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Application No.: 10/825,787 



REMARKS/ARGUMENTS 



The non-final Office Action mailed April 5, 2007 has been carefully 
reviewed. Reconsideration of this application, as amended and in view of the 
following remarks, is respectfully requested. Claims 1-51 originally appeared in 
the application. Claims 2-4, 6-9, 13-17, 19, 21-23, 25-28, 31-34, 36, 38-49, and 51 are 
withdrawn from consideration in a response to a restriction requirement. The 
claims presented for examination are: claims 1, 5, 10, 11, 18, 20, 24, 29, 30, 35, 37, 
and 50. 

35 USC S 102(e) Rejection 

In numbered paragraphs 6-9 of the Office Action mailed April 5, 2007, claims 
1, 5, 10, 18, 20, 24, 29, 35, 37, and 50 were rejected under 35 USC §102(e) as being 
anticipated by the Fishman reference (US Published Patent Application No. 
2003/0032946). 

The Fishman Reference 

The Fishman reference is United States Published Patent Application No 
2003/0032946 which shows an artificial synapse chip 10 in FIG. 1 A reproduced 



below. 



10 




/ 



14 



FIG. 1A 



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In the Fishman reference a micropattern 14 is provided on substrate 12, 
effective to direct and guide the growth of cells and cell processes in contact with 
the substrate 12. A preferred method of producing a micropattern 14 is to contact 
substrate 12 with a microcontact printing stamp having an ordered assemblage 
of molecules, which may be a discontinuous assemblage, for deposition on to 
substrate 12. 

FIG. 3 is a plan view SEM of a stamp embodying features of the invention 
for making a micropattern 14 on a surface. FIG. 3 is reproduced below. 



The micropattern 14 may include growth factors, cell adhesion molecules, 
antibodies specific to cell surface proteins of the neurite or cell body, or other 
molecules or atoms effective to guide or modulate the growth of a neurite or the 
attachment of a cell or cell process. 

The Fishman Reference Does Not Anticipate Applicants' Invention 
Applicants have amended independent claims 1, 20, and 35. Claims 5, 10, 
18, 24, 29, 37, and 50 depend from the independent claims 1, 20, and 35. 
Applicants believe the invention claimed in amended independent claims 1, 20, 
and 35; and dependent claims 5, 10, 18, 24, 29, 37, and 50 is not anticipated by the 
Fishman reference. The standard for a 35 USC §102 rejection is stated in RCA 
Corp. v. Applied Digital Systems, Inc, 221PQ 385, 388 (d. Cir. 1984) "Anticipation is 




FIG. 3 



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The Examiner Has Not Established The Criteria That The References Must 
Teach All Claim Limitations 

The third criteria of the Examiner's initial burden of factually supporting a 
prima facie conclusion of obviousness is: "the prior art reference (or reference 
when combined) must teach or suggest all the claim limitations/' Applicants 
point out that the following claim limitations of Applicants' amended 
independent claims 1, 20, and 35 and dependent claims 11 and 30 are not found 
in the Albert et al reference or the Rogers reference: 

"stretchable electronic circuit/' or 

"a method of producing a stretchable electronic circuit" or 

"at least one microchannel in said solid stretchable polymer body made 
entirely of poly(dimethylsiloxane), said at least one microchannel having 
a microchannel longitudinal axis that is concurrent with the central 
longitudinal axis of the circuit, wherein said at least one microchannel 
extends fully along said microchannel longitudinal axis/' or 

"providing at least one microchannel in said solid stretchable polymer 
body made entirely of poly(dimethylsiloxane) with said at least one 
microchannel having a microchannel longitudinal axis that is concurrent 
with the central longitudinal axis of the circuit, wherein said at least one 
microchannel extends fully along said microchannel longitudinal axis," 
or 

"a multiplicity of circuit line longitudinal components that extend in the 
longitudinal direction, wherein said multiplicity of circuit line 
longitudinal components include said multiplicity of microchannel 
longitudinal components," or 

"a multiplicity of circuit line offset components that extend at an angle to 
the longitudinal direction, wherein said multiplicity of circuit line offset 
components include said multiplicity of microchannel offset 
components," or 

"wherein said at least one microchannel and said electrically conductive 
media form an electronic circuit line that extends fully along said 



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microchannel longitudinal axis and is operatively connected to said solid 
stretchable polymer body made entirely of poly (dime thy lsiloxane)." 

Since both references fail to show the claim limitations, there can be no 
combination of the two references that would show Applicant's invention 
defined by claims 1, 11, 20, 30, and 35 and render it unpatentable. There is no 
combination of the Albert et al reference and the Rogers reference that would 
produce the combination of elements of Applicants' claims 1, 11, 20, 30, and 35. 
Further, there is no teaching of combining the Albert et al reference and the 
Rogers reference to meet Applicants' claims 1, 11, 20, 30, and 35. Thus, the 
combination of references fails to support a rejection of the claims under 35 USC 
§103 and the rejection should be withdrawn. 

The Examiner Has Not Established The Criteria That There Must Be A 
Su ggestion or Motivation to Combine References 

The first criteria of the Examiner's initial burden of factually supporting a 
prima facie conclusion of obviousness is: "there must be some suggestion or 
motivation, either in the reference themselves or in the knowledge generally 
available to one of ordinary skill in the art, to modify the reference or to combine 
reference teachings." There is no suggestion or motivation to combine the 
primary Albert et al reference and the secondary Rogers reference. 

The primary Albert et al reference and the secondary Rogers reference 
disclose devices that are substantially different from each other and both devices 
are different from Applicants claimed "stretchable electronic circuit," and 
"method of producing a stretchable electronic circuit." Since the primary Albert 
et al reference is an electronic display with a polyester sheet with electrical 
connections formed of copper with vias through the dielectric to provide for 
electrical contact to a display element with the driver chip and other ICs, there is 



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established only when a single prior art reference discloses, either expressly or 
under principles of inherency, each and every element of a claimed invention." 

The Fishman reference does not disclose each and every element of 
independent claims 1, 20, and 35 or dependent claims 5, 10, 18, 24, 29, 37, and 50. 
The Fishman reference does not disclose an electronic circuit. In the Fishman 
reference a micropattern is provided on the substrate effective to direct and 
guide the growth of cells and cell processes in contact with the substrate. The 
Fishman reference does not disclose Applicants' claim elements, "a stretchable 
electronic circuit/ 7 or "a method of producing a stretchable electronic circuit/ 7 or 
"said circuit line longitudinal component and said circuit line offset component 
allowing the circuit to stretch in the longitudinal direction while maintaining the 
integrity of said at least one circuit line." 

In addition, the following claim elements of Applicants' amended 

independent claims 1, 20, and 35; and dependent claims 5, 10, 18, 24, 29, 37, and 

50 are not found in the Fishman reference: 

"at least one microchannel in said solid stretchable polymer body made 
entirely of poly(dimethylsiloxane), said at least one microchannel having a 
microchannel longitudinal axis that is concurrent with the central 
longitudinal axis of the circuit, wherein said at least one microchannel 
extends fully along said microchannel longitudinal axis," or 

"providing at least one microchannel in said solid stretchable polymer body 
made entirely of poly(dimethylsiloxane) with said at least one microchannel 
having a microchannel longitudinal axis that is concurrent with the central 
longitudinal axis of the circuit, wherein said at least one microchannel 
extends fully along said microchannel longitudinal axis," or 

"wherein said at least one microchannel and said electrically conductive 
media form an electronic circuit line that extends fully along said 
microchannel longitudinal axis and is operatively connected to said solid 
stretchable polymer body made entirely of poly (dimethylsiloxane) ." 



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Since the Fishman reference does not disclose each and every element of 
Applicants 7 claims and Applicants' claim elements described above are not 
found in the Fishman reference, the Fishman reference does not support a 35 
USC §102(e) rejection of Applicants' claims 1, 5, 10, 18, 20, 24, 29, 35, 37, and 50 
and the rejection should be withdrawn. 



35 USC §103 Rejection - Albert et al In View of Roger 

In numbered paragraphs 11-12 of the Office Action mailed April 5, 2007 
claims 1, 11, 20, 30, and 35 were rejected under 35 USC §1 03(a) as allegedly being 
unpatentable over the Albert et al reference (U.S. Published Patent No. 
2003/0020844) in view of the Roger reference (U.S. Patent No. 6,337,761). 

Applicants have amended independent claims 1, 20, and 35. Claims 11 
and 30 depend from the independent claims 1, 20, and 35. Applicants believe that 
independent claims 1, 20, and 35 and dependent claims 11 and 30 are patentable 
and that the Albert et al reference and the Rogers reference would not support a 
35 USC §103(a) rejection. 

Albert et al Reference 

The Albert et al reference shows an electronic display 100 illustrated in 
FIG. 2A reproduced below. 




FIG. 2A 



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The display 100 can employ various materials. The flexible substrate 140 
can comprise a polyester sheet with electrical connections 123 formed of copper 
by conventional patterning techniques. Alternatively, the electrical connections 
123 can be printed with silver ink or carbon ink. The electrical connections can be 
coated by printing with a dielectric, for example a polymer. Vias through the 
dielectric can provide for electrical contact to a display element 110. Each 
electrical connection 123 is in communication with a first contact pad 121 and a 
second contact pad 122. Further, each first contact pad 121 is in electrical 
communication with one of the display elements 110 while each of the second 
contact pads 122 is in electrical communication with the driver chip 131. The 
driver chip 131 is in electrical communication with other contact pads 151 to 
provide for electrical communication with other ICs (not shown) of the control 
circuit 130. 

The Rogers Reference 

The Rogers reference discloses an electrophoretic display and an 
electrophoretic display is described as essentially comprising a suspension of 
charged colored particles (typically white) in an optically dense liquid of another 
color. The suspension is maintained between two electrodes that define a sealed 
cell. It is "optically dense" in the sense that the suspension medium is sufficiently 
colored that one cannot see from one side of the cell to the other. When a 
potential difference exists between the electrodes, the particles are driven away 
from one of the electrodes towards the other electrode. When driven to the side 
of the cell nearest the viewer, the color of the particles will dominate the color of 
the display. Conversely, when the particles are driven to the far side, away from 
the viewer, the color of the liquid dominates the color of the display. 

The Rogers reference is directed to, "a configuration for an electrophoretic 
display device that is effective in substantially preventing agglomeration of the 

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pigment particles. With this configuration, a suspension medium is contained 
between first and second electrodes to define a cell; a plurality of pigment 
particles are dispersed in the suspension medium; and a plurality of mechanical 
members' project in the suspension medium. The members advantageously are 
sized sufficiently small that a plurality of members can exist within a minimally 
visible region of the cell, and they are configured (e.g., depending on size and 
materials), to have no adverse impact on the appearance of the display. The 
mechanical members may be fabricated separately from the remaining parts of 
the display, allowing for flexibility in the fabrication materials and processing 
conditions/ 7 

Patentability of Applicants' Claimed Invention 

Applicants' claims 1, 11, 20, 30, and 3 were rejected under 35 USC §1 03(a) 
as being "obvious" over the two references. The Examiner bears the initial 
burden of factually supporting a prima facie conclusion of obviousness. To 
establish a prima facie case of obviousness, three basic criteria must be met. First, 
there must be some suggestion or motivation, either in the reference themselves 
or in the knowledge generally available to one of ordinary skill in the art, to 
modify the reference or to combine reference teachings. Second, there must be a 
reasonable expectation of success. Finally, the prior art reference (or reference 
when combined) must teach or suggest all the claim limitations. The teaching or 
suggestion to make the claimed combination and the reasonable expectation of 
success must both be found in the prior art, and not based on Applicant's 
disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). 



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no suggestion or motivation to combine it with the secondary Rogers reference 
that relates to an electrophoretic display device that is effective in substantially 
preventing agglomeration of the pigment particles. Even if the Albert et al and 
the Rogers devices were combined it would not produce Applicants' claimed 
invention. 

The first criteria that there must be some suggestion or motivation, either 
in the reference themselves or in the knowledge generally available to one of 
ordinary skill in the art, to modify the reference or to combine reference 
teachings has not been established. Thus, the combination of references fails to 
support a rejection of the claims under 35 USC § 103 and the rejection should be 
withdrawn. 

The Examiner Has Not Established The Criteria That There Must be a 
Reasonable Expectation of Success 

The second criteria of the Examiner's initial burden of factually 
supporting a prima facie conclusion of obviousness is: "there must be a reasonable 
expectation of success." There would not be a reasonable expectation of success 
in combining the primary Albert et al reference and the secondary Rogers 
reference. 

The primary Albert et al reference is an electronic display with a polyester 
sheet with electrical connections formed of copper with vias through the 
dielectric to provide for electrical contact to a display element with the driver 
chip and other ICs. The secondary Rogers reference is an electrophoretic display 
device that is effective in substantially preventing agglomeration of the pigment 
particles. The reference devices are substantially different from each other and 
both devices are different from Applicants claimed "stretchable electronic 
circuit," and "method of producing a stretchable electronic circuit." 

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There would not be a reasonable expectation of success in attempting to 
combine the two very different devices. Even if the Albert et al and the Rogers 
devices were combined it would not produce Applicants' claimed invention. 

The second criteria that there must be a reasonable expectation of success 
in combining the references has not been established. Thus, the combination of 
references fails to support a rejection of the claims under 35 USC § 103 and the 
rejection should be withdrawn. 



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Application No.: 10/825,787 



SUMMARY 



The undersigned respectfully submits that, in view of the foregoing 
amendments and the foregoing remarks, the rejections of the claims raised in the 
Office Action dated April 5, 2007 have been fully addressed and overcome, and 
the present application is believed to be in condition for allowance. It is 
respectfully requested that this application be reconsidered, that the claims be 
allowed, and that this case be passed to issue. If it is believed that a telephone 
conversation would expedite the prosecution of the present application, or clarify 
matters with regard to its allowance, the Examiner is invited to call the 
undersigned attorney at (925) 424-6897. 



Respectfully submitted, 




Eddie E. Scott 



Attorney for Applicant 
Registration No. 25,220 
Tel. No. (925) 424-6897 




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