DETAILED ACTION
Examiner’s Note
The examiner has cited particular passages including column and line numbers, paragraphs as designated numerically and/or figures as designated numerically in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claims, other passages, paragraphs and figures of any and all cited prior art references may apply as well. It is respectfully requested from the applicant, in preparing an eventual response, to fully consider the context of the passages, paragraphs and figures as taught by the prior art and/or cited by the examiner while including in such consideration the cited prior art references in their entirety as potentially teaching all or part of the claimed invention. MPEP 2141.02 VI: “PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS." MPEP 2123 (I): “PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN.”
Additionally, in an effort to provide a timely Office response to amendments the Applicant may file in response to this Office Action, it is respectfully requested that, on accompanying remarks/arguments papers, every effort be made to provide specific (page No., paragraph No., FIG. No., etc.) Specification/Drawings support for such amendments, particularly claim amendments.
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 .
Claims 19 and 23 have been cancelled.
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(s) 1 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. It is claimed, in part: “an active layer comprising an ionic conducting material, the active layer being disposed on a substrate, the device further comprising: a first electrode a second electrode optionally, a first semiconductor layer wherein one of the first electrode, second electrode and first semiconductor layer, when present, is the substrate for the active layer and wherein the active layer and the first semiconductor layer, when present, contact each other at an interface.” At the outset MPEP 2173.05(h) provides: “Another alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term "optionally." In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language "containing A, B, and optionally C" was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim.” As claimed, the phrase “optionally, a first semiconductor layer” means the claimed device may or may not include that layer. Had the claim ended there, the scope of the claim would be in agreement with findings in Ex parte Cordova: no ambiguity as to which alternatives are covered by the claim. Yet, the claim does not end there. The “wherein” clause: “wherein one of the first electrode, second electrode and first semiconductor layer, when present, is the substrate for the active layer,” creates multiple, mutually exclusive possibilities without clearly indicating which structural relationship is essential. A person of ordinary skill cannot tell, with reasonable certainty, which configuration is being claimed or whether all such alternatives are intended to be within a single claim or must be separately claimed. So, while “optionally” may not be per se improper, the question is whether its use leaves a person of ordinary skill unable to determine with reasonable certainty what falls inside or outside the claim. One of ordinary skill could ask whether, in embodiments where the first semiconductor layer is absent, the “one of” phrase is to be read as a closed list, an open list, or a conditional list, and whether the claim covers configurations beyond those expressly recited. This presents an indefiniteness under 35 USC 112. All of the uncertainty and indefiniteness above is further amplified by the second “wherein” clause: “wherein the active layer and the first semiconductor layer, when present, contact each other at an interface.” Once more, and further exacerbated, where the first semiconductor layer is absent, is the “one of” phrase to be read as a closed list, an open list, or a conditional list, and whether the claim covers configurations beyond those expressly recited. In sum, the claim is found indefinite.
Claim(s) 22 and 25 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for substantially the same reasons as set forth in the rejection to claim 1.
Claim(s) 2-18, 20-21, and 24 depend from claim(s) 1 and 22, and as such are therefore rejected for at least the same reasons.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20160225442.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FERNANDO N HIDALGO whose telephone number is (571)270-3306. The examiner can normally be reached M-F 9:00-7:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Zarabian can be reached at 5712721852. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
FERNANDO N. HIDALGO
Primary Examiner
Art Unit 2827
/Fernando Hidalgo/Primary Examiner, Art Unit 2827