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 Amendment filed November 10, 2025 has been entered. Currently, claims 11 and 13 have been amended, claims 15-20, and 23 have been cancelled, claims 24-29 have been newly added, and claim 1-2, 5-14, 21-22, and 24-29 are pending in the application.
Claim Objections
Claim 11 is objected to because of the following informalities: the phrase “a ball with diameter” is recommended to be amended to “a ball with a diameter”. Appropriate correction is required. Claims 12-14, and 22 are also objected to because they are dependent on claim 11.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 24-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites the limitation "the bottom" in line 8. There is insufficient antecedent basis for this limitation in the claim. Claims 25-29 are also rejectedbecause they are dependent on claim 24.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 9, 24, 26, and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mintz (U.S. Application No. 20070255127 A1).
Regarding independent claim 1, Mintz discloses a semi-dry electrode (100) comprising:
a reservoir (118b) configured to hold a conductive gel (118a) (pa. 0033 & Fig. 1);
a ball (120) formed from a first conductive material (pa. 0034);
a holder (103) formed from a second conductive material and configured to rotatably retain the ball within the holder and in contact with the reservoir (pa. 0033); and
a lead (104) conductively connected to the holder (pa. 0037), wherein the reservoir is sealed (pa. 0035; i.e., in the embodiment in which the reservoir is sealed once the top of the probe (118) is closed after replenishing the gel), wherein the conductive gel contained in the reservoir is under pressure (pa. 0033, 0038).
Examiner is interpreting the gel contained in the reservoir to be under the pressure applied by the ball as the spring (106) pushes down on the probe towards a user’s scalp in order to roll the ball and release the conductive gel.
Regarding claim 2, Mintz discloses wherein the reservoir contains the conductive gel (pa. 0034).
Regarding claims 9 and 28, Mintz discloses wherein the reservoir and the holder are a single unit formed from the same (electrically conductive) material (pa. 0033).
Examiner highlights the structural connection of the holder (103) and the reservoir (118b) forms a single unit within the broadest reasonable interpretation of the structure required by the limitation of “unit” and that such are formed of the same material (pa. 0033).
Regarding independent claim 24, Mintz discloses a semi-dry electrode (100) comprising:
a reservoir (i.e., space inside probe 118b) configured to hold a conductive gel (118a) (pa. 0033 & Fig. 1);
a ball (120) formed from a first conductive material (pa. 0034);
a holder (i.e., outer walls of probe 118b) formed from a second conductive material and comprising a ball-retaining structure (103) configured to rotatably retain the ball within the holder and in contact with the reservoir (pa. 0033), wherein a majority of the ball-retaining structure is located within the reservoir, wherein the majority of the ball is recessed within the holder such that the bottom of the holder other than the ball-retaining structure is flat without a tip (See Fig. 1).
Examiner will be interpreting the bottom of the holder to be the bottom-most surface of the outer walls of probe 118b (as represented by the dashed line in the annotated Fig. 1 below), excluding the ball-retaining structure 103.
Mintz further discloses a lead (104) conductively connected to the holder (pa. 0037), and
electronics (206) conductively connected to the lead (pa. 0040).
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Regarding claim 26, Mintz discloses wherein the wearable EEG monitoring device is configured such that when worn by a user the semi-dry electrode contacts a temple of the user (pa. 0039-0040 & Fig. 2).
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mintz, as applied to claim 1 above, and further in view of Jeong (U.S. Application No. 20190231235 A1).
Regarding claim 5, Mintz discloses the invention substantially as claimed in
claim 1 and discussed above.
However, Mintz does not disclose wherein the conductive gel is chloride gel.
Jeong, in the same field of endeavor, teaches an electronic device (301) for obtaining biometric information (pa. 0101 & Fig. 3), comprising multiple electrodes (361, 362, 371, 370) coupled to an electrolyte layer (pa. 0107), wherein the electrolyte layer (i.e., the conductive gel) contains chloride ions (pa. 0103).
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 of the conductive gel of Mintz with the conductive chlorine ions of Jeong since they both known equivalents in the art and they yield the same end results of facilitating the detection of biometric information by increasing the magnitude of an electrical signal (Jeong, pa. 0107).
Regarding claim 6, Mintz discloses the invention substantially as claimed in
claim 1 and discussed above.
However, Mintz does not disclose wherein the first conductive material of the ball comprises silver/silver chloride.
Jeong, in the same field of endeavor, teaches electrodes made of silver/silver chloride (pa. 0148).
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 of the electrode of Mintz with silver as taught by Jeong since they both provide the same functionality and would yield the same end result of facilitating the detection of biometric information when applied to the surface a user’s head (Jeong, pa. 0072).
Claims 7, 10, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Mintz as applied to claims 1 and 24 above, and further in view of Pei (C.N. Application No. 111281380 A).
Regarding claim 7, Mintz discloses the invention substantially as claimed in
claim 1 and discussed above.
However, Mintz does not disclose wherein a diameter of the ball is about 1.5 - 2.5 millimeters.
Pei, in the same field of endeavor, teaches an electroencephalogram cap comprising a plurality of circular electroencephalogram dry electrodes (1) (see Fig. 1) and a plurality of slender support rods (2), wherein a diameter of the electrodes are about 1.5 - 2.5 millimeters (page 4, paragraphs 4, 6-7 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 size of the ball because the small size allows for good contact and convenient penetration of hair when used (Pei, page 3, paragraph 8).
Regarding claim 10, Mintz discloses the invention substantially as claimed in
claims 1 and 9 and discussed above.
However, Mintz does not disclose wherein the holder forms an elongated cylinder with an external diameter of about 3 - 5 mm.
Pei, in the same field of endeavor, teaches the support rods (i.e., the holder) having an external diameter in a range of 1 – 2 mm but fails to explicitly recite the claimed 3 – 5 mm diameter.
It is the Examiner’s position that it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified the size external diameter of the support rods of Mintz to have an external diameter of about 3 – 5mm as claimed in view of the general size range set forth in Pei.
It is the Examiner’s position that the selection of a support road diameter of about 3-5 mm would have been an obvious consideration to one of ordinary skill in the art given that it is well established that a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Specifically, the claimed range utilizing a lower end value of about 3mm would encompass values from 2.7 – 3.3 mm in light of the teaching in [0028] that the term “about” encompassed variances of ±10%. Accordingly, the Examiner is of the position that the upper end of the limitation of 2 mm in Pei would be reasonably close to the bottom end of the claimed range and, thus, would represent an obvious consideration to one of ordinary skill.
Additionally, the Examiner is of the position that modification of the diameter of the support rods of Mintz in view of the teaching of Pei to arrive at a diameter of “about 3 – 5 mm” would have been an obvious consideration since it is well established that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In this scenario, Pei, again, provides for a diameter of its support rods that are reasonably close to those of the instant claim such that one skilled in the art would have expected them to have the similar outcome of allowing a holder to hold a ball electrode while providing for the requisite contact of the ball electrode to the scalp of the user/patient.
Regarding claim 25, Mintz discloses the invention substantially as claimed in
claims 1 and 9 and discussed above.
However, Mintz does not disclose wherein a width of the bottom of the holder is at least three times a diameter of the ball.
Pei, in the same field of endeavor, teaches an electroencephalogram cap comprising a plurality of circular electroencephalogram dry electrodes (1) (see Fig. 1) and a plurality of slender support rods (2), wherein a diameter of the electrodes are about 1 millimeter (page 4, paragraphs 4, 6-7 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 size of the ball because the small size allows for good contact and convenient penetration of hair when used (Pei, page 3, paragraph 8).
Furthermore, Pei teaches the support rods (i.e., the holder) having an external diameter in a range of 1 – 2 mm but fails to explicitly recite the claimed width that is three times (i.e., at least 3mm) the diameter of the ball.
It is the Examiner’s position that it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified the size external width of the bottom of the holder of Mintz to have an external diameter of about 3 mm as claimed in view of the general size range set forth in Pei.
It is the Examiner’s position that the selection of a bottom of the holder width of about 3 mm would have been an obvious consideration to one of ordinary skill in the art given that it is well established that a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Specifically, the claimed range utilizing a lower end value of about 3mm would encompass values from 2.7 – 3.3 mm in light of the teaching in [0028] that the term “about” encompassed variances of ±10%. Accordingly, the Examiner is of the position that the upper end of the limitation of 2 mm in Pei would be reasonably close to the bottom end of the claimed range and, thus, would represent an obvious consideration to one of ordinary skill.
Additionally, the Examiner is of the position that modification of the width of the bottom of the holder of Mintz in view of the teaching of Pei to arrive at a width “three times a diameter of the ball” would have been an obvious consideration since it is well established that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In this scenario, Pei, again, provides for a diameter of its support rods that are reasonably close to those of the instant claim such that one skilled in the art would have expected them to have the similar outcome of allowing the bottom of the holder to hold a ball electrode while providing for the requisite contact of the ball electrode to the scalp of the user/patient.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mintz as applied to claim 1 above, and further in view of Liao (U.S. Application No. 20110074396 A1).
Regarding claim 8, Mintz discloses the invention substantially as claimed in
claim 1 and discussed above.
However, Mintz does not disclose wherein the second conductive material of the holder comprises silver.
Liao, in the same field of endeavor, teaches an electrode structure of a biosensor comprising a conductive substrate (1) and a plurality of conductive probes (2) protruding from the conductive substrate and configured for contacting a subject and receiving a physiological electric wave signal (pa. 0020 & Fig. 1), wherein the material of the conductive substrate (i.e., the holder) comprises silver (pa. 0021).
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 material of the conductive holder to Mintz with the silver because they both provide the same functionality with the same end result of facilitating the detection of biometric information when applied to the surface a user’s head.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Mintz as applied to claim 1 above, and further in view of Watson (U.S. Application No. 20190192030 A1).
Regarding claim 21, Mintz discloses a mechanical system of pressuring the conductive gel, and that the device may use any suitable mechanism or device in doing so (pa. 0038).
However, Mintz does not disclose pressuring the conductive gel using a pressurized gas at a pressure that is greater than atmospheric.
Watson, in the same field of endeavor, teaches an electroencephalogram (EEG) system comprising a plurality of wet sensors including a housing defining a chamber/reservoir capable of storing a gel and a gel dispense element (1224) (pa. 0136, 0139 & Fig. 12). The gel dispense element can use a variety of different mechanisms to dispense gel to the user's scalp, including a mechanical mechanism that uses force to retract and extend a probe into a housing storing conductive gel or via a series of pumps/actuators (pa. 0139), or in a different embodiment the reservoir (1302) can be pressurized via a pressurized gas that is introduced by a gas source (1401) in order to facilitate dispensing the gel through the aperture (pa. 0152-0153 & Fig. 14). Moreover, it is known in the art that a pressurized gas typically has a greater pressure than atmospheric pressure since the gas that has been compressed or otherwise subjected to a higher pressure (i.e., forcing the gas into a smaller volume) than atmospheric pressure.
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 mechanical mechanism of pressurizing the conductive gel as taught by Mintz with pressurized gas using the gas source of Watson since they both are known equivalents which would yield the same predictable results of dispensing a conductive gel from a reservoir.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mintz (U.S. Application No. 20070255127 A1), in view of Sridhar (U.S. Application No. 20160120432 A1), in view of Liao (U.S. Application No. 20110074396 A1), and further in view of Berezhnyy (W.O. Application No. 2012153263 A1)
Regarding independent claim 11 and claim 13, Mintz discloses a system comprising:
a wearable electroencephalography (EEG) monitoring device (200) comprising a plurality of semi-dry electrodes (100) (pa. 0039, 0049 & Figs. 1-2),
each semi-dry electrode comprising:
a reservoir (118b) configured to hold a conductive gel (118a) (pa. 0033 & Fig. 1);
a ball (120) formed from a conductive material (pa. 0034);
a holder (103) formed from a conductive material and configured to rotatably retain the ball within the holder and in contact with the reservoir (pa. 0033); and
a lead (104) conductively connected to the holder (pa. 0037).
However, Mintz does not disclose a brain-computer interface (BCI), nor the ball is formed from a silver/silver chloride material, nor an amplifier conductively connected to the respective leads of the plurality of semi-dry electrodes, nor a computing device communicatively connected to the amplifier as user input, wherein the computing device comprises specialized hardware implementing a brain-computer interface platform configured to control aspects of operation of the computing device.
Sridhar, in the same field of endeavor, teaches a sensor assembly (20) supporting a plurality of individual electrodes (34) having a suitable configuration for making good electrical contact with the scalp (pa. 0045 & Figs. 1-2). Each electrode is in the form of an electrically conductive pin (35) formed with a silver core and a Ag/Cl coating on the surface to prevent or minimize DC polarization at the scalp-electrode interface (pa. 0045).
Furthermore, each electrode is electrically connected to an associated amplifier (44), wherein the output of each amplifier is fed into an associated analog to digital converter (ADC) (46), which in turn transmits the digital signal to a microcontroller (50) for further data processing (pa. 0049 & Fig. 6).
Lastly, the sensor assembly is in communication with brain-computer interfaces systems (pa. 0077). A computing device (85, 82) is communicatively connected to the amplifier as user input (i.e., the signals sensed by the electrodes and amplified by the amplifier) (pa. 0079), wherein the computing device comprises specialized hardware (i.e., processors) implementing a brain-computer interface platform configured to control aspects of operation of the computing device (pa. 0081-0082). In other words, the brain-computer interface platform receives the signals from the system's sensors placed on the user's scalp and then provides the amplified signals as input to the processor which generates an output used to control an external device.
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 added the amplifier of Sridhar to the device of Mintz for the purpose of amplifying voltage differentials between multiple electrode inputs, and it would have been obvious to substitute the conductive material of the ball of Mintz with the silver core and a Ag/Cl coating taught by Sridhar in order to prevent or minimize DC polarization at the scalp-electrode interface.
Additionally, 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 incorporated a brain-computer interface (BCI) because it expands the application range of the electrode, such as providing significant information on brain states or controlling external devices.
However, Mintz/Sridhar combination do not teach the ball having a diameter of about 1.5 -2.5 millimeters, nor the holder formed from a silver material.
Liao, in the same field of endeavor, teaches a biosensor comprising conductive probes (2) protruding from a conductive substrate (1) (pa. 0020 & Fig. 1), wherein a diameter of the electrode is 1 mm (pa. 0024) and the conductive substrate is made of silver (pa. 0021).
It is the Examiner’s position that the selection of the conductive probe diameter of 1 mm would have been an obvious consideration to one of ordinary skill in the art given that it is well established that a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Specifically, the claimed range utilizing a lower end value of 1.5 mm would encompass values from 1.35 – 1.65 mm in light of the teaching in [0028] that the term “about” encompassed variances of ±10%. Accordingly, the Examiner is of the position that the upper end of the limitation of 1 mm in Liao would be reasonably close to the bottom end of the claimed range and, thus, would represent an obvious consideration to one of ordinary skill.
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 modified the size of the ball of Mintz to the diameter taught by Liao in order to provide good measuring results when placed at an area with thick hair (Liao, pa. 022).
Moreover, 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 of the holder of Mintz with the silver material as taught by Liao since this material may enhance conduction and prevent allergic response of the skin (Liao, pa. 0025).
However, Mintz/Sridhar/Liao combination do not teach wherein the amplifier is configured to amplify signals from the respective leads to provide 60-100 dB of voltage gain.
Berezhnyy, in the same field of endeavor teaches a plurality of EEG electrodes (12) and reference electrodes electrically connected to an amplifier (52) configured to amplify the signals from the respective electrodes (page 4, lines 18-22; page 5, lines 5-10 & Figs. 1, 5A-5B), wherein the amplifier is configured to amplify the voltage difference between the EEG electrode and the reference (typically 1,000-100,000 times, or 60-100 dB of voltage gain) (page 8, lines 33-34).
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 voltage gain of the amplifier for the purpose of increasing the amplitude of the EEG signals.
Claims 14 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Mintz, Sridhar, Liao, and Berezhnyy as applied to claim 11, and further in view of Connor (U.S. Patent No. 9814426 B2).
Regarding claim 14, Mintz/Sridhar/Liao/Berezhnyy combination discloses the invention substantially as claimed in claim 11 and discussed above.
However, they do not disclose wherein the wearable EEG monitoring device comprises a head-mounted display (HMD) device, glasses, headphones, or earbuds.
Connor, in the same field of endeavor, teaches a mobile wearable EEG monitoring device comprising a plurality of electrodes held with a plurality of bands/straps wrapped around a person’s head/face (i.e., over the temples above the ears, as seen in Figures 7-8, and over a nose bridge as seen in Figure 21) (Col. 65, lines 65-67 – Col. 66, line 1; Col. 66, lines37-39; Col. 76, lines 38-44).
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 semi-dry electrode of Mintz to incorporate the glasses system of Connor for the purpose of increasing the range of electrodes placed on the user’s head.
Regarding claim 22, Mintz/Sridhar/Liao/Berezhnyy combination discloses the invention substantially as claimed in claim 11 and discussed above.
However, they do not teach the wearable EEG monitoring device is glasses and the glasses are configured to hold the electrodes in contact with the skin of a user at a nose bridge or temples above the ears.
Connor, in the same field of endeavor, teaches a mobile wearable EEG monitoring device comprising a plurality of electrodes held with a plurality of bands/straps wrapped around a person’s head/face (i.e., over the temples above the ears, as seen in Figures 7-8, and over a nose bridge as seen in Figure 21) (Col. 65, lines 65-67 – Col. 66, line 1; Col. 66, lines37-39; Col. 76, lines 38-44).
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 configuration of the EEG monitoring device of Mintz with the glasses device taught by Connor for the purpose of increasing the range of electrodes placed on the user’s head.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Mintz, as applied to claim 24 above, and further in view of Connor (U.S. Patent No. 9814426 B2).
Regarding claim 27, Mintz discloses the invention substantially as claimed in
claim 24 and discussed above.
However, Mintz does not disclose wherein the wearable EEG monitoring device is a watch or activity band device.
Connor, in the same field of endeavor, teaches a brain activity monitor and system (103) which can provide feedback to a person via a visual, auditory, or tactile computer-to-human interface (Col. 35, lines 14-16), wherein the feedback can be conveyed through a physically-separate device such as a smart phone, smart watch, smart wrist band (Col. 35, lines 22-24). In an example, an interface for providing feedback can be part of a wearable EEG monitor itself (Col. 35, lines 31-35).
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 configuration of the EEG monitoring device of Mintz to be configured to be watch, as taught by Connor, in order to provide a convenient method for the user to carry/wear the EEG electrodes.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Mintz, as applied to claim 24 above, and further in view of Sridhar (U.S. Application No. 20160120432 A1).
Regarding claim 29, Mintz discloses the invention substantially as claimed in
claim 24 and discussed above.
However, Mintz does not disclose wherein the electronics comprise an Analog-to-Digital Converter (ADC).
Sridhar, in the same field of endeavor, teaches a sensor assembly (20) supporting a plurality of individual electrodes (34) having a suitable configuration for making good electrical contact with the scalp (pa. 0045 & Figs. 1-2). Each electrode is electrically connected to an associated amplifier (44), wherein the output of each amplifier is fed into an associated analog to digital converter (ADC) (46), which in turn transmits the digital signal to a microcontroller (50) for further data processing (pa. 0049 & Fig. 6).
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 added the ADC of Sridhar to the device of Mintz for the purpose of allowing the transmission of the digital signal representative of the potential difference for further data processing (Sridhar, pa. 0049).
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
With regards to claim 1, Applicant argues that the Mintz reference does not disclose a sealed reservoir. Specifically, Applicant points to the two embodiments taught in Mintz, where “the conductive probe 118b will be replaceable in order to easily replenish the reservoir of electrically conductive gel 118a. Alternatively, a top portion of the conductive probe 118b can be removed to allow a user to refill the reservoir", and uses this to highlight how in both scenarios, the reservoir is user-accessible. However, Examiner, respectfully, disagrees.
Mintz describes two separate embodiments, one where the user is able to fully replace/totally discard the entire distal section of conductive probe (118b) once the gel is depleted, and a second embodiment where the user is able to remove a top of the probe to refill the reservoir. It is Examiner’s stance that the second embodiment, Mintz’s reservoir is sealed in such a way in view of [0035] the reservoir needs the top be removed to refill the gel and then sealed so that no additional gel is added once the reservoir is replenished. The claim language of claim 1 is still broad and only requires the reservoir to be sealed at least at one point in time, and does not suggest/require that the seal needs to be permanently closed or contain any mechanism which prevents user access to the reservoir once it has been initially sealed. Furthermore, Examiner points to the Specification of the instant application [0027] which describes how even though the reservoir is sealed at the top, the distal portion of the reservoir which includes the holder tip 106 that is in open communication with the ball 102 in order to allow the ball to freely rotate and transfer the conductive gel 112 onto the skin of the user; thereby, providing a reservoir that is not completely sealed. Therefore, the whole argument is unpersuasive since the second embodiment of Mintz fits the claim limitation of the reservoir being sealed (at least at one point in time), so Examiner maintains the rejection set-forth above.
Continuing with claim 1, Applicant argues that the Mintz reference does not disclose, “wherein the conductive gel contained in the reservoir is under pressure”, specifically by describing how the device of Mintz only applies a mechanical pressure to the external portions of the probe and not pressure within the gel. Applicant further cites to paragraphs [0033]-[0036] of Mintz which describes the gel as simply being "contained" in the reservoir, and dispensed through a ball dispenser mechanism that "limits the flow of electrically conductive gel", and that nowhere does Mintz describe applying pressure to the gel itself, whether through gas pressurization, mechanical compression, or any other mechanism. However, Examiner disagrees.
Mintz discloses a combined mechanism which works in tandem in order to release the conductive gel from the reservoir. The spring (106) is attached with the slider (110) to drive the conductive probe (118b) toward the user's scalp and maintain constant pressure of the hemispherical electrical contact surface 112 (with its displaceable shoulder) with the conductive probe and the electrically conductive gel (pa. 0033). In this portion of the disclosure, Examiner agrees that an external pressure (i.e., a downward motion/force) is being/needs to be applied from the proximal end which includes the spring to the distal section of the probe which includes the ball in order to dispense the conductive gel to the head of the user. The second mechanism described is the free-rolling ball dispenser described in paragraph 0034 of the prior art. The ball dispenser does not move/roll unless the external force discussed above acts upon it. In other words, the pressurized force applied to the spring is necessary to move the ball, which in turn dispenses a limited and controlled amount of conductive gel to the user. Therefore, these forces must be present in order to expel the gel from the reservoir (since the gel does not exit the reservoir by the forces of gravity alone). Examiner points to the forces applied to the ball from the spring, which are then redirected to the conductive gel (via the ball) as the pressures applied to the reservoir. Examiner would further like to highlight the fact that any fluid will exhibit, at the minimum, a static pressure against the walls of its container when the fluid is at rest due to the inherent motion of its particles. Lastly, the claim language is still broad enough as to allow the interpretation that any pressure applied to conductive gel (whether it by a gas or the spring/ball dispenser) is sufficient enough to read on the claim limitation. Hence, for all the reasons set-forth above, the rejection is maintained.
With regards to claims 7, 9-10, Applicant argues that the Pei reference does not teach “the holder forms an elongated cylinder with an external diameter of about 3-5 mm”, specifically by citing that the Pei references teaches a ball electrode with the diameter of 1-2mm and a support rod (analogous to the holder) with a diameter of 1~2mm. However, Examiner disagrees.
Although Pei teaches the support rods having an external diameter in a range of 1 – 2 mm and does not explicitly recite the claimed 3 – 5 mm diameter, it is the Examiner’s position that it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified the size external diameter of the support rods of Mintz to have an external diameter of about 3 – 5mm as claimed in view of the general size range set forth in Pei.
It is the Examiner’s position that the selection of a support road diameter of about 3-5 mm would have been an obvious consideration to one of ordinary skill in the art given that it is well established that a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Specifically, the claimed range utilizing a lower end value of about 3mm would encompass values from 2.7 – 3.3 mm in light of the teaching in [0028] that the term “about” encompassed variances of ±10%. Accordingly, the Examiner is of the position that the upper end of the limitation of 2 mm in Pei would be reasonably close to the bottom end of the claimed range and, thus, would represent an obvious consideration to one of ordinary skill.
Additionally, the Examiner is of the position that modification of the diameter of the support rods of Mintz in view of the teaching of Pei to arrive at a diameter of “about 3 – 5 mm” would have been an obvious consideration since it is well established that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In this scenario, Pei, again, provides for a diameter of its support rods that are reasonably close to those of the instant claim such that one skilled in the art would have expected them to have the similar outcome of allowing a holder to hold a ball electrode while providing for the requisite contact of the ball electrode to the scalp of the user/patient.
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.
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/A.V.G./Examiner, Art Unit 3794
/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794