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 .
Priority
2. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Continuation Data
3. This application claims priority to PCT/EP2023/055186, filed March 1, 2023.
Information Disclosure Statement
4. The Information Disclosure Statement filed on January 16, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1-3, 5-16, 18-21, and 24 are rejected under 35 U.S.C. 112(b), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
With respect to claim 1, lines 6-7 recite: “a second material having a higher adhesion than that of the first material” The phrase, “higher adhesion” is a relative term which renders the claim indefinite. The phrase, “higher adhesion” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Additionally, claim 1 does not specify any degree of adhesion of the first material.
Similarly with respect to claim 18, line 2 recites: “a second material has a hardness strictly higher than that of the first material” The phrase, “hardness strictly higher” is a relative term which renders the claim indefinite. The phrase, “hardness strictly higher” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Additionally, claim 1 does not specify any degree of hardness of the first material.
With respect to claim 19, lines 9-10 recite: “a second material having a higher adherence than the first material” The phrase, “higher adherence” is a relative term which renders the claim indefinite. The phrase, “higher adherence” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Additionally, claim 19 does not specify any degree of adherence of the first material.
Claim Rejections - 35 USC § 102
7. 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.
8. Claims 1, 2, 10, 18-20, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tiffany, III (2001/0015382), hereinafter Tiffany.
With respect to claim 1, Tiffany illustrates in figure 4, a layered electronic device (smartcard 10 – paragraph 0051), comprising: a first layer 18 of a first thermoplastic polymer material (paragraph 0053 discloses layer 18 is comprised of a PVC, which is a thermosetting polymeric material), the first layer 18 comprising a through cavity 24; an electronic module 12/30 (sensor and chip) inserted at least partially within the through cavity 24 of the first layer 18, and an adhesive second layer 52, of a second material having a higher adhesion than that of the first material (paragraph 0051 discloses the layer 52 is comprised of a bonding adhesive), the adhesive second layer 52 being at least partially in contact with the first layer 18 and with the electronic module 12/30; wherein the first layer 18 is at least partially in contact with the electronic module 12/30 (figure 7 illustrates layer 52 being in contact with layer 18).
With respect to claims 2 and 20, Tiffany illustrates in figure 7, the device, wherein the electronic module 26 has a front face and a rear face, the first layer 18 has a front face and a rear face, and the adhesive second layer 52 has a front face at least partially in contact with the rear face of the electronic module 26 and with the rear face of the first layer 18.
With respect to claims 10 and 24, Tiffany illustrates in figure 7, the device, wherein the electronic module 26 has a front face and a rear face, the first layer 18 has a front face and a rear face, and the adhesive second layer 52 has a rear face at least partially in contact with the front face of the electronic module and with the front face of the first layer. Depending on how the faces are defined, which they are not, figure 7 meets the limitations of claims 2 and 20 and claims 10 and 24.
With respect to claim 18, Tiffany discloses 0019, hardening of thermosetting polymers which comprises the second material 18.
With respect to claim 19, see Tiffany’s teachings above with regards to claim 1. Additionally, Tiffany teaches in paragraphs 0012 and 0017, after assembly, pressing the layered electronic device at a temperature enabling creeping at least of the first material so that the first layer creeps towards the electronic module in order to be brought at least partially in contact with the electronic module. Specifically, pressure forming with low temperature.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See attached PTO form 892, Refence Cited.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Allyson N. Trail whose telephone number is (571) 272-2406. The examiner can normally be reached between the hours of 7:30AM to 4:00PM Monday thru Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Lee, can be reached on (571) 272-2398. The fax phone number for this Group is (571) 273-8300.
Communications via Internet e-mail regarding this application, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used by the applicant and should be addressed to [allyson.trail@uspto.gov].
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/ALLYSON N TRAIL/Primary Examiner, Art Unit 2876
November 10, 2025