DETAILED ACTION
The communication dated 12/26/2024 has been entered and fully considered.
Claims 1-22 are pending. Claims 1-14 are withdrawn from further consideration.
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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to a process, classified in C09J 5/00.
II. Claims 8-14, drawn to process, classified in Y10T 29/49002.
III. Claims 15-22, drawn to process, classified in G02F 1/133377.
The inventions are independent or distinct, each from the other because:
Inventions Group I and Group II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require a release layer. The subcombination has separate utility such as being a display for printers.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Inventions Group I and Group III are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require the piezoelectric layer to be made of polyvinylidene fluoride (PVDF). The subcombination has separate utility such as being used in microfluidics devices.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Inventions Group II and Group III are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require the piezoelectric layer to be made of polyvinylidene fluoride (PVDF). The subcombination has separate utility such as being used in microfluidics devices.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions required a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Brian Bean on July 9, 2026 a provisional election was made without traverse to prosecute the invention of Group III, claims 15-22. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 103
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 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) 15, 17, 19-20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lo et al. (U.S. 7,746,540), hereinafter LO, in view of KWON et al. (U.S. PGPUB 2012/0293857), hereinafter KWON.
Regarding claim 15, LO teaches: A method for making a piezo-electrophoretic display (LO teaches a method for making a display [Abstract; Col. 2, lines 62-64].), the method comprising: bonding a first electrode with a piezoelectric layer comprising polyvinylidene fluoride (PVDF) (LO teaches bonding a first electrode (420) with a piezoelectric layer (430) comprising polyvinylidene difluoride (PVDF) [Col. 5, lines 35-37; Col. 5, lines 43-46; Col. 7, lines 7-71; Figs. 6A, 9A].); forming one or more conductive segments on a surface of the piezoelectric layer opposite to the first electrode (LO teaches forming one or more conductive segments on a surface of the layer (430) opposite to the first electrode (420) [Figs. 6B, 6D, 9C; Col. 5, lines 47-60; Col. 7, lines 20-24].); forming a layer of microcells, wherein the microcells have a bottom, walls, and a top opening (LO teaches forming a layer of microcells [Figs. 6D-6E, 9B; Col. 5, lines 60-67 – Col. 6, lines 1-5].); filling the microcells with an electrophoretic medium through the top opening (LO teaches filling the microcells with an electrophoretic medium [Fig. 6E; Col. 6, lines 20-31].); sealing off the top opening of the filled microcells with a water-soluble polymer to create a sealing layer (LO teaches ); bonding a second electrode with the sealing layer; and bonding the piezoelectric layer and the one or more conductive segments with the layer of microcells on a surface opposite to the sealing layer.
LO is silent as to: sealing off the top opening of the filled microcells with a water-soluble polymer to create a sealing layer; bonding a second electrode with the sealing layer; and bonding the piezoelectric layer and the one or more conductive segments with the layer of microcells on a surface opposite to the sealing layer. In the same field of endeavor, displays, KWON teaches: sealing off the top opening of the filled microcells with a water-soluble polymer to create a sealing layer (KWON teaches sealing off the top opening of the filled microcells with a water-soluble polymer to create a sealing layer [Fig. 2; 0063-0065].); bonding a second electrode with the sealing layer (KWON teaches bonding the second electrode (210) with the sealing layer [Fig. 2; 0065].); and bonding the piezoelectric layer and the one or more conductive segments with the layer of microcells on a surface opposite to the sealing layer (KWON teaches bonding the piezoelectric layer (110) and the one or more conductive segments (150) with the layer of microcells on a surface opposite to the sealing layer [Fig. 2; 0063; 0065; 0051-0052].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify LO, by having a sealing layer and bonding the electrodes with the sealing layer, as suggested by KWON, in order for the display solvent not to overflow to an adjacent pixel region [0064].
Regarding claim 17, LO teaches: wherein the second electrode comprises an electrically-conductive material coupled to a substrate (LO teaches the second electrode (470) may be made of metal or oxide [Col. 6, lines 15-19].).
Regarding claim 17, KWON further teaches: wherein the second electrode comprises an electrically-conductive material coupled to a substrate (KWON further teaches the second electrode (210) is formed of transparent conductive material [0074].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify LO, by having the second electrode layer be made of conductive material, as suggested by KWON, in order to form an electric field in each pixel region [0074].
Regarding claim 19, KWON further teaches: wherein the piezoelectric layer is polarized with an electric field (KWON further teaches the piezoelectric layer move the charged particles inside the solvent according to an electric field [0167].).
Regarding claim 20, LO teaches: wherein the one or more conductive segments are approximately 50-100 nm in thickness (LO teaches the one or more conductive segments (445) has a thickness in a range between 0.1 nm and 1 µm, meeting the claimed range [Col. 5, lines 54-58].).
Regarding claim 22, LO teaches: wherein the electrophoretic medium comprises a non-polar fluid and charged pigment particles that move toward or away from the piezoelectric layer when the piezoelectric layer is mechanically stressed, wherein the non-polar fluid and charged pigment particles are sealed in the microcells with the sealing layer (LO teaches a non-polar solution (480) and a polar solution (485) interposed between the two substrates [Figs. 6E, 9E; Col. 6, lines 20-34].).
Regarding claim 22, KWON further teaches: wherein the electrophoretic medium comprises a non-polar fluid and charged pigment particles that move toward or away from the piezoelectric layer when the piezoelectric layer is mechanically stressed (KWON teaches the medium uses a non-polar solvent with charges particles and are controlled by the piezoelectric layer (110) [0054; 0057-0060; 0066].), wherein the non-polar fluid and charged pigment particles are sealed in the microcells with the sealing layer (KWON teaches the non-polar fluid and charged particles are sealed in the microcells with the sealing layer [Fig. 2].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify LO, by having a non-polar solvent with charged particles, as suggested by KWON, in order to enable moving of the charged particles [0056].
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lo et al. (U.S. 7,746,540), hereinafter LO, and KWON et al. (U.S. PGPUB 2012/0293857), hereinafter KWON, as applied to claim 15 above, and further in view of Sirringhaus et al. (U.S. PGPUB 2003/0059987), hereinafter SIRRINGHAUS.
Regarding claim 16, LO and KWON teach all of the claimed limitations as stated above, but are silent as to: wherein the electrically-conductive material of the first electrode comprises poly(3,4-ethylenedioxythiophene) polystyrene sulfonate (PEDOT-PSS). In the same field of endeavor, displays, SIRRINGHAUS teaches the electrodes comprising PEDOT-PSS [0071-0072; 0077; 0082]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify LO and KWON, by having the electrode comprise PEDOT-PSS, as suggested by SIRRINGHAUS, in order for insoluble electrodes [0072]. Additionally, it would be obvious for one of ordinary skill in the art to choose a known option in the art, as taught by SIRRINGHAUS. See KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.").
Claim(s) 18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lo et al. (U.S. 7,746,540), hereinafter LO, and KWON et al. (U.S. PGPUB 2012/0293857), hereinafter KWON, as applied to claim 15 above, and further in view of GU et al. (U.S. PGPUB 2019/0353973), hereinafter GU.
Regarding claim 18, LO and KWON teach all of the claimed limitations as stated above, but are silent as to: further comprising bonding the piezo-electrophoretic display to a target object comprising one of paper, a bank note, and a currency bill. In the same field of endeavor, displays, GU teaches bonding the display to a target object comprising one of a currency bill [0078]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify LO and KWON, by having the target object be a currency bill, as suggested by GU, in order for a user to distinguish a genuine bill from a counterfeiting one [0078].
Regarding claim 21, LO and KWON teach all of the claimed limitations as stated above, but are silent as to: wherein the one or more conductive segments comprise poly(3,4-ethylenedioxythiophene) polystyrene sulfonate (PEDOT-PSS). In the same field of endeavor, displays, GU teaches the conductive segments comprise PEDOT-PSS [0080]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify LO and KWON, by having the target object be a currency bill, as suggested by GU, in order for a flexible and transparent conductive segment [0080]. Additionally, it would be obvious for one of ordinary skill in the art to choose a known option in the art, as taught by GU. See KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.").
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABBAS RASHID can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.B./Examiner, Art Unit 1748
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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