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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 44-46, 48, 50 and 52-57 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,216,010. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent fully anticipate the limitations in the claims of the application; specifically, claim 1 anticipates claims 44-46 of the application, and claims 2-9 each anticipates claims 48, 50 and 52-57, respectively, of the application.
Claims 58-60, 62 and 63 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-17 of U.S. Patent No. 12,216,010. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent fully anticipate the limitations in the claims of the application; specifically, claim15 anticipates claims 58-60 of the application, and claims 16 and 17 each anticipates claims 62 and 63, respectively, of the application.
Allowable Subject Matter
Claims 47, 49, 51 and 61 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 44-46, 48, 50, 52-60, 62 and 63 would be allowable if the non-statutory double patenting rejection were overcome by filing a properly executed terminal disclaimer.
The following is an examiner’s statement of reasons for allowance:
With regard to independent claim 44, Takei et al. (“Stretchable and durable Parylene/PEDOT: SS/Parylene multi-layer induced by plastic deformation for stretchable device using functionalized PDMS”) teach a method of producing a flexible structure that comprises a layer of dielectric elastomeric material and a layer of micro-wrinkled electrically conductive material, where the method comprises: forming a thin-film layer of PDMS (elastomer) and a carrier substrate; forming on the PDMS layer a thin-film layer of parylene (polymer); performing treatment on the layers to generate a permanent micro-scale wrinkled surface morphology by stretching and then releasing the layers; forming and patterning a first layer of electrically conductive material on the first micro-scale wrinkled Parylene layer such that the first patterned electrically conductive material has a micro-scale wrinkled surface morphology conforming to that of the first micro-scale wrinkled Parylene layer, thus providing a first micro-scale wrinkled electrically conductive pattern layer.
Takei fail to teach all of the particular steps of claim 1; in particular Takei fail to teach or fairly suggest: forming, on the carrier substrate, a plurality of successive thin-film layers of elastomer, each of the successive thin-film layers of elastomer dielectric, each layer of the thin-film layers having a ratio of crosslinking agent to base material that is smaller than a ratio of crosslinking agent to base material of a preceding layer of the thin-film layers of elastomer dielectric; placing the carrier substrate in an organic solvent for a first period of time to induce swelling in the plurality of thin-film layers of elastomeric dielectric; forming, on the thin-film layer of polymer material a further thin-film layer of elastomeric dielectric; and forming by deposition, on the further thin-film layer of elastomeric dielectric, a second thin-film layer of polymer material in which a permanent micro-scale wrinkled surface morphology is generated as a consequence of diffusion of the organic solvent from the first plurality of thin-film layers of PDMS during said vacuum deposition.
With regard to independent claim 58, Oh et al. (2018/0012861) disclose a flexible structure that comprises a plurality of thin-film layers at least one layer of micro-wrinkled electrically conductive material, the structure comprising: a layer of elastomer dielectric 100; a first thin-film layer of polymer material 110; on the first thin-film layer of polymer material, where the thin-film layer of polymer material has a permanent micro-scale wrinkled surface morphology, providing a first micro-scale wrinkled polymer material layer; a first layer of electrically conductive material 120 on the first micro-scale wrinkled polymer material layer having a micro-scale wrinkled surface morphology conforming to that of the first micro-scale wrinkled polymer material layer, providing a first micro-scale wrinkled electrically conductive pattern layer.
Oh et al. fail to teach or suggest: a plurality of successive thin-film layers of elastomer dielectric, each layer of the thin-film layers of elastomer dielectric following a preceding layer of the thin-film layers of elastomer dielectric and having a ratio of crosslinking agent to base material that is smaller than a ratio of crosslinking agent to base material of the preceding layer; a first further thin-film layer of elastomer dielectric; and on the first further thin-film layer of elastomer dielectric, a second thin-film layer of polymer material having a wrinkled surface morphology.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M WEST whose telephone number is (571)272-2139. The examiner can normally be reached M-F 9 am - 5:30 pm (CT).
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, Kristina DeHerrera can be reached at 303-297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL M. WEST/Primary Examiner, Art Unit 2855
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