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 .
Information Disclosure Statement
The information disclosure statement (IDS)s submitted on 09/18/2024 and 12/26/2025 have been considered by the examiner.
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 24, 25, 27-31 and 44-56 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites the limitation "a thermoformable substrate" in line 7. It renders the claim indefinite since it is unclear whether it is meant to be the thermoformable substrate recited in lines 5-6 above or additional/new thermoformable substrate. For the compact prosecution, Examiner has interpreted it as the thermoformable substrate recited in lines 5-6.
The remaining dependent claims 25, 27-31 and 44-56 are also rejected under 112 (b) because they depend from, and thus include all the limitations of rejected claim 24.
Claims 25, 29, 46, 50, 55 and 56 recite the phrase "preferably" which renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The remaining dependent claim 30 is also rejected under 112 (b) because it depends from, and thus includes all the limitations of rejected claim 29.
Claim 31 recites the limitation " structure" in line 3. It renders the claim indefinite since it is unclear whether it is meant to be the one or more structures recited in claim 24, or an additional/new structure. For the compact prosecution, Examiner has interpreted it as the one or more structures.
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 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 24, 25, 27, 28, 31, 44-51, 55 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (US 2021/0368627-corresponding reference of EP3528602 of record) in view of Garcia-Miralles et al. (US 2017/0306190- of record). Additional supporting evidence provided by Sinocure (“SINOMER® PHEA”, https://www.sinocurechem.com/sinomer-phea.html, 2025).
With respect to claim 24, Smits teaches a method of manufacturing an in-mould electronic (IME) component (“methods of manufacturing a curved electronic device”, Pa [0005]), the method comprising:
preparing a blank (Figs. 2A-2D); and
thermoforming the blank (“a thermoforming process “P” is applied for deforming “S” a shape of the substrate 11 with the support pattern 12 and electrical circuit 13,14.”, Pa [0019] and Fig. 2E),
wherein preparing the blank comprises forming one or more structures (“12”, “13”, “14”) on a thermoformable substrate (“11”) (“a substrate 11 is provided comprising or essentially consisting of a thermoplastic material 11 m.”, Pa [0015]; Figs. 2B-2D).
Smits further teaches that in some embodiments, the printing of the support pattern 12 comprises applying a (liquid) printing material 12 p onto the substrate 11, in other or further embodiments, the printing material 12 p may be hardened to form the support material 12 m of the support pattern 12, for example, the printing material 12 p comprises a solvent and the hardening comprises drying the solvent leaving the support pattern 12 (Pa [0037]), but does not explicitly teach that each structure formed by a method comprising: disposing a composition on a thermoformable substrate, and drying the composition at a temperature of from 20 to 150° C. for from 0.5 to 60 minutes, wherein the composition comprises: a piezoelectric polymer, and a binder.
In the same field of endeavor, a ferroelectric adhesive composition, Garcia-Miralles teaches that a ferroelectric adhesive composition is used as a sensor, an emitter or as a generator in energy harvester (Pa [0020]), the ferroelectric adhesive composition shows high adhesive and ferroelectric properties (Pa [0034]), the ferroelectric adhesive composition comprises an adhesive matrix and a ferroelectric component (Pa [0033]), and ferroelectric component provides novel properties for the adhesives, more specifically for structural adhesives, under an electric field, polarization is controlled and changes in shape (piezoelectricity) and in temperature (pyroelectricity) are induced, these properties also work the other way around: changes in shape, temperature and polarization generate an electrical output (Pa [0073]). Garcia-Miralles further teaches that the application of the ferroelectric adhesive composition onto the surface of the conductive element comprises following steps of: 1) applying the ferroelectric adhesive composition onto the surface of conductive element; 2) evaporating the solvent; 3) curing the adhesive composition; 4) annealing; and 5) poling (Pa [0123]-[0128]), and the evaporation of the solvent (if present) can be done at room temperature or by applying a heat (Pa [0138]). Garcia-Miralles further teaches that the solvent evaporation temperature is 60° C. and the solvent evaporation time is 1 min, 10 min or 15 min (Table 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Smits with the teachings of Garcia-Miralles and perform Garcia-Miralles’ steps, i.e., applying the ferroelectric adhesive composition between the substrate and the support pattern and/or between the support pattern and the circuit lines, evaporating the solvent at room temperature, curing the adhesive composition, annealing and poling, for the purpose of high adhesive and ferroelectric properties.
With respect to claim 25, Garcia-Miralles as applied in the combination regarding claim 24 above further teaches that the one or more structures comprises a haptic structure (“Under an electric field, polarization is controlled and changes in shape (piezoelectricity) and in temperature (pyroelectricity) are induced. These properties also work the other way around: changes in shape, temperature and polarization generate an electrical output.”, Pa [0073]; “Suitable sensors can be for example pressure sensors and suitable emitters can be for example acoustic transducers.”, Pa [0143]; “Some examples in consumer markets are speakers, pick-ups for instruments, microphones, lighters, keypads, printers, and the newly developed energy harvesters.”, Pa [0014]).
With respect to claim 27, Smits as applied to claim 24 above further teaches that the substrate comprises one or more of PolyEthylene Terephthalate (PET), Poly-Carbonate (PC), and Poly(methyl methacrylate) (PMMA) (Pa [0015]).
With respect to claim 28, Smits as applied to claim 24 above further teaches that the thermoforming is carried out at a temperature of from 100° C. to 200° C (Pa [0019]). In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. (See MPEP 2144.05 (I)).
With respect to claim 31, Smits as applied to claim 24 above further teaches that preparing the blank further comprises forming one or more conductive layers on the substrate and/or structure (“an electrical circuit 13,14 is applied onto the support pattern 12. This is also illustrated in FIG. 1B. In the embodiment shown, the electrical circuit comprises circuit lines 13 comprising a conductive material 13 m which is applied onto the support lines 12 b.”, Pa [0018]).
With respect to claim 44, Garcia-Miralles as applied in the combination regarding claim 24 above further teaches that the piezoelectric polymer comprises polyvinylidene fluoride (PVDF) (Pa [0079]).
With respect to claim 45, Garcia-Miralles as applied in the combination regarding claim 44 above further teaches that the piezoelectric polymer comprises polyvinylidene fluoride-trifluoroethylene copolymer (PVDF-TrFe) (Pa [0079]).
With respect to claim 46, Garcia-Miralles as applied in the combination regarding claim 24 above further teaches that the composition comprises, based on the total weight of the composition: from 5 to 95 wt. % piezoelectric polymer (“a ferroelectric component from 5% to 85% by weight of the total weight of the composition”, Pa [0083]); and from 2 to 50 wt. % binder (“an adhesive matrix from 2% to 50% by weight of the total weight of the composition”, Pa [0068]); In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. (See MPEP 2144.05 (I)).).
With respect to claims 47 and 51, Garcia-Miralles as applied in the combination regarding claim 24 above further teaches that the binder comprises: a thermoplastic resin comprising a hydroxyl group (“thermoplastics, one or two component polyurethanes, … (meth)acrylates, cyanoacrylates and mixtures thereof.”, Pa [0038]), a crosslinking agent (“at least one polyisocyanate”, Pa [0054]), and a solvent (Pa [0085]).
With respect to claims 48 and 49, Garcia-Miralles as applied in the combination regarding claim 47 above further teaches that one of suitable reactive monomers for use is 2-phenoxy ethyl(meth)acrylate (Pa [0043]) of which a glass transition temperature is 7° C (See the additional supporting evidence by Sinocure, “SINOMER® PHEA”, 2025).
With respect to claim 50, Garcia-Miralles as applied in the combination regarding claim 49 above further teaches that suitable adhesive matrix for use in the present invention is preferably selected from the group consisting of hotmelt adhesives, thermoplastics, one or two component polyurethanes, (meth)acrylates, cyanoacrylates and mixtures thereof (Pa [0038]), and the thermoplastic resin comprises polyurethane resin (Pa [0038]), polyester resin (Pa [0044]), and phenoxy resin (Pa [0043]), but is silent to the claimed composition.
However, since Garcia-Miralles further teaches that the adhesive matrix must be compatible with used ferroelectric component in order to avoid or decrease to the minimum undesired phase separation between them, the suitable ferroelectric component must be intimately/finely dispersed into the adhesive matrix (Pa [0036]), one would have found it obvious to select the optimum composition of the adhesive matrix by routine experimentation in order to avoid or decrease to the minimum undesired phase separation between the adhesive matrix and the ferroelectric component and allow the ferroelectric component to be intimately/finely dispersed into the adhesive matrix, since it has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 55, Garcia-Miralles as applied in the combination regarding claim 47 above further teaches that a ferroelectric adhesive composition comprises an adhesive matrix from 2% to 50% by weight of the total weight of the composition (Pa [0068]), the quantity of the adhesive matrix in the composition according to the present invention is ideal, because higher quantities would interfere negatively with the ferroelectric properties leading to a composition having no ferroelectric response at all or very poor ferroelectric response, in addition, lower levels (less than 2.0% by weight of the total weight of the composition) would decrease the adhesion properties of the ferroelectric adhesive composition (Pa [0069]), and a ferroelectric adhesive composition comprises a solvent from 30% to 90% by weight of the total weight of the composition (Pa [0091]), ideal quantity of the solvent in the ferroelectric adhesive composition according to the present invention depends on the application, although, if the solvent quantity is too high, the solid content of the composition is too low and this may cause that bondline may be too thin, and that the coverage is not sufficient enough, and on the other hand if the solvent quantity is too low, this will have negative impact on composition formation and homogenous film formation (Pa [0092]). But Garcia-Miralles is silent to the claimed composition.
One would have found it obvious to select the optimum composition of the adhesive matrix and the solvent by routine experimentation in order to form homogenous film with a desired thickness/coverage, since it has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 56, Garcia-Miralles as applied in the combination regarding claim 47 above further teaches that the binder further comprises a thermosetting resin (Pa [0039]).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (US 2021/0368627-corresponding reference of EP3528602 of record) in view of Garcia-Miralles et al. (US 2017/0306190- of record) as applied to claim 24 above, and further in view of Stvartak et al. (US 2018/0162026).
With respect to claim 29, Smits as applied to claim 24 above further teaches that a non-conductive top layer is applied on top of the electrical circuit 13,14 (Pa [0041]), but is silent to after thermoforming, applying a layer of resin to the substrate using injection moulding.
In the same field of endeavor, a method for in-mold transferring of electronics, Stvartak teaches that the method includes placing the film structure including electronic layer and light sources into an injection mold; and injecting a polymeric material into the mold encasing the decorative film structure and the electronics layer, with the polymeric material contacting a portion of the carrier film (Pa [0006]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Smits in view of Garcia-Miralles with the teachings of Stvartak and perform injection molding in order to apply the non-conductive top layer, since it has been held that the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (US 2021/0368627-corresponding reference of EP3528602 of record) in view of Garcia-Miralles et al. (US 2017/0306190- of record) and Stvartak et al. (US 2018/0162026) as applied to claim 29 above, and further in view of Fictive (“ABS injection molding”, https://www.fictiv.com/articles/abs-injection-molding-material-properties-and-processing-considerations, 2023).
With respect to claim 30, Stvartak as applied in the combination regarding claim 29 above further teaches that a polymeric material 76 such as an ABS plastic is injected into the cavity 58 (Pa [0043]), but is silent to the injection molding temperature.
Fictive relates to ABS injection molding, and teaches that the melt temperature in injection molding of some common ABS grades are between 204-274 C in Table 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Stvartak with the teachings of Fictive and perform injection molding of ABS at the temperature taught by Fictive, since it has been held that the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Claims 52-54 are rejected under 35 U.S.C. 103 as being unpatentable over Smits et al. (US 2021/0368627-corresponding reference of EP3528602 of record) in view of Garcia-Miralles et al. (US 2017/0306190- of record) as applied to claim 51 above, and further in view of Spilman et al. (US 2010/0076154).
With respect to claims 52 and 53, the combination as applied to claim 51 above is silent to melamine formaldehyde.
Spilman relates to polyester-containing coil coating compositions and teaches that amino-crosslinking agents which are useful in preparing thermoset coating formulations are those materials which will classically react with the hydroxyl terminal groups of the polyester, and suitable materials include, for example, butylated melamineformaldehyde resins, hexamethoxymethylmelamine (Pa [0027]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Garcia-Miralles with the teachings of Spilman such that the one would use butylated melamineformaldehyde resins and hexamethoxymethylmelamine with the polyester resin in order to prepare the thermoset adhesive matrix as well, since it has been held that the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
With respect to claim 54, Garcia-Miralles as applied in the combination regarding claim 52 above further teaches that the cross-linking agent further comprises polyisocyantate and/or blocked polyisocyanate (“at least one polyisocyanate”, Pa [0054]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached on 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742