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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/03/2025 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: on line 12, applicant has disclosed “print medial layer” this should instead recite: “print media layer”. Appropriate correction is required.
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 13-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. Claims 13 and 14 contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Newly amended claims 13 and 14 now disclose: “the solvent is selected to cause partial polymer swelling at of the top surface to form a softened surface layer without full dissolution by the solvent of the print media layer, enabling binder and conductive particulate infiltration of the elastic conductive ink into the softened surface layer” (claim 13; emphasis added), and “the solvent is selected to soften or partially dissolve the top surface of the adhesive print media layer to promote interfacial mixing between the softened surface layer of the print media and with the deposited elastic conductive ink” (claim 14; emphasis added). There is no support at all in the original disclosure for any of the italicized limitations, which have been newly added by the applicant in the most recent filed amendments. The applicant is strongly encouraged to keep amendments within the bounds of the limitations actually disclosed in the original filing. Claims 13 and 14 have been examined as best understood.
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 of this title, 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, 3, 10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cai (US 2008/0084449 A1), in view of Longinotti-Buitoni (CN-104768455-A).
Regarding claim 1, Cai discloses a method of making an electrode capable of use in *a wearable electronic (Title; Abstract; fig. 1; par. 0021), comprising: providing a print media layer (14, including 14a) (pars. 0021-0022, 0033 and 0042); performing a surface treatment (heating: par. 0042; applying solvent, glycercol: par. 0028) to a top surface of the print media layer; depositing an elastic conductive ink (16) onto the print media layer, wherein the elastic conductive ink comprises a conductive particulate (silver nanoparticles) disposed in a binder (2-pyrrolidone, water, other carrier fluid: pars. 0028 and 0043); and forming a diffusion bond between the top surface of the print media layer and the elastic conductive ink, wherein the diffusion bond forming is facilitated by the surface treatment (pars. 0028-0029, 0045); and applying heat to form an electrically conductive interface between the print media layer and the conductive ink using a method, wherein upon stretching of the elastic print media layer (not actually claimed as part of the method of manufacture but instead is an intended capability of the product to be formed) the top surface of the diffusion bonded electrode is electrically conductive to [be capable of] *apply[ing] an electrical signal to, or *detect[ing] an electrical signal from, nerves or muscles of the human body through the skin (pars. 0042-0045). Cai, however, does not explicitly disclose that the print media layer is an elastic print media layer, and applying heat and pressure … using a heated roller or equivalent continuous contact method.
*Note: the Applicant is for a third time respectfully reminded that the claims are directed to a method of manufacture. They are not directed to a product, much less to the method of using the product or the intended capabilities of a product. The patentability or lack thereof of the claims is based upon the steps of the method, and not based upon the capabilities intended for the product to be formed by the claimed method. As such it is simply not germane that the Applicant wishes for the elastic print media layer to be used in a manner than involves stretching and retention of conductive properties because such use, after the fact, does not inform any of the steps of manufacture and the use case is performed after the claimed method of manufacture. There is no reason to believe that the product formed by the methods of Cai and Longinotti-Buitoni would not be capable of performing the potential functions of the intended product of the actually claimed method of manufacture. Accordingly, these purported limitations are not given patentable weight and are held to be taught by the prior art anyway.
Longinotti-Buitoni teaches that it is well known to perform a method of making an electrode capable of use in *a wearable electronic (Title; Abstract; figs. 1A, 1B, 3, 6A-6D, 7-9B, etc.; pg. 33, lines 1-30), comprising: applying heat and pressure to form an electrically conductive interface between the print media layer and the conductive ink using a heated roller or equivalent continuous contact method (pg. 33, lines 30-42), wherein upon stretching of the elastic print medial layer, the top surface of the diffusion bonded electrode is electrically conductive to at least one of apply an electrical signal to, or detect an electrical signal from, nerves or muscles of the human body through the skin (pp. 6-7, final paragraph through first paragraph; pg. 19, second paragraph; pg. 27, lines 21-26).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Cai to incorporate the applying heat and pressure using a heated roller or equivalent continuous contact method of Longinotti-Buitoni. PHOSITA would have realized that Cai already applies heat in the cited method and that pressure can be easily and readily incorporated in that method to achieve the desired adhesion, diffusion bond, and resultant conductivity, as noted in the cited portions of Cai. Moreover, there is no indication in the instant disclosure that any special heated roller or equivalent continuous contact method (or that any “equivalent continuous contact method” was even used at all, given that this limitation finds no support in the original disclosure) was devised or that any surprising results were derived from simply using the old method of Cai with the well-known roller, and heating and pressing of Longinotti-Buitoni. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 3, Cai in view of Longinotti-Buitoni teaches the method of claim 1 as detailed above, and Cai further discloses that the surface treatment comprises at least one of heat and solvent softening of the top surface of the print media layer (heat and solvent are applied: pars. 0028-0029 and 0043).
Regarding claim 10, Cai in view of Longinotti-Buitoni teaches the method of claim 1 as detailed above, and Cai further discloses that the surface treatment comprises applying a solvent to the top surface, allowing the solvent time to swell a thickness of the top surface effective for a portion of the binder and conductive particulate of the elastic conductive ink to infiltrate into the thickness of the top surface during the step of forming a diffusion bond (pars. 0028-0029 and 0045). It is naturally expected and understood that when a surface is subjected to swelling, it must become less dense and therefore must cause softening of that surface. This is routine knowledge to POSITA.
Regarding claim 12, Cai in view of Longinotti-Buitoni teaches the method of claim 10 as detailed above, and Cai further discloses that the solvent comprises an organic solvent (glycercol: par. 0028).
Regarding claim 13, as best understood, Cai in view of Longinotti-Buitoni teaches the method of claim 10 as detailed above, and Cai further discloses that the solvent is selected to cause (but is not actually required “to cause”, as this is not a positively recited step) partial polymer swelling at of the top surface to form a softened surface layer without full dissolution by the solvent of the print media layer, enabling binder and conductive particulate infiltration of the elastic conductive ink into the softened surface layer (par. 0045).
NOTE: this “solvent is selected to” limitation is not at all a positively recited step of the method, but instead is an intended capability of a solvent which was selected. There is nothing in this claim which defines an actual step of the method. The applicant is respectfully advised that where a prior art apparatus is identical or substantially identical in structure, claimed properties or functional characteristics are presumed to be inherent, and a prima facie case of either anticipation or obviousness has been established. Accordingly, the solvent of Cai is found to be capable of performing the intended but unclaimed function, based upon its natural material properties.
Regarding claim 14, as best understood, Cai in view of Longinotti-Buitoni teaches the method of claim 10 as detailed above, and Cai further discloses that the solvent is selected to soften or partially dissolve (but does not actually soften or partially dissolve, because this is not a positively recited step) the top surface of the adhesive print media layer to promote interfacial mixing between the softened surface layer of the print media and with the deposited elastic conductive ink (par. 0045).
NOTE: see “NOTE” above with respect to claim 13 as it is applicable in the same manner to claim 14.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Cai in view of Longinotti-Buitoni, further in view of Isen et al. (US 5,656,081).
Regarding claim 2, Cai in view of Longinotti-Buitoni teaches all of the elements of the current invention as detailed above with respect to claim 1. Cai further discloses that the adhesive print media layer is provided as a material on a carrier substrate (12) (par. 0021); and performing the surface treatment to the top surface, depositing of the elastic conductive ink and forming the diffusion bond are done sequentially (see claim 1). Cai, however, does not explicitly disclose the adhesive print media layer is provided as a roll of material; and performing the surface treatment to the top surface, depositing of the elastic conductive ink and forming the bond are done in a roll-to-roll process.
Isen teaches that it is well known to perform a related method, including providing an adhesive print media layer as a roll of material (at printing station 1), treating the surface (with heat at dryer, 62), depositing an elastic conductive ink (at printing station 2) and forming the bond (at stations 7-8) are done in a roll-to-roll process (fig. 5; col. 8, lines 1-29; cols. 9-10, lines 35-67 and 1-10).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Cai to incorporate the use of roll-to-roll manufacturing of Isen. PHOSITA would have realized that web manufacturing techniques can be easily and readily used in the formation of flexible and stretchable printed circuits to achieve the desired resilience, accurate placement of circuit lines and resistance to deleterious effects such as material flexing and stretching. Moreover, there is no indication in the instant disclosure that any special machine or step was devised or that any surprising results were derived from simply using the old method of Cai with the well-known roll-to-roll manufacturing techniques of Isen. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cai in view of Longinotti-Buitoni, further in view of Lochtman et al. (US 20100009094 A1).
Regarding claim 15, Cai in view of Longinotti-Buitoni teaches all of the elements of the current invention as detailed above with respect to claim 10. The modified Cai, however, does not appear to teach that the solvent includes at least one of Dichloromethane (CH2 C12), Dimethyl formamide (C3 H7 NO) and Methanol (CH3 OH).
Lochtman teaches that it is well known to use methanol as the preferred solvent (par. 0042).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Cai to incorporate the methanol of Lochtman, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. PHOSITA would have realized that a number of known solvents, including the commonly used and well understood methanol, can be easily and readily substituted to achieve the desired solvation, swelling, softening and/or diffusion bonding. Moreover, there is no indication in the instant disclosure that any special material was devised or that any surprising results were derived from simply using the old method of Cai with the well-known solvent of Lochtman. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Cai in view of Longinotti-Buitoni, further in view of Longinotti-Buitoni (US 2014/0318699 A1; hereinafter “Longinotti-Buitoni(2)”).
Regarding claim 16, Cai in view of Longinotti-Buitoni teaches all of the elements of the current invention as detailed above with respect to claim 1. Cai further discloses that the adhesive print media layer can contain urethane (par. 0037). The modified Cai, however, does not appear to teach that the adhesive print media layer comprises a polyurethane.
Longinotti-Buitoni(2) teaches that it is well known to perform a similar method of making an electrode for a wearable electronic (Title; Abstract; par. 0150), comprising: providing an adhesive print media layer (1001); performing a surface treatment (applying the conductive ink which contains 3-7% solvent) to a top surface of the print media layer; depositing an elastic conductive ink (1003) onto the print media layer, wherein the elastic conductive ink comprises a conductive particulate disposed in a binder (figs. 10A-10C; pars. 0336-0338 and 0390); and forming a diffusion bond between the top surface of the print media layer and the elastic conductive ink, wherein the diffusion bond forming is facilitated by the surface treatment (pars. 0108, 0341); wherein the adhesive print media layer comprises a polyurethane (pars. 0377-0382).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Cai to incorporate the polyurethane of Longinotti-Buitoni(2) since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. PHOSITA would have realized that a number of known urethanes, including the commonly used and well understood polyurethane, can be easily and readily employed in the adhesive print media layer of Cai to achieve the desired adhesion and/or peelability. Moreover, there is no indication in the instant disclosure that any special polyurethan was devised or that any surprising results were derived from simply using the old method and urethane of Cai with the well-known polyurethane of Longinotti-Buitoni(2). This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Cai in view of Longinotti-Buitoni, further in view of Cho et al. (WO 2012/015263).
Regarding claim 17, Cai in view of Longinotti-Buitoni teaches all of the elements of the current invention as detailed above with respect to claim 1. The modified Cai, however, does not explicitly disclose that the adhesive print media layer comprises a polymer chain including ethyl carbamate C3H7NO2.
Cho teaches that it is well known to use a polymer chain including ethyl carbamate C3H7NO2 in a media layer (pg. 4, par. 4; pg. 5, par. 2).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have further modified the invention of Cai to incorporate the preferred polymer material of Cho, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. PHOSITA would have realized that selecting the preferred material would be a routine matter to achieve the desired adhesion and/or conductive layer diffusion. Moreover, there is no indication in the instant disclosure that any special polymer was devised or that any surprising results were derived from simply using the old method of Cai with the well-known ethyl carbamate of Cho. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Response to Arguments
Applicant's arguments filed 10/03/2025 have been fully considered but they are not persuasive. The applicant has repeatedly argued limitations which are not claimed in any manner. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the adhesive backed polyurethan layer, silver, carbon, dispersal in a binder, molecular interpenetration, integration at a material level, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Please keep arguments to the actually claimed limitations.
Further, Applicant has yet again provided piecemeal arguments, attacking the Cai reference for limitations which it is not relied upon to teach and asserting that Cai is not intended to produce a product which is intended to be used in the manner preferred by the applicant. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Next, the Applicant has yet again argued that Cai does not produce a product with the intended capabilities of the product produced in the instant invention. The intended capabilities of the product are simply not germane as they have not been shown to affect the steps of the actually claimed method in any manner whatsoever. Please understand that the method of manufacture is not defined by or dependent upon the manner in which the product may or may not be intended to be used or its intended capabilities. Further, and perhaps more importantly, the product of Longinotti-Buitoni is explicitly and expressly disclosed as being intended exactly for the intended functions/capabilities argued. As such, the argument is moot because it is not relevant to the claimed method, and because the prior art cited clearly teaches the capability of the product intended to be formed. The product of Longinotti-Buitoni is a conductive garment, which is absolutely capable of being stretched, as there is literally no fabric ever made which isn’t stretchable, and it is clearly the intent of Longinotti-Buitoni that the conductors would still function after the material is naturally stretched, otherwise the entire invention of Longinotti-Buitoni would be pointless to make.
Applicant continues by arguing more limitations which were not claimed (e.g. the entire electrode stack, a Robust Exposed Electrode Printing (REEPTM) process). Respectfully, these limitations are not claimed, and the arguments thereto are thus irrelevant.
None of the Applicants arguments are found to be compelling as they are all reductive, conclusory statements of opinion and are not drawn to evidence or proof that the cited prior art does not teach the actual limitation of the claimed method of manufacture.
Regarding claim 2, applicant incorrectly argues that “neither Cai nor Longinotti-Buitoni teaches or suggests the use of an adhesive print media layer, nor do they disclose or enable the formation of a diffusion bond facilitated by surface treatment”. This mere allegation completely ignores the applied prior art rejection and cited portions of Cai and Longinotti-Buitoni, wherein it is abundantly clear that these limitations were taught by the prior art. Applicant next asserts that “the roll-to-roll implementation of claim 2 is not a mere design choice or optimization, but instead a non-obvious extension of a novel, interfacially engineered process that has no analog in the cited art”. The examiner did not in any way state that the step of claim 2 is a design choice, and thus the argument is moot. Further, a proper rationale for combination of references has been provided, and it is clear that there certainly is an “analog in the cited art”, specifically in Isen as cited above. Next, Applicant provides yet another piecemeal argument against the applicability of Isen and asserts Isen is nonanalogous art. Respectfully, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or (in this instance, the field is manufacture of electronics in a roll-to-roll process, clearly disclosed by Isen), if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
The applicant then provides yet another improper piecemeal argument stating that “the skilled artisan would not have had a reasonable expectation of success in applying Isen's roll-to-roll framework to Cai's inkjet methods, particularly since Cai's deposition techniques and substrate selections are fundamentally incompatible with adhesive- based interfacial chemistry and diffusion bonding. Cai's conductive inks are designed to rest atop inert substrates and cure thermally-not to penetrate and interlock with a chemically prepared adhesive interface as required in the claimed method.” This is not a proper argument and is also incorrect. Cai explicitly discloses performing a surface treatment (heating: par. 0042; applying solvent, glycercol: par. 0028) to a top surface of the print media layer; depositing an elastic conductive ink (16) onto the print media layer, wherein the elastic conductive ink comprises a conductive particulate (silver nanoparticles) disposed in a binder (2-pyrrolidone, water, other carrier fluid: pars. 0028 and 0043); and forming a diffusion bond between the top surface of the print media layer and the elastic conductive ink, wherein the diffusion bond forming is facilitated by the surface treatment (pars. 0028-0029, 0045). One cannot simply ignore the factual evidence of the prior art in order to assert a conclusory, overly reductive and opinion based argument. The Cai reference uses solvent to soften the surface, and then uses conductive adhesive ink in an explicitly disclosed “diffusion” (par. 0045) bond. The combination rejection is proper and appropriate rationale has been provided.
Applicant then yet again argues limitations which are not claimed, asserting “Claim 2 is not simply about passing materials through rollers-it is about integrating a sequence of chemically and physically transformative operations within an R2R line in a way that enables the formation of a diffusion bond that yields a skin-interfacing, elastic, electrically conductive structure. That level of integration-especially involving precise solvent control, surface preparation, elastic ink rheology, and interface engineering”. These limitations are not claimed as argued and thus the argument is moot and not compelling.
Next, Applicant argues that claim 15 is not taught by Lochtman, and states that Lochtman does not teach the selected solvent but then contradicts that statement by saying that Lochtman does disclose the solvents selected, but isn’t obvious to combine. Please refer to the guidance on piecemeal arguments, yet again, as noted above. Further, the applicant has provided absolutely no evidence in the original disclosure that any surprising results came from using the old and well-known solvents of Lochtman, in the exact manner of use as indicated in Cai and Lochtman, and thus the assertion of “experimental insight” is not compelling and is an argument formulated well after the invention application was filed, and finds no support in the original disclosure.
The remaining arguments are repetitions of the same themes, arguments about limitations which are not claimed, piecemeal arguments against individual references, allegations of patentability, and outright contradictions (e.g. admitting that Longinotti-Buitoni(2) discloses the claimed polyurethane material selection, but that because it is not taught in conjunction with the method steps, is somehow not applicable). Longinotti-Buitoni(2) is not relied upon to teach those argued method steps, thus the argument is moot.
Further, applicant argues the purported advantages of the materials chosen with respect to claims 16 and 17. In response to applicant’s arguments that the prior art fails to provide the many (unclaimed) advantages of the product of the actually claimed method invention, the applicant is advised that arguments related to the cited Prior Art not recognizing, or solving, the problems solved by the claimed invention, are not germane to a prior art rejection, especially since the purported advantages are directed to the properties of the product and have literally nothing to do with the method of manufacture, which is what was actually claimed. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims. In this instance, the references are not even directed to an entirely different problem but are directed to the exact same problem, i.e. the manufacture of electronics and specifically wearable electronics.
According to the updated prior art rejections and the response to arguments herein, each and every limitation of the claimed method of manufacture (not a product), have been shown to be taught by the prior art and every argument on the merits has been answered.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Jur et al. (US 10064270 B2) is held to be of particular relevance to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729