DETAILED ACTION
Examiner’s Notes
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply on 01/12/2026 is acknowledged.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Group, there being no allowable generic or linking claim.
Claim Objections
Claims 2, 5, 7, 11, and 13 are objected to because of the following informality:
Claims 2, 5, 7 are objected to as being dependent upon a rejected base claim, but would be allowable if amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, and rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 11 is objected to because of the informality in the recitation “volage” in line 2 and in line 3, respectively. Examiner suggests changing the recitation to “voltage”. Appropriate correction is required.
Claim 13 is objected to because of the informality in the recitation “covert” in line 2. Examiner suggests changing the recitation to “convert”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 1-13 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 “thereof” in line 4. It is unclear as to what Applicant intends the claimed “thereof” to further limit. For the purpose of office action, the claimed “thereof” is will be treated as if it recites “of the substrate”. All claims which depend on clam 1 are rejected by virtue of dependency. Appropriate correction is required.
Claim 1 recites “the opposed liquid crystal elastomer layers” in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this office action, the recitation will be treated as if it recites “the opposing liquid crystal elastomer layers”. All claims which depend on clam 1 are rejected by virtue of dependency. Appropriate correction is required.
Claim 5 recites “the mesogen” in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this office action, the recitation will be treated as if it recites “the mesogenic group”. Appropriate correction is required.
Claim 12 recites “the top encapsulating layer and bottom encapsulating layer” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this office action, the recitation will be treated as if it recites “top encapsulating layer and bottom encapsulating layer”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 of this title, 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:
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.
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.
Claims 1, 3-4, 10-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over ZADAN (Soft and Stretchable thermoelectric Generators Enabled by Liquid Metal Elastomer Composites) in view of NACIRI (US 20070108407 A1).
Regarding claim 1, ZADAN teaches a stretchable and flexible thermoelectric device (see the Stretchable thermoelectric generators (TEGs), which is flexible as well; see Abstract and Fig. 1) comprising: a substrate (see the unfilled elastomer) comprising an array of semiconductors (see the array of semiconductors) in electrical communication via a plurality of liquid metal interconnects (see the activated liquid metal embedded elastomer (LMEE) interconnects) (see Fig. 1). Regarding the claimed “coated on at least a portion thereof with opposing liquid crystal elastomer layers comprising a reaction product of a reaction mixture comprising a mesogenic group, a spacer, a crosslinker, and a photoinitiator, ZADAN teaches coated on at least a portion thereof with opposing liquid metal elastomer layers (see the top and bottom liquid metal embedded elastomer (LMEE) layers) (see Fig. 1). The recitation “a reaction product of a reaction mixture comprising a mesogenic group, a spacer, a crosslinker, and a photoinitiator” is directed to the method of making a product and it is noted that said limitations are not given patentable weight in product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. See MPEP 2113 Product-by-Process Claims [R-9]. See also In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). Only “the structure(s)” is(are) given patentable weight. Therefore, the recitation “a reaction product of a reaction mixture comprising a mesogenic group, a spacer, a crosslinker, and a photoinitiator” will be treated as if it recites “a reaction product comprising a mesogenic group, a spacer, and a crosslinker”. ZADAN does not explicitly disclose the claimed “liquid crystal elastomer; comprising a reaction product comprising a mesogenic group, a spacer, and a crosslinker”. However, NACIRI discloses a shape changing membrane with patterned electrodes (see Abstract), wherein a patterned electrode layer 12 is located between a first liquid crystal elastomer layer 10 and a second liquid crystal elastomer layer 15 (see [0031], Fig. 4), and the liquid crystal elastomer film is comprised of mesogenic units, crosslinking agent, photo-initiator, spacers (see [0040], [0010]), wherein the shape changing membranes can be precisely controlled using the unique approach of smectic liquid-crystalline elastomers (LCEs) (see Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ opposing two liquid crystal elastomer layers comprising mesogenic units, crosslinking agent, photo-initiator, spacers in the device of ZADAN as taught by NACIRI, because the shape changing membranes can be precisely controlled using the liquid crystal elastomer layers. Further regarding the claimed “wherein the opposed liquid crystal elastomer layers alternately heat and cool to achieve cyclical bending actuation when voltage is applied to the device”, since modified ZADAN teaches the same stretchable and flexible thermoelectric device with the same materials (see the discussion above and Figs. 1, 2; And, see paragraph [0005] and Figs. 5-7 in the Applicant’s specification), the property regarding “wherein the opposed liquid crystal elastomer layers alternately heat and cool to achieve cyclical bending actuation when voltage is applied to the device” would obviously have been present in modified ZADAN’s device. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
Regarding claim 3, Applicant is directed above for a full discussion as applied to claim 1.
ZADAN teaches the liquid metal interconnects comprise eutectic gallium- indiuim (EGaln) (see Experimental Methods: The LMEE was fabricated using a mixture of eutectic gallium indium).
Regarding claim 4, Applicant is directed above for a full discussion as applied to claim 1.
ZADAN teaches the semiconductors comprise n-type bismuth telluride (B12Te3) semiconductor and p-type bismuth telluride (B12Te3) semiconductor in P-N configuration (see Abstract and Fig. 1; integrated arrays of n-type and p-type Bi2Te3 semiconductors, which is P-N configuration).
Regarding claims 10-11, Applicant is directed above for a full discussion as applied to claim 1.
Regarding the claimed “configured to cause cyclical bending actuation in response to voltage-controlled Peltier activation” in claim 10, and “characterized by at least one of a bending angle range from -30 degrees to 30 degrees when a voltage is applied, and an angular velocity of 0.1 - 5 degrees/second when a voltage is applied” in claim 11, since modified ZADAN teaches the same stretchable and flexible thermoelectric device with the same materials (see the discussion in the rejection of claim 1 and Figs. 1, 2; And, see paragraph [0005], and Figs. 5-7 in the Applicant’s specification), the property regarding “configured to cause cyclical bending actuation in response to voltage-controlled Peltier activation” and “characterized by at least one of a bending angle range from -30 degrees to 30 degrees when a voltage is applied, and an angular velocity of 0.1 - 5 degrees/second when a voltage is applied” would obviously have been present in modified ZADAN’s device. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
Regarding claim 13, Applicant is directed above for a full discussion as applied to claim 1.
ZADAN teaches the device is a regenerative energy harvesting device configured to covert a portion of heat applied to the device into voltage (In order to characterize the power generation capabilities of the LMEE TEG, the output voltage was measured across a varying external load resistor for an applied temperature gradient of 60 °C; see Fig. 3).
Claims 6, 8-9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over ZADAN (Soft and Stretchable thermoelectric Generators Enabled by Liquid Metal Elastomer Composites) in view of NACIRI (US 20070108407 A1) as applied to claim 1 above, further in view of KASICHAINULA (US 20160336501 A1).
Regarding claims 6, 8-9, Applicant is directed above for a full discussion as applied to claim 1.
Regarding the claimed “an encapsulating layer coated on at least a portion of the opposing liquid crystal elastomer layers” in claim 6, “an adhesive layer coated on at least a portion of the encapsulating layer” in claim 8, and “the adhesive layer comprises a flexible epoxy” in claim 9, ZADAN does not explicitly disclose the claimed feature. However, KASICHAINULA discloses flexible thermoelectric device, wherein the thermal adhesive layer may be used to encapsulate the flexible thermoelectric device [0123], wherein examples of materials which may be used as a thermal adhesive layer include a combination of an adhesive (epoxy, which is flexible) and a dielectric material [0123], wherein the thermal adhesive layer may be chosen such that it has a high thermal conductivity, is electrically insulating [0123]. It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to employ the dielectric material with epoxy adhesive on the stretchable thermoelectric generator in ZADAN as taught by KASICHAINULA, because the dielectric material with epoxy adhesive provides encapsulation of the stretchable thermoelectric generator and provides high thermal conductivity and electrical insulation.
Regarding claim 12, Applicant is directed above for a full discussion as applied to claim 6.
Regarding the claimed “the device is configured to heat and cool the top encapsulating layer and bottom encapsulating layer at the same time when the input voltage is reversed from positive to negative”, since modified ZADAN teaches the same stretchable and flexible thermoelectric device with the same materials (see the discussion in the rejections of claims 1,6, and Figs. 1, 2; And, see paragraph [0005], and Figs. 5-7 in the Applicant’s specification), the property regarding “the device is configured to heat and cool the top encapsulating layer and bottom encapsulating layer at the same time when the input voltage is reversed from positive to negative” would obviously have been present in modified ZADAN’s device. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE-SIK KANG whose telephone number is 571-272-3190. The examiner can normally be reached on 9:00am – 5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew T. Martin can be reached on 571-270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAE-SIK KANG/
Primary Examiner, Art Unit 1728