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
Applicant and Applicant’s Counsel are reminded of their duties to disclose. (See MPEP § 2000 et seq). Here, it is noted that Applicant has filed substantially similar applications before at least 1) the EPO (as application 24208220.4 and published as EP 4732698 A1) and 2) the Taiwanese IPO (as application 113141071 and published as TW 202618086 A). Applicant and Counsel are hereby required to a) disclose whether there are any other substantially similar applications filed at any other counterpart Patent Offices and b) submit any office action on the substantially similar applications issued by any other counterpart Patent Office (including those issued by 1) and 2) mentioned above). For any such office action not issued in English (e.g. office actions from the Taiwanese IPO), a translated copy is required.
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 1-12 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 1 is replete with numerous issues of lack of antecedent basis. These include:
-in clause (i), “the length” and “the surface”;
-in clause (ii), “the top”;
-in clause (vii), “the total surface area”;
-in clause (viii), “the entire surface”.
Furthermore, each of clauses (iii) and (iv) contains respective dangling modifier, as it is unclear if the properties recited are those of the respective elastomer matrices, or if the properties are those of the respective bulk layers. It is presumed the properties are those of the respective bulk layers. In case of clause (iii), it is presumed the clause reads as:
a soft foam bulk layer of air and elastomer matrix, the soft foam bulk layer having thickness of at least 0.5 mm [[thick ]]and electrical conductivity of at least 1 × 10-12 S/m.
Similar issue is also present in clause (ii). Furthermore, it is unclear what is meant by “varying”, as the roughness is not actively varied.
For claim interpretation, the claim 1 is interpreted as if it were free of various issues mentioned above.
As claims 2-12 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-12 are also held to be rejected.
Claims 5 and 6 are indefinite, as it is unclear what are the respective referents of “it”.
Claim 7 is indefinite, as “the edge radius of curvature” and “the height” lack antecedent bases. Similarly, claim 8 is indefinite, as “the edge radius of curvature” and “the depth” lack antecedent bases.
Claim 9 is indefinite, as “the surface length” lacks antecedent basis.
Each of claims 10 and 11 is indefinite, as it is not clear if the respective lists are Markush lists, or if they are optional.
Claim 12 is indefinite, as there are two possible referents for air and elastomer matrix.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or 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.
Concluding Remarks
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. These references are generally directed to multilayered materials that are conductive or anti-static in nature.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 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, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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