DETAILED ACTION
Status of Claims:
Claims 1-10 are pending.
Claims 1-8 and 10 are amended.
This Action is Made Final.
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 Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive. The applicant argues that the indefiniteness rejections are overcome in view of the amendments. With respect to claim 1, this is not persuasive. The applicant has not provided any arguments regarding how the claims are now clear or identifying their interpretation of the claims.
With respect to the specification and dependent claims the arguments are persuasive in view of the amendments.
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 1-10 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.
Regarding Claim 1:
The claim states a “thermal conductive and breathable membrane, which has…relative to the thermal conductive and breathable membrane to as polyurethan resin”. It is not clear if the polyurethane resin is part of the thermal conductive and breathable membrane or not.
The claim states a “thermal conduction and breathable membrane…making a formed thermal conduction and breathable membrane…” This limitation renders the claim indefitne because it is not clear if “making” is a method step , if the “thermal conductive and breathable membrane” comprises a “formed thermal conductive and breathable membrane” or how, if at all, this statement is intended to limit the claim. The claim is directed to a product, while “making” is a process limitation. Process limitations and product limitations within the same claim render the claim indefinite because it is not clear if the process is required for direct infringement to occur (see MPEP 2173.05(p)).
The claim states “enable to maintain extensibility without increasing the membrane thickness”. The word “enable” appears to be a typo and should be “enabled” in order to be grammatically correct. There is no “membrane thickness” defined. Therefore it is not clear what the membrane thickness is not increased in comparison to.
The claim states “whereby in addition to moisture permeability and waterproofness of polyurethane resin, the oligo-layer graphene increases thermal conductivity, dispersibility of oligo-layer graphene is improved and extensibility of polyurethane resin is improved”. It is not clear what the “thermal conductivity”. “dispersibility”, and “extensibility” are increased or improved relative to. Specifically it is not clear if the limitation is referring to any polyurethane resin, a polyurethane resin with polyrotaxane and without an oligo-layer graphene, or the polyurethane resin before the oligo-layer graphene is added.
The remaining claims are indefinite as they depend from an indefinite claim.
Allowable Subject Matter
Claims 1-10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: After a thorough review of the prior art it is the examiner’s opinion that the claims contain limitations that are not disclosed and would not have been obvious in view of the prior art. Rizzi et al (US 2020/0062914) teaches a thermal conductive and breathable membrane (see Rizzi para. 0084) comprising 1 to 30 wt% graphene added to a polyurethane resin (see Rizzi para. 0017-0020). Rizzi does not teach that the graphene is oligo-layer graphene or adding 0.05 to 10 wt% polyrotaxane to the membrane.
Wu et al (TW 202111078A, English machine translation provided) teaches a thermally conductive sheet comprising polyurethane resin (see Wu Abstract). Wu further teaches that the thermally conductive material added to the resin can be selected from graphene and oligo-layer graphene (see Wu pg. 3, 4th paragraph).
Ito et al (JP 2012086147, English machine translation provided) teaches the addition of polyrotaxane to a polymer (see Abstract) wherein the polymer includes polyurethane resin (see pg. 5, 1st paragraph). Ito further teaches that the polyrotaxane is added in a weight ratio with the polymer of 1:1000 or more.
Although the individual elements of the claims are known in the prior art there is no indication that it would have been obvious to add the polyrotaxane of Ito with a solid weigh content of 0.05 to 10 wt% to the thermal conductive breathable membrane of Wu. Ito teaches that the addition of a polyrotaxane improves the resistance of the polymers to cracks and scratches (see Ito pg. 1, Background Art), however Wu does not indicate any desire to improve the strength or resistance to cracking of the breathable membrane. Therefore one skilled in the art would not have been motivated to modify Wu with Ito.
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 CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ramdhanie Bobby can be reached at 571-270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 5/20/2026
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