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 .
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 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.
Claims 1-20 are pending.
Election/Restrictions
Applicant's election with traverse of Group I and the following species, claims 1-10, 13-19, in the reply filed on 08/26/26 is acknowledged.
Please note-Applicant indicated that claims 4-6 are not generic to the elected species but they appear to encompass the elected species in the same way that claims 7-9 encompass the elected species. That is, claims 4-6 mirror claims 7-9 except claim 7 requires an alkenyl group containing monomer being co-reacted with the acrylic monomer, while claim 4 only recites the acrylic monomer without reciting the alkenyl group containing monomer. However, claim 4 still allows for additional monomers (e.g., the alkenyl group containing monomer) and therefor is still generic to the elected species. All the above is based on the Examiner’s interpretation that the claimed “substituted or unsubstituted alkyl” groups encompass alkyl groups substituted with a cycloalkyl group in which a methylene group is replaced by ether and/or encompass alkyl groups substituted with a heterocycloalkyl group. However, claim 11 is withdrawn (contrary to Applicant’s remarks) because it requires that X1 is CRxRy and the clause related to n1 or n2 being 3 or more does not apply to the elected species, such that formula 2A-2 is not encompassed by claim 11
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The traversal is on the ground(s) that all the inventions and species can be examined without serious burden which is not persuasive in view of the different class of inventions requiring different interpretations as a matter of law and in view of the mutually exclusive nature of the species.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 11, 12, 20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/26/26.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 1-10, 13-19 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites that the second insulating layer has non-stretchability but the present disclosure characterizes the second insulating layer as being stretchable when combined with the first insulating layer (see [0093] of the present PGPub) such that the scope of “non-stretchability” is unclear (i.e., it is unclear if this means non-stretchable when the second insulating layer is formed as a separate layer, or if it means non-stretchable even when combined with the first insulating layer in the claimed insulating film (which would be contrary to the present disclosure), or if it merely means less stretchable than the first insulating layer).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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) 1-10, 13-16, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Im (U.S. 2021/0087346) in view of Synthesis of ultrathin polymer insulating layers… (provided by Applicant, 2015).
Regarding claims 1-10, 13-16, 18-19, Im discloses a polymer thin film with good stretch and dielectric properties by polymerizing the elected monomers (as in claims 2-10), with a thickness overlapping claim 16 (see abstract, [0011]-[0012], [0027], [0035], [0048]-[0049]). Im does not disclose using the thin film in electronic devices (though the disclosed dielectric properties would suggest such a use) or the second insulating layer.
However, the Synthesis NPL document is also directed to polymeric materials/substrates seeking good dielectric properties, and discloses that good dielectric properties of a polymeric film may allow such materials to be used in soft electronics such as transistors (see abstract, such transistors are inherently “thin film transistors” because the substrate is described as thin, and are also “attachable devices” because they are capable of being attached to something else, as in claims 18-19), and also discloses that applying an ultrathin insulating layer of cyclic siloxane (pV3D3) via iCVD method (the same reactant and method in the present application, as in claim 13) to a plastic substrate provides the plastic substrate with much improved insulting/dielectric properties (approaching the level of inorganic dielectric layers), large energy gap, and tunneling limited leakage characteristics, while still allowing the coated substrate to remain flexible, with the cyclic siloxane layer having adjustable thickness based on desired dielectric properties and flexibility and to account for surface roughness of the underlying layer, with suitable thicknesses being tested that overlap claim 16 (see abstract, Figs 1-2, page 628-632). Thus, it would have been obvious to have provided a cyclic siloxane coating onto the dielectric/stretch polymer layer of Im as taught by the Synthesis NPL document in order to make the film suitable for soft electronics/transistors and to provide improved insulting/dielectric properties (approaching the level of inorganic dielectric layers), large energy gap, and tunneling limited leakage characteristics, while still allowing the coated substrate to remain flexible.
Such a cyclic siloxane layer from the Synthesis NPL document is produced with overlapping materials, methods, and thicknesses as in the present application over an elastomer substrate (from Im) having overlapping materials, methods, and thicknesses as in the present application and therefore the second insulating layer inherently has the same non-stretchable property, penetrating property (to at least some degree) relative to the first insulating layer, and elongation different property relative to the first insulating layer as the overlapped embodiments of the present application (as in claims 14-15).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Im (U.S. 2021/0087346) in view of Synthesis of ultrathin polymer insulating layers… (provided by Applicant, 2015), as applied to claim 1 above, in view of Takizawa (U.S. 2016/0372662) in view of Effects of the Phase States… (provided by Applicant, 2008).
Regarding claims 17, modified Im teaches all of the above subject matter but does not explicitly disclose forming an SAM over the second insulating layer (though the Synthesis NPL document recognizes that SAM’s are useful in polymer based soft electronics generally). However, Takizawa is also directed to thin film transistors based on methyl substituted siloxane insulating layers (see abstract, [0120], [0124]) and discloses that plasma or UV/ozone treatment may be applied to such layers followed by a SAM layer of octadecyl trichlorosilane (as in the present application) to smooth the insulating layer and lower the surface energy thereof ([0137]-[0145]). In addition to these benefits from Takizawa, the Effects NPL document discloses that thin film transistors may apply ODTS SAM’s onto dielectric layers because the monolayer surface structural order is critical to device performance and such SAM’s allow for control of surface energy, roughness, and surface molecular structures (which determines how the active layer molecules assemble and grow from the monolayer) (see abstract and introduction).
Accordingly, it would have been obvious to have applied an ODTS SAM layer over the second insulating layer of modified Im as taught by Takizawa and the Effects NPL document in order to smooth the insulating layer and lower the surface energy thereof as well as control the surface molecular structures (which determines how the active layer molecules assemble and grow from the monolayer).
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights