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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 16, 2025 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on November 19, 2025 have been entered. Claims 5-22 and 25-27 are pending in the application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5-9, 12-22, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al (US 2019/0109740 A1, hereinafter referred to as ‘740) in view of Xue et al (CN 105680005 A, using the machine translation for the citations below).
Regarding Claim 25: ‘740 discloses a bioelectrode composition (para. 0021) comprising an ionic polymer with repeating units derived from sodium, potassium, or ammonium salts of fluorinated sulfonamides that read on formula (1)-4 of instant claim 25 (para. 0023, formula (1)-4) and a carbon material (para. 0037), such as carbon nanotubes and carbon black (para. 0039). However, ‘740 is silent to the carbon particles being bonded to the ionic polymer.
Xue teaches a composite material comprising a polymer and a carbon material/graphene (para. 0002) for use in electrodes (para. 0059), wherein the graphene is bonded/grafted with a metal salt of a fluorinated sulfonimide polymer (para. 0010), wherein the bonding of the graphene to the polymer improves the electrochemical performance of the carbon material (para. 0062). Although Xue does not teach the exact polymer represented by formula (1)-4, ‘740 sets forth the polymer of Xue as a functional equivalent to formula (1)-4 (para. 0023, formula (1)-3 and (1)-4), so one of ordinary skill in the art would have a reasonable expectation of success in bonding the carbon material to the polymer (1)-4. Xue and ‘740 are analogous art because they are directed toward the same field of endeavor, namely electrode materials comprising a carbon material and a fluorinated polymer salt.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to bond the carbon material to the fluorinated sulfonamide polymer of ‘740, and they would have been motivated to do so in order to improve the electrochemical performance of the carbon material.
Regarding Claim 26: ‘740 discloses repeat units (para. 0027, a7) that read on the repeat unit of general formula (2) in instant claim 26. ‘740 further discloses the proportions of a7 is 0≤a7≤1.0 (para. 0091).
Regarding Claim 5: ‘740 teaches comonomers (para. 0087, repeat unit f) that the instant specification teaches are acceptable to obtain the repeat unit b1 of formula (4) (para. 0127-0128). ‘740 further teaches that the proportion of repeat unit f in the copolymer is 0<f≤0.5 (para. 0091).
Regarding Claim 6: ‘740 teaches 1-200 parts of the ionic polymer per 100 parts of resin (para. 0094) and 1-50 parts of carbon material per 100 parts of resin (para. 0116). This comes out to 2-200 parts of ionic polymer per 100 parts of carbon material. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of ionic polymer based on the amount of the carbon material and would have been motivated to do so in order to achieve sufficient functionalization of the carbon particles.
Regarding Claim 7: ‘740 teaches an ammonium ion represented by structure (1)-5 (para. 0023) that reads on formula (4) in instant claim 7.
Regarding Claim 8: ‘740 teaches an adhesive resin (para. 0062).
Regarding Claim 9: ‘740 teaches that the adhesive resin is a urethane (para. 0062).
Regarding Claims 12-13: ‘740 teaches an ionic polymer with repeating units derived from sodium, potassium, or ammonium salts of fluorosulfonic acid or fluorinated sulfonimides/sulfonamides (para. 0023) with repeat units (para. 0027, a1-a7) that read on the repeat units of general formula (2) in instant claim 13. ‘740 further discloses the proportions of a1-a7: 0≤a1≤1.0, 0≤a2≤1.0, 0≤a3a≤1.0, 0≤a4≤1.0, 0≤a5≤1.0, 0≤a6≤1.0, 0≤a7≤1.0, and 0<a1+a2+a3+a4+a5+a6+a7≤1.0 (para. 0091).
Regarding Claims 14-17: ‘740 teaches a carbon powder comprising carbon nanotubes or carbon black (para. 0039) and a metal component comprising silver nanoparticles (para. 0117).
Regarding Claim 18: ‘740 teaches an organic solvent (para. 0035).
Regarding Claims 19-20: ‘740 teaches a bioelectrode comprising the cured product of claim 1, as set forth above, and an electroconductive base layer (para. 0041-0042), wherein the base layer is made of gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, or carbon (para. 0044).
Regarding Claims 21-22: ‘740 teaches a method of manufacturing a bioelectrode, comprising applying the composition of claim 1, as set forth above, onto an electroconductive base layer and curing it to form a living body layer (para. 0046-0047), wherein the base layer is made of gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, or carbon (para. 0049).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al (US 2019/0109740 A1, hereinafter referred to as ‘740) in view of Xue et al (CN 105680005 A, using the machine translation for the citations below), as applied to claim 8 above, and further in view of Hatakeyama et al (US 2019/0298891 A1, hereinafter referred to as ‘891).
‘740 and Xue teach the limitations of claim 8, as set forth above. However, ‘740 is silent to the siloxane adhesive resin.
‘891 teaches a bioelectrode composition wherein the adhesive resin comprises a diorganosiloxane with an alkenyl group, an organohydrogenpolysiloxane with an Si-H group, and a silicone resin having an SiO2 unit and a RxSiO(4-x)/2 unit, wherein R is a substituted or unsubstituted monovalent hydrocarbon group having 1-10 carbon atoms and x is a number in the rage of 2.5-3.5 (para. 0032). ‘892 teaches that this resin component makes the composition capable of preventing elution of the salt, holding an electric conductivity improver such as carbon, and achieving adhesion (para. 0033). ‘891 and ‘740 are analogous art because they are directed toward the same field of endeavor, namely bioelectrodes comprising ionic polymers and carbon materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the claimed silicone resin as the adhesive resin in the composition taught in ‘740 in order to improve adhesion and prevent elution of the salts.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al (US 2019/0109740 A1, hereinafter referred to as ‘740) in view of Xue et al (CN 105680005 A, using the machine translation for the citations below).
‘740 discloses a composite (para. 0021) comprising an ionic polymer with repeating units derived from sodium, potassium, or ammonium salts of fluorinated sulfonamides that read on formula (1)-4 of instant claim 27 (para. 0023, formula (1)-4) (para. 0023) and a carbon material (para. 0037), such as carbon nanotubes and carbon black (para. 0039). However, ‘740 is silent to the carbon particles being bonded to the ionic polymer.
Xue teaches a composite material comprising a polymer and a carbon material/graphene (para. 0002) for use in electrodes (para. 0059), wherein the graphene is bonded/grafted with a metal salt of a fluorinated sulfonimide polymer (para. 0010), wherein the bonding of the graphene to the polymer improves the electrochemical performance of the carbon material (para. 0062). Although Xue does not teach the exact polymer represented by formula (1)-4, ‘740 sets forth the polymer of Xue as a functional equivalent to formula (1)-4 (para. 0023, formula (1)-3 and (1)-4), so one of ordinary skill in the art would have a reasonable expectation of success in bonding the carbon material to the polymer (1)-4. Xue and ‘740 are analogous art because they are directed toward the same field of endeavor, namely electrode materials comprising a carbon material and a fluorinated polymer salt.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to bond the carbon material to the fluorinated sulfonamide polymer of ‘740, and they would have been motivated to do so in order to improve the electrochemical performance of the carbon material.
Response to Arguments
Applicant’s arguments regarding the rejection over Hatakeyama in view of Tunckol have been considered but are moot because the new ground of rejection does not rely on Tunckol.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767