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 26, 2026 has been entered. Currently, claim 1 has been amended, claims 16-17 have been added, and claims 1-17 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 1-17 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 target [pa. 0019], it does not reasonably provide enablement of the elastic pillar portions contacting the measurement target. 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, “the elastic pillar portion being flexible over its entire body, and, when coming into contact with a measurement target, the elastic pillar portion is deformed and follows the measurement target, in conforming contact with the measurement target”.
The Examiner has reviewed the instant disclosure for discussion with respect to
each of these noted limitations. Paragraph [0025] of the filed Specification sets forth
disclosure with respect to figure 1B, and specifically recites that, “the conductive resin layer 30 is formed of a conductive elastic member and may be formed to cover at least a surface of a distal end 22 (a part of a distal end portion 26) of the pillar portion 20”. Paragraph [0019] of the filed Specification sets forth how “when a plurality of pillar portions of the biomedical electrode come into contact with a measurement target, the pillar portions are elastically deformed so as to spread toward the outside”.
While [0019] 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 target, the Examiner has failed to find any structural or functional description in the disclosure that provides the elastic pillar portion contacting the measurement target. In the description of the Specification, when the biomedical electrode makes contact with the measurement target, it is the conductive resin layer that truly contacts the measurement target and not the elastic pillar portion.
Turning to figure 1B, the figure shows what is described in [0025] of the Specification, where the structure that actually makes contact with the measurement target 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 target. 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 2-17 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 contact with the measurement target, and for the elastic pillar portion to be deformed and follows the shape of the measurement target due to the contact between the conductive resin layer and the measurement target.
Claim 17 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 target [pa. 0019], it does not reasonably provide enablement for the distal sub-portion of the elastic pillar portion to contact the measurement target. 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 17, 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 target”.
The Examiner has reviewed the instant disclosure for discussion with respect to each of these noted limitations. Paragraph [0025] of the filed Specification sets forth disclosure with respect to figure 1B, and specifically recites that, “the conductive resin layer 30 is formed of a conductive elastic member and may be formed to cover at least a surface of a distal end 22 (a part of a distal end portion 26) of the pillar portion 20”. Paragraph [0019] of the filed Specification sets forth how “when a plurality of pillar portions of the biomedical electrode come into contact with a measurement target, the pillar portions are elastically deformed so as to spread toward the outside”.
While [0019] 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 target, 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 target. In the description of the Specification, when the biomedical electrode makes contact with the measurement target, it is the conductive resin layer that truly contacts the measurement target and not the sub-portion of the elastic pillar portion.
Turning to figure 1B, the figure shows what is described in [0025] of the Specification, where the structure that actually makes contact with the measurement target 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 target. 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 17 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 17 to require the conductive resin layer to be the structure that comes into contact with the measurement target, and for the elastic pillar portion, including the distal sub-portion, to be deformed in conformance with a shape of a surface of the measurement target due to the contact between the conductive resin layer and the measurement target.
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.
Claim 17 is 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 17 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.
10. Claim 17 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, “when coming into contact with a measurement target, the elastic pillar portion is deformed and follows the measurement target, in conforming contact with the measurement target” in lines 5-7, while the limitation set-forth in dependent claim 17 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 target, 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 and follows the surface of the shape of the measurement target due to the contact between the conductive resin layer and the measurement target.
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, 11-17 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 (U.S. Patent No. 10588569 B1).
Regarding independent claim 1, and claim 16, as best understood and in light of the 112(a)-rejection set-forth above, Chi discloses a biomedical electrode (40) comprising:
a plate-shaped support portion (42) (Figs. 7-9);
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); and
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 the conductive layer comes into contact with a measurement target (i.e., the user’s scalp), the elastic pillar portion is deformed (i.e., joint 54 is deformed/bend) and follows the measurement target (Col. 4, lines 39-45); and
a conductive wire that is electrically connected to the conductive 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), nor does it disclose the contact being a conforming contact with the measurement target.
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). 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 resin, and silica particles.
Furthermore, Kwon teaches the contact being a conforming contact with the measurement target. Examiner in interpreting this limitation as a functional limitation which describes the type of contact between the conductive resin layer and the measurement target. 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 target, 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 target; thereby, meeting the claim language of the contact being a conforming contact with the measurement target.
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.
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 (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 12, Chi/Kwon combination discloses the biomedical electrode is used as an electroencephalographic electrode (Chi, Col. 6, lines 16-19).
Regarding claim 13, Chi/Kwon combination discloses a biomedical sensor comprising the biomedical electrode (Chi, Col. 1, lines 24-27).
Regarding claim 14, Chi/Kwon combination discloses a biomedical signal measurement system comprising the biomedical sensor (Chi, Col. 2, lines 15-22).
Regarding claim 15, Chi/Kwon combination discloses 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).
Regarding claim 17, 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 and follows the shape of the measurement target due to the contact between the conductive resin layer and the measurement target.
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 target, is deformed in conformance with a shape of a surface of the measurement target 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 target. Examiner in interpreting this limitation as a functional limitation which describes the type of contact between the conductive resin layer and the measurement target. 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 target, 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.
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 (Col. 4, lines 8-12).
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 (Col. 4, lines 8-12), and 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). 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 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.
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% (Col. 6, lines 1-10) or lower with respect to 100 mass% 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 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 or silver (Col. 4, lines 17-31)
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, including the filler, 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.
Response to Arguments
Applicant's arguments filed 02/26/2026 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 target (i.e., the user’s scalp), the elastic pillar portion is deformed (i.e., joint 54 is deformed/bend) and follows the shape of the measurement target (Col. 4, lines 39-45). Therefore, the rection using the Chi reference is maintained.
With regards to newly amended claim 1, Applicant second argument (B), third argument (C), and fourth argument (D) is that the "conforming contact with the measurement target" limitations are not taught and/or suggested by Chi's probe/leg mechanism; and modifying Chi to have "conforming contact" would cause Chi's device to fail its intended functioning. However, Examiner disagrees.
The language of claim 1 simply requires the elastic pillar portion to be flexible over its entire body and when coming into contact with a measurement target, the elastic pillar portion 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) and follows the measurement target, in conforming contact with the measurement target (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 target (i.e., the user’s scalp), the elastic pillar portion is deformed (i.e., joint 54 is deformed/bend) and follows the shape of the measurement target (Col. 4, lines 39-45), but does not disclose wherein the contact is a conforming contact with the measurement target.
The Kwon reference teaches the conductive resin layer, and the contact being a conforming contact with the measurement target. Examiner in interpreting this limitation as a functional limitation which describes the type of contact between the conductive resin layer and the measurement target. 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 target.
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 fifth argument (E) 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 sixth argument (F) is that neither the Musha, Pushpala, Bedingham, and/or Boock reference cure the deficiencies of Chi and/or Kwon in order 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.V.G./Examiner, Art Unit 3794 /Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
Prosecution Insights