DETAILED ACTION
This action is pursuant to claims filed on 10/20/2025. Claims 1-8, 11, and 21-24 are pending. Claims 9-10 and 12-20 have been cancelled by applicant. A final action on the merits of claims 1-8, 11, and 21-24 is as follows.
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 .
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4-8, 11, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (CN 112315477 A) in view of Brockway et al. (hereinafter ‘Brockway’, US 9414758 B1) and in further view of Lee et al. (hereinafter ‘Lee’, US 10020091 B2).
Regarding independent claim 1, Zhou discloses a thin film epidermal electronic device (device shown in Fig. 1) comprising:
a polymer film ([Page 4 of translation]: flexible substrate 121 made of TPU).
wherein the polymer film comprises conductive nanomaterials embedded throughout ([Page 4 of Translation]: conductive particles are mixed into the TPU throughout, which would embed them just below all of the surfaces of the film);
wherein the conductive nanomaterials are connected to form a network of nanomaterials, thereby causing at least a part of the polymer film to act as an electrode ([Page 4 of translation]: the flexible electrode is made of the flexible substrate with the conductive particles – thus the conductive particles form a network to create an electrode);
wherein the conductive nanomaterials near the top of the polymer film are electrically connected to the conductive nanomaterials located near the bottom of the polymer film via the conductive nanomaterials through the body of the polymer film ([Page 4 of translation]: the conductive particles are dispersed throughout the flexible substrate and forms a sensing electrode; the conductive particles are dispersed throughout the layer as seen in Fig. 2 thus forming an electrical connection from the top of the electrode to the bottom); and
wherein the polymer film is insoluble in water, but soluble in an organic solvent (TPU is inherently insoluble in water and soluble in an organic solvent).
However, Zhou is silent to the polymer layer having one or more pores formed therethrough using a breath figure process.
Brockway teaches a skin contacting electrode apparatus that utilizes an electrically conductive sheet ([Abstract]). The conductive sheet comprises one or more of metal, polymer, or aromatic material ([Col 3, lines 1-4]). Furthermore, the conductive sheet has numerous small pores of less than 500 microns in diameter through which moisture secreted by the skin can breathe and evaporate ([Col 4, lines 51-64]). The pores extend all of the way through the body of the electrode as seen in Fig. 2A. It would be of routine skill in the art to utilize the pores of Brockway with the device of Zhou as it would maintain operability of the device and not lead to any unexpected effects. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the pores of Brockway with the device of Zhou such that pores extend through the polymer substrate to allow for breathability.
While Brockway does not disclose how the pores are formed, the recitation of “formed therethrough using a breath figure process” is regarded as a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the claimed product is a conductive polymer with pores therethrough. This structure is obvious from the combination of Zhou and Brockway as described above. Therefore, the patentability of the does not depend on the method of how the pores are formed.
However, the Zhou/Brockway combination does not disclose the conductive nanomaterials being located on the top, bottom, and surfaces that form the pores of the polymer film which are all electrically connected.
Based on the specification of the instant application, located the fibers on the surfaces of the device is accomplished by dip coating. While the specification states the nanomaterials are embedded by the process, which would be disclosed by Zhou, the dip-coating process is interpreted as providing support for locating the nanomaterials on the respective surfaces.
Lee teaches a conductive composite formed of a polymer matrix and conductive materials dispersed throughout ([Abstract]). The polymer matrix is a mesh-type structure that contains fibers entangled to form pores formed between ([Col 5, lines 28-46]). In order to disperse the conductive nanomaterial throughout the polymer matrix is accomplished by dip-coating ([Col 10, lines 49-54]). Dipping allows for the conductive nanomaterials to be dispersed on the surface and also dispersed throughout all of the pores inside such that when dried the conductive nanomaterials are dispersed in the polymer matrix and combined through all regions from the surface to the inside of the polymer matrix ([Col 10, line 49-Col 11, line 10]). The dispersion of the conductive nanomaterials on the surfaces and throughout the pores thus form a conductive network throughout from each surface through the pores. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to dip coat the polymer layer of the Zhou/Brockway combination to ensure that the conductive nano-materials are consistently dispersed on the surfaces and through the pores of the polymer matrix forming an electrical connection between the top and bottom surfaces through the pores.
Regarding claim 2, the Zhou/Brockway/Lee combination discloses the thin film epidermal electronic device of claim 1, wherein the polymer film comprises thermoplastic polyurethane (TPU) ([Page 4 of translation]: the polymer substrate is TPU).
Regarding claim 4, the Zhou/Brockway/Lee combination discloses the thin film epidermal electronic device of claim 1, wherein the conductive nanomaterials comprise silver nanowires (AgNWs) or carbon nanotubes ([Page 2 of Translation]: the nanomaterials are nano-silver or nano-carbon tubes).
Regarding claim 5, the Zhou/Brockway/Lee combination discloses the thin film epidermal electronic device of claim 1. The combination further teaches wherein the thin film epidermal electronic device is gas permeable (the pores of the combination would inherently make the device gas permeable as the gas is capable of permeating through the pores through the device).
Regarding claim 6, the Zhou/Brockway/Lee combination discloses the thin film epidermal electronic device of claim 1, wherein the thin film epidermal electronic device is configured to be attached to human skin ([Page 2 of translation]: the invention is adapted to be attached to the skin without feeling discomfort), wherein the one or more pores are configured to allow sweat to evaporate from the human skin (the conductive sheet has numerous small pores of less than 500 microns in diameter through which moisture secreted by the skin can breathe and evaporate ([Col 4, lines 51-64])).
Regarding claim 7, the Zhou/Brockway/Lee combination discloses the thin film epidermal electronic device of claim 1. The combination further teaches wherein each of the one or more pores has a diameter of less than 500 µm ([Col 4, lines 51-64]). Additionally, slightly larger pores would function similarly to those of smaller size. While the taught range is larger than the claimed range, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the pore range to between and including 1µm and 100µm, since it has been held 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.
Regarding claim 8, the Zhou/Brockway/Lee discloses the thin film epidermal electronic device of claim 1. The combination further teaches dispersing pores around the electrode surface as seen in Fig. 2B of Brockway. However, the combination is silent to what percentage of the surface area of the device is covered by pores. The instant application does not provide criticality to the 30-50% range and thus it would have been obvious to one having ordinary skill in the art at the time the invention was made to cover 30%-50% of the device in pores, since it has been held 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.
Regarding independent claim 11, Zhou discloses a garment ([Page 5 of translation]: the electrode can be set on a textile) comprising:
a thin film epidermal electronic device (device shown in Fig. 1), wherein the thin film epidermal electronic device includes a polymer film ([Page 4 of translation]: flexible substrate 121 made of TPU);
wherein the polymer film comprises conductive nanomaterials embedded throughout the polymer film ([Page 4 of Translation]: conductive particles are mixed into the TPU throughout, which would embed them just below the surface of the film);
wherein the conductive nanomaterials are connected to form a network of nanomaterials, thereby causing at least a part of the polymer film to act as an electrode ([Page 4 of translation]: the flexible electrode is made of the flexible substrate with the conductive particles – thus the conductive particles form a network to create an electrode);
wherein the conductive nanomaterials near the top of the polymer film are electrically connected to the conductive nanomaterials located near the bottom of the polymer film via the conductive nanomaterials through the body of the polymer film ([Page 4 of translation]: the conductive particles are dispersed throughout the flexible substrate and forms a sensing electrode; the conductive particles are dispersed throughout the layer as seen in Fig. 2 thus forming an electrical connection from the top of the electrode to the bottom); and
wherein the polymer film is insoluble in water, but soluble in an organic solvent (TPU is inherently insoluble in water and soluble in an organic solvent).
However, Zhou is silent to the polymer layer having one or more pores formed therethrough using a breath figure process.
Brockway teaches a skin contacting electrode apparatus that utilizes an electrically conductive sheet ([Abstract]). The conductive sheet comprises one or more of metal, polymer, or aromatic material ([Col 3, lines 1-4]). Furthermore, the conductive sheet has numerous small pores of less than 500 microns in diameter through which moisture secreted by the skin can breathe and evaporate ([Col 4, lines 51-64]). The pores extend all of the way through the body of the electrode as seen in Fig. 2A. It would be of routine skill in the art to utilize the pores of Brockway with the device of Zhou as it would maintain operability of the device and not lead to any unexpected effects. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the pores of Brockway with the device of Zhou such that pores extend through the polymer substrate to allow for breathability.
While Brockway does not disclose how the pores are formed, the recitation of “formed therethrough using a breath figure process” is regarded as a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the claimed product is a conductive polymer with pores therethrough. This structure is obvious from the combination of Zhou and Brockway as described above. Therefore, the patentability of the does not depend on the method of how the pores are formed.
However, the Zhou/Brockway combination does not disclose the conductive nanomaterials being located on the top, bottom, and surfaces that form the pores of the polymer film which are all electrically connected.
Based on the specification of the instant application, located the fibers on the surfaces of the device is accomplished by dip coating. While the specification states the nanomaterials are embedded by the process, which would be disclosed by Zhou, the dip-coating process is interpreted as providing support for locating the nanomaterials on the respective surfaces.
Lee teaches a conductive composite formed of a polymer matrix and conductive materials dispersed throughout ([Abstract]). The polymer matrix is a mesh-type structure that contains fibers entangled to form pores formed between ([Col 5, lines 28-46]). In order to disperse the conductive nanomaterial throughout the polymer matrix is accomplished by dip-coating ([Col 10, lines 49-54]). Dipping allows for the conductive nanomaterials to be dispersed on the surface and also dispersed throughout all of the pores inside such that when dried the conductive nanomaterials are dispersed in the polymer matrix and combined through all regions from the surface to the inside of the polymer matrix ([Col 10, line 49-Col 11, line 10]). The dispersion of the conductive nanomaterials on the surfaces and throughout the pores thus form a conductive network throughout from each surface through the pores. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to dip coat the polymer layer of the Zhou/Brockway combination to ensure that the conductive nano-materials are consistently dispersed on the surfaces and through the pores of the polymer matrix forming an electrical connection between the top and bottom surfaces through the pores.
Regarding claim 21, the Zhou/Brockway/Lee combination discloses the invention substantially in claim 1 wherein the polymer film is optically transparent (the polymer film is a TPU film with pores and conductive nanomaterials embedded throughout and optical transparency is a physical property of TPU films with embedded nanoparticles; the polymer film disclosed by the Zhou/Brockway/Lee combination has the same structure as the polymer film of the instant application thus has the same physical properties).
Regarding claim 23, the Zhou/Brockway/Lee combination discloses the invention substantially in claim 11 wherein the polymer film is optically transparent (the polymer film is a TPU film with pores and conductive nanomaterials embedded throughout and optical transparency is a physical property of TPU films with embedded nanoparticles; the polymer film disclosed by the Zhou/Brockway/Lee combination has the same structure as the polymer film of the instant application thus has the same physical properties).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the Zhou/Brockway/Lee combination as applied to claim 2/1 and described above in further view of Lee et al. (hereinafter ‘Lee ‘393’, US 20180271393 A1).
Regarding claim 3, the Zhou/Brockway/Lee combination discloses the invention substantially in claim 2/1 as described above.
However, the combination is silent to the thickness of the polymer film layer.
Lee ‘393 discloses a skin-mountable electronic device with a flexible structure comprising interconnected traces each comprising a portion of an electrically conductive layer ([Abstract]). The electrically conductive layer is a nanowire mesh layer that directly overlies an elastomeric layer, together forming a nanocomposite elastomer structure ([0014]). The structure is ultra-thin such that it can be robustly and comfortably attached to the individual ([0059]). In order to be substantially thin, it is desirable that the nanocomposite elastomer structure have a total thickness of 20 to 100 µm ([0059]). Because the range taught by Lee ‘393 is entirely within the claimed range, the limitation is disclosed. See MPEP 2131.03. Additionally, modifying the thickness of a layer is of routine skill in the art. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer layer of the Zhou/Brockway/Lee combination such that it has a thickness of between 20 to 100 µm to allow for increased comfort and wearability.
Claims 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over the Zhou/Brockway/Lee combination as applied to claim 1 and 11 respectively and described above in further view of Srinivas et al. (hereinafter ‘Srinivas’, US 20130000952 A1).
Regarding claim 22, the Zhou/Brockway/Lee combination discloses the thin film epidermal device according to claim 1 and described above.
However, the combination does not disclose the polymer film achieving an optical transmittance of 61% in response to optical excitation at 550 nanometers.
Srinivas teaches a transparent conductive material in which the density and coverage area of the conductive nanowires are modified to modify the transparency ([0058]). Srinivas teaches that modifying the size, shape, and density of the nanomaterials on the host material can increase or decrease transparency based on the desired properties ([0058]). Since transparency and transmittance are directly related, modifying to the layer to increase or decrease the transparency would have the same effect on the transmittance. Additionally, the instant application does not give criticality to the claimed transmittance. The instant application simply states that the transmittance is a result of processing and is in fact a sacrifice for maintaining adhesion (Instant Application pages 12 and 13). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the nanomaterials to achieve a transmittance of 61% at an optical excitation of 550 nanometers, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 24, the Zhou/Brockway/Lee combination discloses the garment according to claim 11 and described above.
However, the combination does not disclose the polymer film achieving an optical transmittance of 61% in response to optical excitation at 550 nanometers.
Srinivas teaches a transparent conductive material in which the density and coverage area of the conductive nanowires are modified to modify the transparency ([0058]). Srinivas teaches that modifying the size, shape, and density of the nanomaterials on the host material can increase or decrease transparency based on the desired properties ([0058]). Since transparency and transmittance are directly related, modifying to the layer to increase or decrease the transparency would have the same effect on the transmittance. Additionally, the instant application does not give criticality to the claimed transmittance. The instant application simply states that the transmittance is a result of processing and is in fact a sacrifice for maintaining adhesion (Instant Application pages 12 and 13). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the nanomaterials to achieve a transmittance of 61% at an optical excitation of 550 nanometers, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant’s arguments, see page 5, filed 10/20/2025, with respect to the 112b rejections of claims 3, 7, and 8 have been fully considered and are persuasive in light of the amendments. The 112b rejections of 3, 7, and 8 have been withdrawn.
Applicant’s arguments regarding the breath figure process recited in claims 1 and 11 have been fully considered but are not persuasive. The applicant argues that the Zhou/Brockway combination does not mention forming the pores through a breath figure process. While Brockway does not disclose how the pores are formed, the recitation of “formed therethrough using a breath figure process” is regarded as a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the claimed product is a conductive polymer with pores therethrough. This structure is obvious from the combination of Zhou and Brockway as described above. Therefore, the patentability of the does not depend on the method of how the pores are formed.
Applicant’s arguments with respect to claim(s) 1 and 11 regarding the nanomaterials being located on the top, bottom, and pore surfaces have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
For the above reasons, the claims 1 and 11 remain rejected.
The dependent claims are rejected because claims 1 and 11 remain rejected.
The new claims 21-24 are rejected because claims 1 and 11 remain rejected and for the reasons stated in the rejection above.
Conclusion
THIS ACTION IS MADE FINAL. 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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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/W.M./Examiner, Art Unit 3794