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 .
Response to Amendment
The Amendments filed February 23, 2026 have been entered. Claim 1 has been amended, claims 13-14 have been newly added, and claims 1-4, 6-14 are pending in the application. Furthermore, the Kwon reference has been changed from the W.O application to the U.S Patent for ease of cross-reference and facilitating review as compared to page/line cross-referencing.
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 1-4 and 6-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the elastic pillar portions to deform when the conductive layer comes into contact with the measurement portion [pa. 0020, 0043], it does not reasonably provide enablement of the elastic pillar portions contacting the measurement portion. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with this claim.
Regarding independent claim 1, the claim presently recites, “wherein the elastic pillar portion is flexible over its entire body, …and, when coming into contact with a measurement portion, the elastic pillar portion is deformed in said state where it follows the shape of the measurement portion, the contact being a conforming contact with the measurement portion”.
The Examiner has reviewed the instant disclosure for discussion with respect to
each of these noted limitations. Paragraph [0033] of the filed Specification sets forth
disclosure with respect to figure 1B, and specifically recites that, “the conductive resin layer 30 may be configured to cover the entirety of at least the surface of the distal end 22 of the pillar portion 20, to cover the entirety of a surface from the distal end 22 of the pillar portion 20 to a middle portion of the base end portion 24, or to cover the entirety of the surface of the pillar portion 20”. Paragraph [0043] of the filed Specification sets forth
how “when coming into contact with a measurement portion, the pillar portion 20 can be easily deformed in a state where it follows the shape of the measurement portion”.
While [0043] of the Specification notes for the elastic pillar portion being able to deform as a result of the biomedical electrode device coming into contact with the measurement portion, the Examiner has failed to find any structural or functional description in the disclosure that provides the elastic pillar portion contacting the measurement portion. In the description of the Specification, when the biomedical electrode makes contact with the measurement portion, it is the conductive resin layer that truly contacts the measurement portion and not the elastic pillar portion.
Turning to figure 1B, the figure shows what is described in [0033] of the Specification, where the structure that actually makes contact with the measurement portion is the conductive resin layer that is formed to cover a distal end of the elastic pillar portion. At no time does the figure provided specifically provide a depiction of an example of the claimed elastic pillar portions coming into contact with the measurement portion. Similarly, the remaining figures are similarly deficient.
It is, therefore, in view of at least the reasoning set forth above that the Examiner
is of the position that claim 1 fails to comply with the enablement requirement of 35 U.S.C. 112(a). Appropriate correction is required. Claims 2-4, 6-14 are also rejected because they are dependent on claim 1. Furthermore, for the purpose of examination and advancing prosecution, the Examiner will interpret claim 1 to require the conductive resin layer to be the structure that comes into direct contact with the measurement portion, and for the elastic pillar portion to be deformed in a state where it follows the shape of the measurement portion due to the contact between the conductive resin layer and the measurement portion.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the distal sub-portion of the elastic pillar portions to deform when the conductive layer comes into contact with the measurement portion [pa. 0020, 0043], it does not reasonably provide enablement for the distal sub-portion of the elastic pillar portion to contact the measurement portion. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with this claim.
Regarding claim 14, the claim presently recites, “wherein the conforming contact comprises a distal sub-portion of the elastic pillar portion, which distal sub-portion comes into contact with the measurement portion”.
The Examiner has reviewed the instant disclosure for discussion with respect to
each of these noted limitations. Paragraph [0033] of the filed Specification sets forth
disclosure with respect to figure 1B, and specifically recites that, “the conductive resin layer 30 may be configured to cover the entirety of at least the surface of the distal end 22 of the pillar portion 20, to cover the entirety of a surface from the distal end 22 of the pillar portion 20 to a middle portion of the base end portion 24, or to cover the entirety of the surface of the pillar portion 20”. Paragraph [0043] of the filed Specification sets forth
how “when coming into contact with a measurement portion, the pillar portion 20 can be easily deformed in a state where it follows the shape of the measurement portion”.
While [0043] of the Specification notes for the elastic pillar portion (including the distal sub-portion, which in this case, Examiner is interpreting as being the same structure as the distal end 22) being able to deform as a result of the biomedical electrode device coming into contact with the measurement portion, the Examiner has failed to find any structural or functional description in the disclosure that provides the distal sub-portion of the elastic pillar portion contacting the measurement portion. In the description of the Specification, when the biomedical electrode makes contact with the measurement portion, it is the conductive resin layer that truly contacts the measurement portion and not the sub-portion of the elastic pillar portion.
Turning to figure 1B, the figure shows what is described in [0033] of the Specification, where the structure that actually makes contact with the measurement portion is the conductive resin layer that is formed to cover a distal end/distal sub-portion of the elastic pillar portion. At no time does the figure specifically provide a depiction of an example of the claimed distal sub-portion of the elastic pillar portions coming into contact with the measurement portion. Similarly, the remaining figures are similarly deficient.
It is, therefore, in view of at least the reasoning set forth above that the Examiner
is of the position that claim 14 fails to comply with the enablement requirement of 35 U.S.C. 112(a). Appropriate correction is required. Furthermore, for the purpose of examination and advancing prosecution, the Examiner will interpret claim 14 to require the conductive resin layer to be the structure that comes into contact with the measurement portion, and for the elastic pillar portion, including the distal sub-portion, to be deformed in a state where it follows the shape of the measurement portion due to the contact between the conductive resin layer and the measurement portion.
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 1-4, 6-14 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.
Claim 1 recites the limitation "said state" in line 9. There is insufficient antecedent basis for this limitation in the claim. Claims 2-4, 6-14 are also rejected because they are dependent on claim 1.
Claim 14 recites the limitation, “a distal sub-portion of the elastic pillar portion” in line 2. It is unclear to Examiner whether the distal sub-portion of the elastic pillar portion is the same structure as the distal end of the elastic pillar portion recited in independent claim 1. For examination purposes, Examiner will treat both the distal end and the distal sub-portion as the same structure on the distal end region of the elastic pillar portion.
Claim 14 recites the limitation "wherein the conforming contact comprises a distal sub-portion of the elastic pillar portion" in lines 1-2. The recitation renders the scope of the claim as indefinite because claim 1 states a functional limitation, “the contact being a conforming contact with the measurement portion” in lines 10-11, while the limitation set-forth in dependent claim 14 is a structural limitation. Therefore, it is unclear to Examiner whether the conforming contact is a functional recitation that describes the contact occurring between the elastic pillar portion (including the conductive resin layer) and the measurement portion, or if it is a structural limitation wherein the conforming contact further comprises the elastic pillar portion having a distal sub-portion. For examination purposes and to advance prosecution, Examiner will interpret the conforming contact is a functional recitation, wherein the biomedical electrode comprises the elastic pillar portion, wherein the elastic pillar portion further includes a distal sub-portion (equal to the distal end of the elastic pillar portion) that deforms in a state where it follows the shape of the measurement portion due to the contact between the conductive resin layer and the measurement portion.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 4, 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chi (U.S. Patent No. 9314183 B2), in view of Kwon (U.S. Patent No. 10588569 B1), and further in view of Boock (W.O. Application No. 2011003036 A2).
Regarding independent claim 1, and claim 13, as best understood and in light of the 112(a) and 112(b) rejections set-forth above, Chi discloses a biomedical electrode (40) comprising:
a plate-shaped support portion (42) (Figs. 7-9);
an elastic pillar portion (44a-44f) that is provided on a first surface of the plate-shaped support portion (Col. 4, lines 24-32);
a conductive layer (i.e., conductive material that makes up transducer (57); Col. 5, lines 57-63) that is formed to cover a distal end of the pillar portion (Col. 4, lines 36-42);
wherein the elastic pillar portion is flexible over its entire body (e.g., the elastic pillar portion can be made from nylon or any other elastomer plastics that are flexible and bendable), and does not include a conductive filler (Col. 5, lines 47-50), and when the conductive layer comes into contact with a measurement portion (i.e., the user’s scalp), the elastic pillar portion is deformed (i.e., joint 54 is deformed/bend) in said state where it follows the shape of the measurement portion (Col. 4, lines 39-45);
However, Chi does not disclose the conductive layer being a conductive resin layer, nor the conductive resin layer including a conductive filler, a silicone rubber, and silica particles, wherein the conductive filler includes one or more selected from the group consisting of metal particles, silver or silver chloride particles, metal fiber, metal-coated fiber, carbon black, acetylene black, graphite, carbon fiber, carbon nanotube, conductive polymer, conductive polymer-coated fiber, and metal nanowire. Finally, Chi does not disclose the contact being a conforming contact with the measurement portion.
Kwon, in the same field of endeavor, teaches a biological information measuring device comprising electrodes and sensors (Col. 3, lines 3-7; Col. 11, lines 15-21), the electrodes further comprising a conductive layer formed over an insulating layer, wherein the conductive layer contains a conductive filler and a resin (Col. 4, lines 8-12), wherein the conductive filler includes one or more selected from the group consisting of metal particles or silver (Col. 4, lines 17-31). The resin forming the conductive layer contains a rubber containing a sulfur atom (e.g., silicone rubber) with high stretchability (Col. 6, lines 12-19 and lines 25-32). Moreover, the conductive layer contains an inorganic substance (e.g., silica) (Col. 7, lines 19-31). Therefore, Kwon teaches a conductive resin layer including a conductive filler, a silicone rubber, and silica particles.
Furthermore, Kwon teaches the contact being a conforming contact with the measurement portion. Examiner in interpreting this limitation as a functional limitation which describes the type of contact between the conductive resin layer and the measurement portion. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. Therefore, since the resin in the conductive layer comprises the stretchable silicone rubber, then it meets the claim limitation. Examiner is interpreting the word, “conforming” as an object/structure’s ability to adapt to match the form, outline, or contours of another object/surface due to its flexibility/bending characteristics. Hence, if/when the conductive resin layer of Kwon makes contact with any surface/the measurement portion, then the silicone rubber that comprises it will allow it to conform or bend/stretch to match the form, outline, or contours of another surface/measurement portion; thereby, meeting the claim language of the contact being a conforming contact with the measurement portion.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the conductive material that makes up the transducer of Chi with the conductive resin layer of Kwon because the resin can aid in providing high mechanical strain and high electrical conductivity, the silicone rubber is highly stretchable/flexible and can prevent cracks in the electrode, and the silica helps improve printability, heat resistance, mechanical properties, and long-term durability when forming the conductive resin layer.
However, Chi/Kwon combination do not teach the elastic pillar including a silicone rubber, nor when measured at 370C according to JIS K 6253 (1997), a type A durometer hardness of a surface of the elastic pillar portion is 15 or higher and 35 or lower.
Boock, in the same field of endeavor, teaches a membrane system (600) comprising an electrode layer (620), a conductive layer (670) and an insulating layer (660) (page 51, lines 3-5 & Figs. 6A-6B). The insulating layer can be formed of a silicone polymer (e.g., Implant Grade Liquid Silicone Polymer, which is a silicone rubber) with a durometer hardness of 10-50 (page 52, lines 15-16).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the elastomer plastic that comprises the elastic pillar portions of Chi with another known elastic polymer, such as the silicone polymer of Boock, because they are both known equivalents in the art which would yield the same predictable result of allowing the elastic pillars to deform and recover back to their original shape.
Moreover, the durometer hardness of the silicone rubber of Boock allows the pillar portion exhibit high elasticity in order to allow the pillars to be conformed to non-uniform surfaces.
Regarding claim 2, Chi/Boock combination discloses the invention substantially as claimed in claim 1 and discussed above.
However, they do not disclose the conductive filler is 1 vol% or higher and 45 vol% or lower with respect to 100 vol% of the silicone rubber.
Kwon, in the same field of endeavor, teaches the conductive filler is 1 vol% or higher and 45 vol% or lower (Col. 6, lines 1-10) with respect to 100 vol% of the silicone rubber (Col. 7, lines 2-7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the conductive material that comprises the conductive layer of Chi with the conductive resin layer of Kwon, which includes the specific volumes of the conductive filler and the silicone rubber, for the purpose of providing increased conductivity, increased stability in high and low temperatures, and prevent cracks.
Regarding claim 4, Chi/Boock combination discloses the invention substantially as claimed in claim 1 and discussed above.
However, they do not disclose the thickness of the conductive resin layer being 5 um or more and 200 um or less.
Kwon, in the same field of endeavor, teaches the thickness of the conductive resin layer being 5 um or more and 200 um or less (Col. 9, lines 9-19).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the conductive material that comprises the conductive layer of Chi with the conductive resin layer of Kwon, which includes the specific thickness of the conductive resin layer, in order to maintain the desired conductivity and flexibility of the conductive layer.
Regarding claim 7, Chi/Kwon/Boock combination discloses the distal end of the elastic pillar portion has a substantially circular surface (Chi, see profile of distal end of 57, as shown in Fig. 7, illustrating a substantially circular surface).
Regarding claim 8, Chi/Kwon/Boock combination discloses a plurality of elastic pillar portions (144a-44f) protrude from the first surface of the plate-shaped support portion (Chi, Col. 4, lines 24-32).
Regarding claim 9, Chi/Kwon/Boock combination discloses the plurality of elastic pillar portions are arranged to surround a center portion of the plate-shaped support portion (Chi, See Fig. 7).
Regarding claim 10, Chi/Kwon/Boock combination discloses the biomedical electrode is used as an electroencephalographic electrode (Chi, Col. 6, lines 16-19).
Regarding claim 11, Chi/Kwon/Boock discloses a biomedical sensor comprising the biomedical electrode (Chi, Col. 1, lines 24-27).
Regarding claim 12, Chi/Kwon/Boock discloses a biomedical signal measurement system comprising the biomedical sensor (Chi, Col. 2, lines 15-22).
Regarding claim 14, as stated above, Examiner will interpret the conforming contact is a functional recitation, wherein the biomedical electrode comprises the elastic pillar portion, wherein the elastic pillar portion further includes a distal sub-portion (equal to the distal end region of the elastic pillar portion) that deforms in a state where it follows the shape of the measurement portion due to the contact between the conductive resin layer and the measurement portion.
Therefore, Chi discloses a distal sub-portion of the elastic pillar portion, which is equal to/the same as the distal end of the pillar portion as seen in Figs. 7-8.
However, Chi do not disclose when the distal sub-portion comes into contact with the measurement portion, is deformed in said state in conformance with a shape of a surface of the measurement portion in contact with the distal sub-portion.
Kwon, in the same field of endeavor, teaches the conductive resin layer, and the contact being a conforming contact with a shape of a surface the measurement portion. Examiner in interpreting this limitation as a functional limitation which describes the type of contact between the conductive resin layer and the measurement portion. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. Therefore, since the resin in the conductive layer comprises the stretchable silicone rubber, then it meets the claim limitation. Examiner is interpreting the word, “conforming/conformance” as an object/structure’s ability to adapt to match the form, outline, or contours of another object/surface due to its flexibility/bending characteristics. Hence, if/when the conductive resin layer of Kwon makes contact with any surface/the measurement portion, the silicone rubber that comprises it will allow it to conform or bend/stretch to match the form, outline, or contours of another surface/measurement portion; thereby, meeting the claim language of the contact being a conforming contact with the measurement portion.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the conductive material that makes up the transducer of Chi with the conductive resin layer of Kwon because the resin can aid in providing high mechanical strain and high electrical conductivity, the silicone rubber is highly stretchable/flexible and can prevent cracks in the electrode, and the silica helps improve printability, heat resistance, mechanical properties, and long-term durability when forming the conductive resin layer.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Chi, Kwon, and Boock, as applied to claim 1 above, and further in view of Pushpala (U.S. Application No. 20170128009 A1).
Regarding claim 3, Chi/Boock combination discloses the biomedical electrode containing conductive coating over varying parts of its structure (Chi, Col. 5, lines 50-63).
Kwon, in the same field of endeavor, teaches a conductive resin layer (Col. 4, lines 8-12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the conductive material that comprises the conductive layer of Chi with the conductive resin layer of Kwon because the resin can aid in providing high mechanical strain and high electrical conductivity.
However, Chi/Kwon/Boock combination do not disclose wherein the conductive layer is configured to cover a second surface of the plate-shaped support portion opposite to the first surface, and a thickness of the conductive resin layer positioned at the distal end of the elastic pillar portion is more than a thickness of the conductive resin layer positioned on the second surface of the plate-shaped support portion.
Pushpala, in the same field of endeavor, teaches a biomedical electrode (300) comprising a plate-shape portion (see planar portion seen in Fig. 2A), and a pillar portion (120) (pa. 0095 & Figs. 2A, 11A), wherein the a conductive later (140) is formed to cover a distal end of the pillar portion (pa. 0032), and is also configured to cover a second surface of the plate-shaped support portion opposite to the first surface (pa. 0047 & Fig. 2A), and a thickness of the conductive resin layer positioned at the distal end of the elastic pillar portion is more than a thickness of the conductive resin layer positioned on the second surface of the plate-shaped support portion (pa. 0033, 0059 & Figs. 8A-8C).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the thickness of the conductive layer for the purpose of further facilitating high quality signal sensing.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chi, Kwon, and Boock, as applied to claim 1 above, and further in view of Nishiwaki (W.O. Application No. 2016136182 A1).
Regarding claim 6, Chi/Kwon/Boock combination discloses wherein the elastic pillar portion may be configured to have different shapes (Chi, see the two embodiments of Figs. 7 and 10).
However, they do not explicitly disclose the elastic pillar portion has a substantially truncated conical shape of which a diameter decreases toward the distal end.
Nishiwaki, in the same field of endeavor, teaches a biomedical electrode comprising a plurality of barb members (4, analogous to the elastic pillar portions), wherein the barb members are configured so that the diameter is smaller (tapered) as more moving from the proximal end to the distal end (pa. 0020, 0021 & Fig. 3).
It would have been an obvious matter of design choice to one having ordinary skill in the art at before the effective filing date of the claimed invention to modified the distal end shape of the elastic pillar portions of Chi to be tapered, since it appears that the invention would perform equally as well with either configuration and they both yield the same predictable results of parting the user’s hair in order to properly contact the scalp.
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive.
With regards to newly amended claim 1, Applicant first argument (A) is that the individual probes or legs of Chi's device are not located to conform, at a contact portion thereof because even if "[i]n some embodiments, the support electrode and the probes are made from nylon or any other elastomer plastics that are flexible and bendable" (col. 5, lines 47-51 of Chi), the transducer assembly 57 is not indicated as being flexible, bendable, or deformable since the transducer assembly is "made from a conductive material such as carbon filled plastic, conductive silver-silicone compounds or solid metal" (col. 4, lines 55-57 of Chi). However, Examiner, respectfully, disagrees.
As understood from the arguments above, there seems to be a misunderstanding of the various embodiments taught by the Chi reference since Applicant’s arguments revolve around a combination of two different embodiments. In an embodiment where the support electrode and the probes are made from nylon or any other elastomer plastics that are flexible and bendable, in order to allow the biomedical electrode device/transducer assembly to be capable of transferring electrical signals between the transducer and an external device, a silver paint may be applied to the surface to make the support electrode and probes electrically conductive (Col. 5, lines 43-52), or since only the contact area of the transducer at the distal end of the probe needs to be conductive, only the contact area of the transducer is painted/coated or made from a conductive material (Col. 5, lines 57-61). Alternatively, the entire transducer assembly can be made from a conductive material such as carbon filled plastic, conductive silver-silicone compounds or solid metal (Col. 5, lines 55-57). As described above, there are multiple embodiments the inventor of Chi envisioned in order to transfer electrical signals between the transducer and an external device. In the rejection set-forth above, Examiner utilized Chi reference to disclose a biomedical electrode (40) comprising a conductive layer (i.e., conductive material that makes up transducer (57); Col. 5, lines 57-63) that is formed to cover a distal end of the pillar portion (Col. 4, lines 36-42), wherein the elastic pillar portion is flexible over its entire body (e.g., the elastic pillar portion can be made from nylon or any other elastomer plastics that are flexible and bendable), and when the conductive layer comes into contact with a measurement portion (i.e., the user’s scalp), the elastic pillar portion is deformed (i.e., joint 54 is deformed/bend) in said state where it follows the shape of the measurement portion (Col. 4, lines 39-45). Therefore, the rejection using the Chi reference is maintained.
With regards to newly amended claim 1, Applicant second argument (B) is that the "flexible over its entire body" and "conforming contact" limitations are not taught and/or suggested by Chi's probe/leg mechanism; and modifying Chi to be "flexible over its entire body" and to have "conforming contact" would cause Chi's device to fail its intended functioning. Specifically, Applicant argues the amended claim requires that the elastic pillar portion itself provides distributed flexibility over its entire body and is deformed in conforming contact at the measurement interface while following the measurement portion's shape. Converting Chi's probe into an "entire-body flexible pillar" to satisfy these limitations would alter Chi's kinematics, undermine any stable tangential sliding of the Chi's legs, and increase the likelihood of intermittent motion and undesirable normal pressing. However, Examiner disagrees.
The language of claim 1 is still broad and does not require that the elastic pillar portion itself provides distributed flexibility over its entire body; the language simply requires the elastic pillar portion to be flexible over its entire body (which it is in the embodiment described above where the elastic pillar portion is made from nylon or any other elastomer plastics that are flexible and bendable) and is deformed (has changed its overall shape when compare to its initial state, as seen in Figs. 7-9 of Chi as a result of the bending that occurs at the joint portion of the leg while the remaining distal portion remains unbend. This interpretation of deformation still meets the claim limitation since the claim language is broad and does not distinguish the deformation to occur at the entire pillar body) in conforming contact at the measurement interface while following the measurement portion's shape (due to the contact between the conductive resin layer and the measurement portion).
The Chi reference discloses when the conductive layer comes into contact with a measurement portion (i.e., the user’s scalp), the elastic pillar portion is deformed (i.e., joint 54 is deformed/bend) in said state where it follows the shape of the measurement portion (Col. 4, lines 39-45), but does not disclose wherein the contact is a conforming contact with the measurement portion.
The Kwon reference teaches the conductive resin layer, and the contact being a conforming contact with the measurement portion. Examiner in interpreting this limitation as a functional limitation which describes the type of contact between the conductive resin layer and the measurement portion. Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. Therefore, since the resin in the conductive layer comprises the stretchable silicone rubber, then it meets the claim limitation. Examiner is interpreting the word, “conforming” as an object/structure’s ability to adapt to match the form, outline, or contours of another object/surface due to its flexibility/bending characteristics. Hence, if/when the conductive resin layer of Kwon makes contact with any surface/the measurement portion, the silicone rubber that comprises it will allow it to conform or bend/stretch to match the form, outline, or contours of another surface/measurement portion; thereby, meeting the claim language of the contact being a conforming contact with the measurement portion.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the conductive material that makes up the transducer of Chi with the conductive resin layer of Kwon because the resin can aid in providing high mechanical strain and high electrical conductivity, and the silicone rubber is highly stretchable/flexible and can prevent cracks in the electrode. Due to the reasons set-forth above, the rejection based on the combination of Chi and Kwon are maintained.
With regards to newly amended claim 1, Applicant third argument (C) is that Chi’s disclose of the "nylon or other flexible and bendable elastomer plastics" is in the context of a particular conductivity implementation: the support terminal and probes are made from such plastics and a silver paint is applied to the surface to make them electrically conductive, and therefore it is not a qualified teaching that the probe/leg in its finished form provides the claimed entire-body pillar compliance. However, Examiner disagrees.
Although the context of the Chi’s disclosure of the elastic pillar portions being made from nylon or other flexible and bendable elastomer plastics is in regards to methods of providing conductivity for the biomedical electrode/transducer assembly, the disclosure is still relevant at rejecting the claim language. As described above in the rejection and in the response to the previous arguments, the Examiner only relies on the embodiment of the Chi reference which describes the support electrode and the probes are made from nylon or any other elastomer plastics that are flexible and bendable, an in order to allow the biomedical electrode device/transducer assembly to be capable of transferring electrical signals between the transducer and an external device, the contact area of the transducer is made from a conductive material (Col. 5, lines 57-61). Therefore, the rejection is maintained.
With regards to newly amended claim 1, Applicant fourth argument (D) is that the statement of Chi in para. [0028] of "an explicit joint is not required" does not teach or suggest eliminating localized joint function or converting an entire leg of Chi's device into an entire-body compliant pillar. This argument is moot since this interpretation is not used in the rejection above.
With regards to newly amended claim 1, Applicant fifth argument (E) and sixth argument (F) is that neither the Kwon, Boock, nor the Pushpala, Nishiwaki reference cure the deficiencies of Chi to teach the amended claim 1 as a whole. However, Examiner disagrees.
As explained in the rejection and in the response to arguments above, the Kwon reference is utilized to cure the deficiencies of the Chi reference and the combination of the Chi/Kwon/Boock combination teach the amended claim 1 as a whole.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 ANA VERUSKA GUERRERO ROSARIO whose telephone number is (571)272-6976. The examiner can normally be reached Monday - Thursday 7:00 - 4:30 PM EST.
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/A.V.G./Examiner, Art Unit 3794 /Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794