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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/21/2025 has been entered.
Response to Amendment
The Amendment filed November 21, 2025 has been entered. Currently, claim 1 has been amended, and claims 1-15 are pending in the application.
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, 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chi (U.S. Patent No. 9314183 B2), and further in view of Kwon (W.O. Application No. 2016114339 A1).
Regarding independent claim 1, Chi discloses a biomedical electrode (40) comprising:
a plate-shaped support portion (42) (Figs. 7-9);
an elastic pillar portion (44a-44f) entirely formed of an elastic insulating member (e.g., an elastomer plastic that is flexible and bendable) (Col. 5, lines 47-50) that is provided on a first surface of the plate-shaped support portion (Col. 4, lines 24-32), the elastic pillar portion being flexible over its entire body (Col. 5, lines 47-50), and when coming into contact with a measurement target (i.e., the user’s scalp), is deformed and follow the measurement target (Col. 4, lines 39-45); and
a conductive layer (i.e., conductive material of transducer (57)) that is formed to cover a distal end of the elastic pillar portion (Col. 4, lines 36-42; Col. 5, lines 57-63); and
a conductive wire that is electrically connected to the conductive resin layer and is arranged in the elastic pillar portion from a distal end side toward a base end side (Col. 5, lines 43-46; Col. 5, lines 61-63).
However, Chi does not disclose the conductive layer being a conductive resin layer including silica particles (C).
Kwon, in the same field of endeavor, teaches a biological information measuring device comprising electrodes and sensors (page 1, paragraph 3 under “Conductive Fabric”), the electrodes further comprising a conductive layer formed over an insulating layer (page 2, paragraph 3 from bottom-up). The conductive layer contains a conductive filler resin and an inorganic substance (e.g., silica) (page 4, paragraph 2).
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 layer of Pushpala with the conductive resin layer of Kwon because the resin can aid in providing high mechanical strain and high electrical conductivity and the silica helps improve printability, heat resistance, mechanical properties, and long-term durability when forming the conductive layer (page 4, paragraph 2).
Regarding claim 11, Chi discloses the invention substantially as claimed in claims 1 and discussed above.
However, Chi does not disclose wherein a thickness of the conductive resin layer is 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 (page 4, paragraph 5, from bottom-up).
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 of Chi with the thickness of the conductive resin layer of Kwon in order to maintain the desired conductivity and flexibility of the conductive layer.
Regarding claim 12, Chi/Kwon combination disclose the biomedical electrode is used as an electroencephalographic electrode (Chi, Col. 6, lines 16-19).
Regarding claim 13, Chi/Kwon combination disclose a biomedical sensor comprising the biomedical electrode (Chi, Col. 1, lines 24-27).
Regarding claim 14, Chi/Kwon combination disclose a biomedical signal measurement system comprising the biomedical sensor (Chi, Col. 2, lines 15-22).
Regarding claim 15, Chi/Kwon combination disclose wherein the elastic pillar portion has a flexibility that is configured to reduce pain or discomfort to a user (Chi, Col. 2, lines 34-44).
Claims 2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable
over Chi and Kwon, as applied to claim 1 above, and further in view of Musha (J.P. Application No. 10165386 A).
Regarding claim 2, Chi/Kwon combination discloses the invention substantially as claimed in claim 1 and discussed above.
However, they do not disclose wherein the conductive wire is formed of conductive fiber.
Musha, in the same field of endeavor, teaches a conductive wire formed of
conductive fiber (page 4, paragraph 9).
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 conductive wire of Chi to include a conductive fiber due to its favorable properties such as excellent conductivity and hydrophilicity, and having good compatibility with living bodies.
Regarding claim 4, in view of the combination as set forth in claim 2 above,
Musha further teaches that the conductive fiber is elected from the group consisting of metal fiber, metal-coated fiber, carbon fiber, conductive polymer fiber, conductive polymer-coated fiber, and conductive paste-coated fiber (page 2, paragraph 11).
Regarding claim 5, Chi/Kwon combination discloses the invention substantially as claimed in claim 1 and discussed above.
However, they do not disclose the tensile elongation at break of the conductive wire is 1% or higher and 50% or lower.
Musha, in the same field of endeavor, teaches a wire made from a carbon fiber bundle (page 4, paragraph 4). It is known to someone skilled in the art that carbon fiber bundle has the tensile elongation at break between 1.7-2.5%.
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 conductive wire to provide improved conductivity and increase stiffness properties (Musha, page 4, paragraph 4).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over
Chi, Kwon, and Musha as applied to claims 1-2 above, and further in view of Bedingham (W.O. Application No. 2009134826 A1).
Regarding claim 3, Chi/Kwon/Musha combination discloses the invention substantially as claimed in claims 1 and 2 and discussed above.
However, they do not disclose the conductive wire formed of twisted yarn obtained by twisting a plurality of linear conductive fibers.
Bedingham, in the same field of endeavor, teaches a conductive wire (262) formed of twisted yarn by twisting a plurality of linear conductive fibers (page 26, lines 15-23).
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 conductive wire for the purpose of to providing multiple points of electrical contact (Bedingham, page 26, lines 15-23).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chi and Kwon, as applied to claim 1 above, and further in view of Pushpala (U.S. Application No. 20170128009 A1).
Regarding claim 6, Chi discloses the elastic pillar portion (Col. 5, lines 47-50).
However, Chi does not disclose the conductive layer being a conductive resin layer.
Kwon, in the same field of endeavor, teaches the electrodes further comprising a conductive layer that contains a resin (page 4, paragraph 2).
However, Chi/Kwon combination do not disclose wherein when an overall length of the elastic pillar portion is represented by L, and the conductive layer is formed in a region of 8/10L or less from the distal end of the elastic pillar 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). Furthermore, Pushpala teaches an overall length of the elastic pillar portion, represented by L (150-500 μm) (pa. 0028), and the conductive layer being formed in a region of 8/10L or less from the distal end of the elastic pillar portion (the conductive layer includes a 1000 Å thick platinum layer, a 1000 Å thick iridium layer, a 1000 Å thick tungsten layer, and a 100 Å thick titanium nitride layer, pa. 0033, providing a total thickness of 0.31 μm).
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 in relation to the length of the pillar portion for the purpose of further facilitating high quality signal sensing.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chi and Kwon, as applied to claim 1 above, and further in view of Boock (W.O. Application No. 2011003036 A2).
Regarding claim 7, Chi/Kwon combination discloses the pillar portion is formed of an insulating member (Chi, Col. 5, lines 47-50).
However, they do not disclose wherein the insulating elastic member is formed of a silicone rubber.
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 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.
Regarding claim 8, Chi discloses the invention substantially as claimed in claim 1 and discussed above.
However, Chi does not disclose wherein the conductive resin layer includes a conductive filler in combination with a silicone rubber.
Kwon, in the same field of endeavor, teaches the conductive layer contains a conductive filler and a resin, and the resin forming the conductive layer contains a rubber containing a sulfur atom and/or a rubber containing a nitrile group (e.g., silicone rubber) (page 3, paragraph 3 from bottom-up). Therefore, Kwon teaches a conductive resin layer including a conductive filler and a silicone rubber.
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 layer 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 and can prevent cracks in the electrode (Kwon, page 3, paragraph 4 from bottom-up).
Regarding claim 9, Chi discloses the invention substantially as claimed in claims 1 and 8 and discussed above.
However, Chi does not disclose the content of the conductive filler is 30 mass% or higher and 90 mass% or lower with respect to 100 mass% of the silicone rubber.
Kwon, in the same field of endeavor, teaches the content of the conductive filler is 30 mass% or higher and 90 mass% (page 3, paragraph 5, from bottom-up) or lower with respect to 100 mass% of the silicone rubber (page 3, last paragraph).
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 used the conductive filler and the silicone rubber weight composition of Kwon for the purpose of providing increased conductivity, increased stability in high and low temperatures, and prevent cracks.
Regarding claim 10, Chi discloses the invention substantially as claimed in claim 8 and discussed above.
However, Chi does not disclose 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.
Kwon, in the same field of endeavor, teaches 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 (page 5, paragraph 5).
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 used the conductive filler of Kwon due to their high conductivity and cost-effectiveness (Kwon, page 5, paragraph 5).
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
With regards to newly amended claim 1, Applicant argues that the Chi reference does not disclose the limitation, “wherein the elastic pillar portion is flexible over its entire body…and when coming into contact with a measurement portion, is deformed in a state where it follows the shape of the measurement portion”. Specifically, Applicant argues that claim language aims to define how the locus of compliance is distributed along the pillar body and not concentrated exclusively in a base hinge, as taught by Chi. Furthermore, Applicant highlights how Chi’s design concentrates the bending at the joint so that the distal portion remains substantially non-bending, thereby allowing the transducer to slide in a controlled tangential motion during normal operation, and if the entire leg structure of Chi were to be deemed as the “joint”, the system would lose a fixed pivot, the center of curvature would drift toward the tip, and the required tangential sliding would become intermittent. However, Examiner, respectfully, disagrees.
The Chi reference discloses the individual probes being made from nylon or any other elastomer plastics that are flexible and bendable (Col. 5, lines 47-50). This design meets the claim limitation of “the elastic pillar potion is flexible over its entire body” since properties of nylon or other elastomeric plastic utilized for the manufacturing of the entire leg are explicitly described as being both flexible and bendable. Although only the joint portion of the leg acts as the pivot point for the deformation, the entire leg is still described as being made from a flexible/bendable material.
Moreover, the functional limitation/intended use of claim 1 requiring the pillar portion to deform in a state where it follows the shape of the measurement portion is also taught by Chi. As an external downward force is applied to the biomedical electrode, the legs deform/change shape in order to accommodate the shape of the user’s head. Although the bending only occurs at the joint portion of the leg while the remaining distal portion remains unbend, this still meets the claim limitation since the end result is the entire leg is deformed (i.e., has changed its overall shape when compare to in its initial state, as seen in Figs. 7-9 of Chi) as a result from the external force/pressure applied. The claim language is still broad enough to allow Examiner to interpret either the entire pillar body is deformed or only a portion of the pillar body is deformed when coming into contact with the measurement portion. Therefore, the rejection set-forth above is maintained.
Furthermore, Applicant argues that Chi’s embodiments treat the joint as a subset of the leg structure, and treating the full leg structure as the joint is an unreasonable interpretation. Examiner concedes to the point that the Chi reference does not teach an embodiment in which the entire leg portion is considered the joint, and therefore only relies on the embodiment in which the leg includes a joint.
Conclusion
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/A.V.G./Examiner, Art Unit 3794
/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794