DETAILED ACTION
The correspondence of 11 December 2025 has been received. Claims 1-7 as amended on 9 January 2024 are pending.
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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Bando (JP 2015-041419, machine translation provided on 11 December 2025 relied upon).
Bando teaches an elastic electrode (abstract). The electrode (#100 or #120) comprises a base elastomer layer (#101 or #121) and an electrode main body made of carbon nanotubes [CNTs] (#102 or #122) (¶16 and Figs. 1-2). The thickness of the layers is in the range of 100 nm to 10 microns (¶35).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to pick any part of the disclosed range, including a thickness between 100nm and 1000 nm based on the desired properties of the laminate.
Bando renders obvious claim 1.
With respect to claim 2, Bando fails to teach the Young’s modulus of the film. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to create the invention of the prior art with a Young’s modulus in the range of 50 – 200 MPa based on the application of the device and the desired flexibility and resistance to deformation in use.
With respect to claim 3, Bando teaches the overall thickness but not the thickness of the individual layers. Bando however teaches properties associated with the individual layers (too thin and insufficient conductivity, too thick and insufficient stretchability). Given the conductivity is imparted by the CNT layer (¶22) and the stretchability by the elastomer layer (¶17) it would have been obvious to a person having ordinary skill in the art to optimize the thickness of each layer based on the desired properties of the electrode. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed ratio is critical and has unexpected results.
With respect to claim 4, Bando teaches the electrode can include SWCNT (¶23).
With respect to claim 5, Bando teaches an electrode which is self-supporting (see examples disclosing crosslinking) and instant specification’s discussion of the term self-supporting.
With respect to claims 6-7, Bando teaches the electrode as an actuator (¶55) and as a laminate of two or more nano film and elastomer base materials alternatively laminated (Fig 2b).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Bando as applied to claim 1 above, and further in view of Hino (US 2012/0235545).
In the event Applicant disagrees that Bando sufficiently renders obvious a Young’s modulus in the range of 50 – 200 MPa,
Hino teaches an actuator (¶1) which includes an electrode having a Young’s modulus of 0.1-600 MPa. Hino teaches within these ranges, the electrode has improved flexibility, elasticity, and resistance to plastic deformation in actuator applications, so that an actuator with higher repeating durability can be produced. One of ordinary skill in the art would be motivated to produce the electrode of Bando with a Young’s modulus between 0.1-600 MPa, including the range of 50 – 200 MPa based upon the desired durability, flexibility, and elasticity of the device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK J VINEIS whose telephone number is (571)270-1547. The examiner can normally be reached Monday - Thursday: 8:00 a.m. - 4:00 p.m.
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/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781