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 .
WITHDRAWAL OF PREVOUS OFFICE ACTION
Upon further consideration, additional rejections have been made as indicated below. Therefore, the finality of the previous Final Rejection Office Action mailed 28 January 2026 has been withdrawn and replaced with this current Non-Final Rejection Office Action.
Response to Amendment
This Office Action is responsive to the amendment filed on 30 December 2025. As directed by the amendment: Claim 1 has been amended, Claim 7 has been cancelled, and no claims have been added. Claims 11-15 were previously withdrawn due to a Restriction Requirement.
Thus, Claims 1-6, 8-10, and 16 are presently under consideration in this application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8-10, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, the claim has been amended to recite, “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors and wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment.” However, neither the Specification nor the Drawings explicitly show or suggest both “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors” and “wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment.” The Applicant noted that the newly added limitations are “shown in the figures and discussed at least in paragraph [0078] (last four lines) of the Published Application.” (see Page 6 of Remarks filed 30 December 2025). However, this paragraph states:
[0078] The term “adjacent” in the meaning of the present embodiments means that the at least one electrode and the electrical conductor segment are in direct contact with each other. Thus, there is no further layer between the at least one electrode and the electrical conductor segment. It is appreciated that the term “adjacent” includes that the at least one electrode is placed only on one side of the electrical conductor segment, i.e. on the top or bottom side of the electrical conductor segment, and in one embodiment of the stretchable electrode assembly. Alternatively, the at least one electrode(s) surround(s) one of the electrical conductor(s) of the electrical conductor segment, in one embodiment if the at least one electrode is a ring electrode.
It is not described and therefore unclear as to how both “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors” and “wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment.” In particular, it is noted that all of the electrodes and multiple conductors being directly mechanically and electrically coupled to all of the other electrodes and multiple conductors would potentially cause an electrical short in the system. It is further noted that Claim 5 (from which Claim 1 depends) recites, “wherein the two or more electrical conductors of the electrical conductor segment is a bundle of electrical conductors and each electrical conductor is electrically insulated,” which further illustrates that it is structurally unclear as to how “wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment”, since this is not shown in the Specification and the Drawings how this is structurally accomplished,
Paragraph [0051] of the instant Publication states, “the term “cable” refers to a bundle of at least two wires, in one embodiment a (regularly) twisted bundle of at least two wires. For example, the cable comprises two to ten wires, in one embodiment three to nine wires. It is appreciated that each electrical conductor in form of either a wire or a cable is separately insulated by an insulating plastic material.” Therefore, the limitations “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors and wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment” is considered to be New Matter. Appropriate correction or clarification is required. Claims 2-6, 8-10, and 16 are rejected for depending on Claim 1.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 8-10, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, the claim has been amended to recite, “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors and wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment.” However, it is unclear and therefore indefinite as to structurally how both “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors” and “wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment” are structurally achieved. In particular, it is noted that all of the electrodes and multiple conductors being directly mechanically and electrically coupled to all of the other electrodes and multiple conductors would potentially cause an electrical short in the system. It is further noted that Claim 5 (from which Claim 1 depends) recites, “wherein the two or more electrical conductors of the electrical conductor segment is a bundle of electrical conductors and each electrical conductor is electrically insulated,” which further illustrates that it is structurally unclear as to how “wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment”. See 35 U.S.C. 112(a) rejection above. Therefore, the limitations “and wherein the at least one electrode is welded directly to two or more electrical conductors thereby directly coupling, mechanically and electrically, the at least one electrode and two or more electrical conductors and wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment” is considered to be indefinite. For purposes of examination, it appears this limitation may be referring to “and wherein the at least one electrode is a ring electrode surrounding the at least two electrical conductors of the electrical conductor segment to which the ring electrode is directly welded, and wherein the ring electrode is not attached to other adjacent electrical conductors” or similar intended meaning/limitations. Appropriate correction or clarification is required. Claims 2-6, 8-10, and 16 are rejected for depending on Claim 1.
Regarding Claim 3, the claim recites, “wherein the electrical insulation of the two or more electrical conductors comprises an insulating plastic material selected from the group comprising polyethylene, polyurethane, polyimide, polyamide, PEEK, and fluorinated plastic materials.” This limitation includes an improper Markush grouping. See MPEP § 2173.05(h) and MPEP § 2117. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. However, if a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP § 2173.05(h) and MPEP § 2117. For purposes of examination, this limitation will be interpreted as “wherein the electrical insulation of the two or more electrical conductors comprises an insulating plastic material selected from the group polyethylene, polyurethane, polyimide, polyamide, PEEK, and fluorinated plastic materials.” Appropriate correction or clarification is required. Claim 16 is rejected for depending on Claim 3.
Regarding Claim 4, the claim recites, “wherein the biocompatible substrate is selected from the group comprising polyurethane, thermoplastic polyurethane (TPU), silicone, polyimide, phenyltrimethoxysilane (PTMS), polymethylmethacrylate (PMMA), parylene, polyetheretherketone (PEEK), liquid-crystal polymer (LCP), and mixtures thereof.” This limitation includes an improper Markush grouping. See MPEP § 2173.05(h) and MPEP § 2117. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. However, if a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP § 2173.05(h) and MPEP § 2117. For purposes of examination, this limitation will be interpreted as, “wherein the biocompatible substrate is selected from the group polyurethane, thermoplastic polyurethane (TPU), silicone, polyimide, phenyltrimethoxysilane (PTMS), polymethylmethacrylate (PMMA), parylene, polyetheretherketone (PEEK), liquid-crystal polymer (LCP), and mixtures thereof.” Appropriate correction or clarification is required.
Regarding Claim 16, the claim recites “an insulating plastic material selected from the group comprising ETFE, PTFE, PFA, PVDF, FEP or FPO, and mixtures thereof.” This limitation includes an improper Markush grouping. See MPEP § 2173.05(h) and MPEP § 2117. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. However, if a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP § 2173.05(h) and MPEP § 2117. For purposes of examination, this limitation will be interpreted as, “an insulating plastic material selected from the group ETFE, PTFE, PFA, PVDF, FEP,FPO, and mixtures thereof.” Appropriate correction or clarification is required.
Allowable Subject Matter
Claims 1-6, 8-10, and 16 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) set forth in this Office action, since the prior art rejections have been withdrawn as explained below. It is noted that Claim 1 contains New Matter, and has been interpreted as explained above. Appropriate correction or clarification is required.
It is further noted that Claims 11-15 were previously withdrawn with traverse in the Response to Election/Restriction Requirement filed on 02 November 2022. These claims should either be cancelled, or amended to contain all of the allowable subject matter of Claim 1 after the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections have been overcome.
Response to Arguments
The previous 35 U.S.C. 112(b) rejection of Claim 7 has been withdrawn due to the cancellation of the claim rendering this rejection moot. However, new rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) necessitated by the amendments to Claim 1 have been made above.
The Applicant’s arguments filed in the Amendment filed 30 December 2025 with respect to the previous 35 U.S.C. 103 rejections of Claims 1-6, 8-10, and 16 have been fully considered and are persuasive. See Pages 6-8 of Remarks. The Examiner agrees that none of the previously cited Krulevitch (US Publication No. 2007/0123963), Skubitz et al. (US Publication No. 2008/0046051), nor Gerber (US Publication No. 2007/0027514) explicitly teaches or suggests that stretchable electrode assembly as recited in Claim 1 as amended, particularly, “wherein the at least one electrode is a ring electrode surrounding one of the electrical conductors of the electrical conductor segment” in combination with the other required elements of Claim 1. Claims 2-6, 8-10, and 16 depend from and thus further limit Claim 1. Therefore, the previous 35 U.S.C. 103 rejections of Claims 1-6, 8-10, and 16 have been withdrawn.
Therefore, Claims 1-6, 8-10, and 16 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) set forth in this Office action. It is noted that Claim 1 contains New Matter, and has been interpreted as explained above. Appropriate correction or clarification is required.
It is further noted that Claims 11-15 were previously withdrawn with traverse in the Response to Election/Restriction Requirement filed on 02 November 2022. These claims should either be cancelled, or amended to contain all of the allowable subject matter of Claim 1 after the 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejections have been overcome.
Conclusion
Upon further consideration, additional rejections have been made as indicated above. Therefore, the finality of the previous Final Rejection Office Action mailed 28 January 2026 has been withdrawn and replaced with this current Non-Final Rejection Office Action.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA M BAYS whose telephone number is (571)270-7852. The examiner can normally be reached 9:00am - 6:00pm EST.
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/PAMELA M. BAYS/Primary Examiner, Art Unit 3796