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 .
Summary
The Applicant’s arguments and claim amendments received on August 25, 2025 are entered into the file. Currently, claims 1 and 10 are amended; claim 3 is canceled; claims 13-15 are new; resulting in claims 1, 2, and 4-15 pending for examination.
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.
Claim 9 is 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 9, the limitation reciting “wherein the elastic layer contains at least one selected from the group consisting of a fluorine-based polymer and a liquid crystal polymer” in combination with the newly added limitation in claim 1 reciting “the elastic layer contains a thermoplastic elastomer having a glass transition temperature of -70°C to 25°C” is indefinite in light of the instant specification. In particular, it is not clear based on the current language of the claims whether claim 9 is intended to require that the elastic layer contains both a thermoplastic elastomer and at least one selected from a fluorine-based polymer or a liquid crystal polymer, or if claim 9 is also intended to encompass embodiments in which the elastic layer contains a thermoplastic elastomer, wherein the thermoplastic elastomer is a fluorine-based polymer or a liquid crystal polymer.
In looking to Examples 1-8 in Table 1 of the instant specification, the elastic layer of the present invention comprises either a thermoplastic elastomer or a mixture of a thermoplastic elastomer and a fluorine-based polymer or a liquid crystal polymer. The instant specification, however, does not appear to disclose an embodiment in which the thermoplastic elastomer is a fluorine-based polymer or a liquid crystal polymer.
Rather, the instant specification states that examples of the thermoplastic elastomer include a polystyrene-based elastomer, an olefin-based elastomer, a polyvinyl chloride-based elastomer, a polyurethane-based elastomer, a polyester-based elastomer, and a polyamide-based elastomer [0023]. The instant specification further indicates that the elastic layer may contain a resin, such as a liquid crystal polymer or a fluorine-based polymer, which does not include the thermoplastic elastomer [0028]. Therefore, although claim 9 is written broadly to encompass a configuration of the elastic layer in which the thermoplastic elastomer is a fluorine-based polymer or a liquid crystal elastomer, this embodiment is not consistent with the instant disclosure. For the purpose of applying prior art, the limitations of claim 9 will be interpreted in light of the specification as requiring that the elastic layer further comprises at least one selected from the group consisting of a fluorine-based polymer and a liquid crystal polymer.
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.
Claims 1, 2, 4-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hor et al. (US 2010/0271692, previously cited) in view of Pryce et al. (US 2012/0154793, previously cited).
Regarding claims 1 and 8, Hor et al. teaches flexible terahertz region metamaterials produced by providing a substrate and depositing suitable material in a desired pattern on the substrate (Abstract, [0037]). Hor et al. teaches that it will be apparent to the skilled artisan that the substrate (base material, elastic layer) should be chosen for properties that are consistent for use in a metamaterial structure, wherein it is desirable for the substrate to meet the following criteria: minimal lateral cross sectional expansion due to thermal fluctuation, flexible, ductile, robust, shock resistant, and transparent to THz electromagnetic waves [0038]. Hor et al. further teaches that it will be apparent to the skilled artisan that the deposited material (pattern, conductive material) should be chosen for properties suitable for use in a metamaterial structure, wherein it is desirable for a deposited material to meet the following criteria: highly electrically conductive, low thermal expansion, low brittleness, low fragility, low vaporization, and viscosity suitable for inkjet printing [0039]. Examples of suitable deposited material include metals such as gold, copper, silver, etc.; electrically conductive polymers; electrically conductive liquid metal; metallic and semiconductor carbon nanotubes; and functionalized nanoparticles [0039].
Although Hor et al. teaches that the material for the substrate (elastic layer) can be selected for properties that are consistent for use in a metamaterial structure, including flexibility, ductility, shock resistance, etc. ([0038]), the reference does not expressly teach that the substrate contains a thermoplastic elastomer having a glass transition temperature of -70 to 25°C at an amount of 30% by mass or more.
However, in the analogous art of metamaterials, Pryce et al. teaches a tunable metamaterial structure comprising a flexible structure capable of being strained and relaxed, a metamaterial pattern formed on a surface of the flexible substrate, and a metal layer formed on the metamaterial pattern (Abstract, [0058]). Pryce et al. teaches that a stretchable compliant substrate is used to tune the resonant frequency of a metamaterial by changing the distances and thus the coupling strength between pairs of resonator elements, wherein a polymer substrate can be used as the dynamic component of an active metamaterial, enabling mechanical deformation of the composite unit cells [0057]. Pryce et al. teaches that the flexible material of the substrate should be capable of mounting the metamaterials on its surface, and capable of stretching to a strain rate of at least about 50% without registering significant distortion, wherein examples of suitable flexible materials include flexible polymers (e.g., PDMS and polyimide), rubbers (thermoplastic elastomer) (e.g., polybutadiene rubber), and vinyl acetates [0062].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the metamaterial of Hor et al. by selecting a thermoplastic elastomer, such as polybutadiene as suggested by Pryce et al., for use as the material of the substrate given its excellent flexibility, elasticity, and shock resistance. A content of the thermoplastic elastomer with respect to a total mass of the substrate (elastic layer) is therefore 100% by mass.
Although Pryce et al. does not expressly teach a glass transition temperature of the thermoplastic elastomer, one of ordinary skill in the art would recognize that a polybutadiene rubber may have a glass transition temperature within the claimed range depending on its structure and composition. It would have been obvious to one of ordinary skill in the art to select a glass transition temperature of the thermoplastic elastomer, such as within the claimed range, in order to ensure that the substrate exhibits good low-temperature flexibility, depending on the conditions in which the metamaterial is intended to be used.
Although Pryce et al. does not expressly teach an elastic recovery rate of the material of the flexible substrate as measured according to the instant invention (see [0011] of the as-filed specification), Pryce et al. does further teach that the material of the flexible substrate should be capable of mounting the metamaterials on its surface, and capable of stretching to a strain rate of at least about 50% without registering significant distortion [0062]. Pryce et al. teaches that while there is no upper limit on the amount of strain that the flexible substrate may be subjected to, too much strain may cause significant distortion, or damage, of the substrate, which is undesirable [0059]. However, Pryce et al. further teaches that the metamaterials can be tuned via the elastic and plastic deformation of compliant substrates when subjected to tensile strains as high as 50% without delamination or distortion of the metallic elements [0070]. Pryce et al. therefore teaches that the elastic recovery rate of the substrate is less than 100%, given that the substrate undergoes both elastic and plastic deformation.
It would have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable such as the elastic recovery rate of the elastic layer through routine experimentation, especially given the teachings in Pryce et al. regarding the desire to optimize the elastic and plastic deformation properties of the substrate to achieve a compliant substrate that is resistant to both damage and delamination of the metallic elements upon being subjected to a desired strain level. See MPEP 2144.05(II).
Regarding claim 2, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1 above. Although Hor et al. teaches various embodiments in which the substrate is made of polyimide and has thicknesses in the range of 54 µm to 127 µm ([0030]-[0031]), the combination of references does not expressly teach that the thickness of the elastic layer is 7 µm to 15 µm.
It would, however, have been obvious to one of ordinary skill in the art to modify the metamaterial of Hor et al. in view of Pryce et al. by reducing the thickness of the substrate, such as to a value within the claimed range, in order to enable the metamaterial to be usable in applications requiring particularly high flexibility or small form factor.
Regarding claim 4, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1. As noted above, Pryce et al. teaches that the substrate (base material) may be formed using a flexible material such as polybutadiene rubber [0062]. While it is acknowledged that Pryce et al. does not specifically disclose a dielectric loss tangent of the substrate, it is reasonable to presume that a substrate formed of polybutadiene would inherently have a dielectric loss tangent within the broadly claimed range of 0.01 or less, given that the material is known to have very low dielectric loss properties.
Regarding claim 5, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1 above, and Hor et al. further teaches exemplary embodiments in which the deposited material (pattern) formed of dodecanethiol functionalized nanogold has a thickness or 38.7 nm, or in which the deposited material formed of conductive polymer PEDT/PSS has a thickness of 0.7 µm ([0065]-[0067]), each of which falls squarely within the claimed range of 5 µm or less.
Regarding claim 6, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1 above. Hor et al. further teaches an embodiment in which the deposited material (pattern) is made of nanogold having a thickness of 38.7 nm, which is deposited on a 54 µm thick polyimide substrate [0067]. The product of the thickness and storage modulus of the nanogold pattern is therefore about 3.1 GPa-µm (80 GPa x 0.0387 µm). When the polybutadiene taught by Pryce et al. is used as the material of the substrate, the product of the thickness and storage modulus of the polybutadiene base material is about 5.4 GPa-µm (0.1 GPa x 54 µm). The ratio of the two products is therefore about 0.6, which falls within the broadly claimed range of less than 10.
Regarding claim 7, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1 above, and Hor et al. further teaches that the pattern of the deposited material is designed to act as a metamaterial, wherein suitable patterns for a two-dimensional metamaterial include a periodic split ring resonator (SRR) ([0040], claim 9).
Regarding claim 10, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1 above directed to the metamaterial, and Hor et al. further teaches an embodiment of a three-dimensional multilayer metamaterial (laminate) in which a deposited material (pattern) comprising dodecanethiol functionalized nanogold forming a split ring resonator (SRR) is provided on a polyimide substrate (base material), and an adhesive clear polymer (organic film) is provided on a surface of the nanogold SRR ([0031], [0067], Fig. 13).
Regarding claim 11, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 10 above but does not expressly teach a moisture permeability of the adhesive clear polymer (organic film). It would, however, have been obvious to one of ordinary skill in the art to select an appropriate material for the organic film such that the moisture permeability is minimized, such as to a value within the claimed range, in order to protect the metal material used to form the pattern of deposited material from being damaged due to exposure to moisture (i.e., corrosion).
Regarding claim 12, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 10 above but does not expressly teach that the adhesive clear polymer (organic film) contains an ultraviolet absorber. It would, however, have been obvious to one of ordinary skill in the art to include an ultraviolet absorber in the organic film, in order to protect the pattern of deposited material and/or the underlying base material from being damaged due to UV degradation.
Regarding claim 13, Hor et al. in view of Pryce et al. teaches all of the limitations of claim 1 above. As explained above with respect to claim 1, although Pryce et al. does not expressly teach an elastic recovery rate of the material of the flexible substrate, Pryce et al. does further teach that the material of the flexible substrate should be capable of mounting the metamaterials on its surface, and capable of stretching to a strain rate of at least about 50% without registering significant distortion [0062]. Pryce et al. teaches that while there is no upper limit on the amount of strain that the flexible substrate may be subjected to, too much strain may cause significant distortion, or damage, of the substrate, which is undesirable [0059]. However, Pryce et al. further teaches that the metamaterials can be tuned via the elastic and plastic deformation of compliant substrates when subjected to tensile strains as high as 50% without delamination or distortion of the metallic elements [0070]. Pryce et al. therefore teaches that the elastic recovery rate of the substrate is less than 100%, given that the substrate undergoes both elastic and plastic deformation.
It would have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable such as the elastic recovery rate of the elastic layer through routine experimentation, especially given the teachings in Pryce et al. regarding the desire to optimize the elastic and plastic deformation properties of the substrate to achieve a compliant substrate that is resistant to both damage and delamination of the metallic elements upon being subjected to a desired strain level. See MPEP 2144.05(II).
Claims 1, 2, 4, and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US 2025/0038422, previously cited) in view of Koga et al. (US 2024/0044131, newly cited).
Regarding claims 1 and 8, Ito et al. teaches a metamaterial (1) comprising a plurality of films (11, 12, 13), a plurality of micro-resonators (31) arrayed onto a surface of each of the films, and stress relieving members (21, 22) disposed between the films ([0025], [0029], [0032], Fig. 1). Any one of the plurality of films, or a combination of the plurality of films and the stress relieving members, can be taken to correspond to the claimed base material, wherein any one of the films can be taken to correspond to the claimed elastic layer, and wherein the micro-resonators correspond to the claimed pattern which is provided on a surface of the elastic layer. Each of the micro-resonators (31) is made of an electrically conductive material, such as a metal, an alloy, or the like [0030].
Ito et al. teaches that the films (11, 12, 13) are made of resin, such as polyimide, polyolefin, fluoropolymer, or thermoplastic elastomer [0028]. The content of thermoplastic elastomer with respect to the total mass of a film (elastic layer) may therefore be 100% by mass. Although Ito et al. does not expressly teach an elastic recovery rate of the films, Ito et al. does further teach that the metamaterial is bendable so as to be attachable to a curved surface, wherein the stress relieving members have lower elastic modulus than the films in order to suppress application of excessive force to the micro-resonators, thus preventing deformation of the micro-resonators ([0008], [0057]).
It would, therefore, have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable such as the elastic recovery rate of the elastic layer through routine experimentation, especially given the teachings in Ito et al. regarding the desire to optimize the bendability of the metamaterial while preventing the application of excessive force to the micro-resonators upon bending. See MPEP 2144.05(II).
Ito et al. differs from the claimed invention in that the reference does not expressly teach a glass transition temperature of the thermoplastic elastomer.
However, in the analogous art of metamaterials, Koga et al. teaches a metamaterial (100) comprising a sheet (11) having rubber elasticity and a plurality of resonant portions (21) provided in contact with a surface of the sheet ([0063]-[0064], Figs. 1-2). Similar to Ito et al., Koga et al. teaches that the sheet having rubber elasticity preferably includes a thermoplastic elastomer, wherein the sheet has a glass transition temperature of 0°C or less, preferably -30°C or less ([0066], [0072]). In particular, Koga et al. teaches that the lower the glass transition temperature of the sheet, the higher the cold resistance [0072].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the metamaterial of Ito et al. by selecting a thermoplastic elastomer having a glass transition temperature within the claimed range, as taught by Koga et al., in order to improve the resistance of the metamaterial to low temperatures.
Regarding claim 2, Ito et al. in view of Koga et al. teaches all of the limitations of claim 1 above but does not expressly teach a thickness of the films (11, 12, 13; elastic layer). Ito et al. does, however, teach that the thickness of the films in the Z-axis direction may be regulated in accordance with the desired electromagnetic properties of the metamaterial, wherein the films transmit a target electromagnetic wave having a wavelength within a target range ([0025], [0031]).
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an appropriate thickness for the films taught by Ito et al., such as within the claimed range, in order to achieve the desired electromagnetic properties as well as the desired physical properties (e.g., bendability).
Regarding claim 4, Ito et al. in view of Koga et al. teaches all of the limitations of claim 1 above. Although Ito et al. does not expressly teach a dielectric loss tangent of the base material, the reference does further teach that the metamaterial comprises a plurality of films that transmit a target electromagnetic wave ([0007], [0027], [0041]). It would, therefore, have been obvious to one of ordinary skill in the art to select appropriate materials having a low dielectric loss tangent, such as within the broadly claimed range of 0.01 or less, for use as the base material in order to enable the metamaterial to effectively transmit target electromagnetic waves while minimizing transmission losses.
Regarding claim 7, Ito et al. in view of Koga et al. teaches all of the limitations of claim 1 above, and Ito et al. further teaches that the micro-resonators (31) may include a plurality of split-ring resonators [0030].
Regarding claim 9, Ito et al. in view of Koga et al. teaches all of the limitations of claim 1 above. As noted above, Ito et al. teaches that the films (11, 12, 13) are made of resin, such as polyimide, polyolefin, fluoropolymer, thermoplastic elastomer, and the like [0028]. Given that Ito et al. teaches both thermoplastic elastomer and fluoropolymer as suitable materials for the films, it would have been obvious to one of ordinary skill in the art to combine the two materials useful for the same purpose in order to form a third material (i.e., an elastic layer containing a thermoplastic elastomer and a fluorine-based polymer as claimed) to be used for the same purpose. See MPEP 2144.06(I).
Regarding claim 10, Ito et al. in view of Koga et al. teaches all of the limitations of claim 1 above. As noted above with respect to claim 1, any of the films (11, 12, 13) can be taken to correspond to the claimed elastic layer. When the film (12) is taken to correspond to the claimed elastic layer, the overlying film (11) corresponds to the claimed organic film which is provided on a surface of the metamaterial on a pattern side (Figs. 1-2).
Regarding claim 11, Ito et al. in view of Koga et al. teaches all of the limitations of claim 10 above but does not expressly teach a moisture permeability of the film (11; organic film). It would, however, have been obvious to one of ordinary skill in the art to select an appropriate material for the organic film such that the moisture permeability is minimized, such as to a value within the claimed range, in order to protect the metal material used to form the pattern of micro-resonators from being damaged due to exposure to moisture (i.e., corrosion).
Regarding claim 12, Ito et al. in view of Koga et al. teaches all of the limitations of claim 10 above but does not expressly teach that the film (11; organic film) contains an ultraviolet absorber. It would, however, have been obvious to one of ordinary skill in the art to include an ultraviolet absorber in the organic film in order to protect the pattern of micro-resonators and/or the underlying films from being damaged due to UV degradation.
Regarding claim 13, Ito et al. in view of Koga et al. teaches all of the limitations of claim 1 above. As explained above with respect to claim 1, although Ito et al. does not expressly teach an elastic recovery rate of the material of the films, Ito et al. does further teach that the metamaterial is bendable so as to be attachable to a curved surface, wherein the stress relieving members have lower elastic modulus than the films in order to suppress application of excessive force to the micro-resonators, thus preventing deformation of the micro-resonators ([0008], [0057]). Ito et al. further teaches that the material used for the metamaterials may have plasticity ([0086]), indicating that the materials may have a low elastic recovery rate.
It would, therefore, have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable such as the elastic recovery rate of the elastic layer through routine experimentation, especially given the teachings in Ito et al. regarding the desire to optimize the bendability of the metamaterial while preventing the application of excessive force to the micro-resonators upon bending. See MPEP 2144.05(II).
Regarding claims 14 and 15, Ito et al. teaches a metamaterial (1) comprising a plurality of films (11, 12, 13), a plurality of micro-resonators (31) arrayed onto a surface of each of the films, and stress relieving members (21, 22) disposed between the films ([0025], [0029], [0032], Fig. 1). Any one of the plurality of films, or a combination of the plurality of films and the stress relieving members, can be taken to correspond to the claimed base material, wherein any one of the films can be taken to correspond to the claimed elastic layer, and wherein the micro-resonators correspond to the claimed pattern which is provided on a surface of the elastic layer. Each of the micro-resonators (31) is made of an electrically conductive material, such as a metal, an alloy, or the like [0030].
Ito et al. teaches that the films (11, 12, 13) are made of resin, such as polyimide, polyolefin, fluoropolymer, or thermoplastic elastomer [0028]. Ito et al. differs from the claimed invention in that the reference does not expressly teach that a content of the thermoplastic elastomer with respect to a total mass of the film (elastic layer) is 98% by mass or less, or 30% by mass or more and 98% by mass or less, or an elastic recovery rate of the films.
However, Ito et al. does further teach that the metamaterial is bendable so as to be attachable to a curved surface, wherein the stress relieving members have lower elastic modulus than the films in order to suppress application of excessive force to the micro-resonators, thus preventing deformation of the micro-resonators ([0008], [0057]). Ito et al. also teaches a variety of resin materials usable as the films, such as polyimide, polyolefin, fluoropolymer, or thermoplastic elastomer [0028].
It would, therefore, have been obvious to one of ordinary skill in the art to have determined the optimum value of a result-effective variable such as the elastic recovery rate of the elastic layer through routine experimentation, such as by adjusting a content of thermoplastic elastomer to a value within the claimed range by incorporating a second resin material, especially given the teachings in Ito et al. regarding the desire to optimize the bendability of the metamaterial while preventing the application of excessive force to the micro-resonators upon bending. See MPEP 2144.05(II). One of ordinary skill in the art would recognize that the elastic modulus of the thermoplastic elastomer films could be increased by incorporating a higher modulus resin, such as a fluoropolymer, consistent with the teachings of Ito et al. regarding the films having a higher elastic modulus than the stress relieving members.
Ito et al. differs from the claimed invention in that the reference does not expressly teach a glass transition temperature of the thermoplastic elastomer.
However, in the analogous art of metamaterials, Koga et al. teaches a metamaterial (100) comprising a sheet (11) having rubber elasticity and a plurality of resonant portions (21) provided in contact with a surface of the sheet ([0063]-[0064], Figs. 1-2). Similar to Ito et al., Koga et al. teaches that the sheet having rubber elasticity preferably includes a thermoplastic elastomer, wherein the sheet has a glass transition temperature of 0°C or less, preferably -30°C or less ([0066], [0072]). In particular, Koga et al. teaches that the lower the glass transition temperature of the sheet, the higher the cold resistance [0072].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the metamaterial of Ito et al. by selecting a thermoplastic elastomer having a glass transition temperature within the claimed range, as taught by Koga et al., in order to improve the resistance of the metamaterial to low temperatures.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejection of claims 1-12 under 35 U.S.C. 112(a) as failing to provide enablement for the claimed subject matter, and the previous rejection of claims 1-12 under 35 U.S.C. 112(b) as being indefinite are overcome by the Applicant’s amendments to claim 1 and by the remarks provided on pages 8-9 of the response filed August 25, 2025.
In particular, in light of the amendments specifying that the elastic layer contains a thermoplastic elastomer in the amount recited in claim 1 and the Applicant’s clarifying remarks identifying portions of the instant specification in which sufficient guidance can be found to direct one of ordinary skill in the art on how to select and adjust materials to obtain the required elastic recovery rate, the claim is considered to be adequately enabled in view of the specification. The claim is also considered to be sufficiently definite in view of the Applicant’s clarifying remarks and the meaning of the claimed “elastic recovery rate” property as set forth in paragraph [0011] of the instant specification.
Response-Claim Rejections - 35 USC § 102 and 103
In light of the Applicant’s amendments to claim 1 in the response filed August 25, 2025, the previous rejections under 35 U.S.C. 102 based on Kitayama, Xiong et al., and Hor et al. are overcome, and new rejections under 35 U.S.C. 103 based on Ito et al. in view of Koga et al. are presented in the office action above. The Applicant’s arguments with respect to Hor et al. in view of Pryce et al. will be addressed insofar as they apply to the current grounds of rejection presented above.
With respect to Hor et al. in view of Pryce et al., the Applicant argues on page 12 that Hor uses TPE for the purpose of “high elasticity for dynamic tuning” which differs from and may even contradict the present application’s requirement of “low elastic recovery rate (≤80%)” and specific Tg range for “stress relaxation to improve adhesion”. In particular, the Applicant argues that the teaching of Pryce would lead a person of ordinary skill in the art away from the low elasticity rate requirement of the present case.
These arguments are not persuasive. First, it is noted that the Applicant’s statement that “Hor uses TPE” appears to contain a typographical error that is intended to refer instead to the teachings of Pryce et al., given that Hor et al. does not teach thermoplastic elastomer (TPE). However, it is further noted that neither Hor et al. nor Pryce et al. appears to disclose “high elastic recovery for dynamic tuning”, as asserted by the Applicant. Although Pryce et al. teaches highly compliant polymeric substrates ([0065]), this teaching does not conflict with elastic recovery rates of up to 80%.
With respect to the argument that the teachings of Pryce would lead a person of ordinary skill in the art away from the low elastic recovery rate requirement of the claimed invention, it is noted that the features upon which applicant relies (i.e., a “low” elastic recovery rate) are not recited in the rejected claims. Although the claim encompasses low elastic recovery rate values, the claimed range is extremely broad and also encompasses high elastic recovery rate values – as high as 80%. Furthermore, as explained in the prior art rejections above, Pryce et al. teaches that its flexible substrates can undergo both elastic and plastic deformation ([0070]), where the presence of plastic deformation indicates an elastic recovery rate of less than 100%. The teachings of Pryce et al. therefore render obvious the claimed elastic recovery rate of 80% or less.
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.
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/Rebecca L Grusby/Examiner, Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
Prosecution Insights