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
An information disclosure statement has not been received. If the applicant is aware of any prior art or any other co-pending applications not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-3 & 5-19 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for an electrically conductive force sensor that measures a bending contact force the specification does not apply to all circuits where conductive cilium (e.g. thin wire) configured to bend to create a conductive path to the second conductive cilium (e.g. a magnetic bending JP 2004284567), (switching JP 2017135775), (force US 20020039620) & (WO 2023146962 analyte collection).
Claims 1-3 & 5-19 and its dependent claims are rejected under 35 U.S.C. 112(a), as failing to comply with the scope of enablement requirement. In Applicant' s case the breadth of the claims extends beyond the disclosure of an electrically conductive force sensor [0021].
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” In this case, the relevant Wand factors the Examiner has considered are :
2164.01(a) Undue Experimentation Factors [R-01.2024]
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The disclosure does not provide additional working examples or indication of any other type of circuit other than a force sensor where the bending is a result of a force acting on a first conductive artificial cilium to cause or release bending that is electrically measured. The inventor has reduced to practice at the time deriving a force measuring circuit that is not claimed within the scope of the claims. This places on the public the entire quantity of experimentation needed to make or use the full scope of Claims 1-3 & 5-19 to any type of circuit such as toggle switches or even light or heat conductance circuits using fiber optics that are cilium shaped and over reaches the disclosed concept.
Claims 1-3 & 5-19 and therefore recites subject matter directed to the broadest level of a concept of all conductance circuits.
Consistent with office policy, Examiner has weighed all the evidence for and against enablement of this invention and has concluded based on guidance provided by the MPEP and case law (including the Wands factors) that there is not enough evidence in favor of the scope of the enablement of this invention.
Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert' s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered)”.
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites a preamble of “an artificial conductive cilia based sensor” but only claims a circuit. It is unclear as to whether the claims are directed to a device of measurement. Examiner looks to the specification [0058] and discerns a force or contact sensor as the measurement device of Claim 4.
Claim 1 recites the limitation “ the first conductive cilium is further configured to bend, …, to a bent state at which the distal end has a conductive path to the second conductive cilium” which is structurally unclear as to what the conductive path requires. Looking to the specification it seems a [0055: cilium-to-contacts establishes a closed circuit, resulting in a current flow from a current source, to the first electrode (e.g. first conductive cilium) to contact with second electrode (e.g. second conductive cilium), returning to the current source from the second electrode (e.g. second conductive cilium)].
Claim 16 recites printing steps for a circuit with conductive cilium without indicating what the overall product is in the method of making. It seems the conductive cilium are directed to a motion or force sensor [0058].
Indication of Allowable Subject Matter
Claims 1-19 are objected to and would be allowable if:
1) Rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
2) Rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1. The closest prior art is Panat (US 20210033559). Panat discloses n artificial conductive cilia based sensor (Fig. 5)[0058: motion sensors for capturing gestures performed by the user] , comprising: a substrate (110); a conductive pad (150) and a neighbor conductive pad (second instance of pad150) positioned a spacing distance, in a spacing direction, from the conductive pad (150), each secured to the substrate (110); a first conductive cilium (120), having a distal end (120 top), a base end (120 bottom on pad 250) conductively secured to the conductive pad (150), and configured with a structural elasticity and bendable [0093]; a second conductive cilium (Fig. 10a shows a plurality of cilia), having a respective base end (Fig. 10a: end of cilium on the contact pad) conductively secured to the neighbor conductive pad (second 150); a first terminal (140), supported on the substrate (110) and comprising a first conductor (130) electrically connected to the conductive pad (150); and a second terminal (Fig. 10a shows a plurality of cilia),, supported on the substrate (110) and comprising a second conductor (Fig. 10a shows a plurality of cilia), electrically connected to the neighbor conductive pad (Fig. 10a shows a plurality of cilia), wherein the first conductive cilium (120) is further configured to bend [0093].
Panat nor the prior art provides a conductive path (e.g. a current path from the distal end of the bent first conductive cilium to the second conductive cilium as best interpreted from the specification) the first conductive cilium is further configured to bend, responsive to receiving a bending force directed in the spacing direction, to a bent state at which the distal end has a conductive (e.g. contact) path to the second conductive cilium and, responsive to removing said bending force, to return via a force from the structural elasticity to a relaxed shape that substantially reduces or terminates said conductive path.
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Regarding Claim 16. Panat discloses a method, comprising: printing [0067], on a substrate (110): a conductive pad [0048] and a neighbor conductive pad [0048], spaced apart with a spacing direction and spacing distance, a first terminal (120), comprising a first conductor (130) electrically connected to the conductive pad [0048], and a second terminal, comprising a second conductor electrically connected to the neighbor conductive pad; and three-dimensional (3D) vertical printing a first conductive cilium (120)[0071] on the conductive pad and a second conductive cilium [Fig. 10 plurality of cilia] on the second conductive pad [0048].
Panat not the prior art teaches the 3D vertical printing each 3D vertical printing comprises a solvent casting 3D printing that includes extruding a homogenous paste comprising graphene, a polymer, and solvent, through an extrusion tip, while continually elevating the extrusion tip, and the solvent casting 3D printing includes a parameter having a first value in the 3D vertical printing the first conductive cilium and a second value in the 3D vertical printing the second conductive cilium.
Specifically, the prior art does not provide the first value being configured to provide the first conductive cilium a first bending sensitivity and the second value being configured to provide the second conductive cilium a second bending sensitivity, lower than the first bending sensitivity.
Regarding Claims 2-10 & 12-19 are objected to base on their dependence on the indicated allowable material of base Claims 1 & 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Monica S Young whose telephone number is (303)297-4785. The examiner can normally be reached M-F 08:30-05:30 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at 571-273-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONICA S YOUNG/Examiner, Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855