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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 
Address: COMMISSIONER FOR PATENTS 
P.O. Box 14S0 

Alexandria. Virginia 223 1 3-1450 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO, CONFIRMATION NO, 



10/825,787 



04/16/2004 



07/26/2006 



7590 

Eddie E. Scott 

Assistant Laboratory Counsel 
Lawrence Livermore National Laboratory 
P.O. Box 808, L-703 
Livermore, CA 94551 



Mariam N. Maghribi 



[L-11206 



9076 



EXAMINER 



HELLER, TAMMIEK 



ART UNIT 



PAPER NUMBER 



3766 



DATE MAILED: 07/26/2006 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 



Office Action Summary 


Application No. 

10/825,787 


Applicant(s) 
MAGHRIBI ET AL 


cXamlnGr 

Tammle Heller 


Art Unit 

3766 





- r/ie MAILING DATE of this communication appears on the cover sheet with the correspondence address - 
Period for Reply 



A SHORTENED STATUTORY PERIOD FOR REPby IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS. 
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 
• Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33). 

Any reply received by the Office tater than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1.704(b). 

Status 

1)13 Responsive to communication(s) filed on 03 May 2006 . 
2a)n This action is FINAL. 2b)l3 This action is non-final. 

3) 0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) ^ Claim(s) 15. 10.11. 18,20,24.29,30,35,37 and 50 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) 0 Claim(s) is/are allowed. 

6) KI Claim{s) 1,5, 10. 1 1. 18,20,24.29,30.35,37 and 50 is/are rejected. 
?)□ Claim(s) is/are objected to. 

8) 0 Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) n The specification is objected to by the Examiner 

10) 0 The drawing(s) filed on is/are: a)n accepted or b)n objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a). 
Replacement drawing sheet(s) including the correction Is required If the drawing(s) is objected to. See 37 CFR 1.121(d). 

1 1) 0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C. § 119 

12) n Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 
a)n All b)n Some * c)^ None of: 

1 .□ Certified copies of the priority documents have been received. 

2. n Certified copies of the priority documents have been received in Application No. . 

3. n Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17,2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1) IS Notice of References Cited (PTO-892) 

2) CH Notice of Draflsperson's Patent Drawing Review (PTO-948) 

3) S Infomnation Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 

Paper No(s)/Mall Date 4/16/04 . 



4) O Inten/iew Summary (PTO-413) 

Paper No(s)/MaiI Date. . 

5) dl Notice of Informal Patent Application (PTO-152) 

6) □ Other: . 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 7-05) 



Office Action Summary 



Part of Paper No./Mail Date 20060721 



Application/Control Number: 10/825.787 Page 2 

Art Unit: 3766 

DETAILED ACTION 

1. Applicant's election without traverse of Species 4aa in the reply filed on May 3, 
2006 is acknowledged. 

Double Patenting 

2. A rejection based on double patenting of the "same invention" type finds its 
support in the language of 35 U.S.C. 101 which states that "whoever invents or 
discovers any new and useful process ... may obtain a patent therefor ..." (Emphasis 
added). Thus, the term "same invention," in this context, means an invention drawn to 
identical subject matter. See Miller v. Eagle Mfg. Co,, 151 U.S. 186 (1894); In re 
Ockert, 245 F.2d 467, 1 14 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 
USPQ 619 (CCPA 1970). 

A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by 
canceling or amending the conflicting claims so they are no longer coextensive in 
scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection 
based upon 35 U.S.C. 101. 

3. Claims 1, 10, 18, 35, and 37 are provisionally rejected under 35 U.S.C. 101 as 
claiming the same invention as that of claims 1, 7, 12, 15, and 17, respectively, of 
copending Application No. 10/826,477. This is a provisional double patenting rejection 
since the conflicting claims have not in fact been patented. 

4. 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 



Application/Control Number: 10/825,787 Page 3 

Art Unit: 3766 

unjustified or improper timewise extension of the "riglit to exclude" granted by a patent 
and to prevent possible harassment by multiple assignees. A nonstatutory 
obviousness-type 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 Long!, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 
1985); In re Van Omum, 686 F.2d 937. 214 USPQ 761 (CCPA 1982); In re Vogel, 422 
F.2d 438. 164 USPQ 619 (CCPA 1970); and 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 a nonstatutory 
double patenting ground provided the conflicting application or patent either is shown to 
be commonly owned with this application, or claims an invention made as a result of 
activities undertaken within the scope of a joint research agreement. 

Effective January 1, 1994, a registered attorney or agent of record may sign a 
terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 
37 CFR 3.73(b). 

5. Claims 20 and 29 are provisionally rejected on the ground of nonstatutory 
obviousness-type double patenting as being unpatentable over claims 1 and 7 of 
copending Application No. 10/826.477. Although the conflicting claims are not identical. 



Application/Control Number: 10/825,787 Page 4 

Art Unit: 3766 

they are not patentably distinct from each other because both applications claim a 
stretchable electronic circuit including a polymer substrate and at least one circuit line 
operatively connected to the flexible polymer substrate. 

This is a provisional obviousness-type double patenting rejection because the 
conflicting claims have not in fact been patented. 

Claim Rejections - 35 USC § 102 

6. 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 - 

(b) the invention was patented or described in a printed publication in this or a foreign country or in public 
use or on sale in this country, more than one year prior to the date of application for patent in the United 
states. 

(e) the invention was described in (1) an application for patent, published under section 122(b), by 
another filed in the United States before the invention by the applicant for patent or (2) a patent 
granted on an application for patent by another filed in the United States before the invention by the 
applicant for patent, except that an international application filed under the treaty defined in section 
351(a) shall have the effects for purposes of this subsection of an application filed in the United States 
only if the international application designated the United States and was published under Article 21(2) 
of such treaty in the English language. 

7. Claims 1, 5, 18, 20, 24, 35, and 50 are rejected under 35 U.S.C. 102(b) as being 
anticipated by Istook (U.S. Patent No. 6.341.504). Regarding claims 1, 20, and 35. 
Istook discloses a stretchable electronic apparatus that includes a stretchable polymer 
body 12 and at least one circuit line 14 operatively connected to the stretchable polymer 
body (see Figures 1-4). Further, it can be seen from the figures that the at least one 
circuit line extends in the longitudinal direction and includes a longitudinal component 



Application/Control Number: 10/825,787 Page 5 

Art Unit: 3766 

that extends in tiie longitudinal direction and an offset component 16 at an angle to the 
longitudinal direction. 

8. Regarding claims 5 and 24, it can be seen from Figure 2 of Istook that the at 
least one circuit line is sawtooth shaped with rounded corners. 

9. Regarding claims 18 and 50, the Examiner takes the position that the stretchable 
polymer body comprises a microcable because it contains strands of fiber braided 
together, as can be seen in Figures 1-4. 

10. Claims 1, 11, 20, 30, and 35 are rejected under 35 U.S.C. 102(e) as being 
anticipated by Albert et al. (U.S. 2003/0020844), herein Albert. Regarding claims 1, 20, 
and 35, Albert discloses a mounted display assembly that includes a stretchable 
polymer body 140 and at least one circuit line 123 operatively connected to said 
stretchable polymer body which extends in the longitudinal direction (see Figure 3A). It 
can be seen in Figure 3A that the at least one circuit line 123 includes a longitudinal 
component that extends in the longitudinal direction and an offset component that is at 
an angle to the longitudinal direction. 

1 1 . Regarding claims 1 1 and 30, Albert discloses that the at least one circuit line 
comprises conductive ink (see Paragraph 31, In. 1-6). 

Claim Rejections • 35 USC § 103 

12. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 102 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 



Application/Control Number: 10/825.787 Page 6 

Art Unit: 3766 

invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 

13. Claims 10. 29, and 37 are rejected under 35 U.S.C. 103(a) as being 
unpatentable over Istook. Istook discloses the invention essentially as claimed, but fails 
to disclose that the stretchable polymer body 12 is made of poly(dimethylsiloxane). It 
would have been obvious to one having ordinary skill in the art at the time the invention 
was made to make the stretchable polymer body 12 of poly(dimethylsiloxane), since it 
has been held to be within the general skill of a worker in the art to select a known 
material on the basis of its suitability for the intended use as a matter of obvious design 
choice. In re Leshin, 125 USPQ 416. 

14. Claims 10, 29, and 37 are rejected under 35 U.S.C. 103(a) as being 
unpatentable over Albert. Albert discloses the invention essentially as claimed, but fails 
to disclose that the stretchable polymer body 140 is made of poly(dimethylsiloxane). It 
would have been obvious to one having ordinary skill in the art at the time the invention 
was made to make the stretchable polymer body 140 of poly(dimethylsiloxane), since it 
has been held to be within the general skill of a worker in the art to select a known 
material on the basis of its suitability for the intended use as a matter of obvious design 
choice. In re Leshin, 125 USPQ 416. 

Conclusion 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Tammie Heller whose telephone number is 571-272- 
1986. The examiner can normally be reached on Monday through Friday from 7am until 
3:30 pm. 



Application/Control Number: 10/825,787 



Page 7 



Art Unit: 3766 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Robert E. Pezzuto can be reached on 571-272-6996. The fax phone 
number for the organization where this application or proceeding is assigned is 571- 
273-8300. 

Information regarding the status of an application may be obtained from the 
Patent Application Information Retrieval (PAIR) system. Status Information for 
published applications may be obtained from either Private PAIR or Public PAIR. 
Status information for unpublished applications is available through Private PAIR only. 
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should 
you have questions on access to the Private PAIR system, contact the Electronic 
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a 
USPTO Customer Service Representative or access to the automated information 
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. 





Tammie K. Heller 
Patent Examiner 
Art Unit 3766 



Art Unit 3766 



TKH