover, cited par. [0107] explicitly discloses that the materials of the nanowires have metals which are formed from “a nanoparticle”. The argument that the nanoparticles are only disclosed “with respect to oriented mats of metallic nanowires” makes no logical sense and contradicts the Applicant’s own argument, as the “oriented mats of metallic nanowires” are literally the exact structures cited as the claimed printed conductive material and are the exact structures disclosed as being formed from silver. Coffey discloses that the conductive material is formed into the metallic nanowires, and discloses that the material may be silver, and discloses that the silver nanowire material can contain nanoparticles. Accordingly, it is quite clear that Coffey expressly anticipates this argued limitation.
Further, the Applicant asserted that the inkjet printing is not applicable to the silver nanoparticle conductors of Coffey. This is incorrect, as cited par. [0231] explicitly states that: “As used herein, “disposing” refers to any process whereby nanowires are formed on a substrate… Disposing processes can include…printing”. Coffey goes on to disclose that printing can be “ink jet printing”, and it is entirely clear to any POSITA that this is not “merely a disclosure of among [sic] the ordinary ways polymer compositions can be applied”, but instead is without question a further limitation of the “printing” of par. [0231] as both instances are directed to printing of polymers and the conductive material is disclosed as being polymeric, and Coffey expressly stated that the conductive polymer can be formed by “any process whereby nanowires are formed”, which of course includes the ink jet printing explicitly disclosed by Coffey and as conceded by the applicant to be an “ordinary” method for deposition. As such, it is without question that Coffey discloses inkjet printing of the conductive material.
Applicant has also argued that Coffey does not disclose the limitations of claim 6 and new claim 21. This argument is also not compelling. Applicant stated that: “As explained above, the oriented layers of nanotubes shown in Fig. 2 of Coffey are not layers of conductive materials printed with an inkjet. Moreover, the Office Action has not established that any of its annotated dotted lines are in fact lines oriented with respect to the neutral axis (i.e., the "neutral axis in bending" as clarified in amended claim 6 and claim 21) of any layer of the component shown in Coffey's Fig. 2.”
None of these assertions are found to have any basis in evidence. Further, as noted above, there is nothing in claim 6 or the associated limitation of claim 21 which has any bearing or effect upon the actually claimed method of manufacture. The limitation does not modify any step of the method, nor does it provide any new steps. The limitation is clearly intended to attempt to overcome a prior art rejection rather than to disclose any inventive concepts related to the claimed method. Even still, the Examiner has demonstrated that it is quite clear that Coffey does anticipate this “limitation” directed to the intended functionality of the product being formed. Any POSITA would understand that the neutral axis of a regular rectangular solid such as that of Coffey would run through the middle of that structure. As such, the “dotted lines” in the annotated figure above, are clearly representative of the neutral axis. Additionally, any POSITA would know that unless the structure were bent to an extreme degree, the neutral axis would remain interior to the rectangular solid through a significant range of bending angles or arcs. As such, the “limitation” which does not even limit the claimed method is clearly anticipated. With regards to the first quoted sentence of the applicant’s argument regarding claims 6 and 21, it has been proven quite thoroughly, above, that the nanotubes of Coffey are explicitly disclosed as being conductive materials printed with an inkjet.
According to the prior art rejections above, as well as the response to arguments herein, all of the currently disclosed limitations in the claims are held to be properly rejected, and each argument on the merits has been answered and rebutted.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Arkady et al. (US 2005/0214480 A1) is held to be of particular relevance to the claimed invention. Arkady discloses a method of forming conductive nanoparticle inks (Title; Abstract) comprising polymeric conductors containing silver nanoparticles (pars. 0019-0021) being printed by ink-jet printers (pars. 0032 and 0066).
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 Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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