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 .
Response to Amendment
The amendment filed 5/18/2026 does not place the application in condition for allowance.
The previous 112(b) rejections are withdrawn due to Applicant’s amendment.
The previous 102(a)(1) rejections are revised to incorporate new claim limitations.
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 66 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 66 recites “the carbonaceous conductive layer”. Claim 65 recites, in an alternative, that the a conductive layer comprises a carbonaceous conductive layer (required in claim 64) and a further conductive layer that is a carbonaceous conductive layer. Therefore, in that alternative interpretation, it is unclear which layer “the carbonaceous conductive layer” is referring to.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 64-67 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0004750 to Majumdar (of record).
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 14/16 (in a reasonable interpretation, since both portions 14 and 16 are conductive, there is one conductive layer comprising layer portion 14 and layer portion 16) located over the release surface of the release substrate 12, the conductive layer 14/16 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 14/16 includes an interfacing conductive layer 16 that is configured to interface 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 a carbonaceous conductive layer (carbon black is included in layer 16 in an embodiment, ¶0087)
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 14/16 comprises a further conductive layer 14, which is a metallic-based conductive layer (Ibid.).
Per claim 66, Majumdar teaches the limitations of claim 65. The carbonaceous conductive layer 16 of the conductive layer 14/16 is formed of a conductive carbonaceous filler (carbon black, ¶0087) and a binder material (conductive polymer, ¶0066, 0074; the limitation that the carbonaceous conductive layer is formed from a carbon-based paste comprising a conductive carbonaceous filler, a binder material, and an organic solvent is a product-by-process limitation, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product; Regardless, the use of solvents to form that layer is known, ¶0071, 0086, 0087).
Per claim 67, Majumdar teaches the limitations of claim 64. An exemplary metal-based conductive layer comprises an Ag-based layer (¶0056, 0116), and an exemplary release substrate 12 comprises a flexible polyethylene terephthalate (PET) film (¶0046, 0115).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 layer 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 64-69 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
While the reference relied upon in the rejections above was previously made of record, the reasoning is new. Particularly, the scope of the claims is interpreted in light of the instant disclosure. For instance, claim 64 recites “at least one conductive layer”, “wherein the at least conductive layer includes an interfacing conductive layer… comprises a carbonaceous conductive layer”, and claim 65, depending from claim 64, recites “the at least one conductive layer comprises at least one further conductive layer selected from: a metallic-based conductive layer; a carbonaceous conductive layer; an organic conductive layer; or a combination thereof”. Therefore a single conductive layer must necessarily be interpreted to comprise a carbonaceous conductive layer and at least one further conductive layer which is not necessarily carbonaceous.
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.
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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Ryan S. Cannon
Primary Examiner
Art Unit 1726
/RYAN S CANNON/ Primary Examiner, Art Unit 1726
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