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 .
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires “at least one additive”. There is no written description in the specification as to what additive could be added to the electroactive polymer or for what purpose. The specification provides no examples of materials or quantities needed to obtain any specific benefits that could explain or lead one with ordinary skill in the art to obtain the claimed composition. As a matter of fact, the word “additive” only appears in the abstract and in the claims.
Claim 2 requires “the layer of electro-active polymer film has a thickness of 10cm or less. The specification, as filed (11/21/24), discloses the thickness of the EAP in the range of 10mm-5mm (paragraph [0053]). The range disclosed in the specification is nowhere close to the 10cm that is recited in claim 2. For examination purposes, the examiner assumes the units of the thickness presented in the claim are a typo and should be mm or mm, as disclosed in the specification.
Claim 3 requires “the at least one additive is present in an amount sufficient to obtain the at least one layer of electro-active polymer film”. Once again, nowhere in the specification the requirements of amount or materials is found.
Claim 4 requires “a ratio of the at least one polymer to the at least one additive …”. The specification does not disclose the material used as an additive, the quantity of the additive or the ratio of the polymer to the additive.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alvarez Icaza Rivera (US 2009/0085444, hereinafter Alvarez).
Regarding claim 1, Alvarez discloses a composition comprising: an electro-active polymer (EAP) film, wherein the electro-active polymer film comprises: at least one polymer; and at least one additive (paragraph 114).
Regarding claim 2, Alvarez discloses a wide range of thicknesses of about 1m-2mm. (see paragraph 0122).
Regarding claims 3 and 4, the EAP includes at least one additive as explained above. Inherently, the amount of additive and the ratio of the polymer to the additive is sufficient to obtain the electro-active polymer.
Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smela et al. (US83383226, hereinafter Smela).
Regarding claim 1, Smela discloses a composition comprising: an electro-active polymer film (310), wherein the electroactive polymer film comprises at least one polymer and at least one additive (column 2:25-33 and column 4:47-55).
Regarding claims 3 and 4, the EAP includes at least one additive as explained above. Inherently, the amount of additive and the ratio of the polymer to the additive is sufficient to obtain the electro-active polymer.
Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boersma (US20100148632, hereinafter Boersma).
Regarding claim 1, Boersma discloses a composition comprising: an electro-active polymer film (abstract), wherein the electroactive polymer film comprises at least one polymer and at least one additive (See paragraphs 0062-0063).
Regarding claims 3 and 4, inherently, the amount of additive and the ratio of the polymer to the additive is sufficient to obtain the electro-active polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jaydi San Martin whose telephone number is (571)272-2018. The examiner can normally be reached M-Th 8-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dedei Hammond can be reached at 571-270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. SAN MARTIN/Primary Examiner, Art Unit 2837