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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 1/21/2026 is acknowledged. The traversal is on the ground(s) that unity is not broken between Groups I and II. This is not found persuasive because the limitations that are shared between groups, equivalent to the subject matter of claim 64, is taught by the prior art, and therefore does not make a contribution over the prior art (see the analysis in the requirement for restriction mailed 12/18/2025, and the rejection of claim 64 below). Thus unity of invention is not present between the groups.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 64-69 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.
Claim 64 recites “the interfacing conductive layer of the release substrate” in the third and fourth lines. This limitation lacks antecedent basis. Line six recites “the at least one conductive layer includes an interfacing conductive layer”. Since the existence of an interfacing conductive layer has already been established, it is unclear if the interfacing conductive layer of line six is equivalent to that of lines three and four. Claims 65-69 are also rejected based on their dependence from claim 64.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 67 recites the broad recitation “the release substrate comprises a flexible polymer”, and the claim also recites “preferably a polymer film”, which is the narrower statement of the range/limitation, and further also recites the further narrowing “more preferably a polyethylene terephthalate (PET)…”.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 68 and 69 also recite several combinations of broad and narrow ranges, preceded by “preferably” or “more preferably”. Each instance renders the claim indefinite.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 64-67 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0004750 to Majumdar (included in Applicant’s 4/14/2025 IDS).
Regarding claim 64-67, Majumdar teaches a transferrable electrode arrangement comprising
A flexible release substrate 12 that includes a release surface (Fig. 8, ¶0100)
A transferrable electrode comprising a conductive layer 14 located over an interfacing conductive layer 16 of the release substrate 12 comprising a solution-processed conductive layer (Figs. 1-3, ¶0039, 0041, 0071; the limitation that the conductive layer is solution-processed is a product-by-process limitation, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113), regardless layer 14 is formed by solution-processing, ¶0116)
Wherein the conductive layer 14 includes an interfacing conductive layer 16 that interfaces with a receiving surface (Fig. 7, ¶0099; the limitation that the interfacing conductive layer interfaces with a receiving surface is an intended use limitation, The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).), and comprises an organic conductive layer (16 is an electrically conductive polymer)
Wherein the transferrable electrode is releasably attached to the release surface of the release substrate 12 (see Figs. 7, 8).
Per claim 65, Majumdar teaches the limitations of claim 64. The conductive layer 14 is a metallic-based conductive layer (Ibid.).
Per claim 66, Majumdar teaches the limitations of claim 64. The organic conductive layer is a PEDOT-based conductive layer in an embodiment (Table I). While the PEDOT-based conductive layer is not specifically recited as having charge transport properties, it is expected that that layer necessarily has the claimed properties because of its chemical structure. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP §2112.01.
Per claim 67, Majumdar teaches the limitations of claim 64. An exemplary metal-based conductive layer comprises Ag (¶0056, 0116), and an exemplary release substrate 12 comprises a flexible polyethylene terephthalate (PET) film (¶0046, 0115).
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, 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.
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.
Claim(s) 68 and 69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Majumdar as applied to claim 64 above.
Regarding claim 68, Majumdar teaches the limitations of claim 64. Majumdar teaches that it would have been obvious as of the effective filing date of the claimed invention for a person having ordinary skill in the art to form the release surface of the flexible release substrate 12 with an adhesive comprising polystyrene to aid in release (¶0104). While polystyrene is not recited as an activatable adhesive or as having thermoplastic properties, it is expected that the polystyrene layer necessarily has those properties because of its chemical structure. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP §2112.01.
Regarding claim 69, Majumdar teaches the limitations of claim 64. The conductive layer 14 has a dry thickness ranging from 0.1 micrometers to 10 micrometers (¶0064). In the case where the claimed ranges “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). MPEP §2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan S Cannon whose telephone number is (571)270-7186. The examiner can normally be reached M-F, 8:30am-5:30pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Ryan S. Cannon
Primary Examiner
Art Unit 1726
/RYAN S CANNON/ Primary Examiner, Art Unit 1726