DETAILED ACTION
This action is pursuant to claims filed on 4/9/2026. Claims 1, 2, 4-6, 8, 11, and 21-24 are pending. Claims 3, 7, 9-10 and 12-20 have been cancelled by applicant. A non-final action on the merits of claims 1, 2, 4-6, 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 .
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/9/2026 has been entered.
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 1, 2, 4, 5, 6, and 8 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.
Lines 9 and 14 of claim 1 states “the conductive nanomaterials” which lacks antecedent basis. For the purposes of compact prosecution, this will be interpreted as the conductive nanowires or nanotubes.
Claims 2, 4, 5, 6, and 8 are rejected due to their dependance on claim 1.
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, 4-6, 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) in view of Hatakeyama et al. (hereinafter ‘Hatakeyama’, US 20220133201 A1) and in further view of Peng et al. (hereinafter ‘Peng’, CN 110338781 A) as evidenced by Zhong et al. (hereinafter ‘Zhong’, US 20160104554 A1).
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 nanowires or nanotubes ([page 4 of translation]: the nanomaterials can be carbon nanotubes) inlaid inside of a top surface, a bottom surface, and throughout ([Page 4 of Translation]: conductive particles are mixed into the TPU throughout – mixing the conductive particles throughout inherently means they are inlaid inside of surfaces of the layer because they are disposed into all of the surfaces);
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 nanowires or nanotubes are inlaid inside of the top surface of the polymer film are electrically connected to the conductive nanowires or nanotubes inlaid inside of the bottom of the polymer film via the conductive nanomaterials nanowires or nanotubes 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 wherein the majority of the pores have diameters between 30 µm and 50 µm and greater than lengths of the conductive nanowires or nanotubes and have substantially circular cross sections.
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. Additionally, as seen in Fig. 2B, the pores are circular. Furthermore, forming pores through the polymer layer of Zhou would mean the nanotubes are inlaid on the surfaces of the pores since the nanomaterials are dispersed throughout the layer, thus they would inherently be inside of the surface of the pores. It would be of routine skill in the art to utilize the circular 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.
Additionally, Brockway discloses that the pores are less than 500 µm in diameter, which encompasses the claimed range of 30 µm to 50 µm in diameter ([Col 4, lines 51-64]). Furthermore, the instant application does not provide criticality to the 30 µm to 50 µm range, even stating that the diameter of the pores can range can be 1 to 100 µm ([page 3 of instant application specification]). While the taught range is larger than the claimed range, the claimed range is still encompassed by the range taught by Brockway. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the majority of the pores to have a diameter in the range of 30 µm to 50 µm, 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.
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. Utilizing a “breath figure process” is a known method in the art for forming pores in a polymer sheet as evidenced by Zhong paragraph [0002] which states that “there are several ways to fabricate porous films, such as self-assembly of water droplets known as the “breath figure” (BF) technique.” 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 which are circular and between 30 and 50 micrometers in diameter. 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 specifically state the size of the lengths of the carbon nanotubes as they compare to the diameter of the pores.
Hatakeyama teaches a bio-electrode which contains an ionic polymer layer which functions as an electrode layer for contacting the living body ([Abstract]). The living body contact layer can comprise carbon nanotubes to enhance electric conductivity ([0062]-[0063]). The carbon nanotubes have a length of 5 to 9 micrometers, manufactured by Sigma-Aldrich Co., LLC ([0319]). The lengths of the nanotubes are less than the diameter of the pores which are 30-50 micrometers. Utilizing carbon nanotubes which are 5 to 9 micrometers in length is an obvious selection for one of ordinary skill in the art to make since it is merely one of several possibilities to utilize as a conductive material. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the nanotubes which are 5 to 9 micrometers in length as taught by Hatakeyama such that the polymer layer has strong electrical conductivity.
However, the Zhou/Brockway/Hatakeyama combination does not disclose the thickness of the polymer layer being about 3 to 8 µm.
Peng teaches a flexible dry electrode comprising an electrode layer composed of a polymer and nanomaterial, similar to that of the Zhou/Brockway/Hatakeyama combination. Peng further teaches that the thickness of the electrode layer is 0.1 to 10 micrometers, which encompasses the claimed range of about 3 to 8 micrometers ([Page 4 of translation]). The instant application does not provide criticality to this thickness. Simply using the term “about” means that there is a degree of flexibility around that range and 0.1 to 10 micrometers is about 3 to 8 micrometers. The specification of the instant application provides an even wider range for the thickness of the polymer layer between about 1 and 100 micrometers (page 2 of instant application specification). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the thickness of the polymer layer of the Zhou/Brockway/Hatakeyama combination to have a thickness in the range of 3 to 8 micrometers which is taught by Peng, 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 2, the Zhou/Brockway/Hatakeyama/Peng combination discloses the thin film epidermal electronic device of claim 1, wherein the polymer film comprises thermoplastic polyurethane (TPU) (Zhou [Page 4 of translation]: the polymer substrate is TPU).
Regarding claim 4, the Zhou/Brockway/Hatakeyama/Peng combination discloses the thin film epidermal electronic device of claim 1, wherein the conductive nanomaterials comprise silver nanowires (AgNWs) or carbon nanotubes (Zhou [Page 2 of Translation]: the nanomaterials are nano-silver or nano-carbon tubes).
Regarding claim 5, the Zhou/Brockway/Hatakeyama/Peng 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/Hatakeyama/Peng 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 (Zhou [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 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 nanowires or nanotubes ([page 4 of translation]: the nanomaterials can be carbon nanotubes) inlaid inside of a top surface, a bottom surface, and throughout the polymer film ([Page 4 of Translation]: conductive particles are mixed into the TPU throughout– mixing the conductive particles throughout inherently means they are inlaid inside of surfaces of the layer because they are disposed into all of the surfaces);
wherein the conductive nanowires or nanotubes are connected to form a network of nanowires or nanotubes, 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 nanowires or nanotubes inlaid inside of the top of the polymer film are electrically connected to the conductive nanowires or nanotubes inlaid inside of the bottom of the polymer film via the conductive nanowires or nanotubes throughout 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 wherein the majority of the pores have diameters between 30 µm and 50 µm and greater than lengths of the conductive nanowires or nanotubes and have substantially circular cross sections.
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. Additionally, as seen in Fig. 2B, the pores are circular. Furthermore, forming pores through the polymer layer of Zhou would mean the nanotubes are inlaid on the surfaces of the pores since the nanomaterials are dispersed throughout the layer, thus they would inherently be inside of the surface of the pores, thus forming an electrical connection from the top of the layer to the bottom of the layer through the nanomaterials on the inside surface of the pores. It would be of routine skill in the art to utilize the circular 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.
Additionally, Brockway discloses that the pores are less than 500 µm in diameter, which encompasses the claimed range of 30 µm to 50 µm in diameter ([Col 4, lines 51-64]). Furthermore, the instant application does not provide criticality to the 30 µm to 50 µm range, even stating that the diameter of the pores can range can be 1 to 100 µm ([page 3 of instant application specification]). While the taught range is larger than the claimed range, the claimed range is still encompassed by the range taught by Brockway. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the majority of the pores to have a diameter in the range of 30 µm to 50 µm, 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.
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. Utilizing a “breath figure process” is a known method in the art for forming pores in a polymer sheet as evidenced by Zhong paragraph [0002] which states that “there are several ways to fabricate porous films, such as self-assembly of water droplets known as the “breath figure” (BF) technique.” 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 which are circular and between 30 and 50 micrometers in diameter. 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 specifically state the size of the lengths of the carbon nanotubes as they compare to the diameter of the pores.
Hatakeyama teaches a bio-electrode which contains an ionic polymer layer which functions as an electrode layer for contacting the living body ([Abstract]). The living body contact layer can comprise carbon nanotubes to enhance electric conductivity ([0062]-[0063]). The carbon nanotubes have a length of 5 to 9 micrometers, manufactured by Sigma-Aldrich Co., LLC ([0319]). The lengths of the nanotubes are less than the diameter of the pores which are 30-50 micrometers. Utilizing carbon nanotubes which are 5 to 9 micrometers in length is an obvious selection for one of ordinary skill in the art to make since it is merely one of several possibilities to utilize as a conductive material. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the nanotubes which are 5 to 9 micrometers in length as taught by Hatakeyama such that the polymer layer has strong electrical conductivity.
However, the Zhou/Brockway/Hatakeyama combination does not disclose the thickness of the polymer layer being about 3 to 8 µm.
Peng teaches a flexible dry electrode comprising an electrode layer composed of a polymer and nanomaterial, similar to that of the Zhou/Brockway/Hatakeyama combination. Peng further teaches that the thickness of the electrode layer is 0.1 to 10 micrometers, which encompasses the claimed range of about 3 to 8 micrometers ([Page 4 of translation]). The instant application does not provide criticality to this thickness. Simply using the term “about” means that there is a degree of flexibility around that range and 0.1 to 10 micrometers is about 3 to 8 micrometers. The specification of the instant application provides an even wider range for the thickness of the polymer layer between about 1 and 100 micrometers (page 2 of instant application specification). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the thickness of the polymer layer of the Zhou/Brockway/Hatakeyama combination to have a thickness in the range of 3 to 8 micrometers which is taught by Peng, 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 21, the Zhou/Brockway/Hatakeyama/Peng 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 since TPU inherently has a degree of optical transparency and the claim does not state the degree of optical transparency; the polymer film disclosed by the Zhou/Brockway/Hatakeyama/Peng 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/Hatakeyama/Peng 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 since TPU inherently has a degree of optical transparency and the claim does not state the degree of optical transparency; the polymer film disclosed by the Zhou/Brockway/Hatakeyama/Peng combination has the same structure as the polymer film of the instant application thus has the same physical properties).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over the Zhou/Brockway/Hatakeyama/Peng combination as applied to claim 1 and described above in further view of Wang et al. (hereinafter ‘Wang’, US 20160361015 A1).
Regarding claim 8, the Zhou/Brockway/Hatakeyama/Peng 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.
Wang teaches a breathable multi-layered adhesive structure that can be used to mount devices onto the skin ([Abstract]). The adhesive structure utilizes pores such that moisture can be released from the skin on a skin-mounted device ([Abstract]). While this is directed towards an adhesive layer which contacts the skin, the pores are solving the same problem as the instant application, which is to wick moisture away from the contact area. Wang further teaches that the adhesion layer can have a porosity of about 10% to about 60%, which encompasses the claimed range, to allow for moisture to flow away from the skin ([0086]). The instant application does not provide criticality to the 30-50% range, simply stating that the coverage range is “about 30 to 50%” (page 3 of the instant application). 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 polymer layer of the device of the Zhou/Brockway/Hatakeyama/Peng combination in pores as taught by Wang, 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.
Claims 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over the Zhou/Brockway/Hatakeyama/Peng 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/Hatakeyama/Peng 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/Hatakeyama/Peng 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 with respect to Lee as applied to claims 1 and 11 regarding the shape of the pores and the claimed diameters have been fully considered but are moot because the new ground of rejection no longer relies on Lee.
Applicant’s arguments with respect to Brockway as applied to claims 1 and 11 have been fully considered but are not persuasive. Applicant initially argues that the pores of Brockway are devoid of conductive materials and “less than 500 microns” does not teach the claimed pore size. The pores of the claim require conductive materials to be inlaid inside of the surfaces of the pores. In the Zhou/Brockway combination, when pores are created through a polymer that has nanotubes dispersed throughout, there will inherently be nanotubes inlaid inside of the surfaces of the pores. “Inlaid inside of” is very broad and is simply interpreted as the particles being disposed underneath the respective surfaces, which they inherently would be in the combination. Furthermore, the argument that “less than 500 microns” does not teach the claimed range is not persuasive. The range taught by Brockway encompasses the claimed range. The instant application does not provide criticality to the 30 µm to 50 µm range, even stating that the diameter of the pores can range can be 1 to 100 µm ([page 3 of instant application specification]). While the taught range is larger than the claimed range, the claimed range is still encompassed by the range taught by Brockway. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the majority of the pores to have a diameter in the range of 30 µm to 50 µm, 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.
Applicant’s arguments that Brockway does not disclose a method for achieving the claimed pore size distribution because the instant application describes an experiment with specific percentages by weight of TPU and PEG to achieve the desired pore size is not persuasive. Firstly, this method with specific weight percentages of TPU and PEG is not claimed. 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). Secondly, the claimed polymer layer is not required to be made of TPU and PEG. In fact, claim 2 states that the polymer film can comprise TPU, SBS, or TPO. Thus, while that method might achieve the claimed pore size, this is not critical because the claimed invention is not required to be made from TPU. Therefore, the arguments are not persuasive.
Applicant’s arguments that the relationship between the nanotubes and the pore size is not taught by the prior art are moot because the new ground of rejection relies on Hatakeyama to teach the sizes of the nanotubes, which are less than the diameters of the pores.
Applicant’s arguments that the Zhou/Brockway combination does not teach an electrical connection of conductive nanowires inlaid inside of the top and bottom surfaces of the polymer film via the nanowires inside of the surfaces of the pores is not persuasive. The surfaces of the pores have conductive materials embedded in their surfaces as described above. Zhou discloses that the nanotubes form a conductive path from the top surface to the bottom surface as described above. Thus, there is an electrical connection between the top and bottom nanotubes via the nanotubes inlaid inside of the surfaces of the pores.
Applicant’s arguments with regard to Lee ‘393 as it applies to the thickness of the layer are moot because the rejection of record no longer relies on Lee ‘393 to teach the claimed feature. Instead, Peng is now used to teach the claimed thickness.
For the above reasons, the claims 1 and 11 remain rejected.
The dependent claims 1, 2, 4-6, 8, 11, and 21-24 are rejected because claims 1 and 11 remain rejected.
Conclusion
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/W.M./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
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