DETAILED ACTION
This office action is in response to the amendments to the claims filed on 30 January 2026. Claims 1 – 5 and 7 – 18 are pending and currently being examined.
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 § 112
The previously made 112 rejections are hereby withdrawn in view of suitable amendments to the claims submitted with applicant’s response.
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, 2, 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell (PG Pub US 20220316466 A1) in view of Leroy (PG Pub US 20210316446 A1).
In Re Claim 1, Mitchell discloses an electrostatically actuated device (Figures 1A,1B,1C embodiment; see title) comprising at least one electrode chamber (not labeled, it is the volume between lateral electrodes 112 and 136); said at least one electrode chamber extending along a direction of extension (horizontally in Figure 1A) between a first electrode chamber end (where conduit 128 connects) and a second electrode chamber end (where conduit 130 connects), wherein:- the first electrode chamber end comprises at least one first fluid channel (elbow connecting to 128) emerging outwardly and configured to allow the passage of a fluid (“left liquid dielectric”); - the second electrode chamber end comprises at least one second fluid channel (elbow connecting to 130) emerging outwardly configured to allow the passage of another fluid (“right liquid dielectric”); - the at least one electrode chamber comprises at least one lateral electrode (112 or 136) extending laterally along the direction of extension; the at least one electrode chamber being adapted to receive a deformable electrode (114), said deformable electrode (114) being configured to cooperate with the at least one lateral electrode (112 and 136) such as to be actuated between at least a first position (Figure 1A) and a second position (Figure 1B or Figure 1C); said deformable electrode (114) being configured to push reversely (paragraph [0091] states that the electrode returns to the first position) a volume of fluid through at least one channel chosen between the at least one first fluid channel (128), and the at least one second fluid channel (130) when the deformable electrode (114) is actuated between the at least first position and the second position (the current position of 114 is depicted as a solid line and the dotted line is the other position of 114)(Figures 1A,1B,1C; paragraphs [0084]-[0091]).
Mitchel not explicitly disclose a printed circuit board associated with the lateral electrode.
However, Leroy discloses a lateral electrode (20, 32) (paragraph [0022]; Figure 2C) comprising a printed circuit board (20).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to modify the lateral electrodes of Mitchell to incorporate a printed circuit board as taught by Leroy because the electronics can be directly integrated into the printed circuit board (paragraph [0034] of Leroy) thus saving space.
In Re Claim 2, the combined references above disclose all the limitations of Claim 1, and Mitchell discloses that the deformable electrode (114) is disposed in at least one electrode chamber such as to partition the at least one electrode chamber in a first electrode compartment (containing “left liquid dielectric”), and a second electrode compartment (containing “right liquid dielectric”).
In Re Claim 4, the combined references above disclose all the limitations of Claim 1, and Mitchell discloses that the at least one lateral electrode (112 or 136) comprises an insulating layer (110 or 134; paragraphs [0084],[0089]) configured to electrically insulate at least partially the at least one lateral electrode (112 or 136) from the deformable electrode (114)(Figure 1A, paragraphs [0084],[0089]).
In Re Claim 5, the combined references above disclose all the limitations of Claim 1, and Mitchell discloses that the at least one electrode chamber comprises two lateral electrodes (112) and (136) disposed opposite to each other compared to the deformable electrode (114)(Figure 1A).
Claim(s) 3, 8 – 17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell (PG Pub US 20220316466 A1) in view of Leroy (PG Pub US 20210316446 A1) and further in view of Marsh (PG Pub US 20180258923 A1).
In Re Claims 3 and 19, Mitchell and Leroy disclose all the limitations of Claim 1, but they do not disclose a dimension.
However, Marsh discloses an electrode chamber (21a) having a width of 25 microns (paragraph [0032]) which is in the claimed range.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to design the electrode chamber of Mitchell / Leroy such that it has a width of 25 microns (which is in the claimed range of < 600 microns) as taught by Marsh because such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
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Annotated Figure 1A of Mitchell
In Re Claim 8, the combined references above disclose all the limitations of Claim 1, and the two dashed vertical lines in Mitchell, one at each end of the horizontal section of the channel in Figure 1A (annotated above) appear to be walls that delimit the two vertical sections (128) and (130) (i.e. the claimed first chamber and second chamber having first and second primary fluid passages emerging outwardly at the top of the chambers) of the channel from the horizontal section of the channel.
Alternatively, if it is not clear to applicant that Mitchell discloses distinct first and second chambers (not admitted to):
However, Figure 1 of Marsh discloses a first partition wall (12a) and a second partition wall (12b) disposed at the ends of the lateral electrodes (12c) and (12d) (paragraph [0029] states that electrodes are attached to 12c and 12d; paragraph [0056] states that two electrodes of a compartment form a parallel plate electrostatic actuator) and form the end walls of electrode chamber (14). The first partition wall (12a) forms a first fluid channel (22) and the second partition wall (12b) forms a second fluid channel (24)(paragraph [0026]) (Figure 1; paragraphs [0024]-[0026], [0029], [0056]).
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Annotated Figure 1A of Mitchell and Figure 1 of Marsh (arrows show the modification)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to incorporate the first partition wall as taught by Marsh at the left border of the electrode chamber of Mitchell (where the left dashed line of Mitchell is) and the second partition wall as taught by Marsh at the right border of the electrode chamber of Mitchell (where the right dashed line of Mitchell is) as depicted in the annotated figures above, for the purpose of providing support to and maintaining the separation between the lateral electrodes.
In Re Claim 9, the combined references above disclose all the limitations of Claim 8, and Figure 1 of Marsh discloses a first partition wall (12a) and a second partition wall (12b) disposed at the ends of the lateral electrodes (12c) and (12d) (paragraph [0029] states that electrodes are attached to 12c and 12d; paragraph [0056] states that two electrodes of a compartment form a parallel plate electrostatic actuator) and form the end walls of electrode chamber (14). The first partition wall (12a) forms a first fluid channel (22) and the second partition wall (12b) forms a second fluid channel (24)(paragraph [0026]) (Figure 1; paragraphs [0024]-[0026], [0029], [0056]).
In Re Claim 10, the combined references disclose all the limitations of Claim 9, and Marsh discloses that at least one partition wall chosen between the first partition wall (12a) and the second partition wall (12b) is formed by pillars disposed between the two lateral electrodes (12c) and (12d).
In Re Claim 11, the combined references disclose all the limitations of Claim 9, and in the modified apparatus, since the partition walls of Marsh are formed at the ends of the lateral electrodes of Mitchell, they are disposed at opposite ends of the deformable electrode.
In Re Claim 12, Mitchell, Leroy and Marsh disclose all the limitations of Claim 9, but Mitchell does not disclose a plurality of electrode chambers as claimed.
However, Figure 1 of Marsh discloses a plurality of electrode chambers (21a to 21g; paragraph [0056] states that two electrodes of a compartment form a parallel plate electrostatic actuator), each of the first partition wall (12a) of each electrode chamber (21a to 21g) of the plurality of electrode chambers (21a to 21g) comprises at least one first fluid channel (22) configured to allow the passage of a fluid to a unique first chamber (since the electrode chambers are connected in parallel – paragraph [0091], they have a common inlet which reads on the claimed unique first chamber), said the unique first chamber (common inlet) being common to the plurality of electrode chambers (21a to 21g), and wherein each of the second partition wall (12b) of each electrode chamber (21a to 21g) of the plurality of electrode chambers (21a to 21g) comprises at least one second fluid channel (24) configured to allow the passage of a fluid to a unique second chamber (since the electrode chambers are connected in parallel – paragraph [0091], they have a common outlet which reads on the claimed unique second chamber), said the unique second chamber being common to the plurality of electrode chambers (21a to 21g) (Figure 1; paragraphs [0024]-[0026], [0029], [0056]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to replicate the electrode chamber of Mitchell and stack the plurality of the electrode chambers in a parallel configuration as taught by Marsh for the purpose of increasing the flow rate (paragraph [0091] of Marsh).
In Re Claim 13, the combined references above disclose all the limitations of Claim 12, and Figure 1 of Marsh discloses that each electrode chamber of the plurality of electrode chambers (21a to 21g) are stacked adjacent to each other.
In Re Claim 14, the combined references above disclose all the limitations of Claim 13, and Figure 1 of Marsh discloses that each electrode chamber (21a to 21g) of the plurality of electrode chambers are stacked to any other adjacent electrode chamber (21a to 21g) of the plurality of electrode chambers along one among the at least one lateral electrode (12c, 12d, and 18a – 18f all have electrodes as stated in Paragraph [0029], and therefore they all read on at least one lateral electrode as claimed).
In Re Claim 15, the combined references above disclose all the limitations of Claim 12, and Figure 1 of Marsh discloses that each electrode chamber (21a) share at least one lateral electrode (18a) with any other adjacent electrode chamber (21b) (12c, 12d, and 18a – 18f all have electrodes as stated in Paragraph [0029], and therefore they all read on a lateral electrode as claimed).
In Re Claim 16, the combined references above disclose all the limitations of Claim 12, and paragraph [0029] of Marsh discloses that each deformable electrode (18a – 18f) comprised in each electrode chamber of the plurality of electrode chambers is actuated individually compared to any other deformable electrode (Figure 8 shows a drive circuit that actuates the respective deformable electrodes independently).
In Re Claim 17, the combined references above disclose all the limitations of Claim 12, and each of the replicated electrode chambers of Mitchell in the modified apparatus has its own internal volume, therefore the internal volume of one electrode chamber can be designated a primary internal volume, and the internal volume of another electrode chamber can be designated the secondary internal volume.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell (PG Pub US 20220316466 A1) in view of Leroy (PG Pub US 20210316446 A1) and further in view of Isomura (PG Pub US 20110250525 A1).
In Re Claim 7, Mitchell and Leroy disclose all the limitations of Claim 1, but they do not disclose a roughness index.
However, Isomura discloses a lateral electrode (4, 5, 6; paragraph [0003]; Figure 1) that presents a roughness index inferior to 5 μm (paragraph [0115]). Note that this overlaps the claimed range of inferior to 1 μm. Isomura also establishes roughness index as a results effective variable, because lower values of the variable provide higher non permeability to liquids (as stated in paragraph [0115]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to design the roughness index of the lateral electrodes of Mitchell / Leroy such that it is in the claimed range of less than 1 μm as taught by Isomura because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art- In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); and 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. Furthermore, MPEP 2144.05, Section I states that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell (PG Pub US 20220316466 A1) in view of Leroy (PG Pub US 20210316446 A1) and further in view of Berge (WIPO document WO 2018041866 A1).
In Re Claim 18, Mitchell and Leroy do not disclose spectacles.
However, Berge discloses Spectacles comprising an electrostatically actuated device (Page 1, Lines 24 – 25).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to utilize the electrostatic actuator of Mitchell / Leroy to power variable power spectacles as taught by Berge because it is only a matter of substituting the electrostatic actuator of Berge with the electrostatic actuator of Mitchell, therefore the results of the substitution are predictable (MPEP 2141, Section III, Rationale E).
Response to Arguments
Applicant has argued on Page 7 of Applicant’s Response that “The objective technical problem corresponding to this technical effect can be expressed as follow: "How producing at reduced cost, an electrode for electrostatically actuated device allowing to have a better control of fluid movements and to simplify the overall structure of the electrode chamber ?" (see paragraph [0012] and [0033] of the published US Application)”.
Examiner’s Response: The desire to manufacture products at reduced cost is not exclusive to a given product but it is a universal goal in manufacturing, thus defining the problem to be solved as one of how to produce at reduced costs is applicable to any product of manufacture. The problem to be solved (reducing costs) in paragraph [0033] of applicant’s specification appears to be solved because the printed circuit board is integrated with the electrode as stated in paragraph [0095] in applicant’s specification. Paragraph [0034] of Leroy clearly states that the electrodes are directly patterned into the printed circuit board, therefore it is expected that costs are reduced. The examiner contends that Mitchel is relevant to the problem “allowing to have a better control of fluid movements and to simplify the overall structure of the electrode chamber” listed in paragraph [0012] of applicant’s specification because the same paragraph states that this problem is solved by “The dedicated structure of the at least one electrode chamber with at least one lateral electrode extending laterally to the direction of extension” – a feature that is met by Mitchel alone.
Applicant has argued on Page 7 of Applicant’s Response that “First, starting from Mitchell, the person skilled in the art would not have consulted Leroy, since they relate to different technical fields. In Leroy, the actuators are used in "the field of haptics and haptic feedback, tactile displays, and actuators for touch feedback systems, for example for virtual and augmented reality applications." (see paragraph [0001] of Leroy), whereas Mitchell concerns pumping systems (see paragraph [0003] and [0004] of Mitchell)”.
Examiner’s Response: MPEP 2141.01 (a) – IV states that similar structures satisfy the field of endeavor test (the court applied the "field of endeavor test" for analogous art and determined that the references were within the field of the inventor’s endeavor and hence were analogous art because toothbrushes are structurally similar to small brushes for hair, and a toothbrush could be used to brush facial hair. Id. at 1326, 72 USPQ2d at 1212). Both Mitchel and Leroy relate to HASEL/electrostatic actuators (paragraph [0049] of Mitchel and paragraph [0013]/Abstract of Leroy). The electrostatic actuators of these references are therefore clearly, at the very least, similar structures to applicant’s electrostatic actuator (if not identical to it) - which satisfies the field of endeavor test. Note also that the Field of Endeavor section of both Mitchel and Leroy relates to “actuators” (paragraph [0003 of Mitchel and paragraph [0001] of Leroy), applicant has presented an extremely narrow interpretation of the field of endeavor.
Applicant has argued on Page 8 of Applicant’s Response that “Mitchell push reversely two separate fluids, whereas Leroy uses only one fluid; - Mitchell pump the fluids inside and outside the fluid chamber, while the electrode walls remains immobile, whereas in Leroy, the quantity of fluid contain in the fluid chamber is stable, while the walls of the fluid chamber are stretchable; and - Mitchell induce a parallel movement of the fluids compared to the lateral electrode, whereas in Leroy, the electrodes pushes the fluid perpendicularly. since the operation of the devices of Mitchell and Leroy are so different, the person skilled in the art would not have consulted Leroy to modify Mitchell”.
Examiner’s Response: In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention - In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). The tests for analogous art do not require Leroy to be analogous to Mitchel, rather, each reference needs to be analogous to the claimed invention. The preamble of Claim 1 clearly recites “An electrostatically actuated device”. Paragraph [0049] of Mitchel clearly recites “Electrostatic (HASEL) actuator”. Paragraph [0013] of Leroy clearly recites “electrostatic actuator (HASEL)”, see also Abstract: “electrostatic pressure”.
Applicant has argued on Page 8 of Applicant’s Response that “Secondly, Leroy does not resolve the above mentioned technical problem, because the movement of the fluid in Leroy in perpendicular to the electrode, and because Leroy does not teach a manufacturing with reduced cost”.
Examiner’s Response: The problem to be solved (reducing costs) in paragraph [0033] appears to be solved because the printed circuit board is integrated with the electrode as stated in paragraph [0095]. Paragraph [0034] of Leroy clearly states that the electrodes are directly patterned into the printed circuit board, therefore it is expected that costs are reduced (for evidence thereof see Kilbar – PG Pub US 20080262240 A1; Figure 14; paragraph [0167]: “the electrodes 136 and electrical connections 138 may be integrated on a printed circuit board 140 (PCB) to reduce the cost”).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 6:00 PM.
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/D.G.K/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746