DETAILED ACTION
This action is pursuant to claims filed on 3/30/2026. Claims 1-24 are pending, claims 1-11 and claim 23 have been withdrawn. A non-final action on the merits of claims 12-22 and 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 Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/30/2026 has been entered.
Election/Restrictions
Claims 1-11 and 23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/26/2025.
Claim Rejections - 35 USC § 102
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 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 12-14 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yeo et al. (hereinafter ‘Yeo’, US 20210259606 A1).
Regarding independent claim 12, Yeo discloses a unitary apparatus (unitary apparatus connecting 112 to 306 in Figs. 1 and 3), comprising:
a plurality of first connectors (first connectors that connect to inputs 304 in Figs. 1 and 3) configured to interface with a plurality of first electroencephalograms (EEG) electrodes (“configured to” is interpreted as functional language and the first connectors are capable of interfacing with inputs on electrodes)
a plurality of second connectors (second connectors 306 that connects to the leads to the electrodes in Figs. 1 and 3) configured to electrically interface with a plurality of second EEG electrodes (“configured to” is interpreted as functional language and the second connectors are interfacing with the leads of the electrodes 104 in Figs. 1 and 3 and form a conductive connection to the electrodes; [0019]: the stretchable circuits are in electrical communication with the electrode units); and
a plurality of conductors (conductors 114 in Figs. 1 and 3 between the connectors) embedded in the unitary apparatus ([0119]: the components may be encapsulated, thus embedded, in layer 102 with the only exposed portions being the electrodes which contact the skin) wherein each of the conductors is configured to electrically couple one of the first EEG electrodes to a respective one of the second EEG electrodes ([0029]: the flexible circuits form an electrical connection between the inputs and the electrodes; as seen in Figs. 1 and 3, there is a direct circuit line between the inputs and the electrodes; “configured to” is interpreted as functional language, thus the flex circuits 114 can form a direct electrical connection between first and second electrodes).
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. As broadly claimed, the plurality of first electrodes and second electrodes are not positively recited as part of the “unitary apparatus.” The claim only requires the unitary apparatus to structurally have a plurality of first connectors, a plurality of second connectors, and a plurality of conductors embedded in the unitary apparatus. This structure is all disclosed by Yeo as described above and Yeo is wholly capable of forming a direct electrical connection between two electrodes since Yeo discloses a conductor 114 with conductive connections on either end that can contact and thus electrically interface with two distinct sets of electrodes.
Regarding claim 13, Yeo discloses the apparatus of claim 12, wherein the first connectors are configured to adhesively interface with the plurality of first EEG electrodes (“configured to” is interpreted as functional language and the claim does not positively recite the structure of the first connector; the connectors are capable of interfacing by adhesion with first electrodes because the connectors are capable of sticking to an adhesive on electrodes).
Regarding claim 14, Yeo discloses the apparatus of claim 12, wherein the apparatus is configured to electrically interface with the plurality of first electrodes via a connection block crimped thereto (“configured to” is interpreted as functional language and the claim does not positively recite the structure of the first connector; the “connection block” is crimped to the first electrodes as explained in the specification of the instant application and shown in Figs. 4 and 5; connection block is broadly interpreted as claimed to be a place where electrical connections come together since no specific structure is disclosed; the first connectors are capable of electrically interfacing with a connection block crimped to the first electrodes because they are interfacing with the connection block that forms the inputs 304 of the circuitry 112 in Fig. 3).
Regarding claim 20, Yeo discloses the apparatus of claim 12, wherein the plurality of connectors are embedded on a surface of the unitary apparatus (the connectors are embedded as described in paragraph [0119] and are on the bottom and the top surface of the layer 102 as seen in Fig. 1)
Claim(s) 21 and 22 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Shin et al. (hereinafter ‘Shin’, US 20110009729 A1).
Regarding independent claim 21, Shin discloses an apparatus for operating with an electroencephalograms (EEG) apparatus (apparatus shown in Fig. 6), comprising:
a first conductor having a first end (conductor 200 going to electrode 30 with end that connects to module 131 as seen in Fig. 6);
a second conductor having an electrode coupled to a second end thereof (conductor 200 going to electrode 20 which is coupled via module 120 to the end of the conductor as seen in Fig. 6), wherein the second conductor is different than the first conductor; and
a coupling configuration comprising a first connector on the first conductor (end portion of conductor 200 that connects to terminal 118 in Fig. 6; [0047]: port 118 is a connection port – thus the conductor inherently has a connector that couples to it) and a second connector on the second conductor (end portion of second conductor 200 that connects to the second terminal 118 in Fig. 6; [0047]: port 118 is a connection port – thus the conductor inherently has a connector that couples to it), wherein the first and second connectors are configured to electrically and mechanically couple the first conductor to the second conductor (module 110 comprising ports 118 which couple to connectors on the ends of the conductors mechanically couples each of the cables and electrically provides for data and power transfer between them [0046]-[0047] – the mechanical connection is seen in Fig. 6 and the power and data transfer is between the modules as described in [0047]) , wherein the coupling configuration is configured to facilitate a movement of the second conductor relative to the first conductor such that an electrical distance between the first end and the second end is increased or decreased (the coupling configuration remains fixed and the second conductor is flexible such that the second conductor can be placed closer to or further from the fist conductor [0036]).
Regarding claim 22, Shin discloses the apparatus of claim 21, wherein the coupling configuration is configured to facilitate a movement of the second conductor relative to the first conductor of each of the first and second conductors such that an electrical distance between the first end and the second end of each of the conductors is increased or decreased in different directions from one another (the coupling configuration 110 is fixed which fixes the first ends of each of the conductors in place and the connection lines 200 are flexible such that the second ends of the conductors can be brought closer or further apart for desired placement [0036]).
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.
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) 15-17 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo as applied to claim 12 in further view of Lee et al. (hereinafter ‘Lee’, WO 2019156320 A1).
Regarding claim 15, Yeo discloses the apparatus of claim 12 as described above.
However, Yeo is silent to the conductors including impedance tuners configured to tune at least one frequency provided to the EEG apparatus.
Lee teaches a sensing apparatus in which a user’s bio signals are measured through electrodes which have their impedances adjusted ([Abstract]). Lee teaches that noise due to contact impedance can be reduced by reducing a difference in contact impedance corresponding to the different electrodes ([Page 2 of Translation]). The impedance is controlled by an impedance control unit which may include variable capacitors or resistors ([Page 10 of Translation]). In view of the 112b rejection of claim 15 stated above, it is unclear the location of the impedance tuners on the unitary apparatus. Furthermore, incorporating an impedance control unit which controls variable circuit elements is of routine skill in the art and would not render the device of the Yeo inoperable as it simply modifies impedance to reduce noise. 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 connectors 114 of Yeo to utilize impedance control units in order to reduce noise in the system.
Regarding claim 16, the Yeo/Lee combination discloses the apparatus of claim 15, wherein the unitary apparatus includes at least one computer interface (interface between the impedance controller and the variable circuit components [Pages 10-11 of Lee]) configured to receive a modification of at least one of the impedance tuners from at least one controller (the impedance controller adjusts the impedance based on the control signal [Page 11 of translation of Lee]).
The Yeo/Lee combination does not disclose a computer to modify the impedance, but rather a controller to modify the impedance. It would have been an obvious matter of design choice to one having ordinary skill in the art at the time the invention was made to use a computer over a controller, since applicant has not disclosed that a computer solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with a controller.
Regarding claim 17, the Yeo/Lee combination discloses the apparatus of claim 15, wherein the impedance tuners are configured to be manually modified (“configured to be manually modified” constitutes functional language and as such the variable circuit components that make up the impedance tuner are capable of being switched out manually even though it would require disassembly and reassembly, which meets the definition of modify).
Regarding claim 24, Yeo discloses the apparatus of claim 12 as described above.
However, Yeo is silent to the apparatus including impedance tuners configured to match an impedance of a proprietary sensor.
Lee teaches a sensing apparatus in which a user’s bio signals are measured through electrodes which have their impedances adjusted ([Abstract]). Lee teaches that noise due to contact impedance can be reduced by reducing a difference in contact impedance corresponding to the different electrodes ([Page 2 of Translation]). The impedance is controlled by an impedance control unit which may include variable capacitors or resistors ([Page 10 of Translation]). In view of the 112b rejection of claim 15 stated above, it is unclear the location of the impedance tuners on the unitary apparatus. Furthermore, incorporating an impedance control unit which controls variable circuit elements is of routine skill in the art and would not render the device of the Yeo inoperable as it simply modifies impedance to reduce noise. 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 connectors 114 of Yeo to utilize impedance control units in order to reduce noise in the system which are capable of matching an impedance of a proprietary sensor.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Yeo as applied to claim 12 as described above in view of Cohen et al. (hereinafter ‘Cohen’, US 20120126828 A1).
Regarding claim 18, Yeo discloses the apparatus of claim 12 as described above.
As broadly claimed, “has a rigid structure” is interpreted as the unitary apparatus simply comprising a rigid piece disposed on the apparatus since the claim does not state which pieces are rigid or further describe the structure of the unitary apparatus.
However, Yeo is silent to the structure of the connectors that form the unitary apparatus.
Cohen teaches a sensor unit with flexible signal transmission lines, similar to that of Yeo. Cohen further teaches that the sensor system can be manufactured utilizing rigid-flexible circuit techniques wherein the connector elements are rigid while the transmission means remain flexible ([0019[). Similar to that of Yeo, the circuitry is manufactured on a flexible printed substrate, thus when a rigid connector is combined with Yeo, the flexibility of the traces and operability of Yeo is maintained. Furthermore, the rigid-flexible circuitry allows for the signal transmission structure to be wrapped around tight bends, as required by Yeo ([0080]). The rigidity of the signal connector structure can be achieved by simply adding a rigid layer on the connector structure, which would inherently provide a more stable separation of the connectors as they would be less likely to bend and touch each other ([0121]). 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 connectors of Yeo to be rigid as taught by Cohen such that the unitary apparatus has a rigid structure which would provide for a degree of stability between the connectors.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over the Yeo/Lee combination as applied to claim 16/15/12 as described above in view of Sime et al. (hereinafter ‘Sime’, US 20130248226 A1).
Regarding claim 19, the Yeo/Lee combination discloses the apparatus of claim 16 as described above. The combination further discloses that the unitary apparatus is a circuit board as the circuitry 114 is disposed on a substrate as seen in Fig. 1, thus meeting the definition of a circuit board.
However, the combination is silent to the circuitry being printed.
Sime teaches a printed electrical circuit and methods for additively printing patterned electrical circuits on both rigid and flexible substrates ([Abstract]). The flexible circuitry comprises a substrate 102, similar to the substrate 102 of Yeo, on which a flexible electronics are printed ([0034]). The printing process of Sime allows for the device and electronic components to be folded and flexed without causing permanent folds after bending, thus improving fixation to the patient ([0019]). Printing conductive circuitry or traces onto a flexible substrate is a known manufacturing method in the art and utilizing a printing method with the device of Yeo would be of routine skill in the art that maintains operability of the device. 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 a known manufacturing method such as printing, as taught by Sime, to print the flexible circuitry onto the substrate of Yeo, thus forming a flexible printed circuit board.
Response to Arguments
Applicant’s arguments, see pages 8-9, filed 3/30/2026, with respect to the 112a/b rejections of claims 15-17, 19, and 24 have been fully considered and are persuasive in light of the amendments. The 112b rejection of claim 15-17, 19, and 24 have been withdrawn.
Applicant’s arguments regarding the statutory grounds of 35 U.S.C. 102, 35 U.S.C. 103, KSR, reasonable expectation, long-felt need, and evaluating prior art as a whole have been fully considered but are not persuasive because the applicant does not specifically challenge any part of the rejection. The applicant simply points to the standards through which each of those pieces are evaluated without referencing how they are applicable to the rejection of record. Therefore, these arguments are not persuasive.
Applicant’s arguments regarding the “configured to” interpretation used in the rejection have been fully considered but are not persuasive. The applicant argues that a functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the art and that the structure that the function serves to precisely define present structural attributes of interrelated component parts. This argument is not persuasive. While the function does further define the structure, in the instant case the structure and function are claimed extremely broadly. The claim merely requires an apparatus that can mechanically and electrically connect to electrodes on opposite ends. The conductor of Yeo discloses this structure and can function in this manner. Furthermore, the claim does not provide any specific structure to these connection portions and the specification of the instant application does not describe these connectors with specific structure, only through functions which the prior art is capable of achieving. 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).
Additionally, "configured to electrically couple" as claimed does not provide any specific structure for accomplishing the task. While the specification might recite additional structure not claimed, the specific electrical coupling is not claimed. As the claim is written, any structure that is capable of conducting electricity would, in fact, suffice because the structure of the "conductors" is not claimed. Conductors are by definition simply structures that conduct electricity. As the claim stands, the first and second sets of EEG electrodes are not part of the unitary apparatus. The unitary apparatus is simply a conductor with connectors that is intended to interface with the electrodes. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
As claim 12 is currently written, any conductive piece that has conductive contact surfaces on both ends that is capable of contacting two electrodes on the respective ends, can read on the claim language. For instance, a simple cable filled with conductors with alligator clips on either end can read on the claim language. It is capable of forming an electrically conductive connection between two electrodes when attached to the electrodes.
Furthermore, when connected to the unitary apparatus, the first electrodes no longer function as sensing EEG electrodes in the elected embodiment. As shown in Fig. 4, the EEG electrodes are crimped to a connection block and are no longer sensing electrodes. The unitary apparatus then is configured to interface with the connection block and the "first electrodes" are simply contacts within the connection block. The device of Yeo described above is wholly capable of electrically interfacing with electrical contacts of a connection block or with the conductive portions of sensing electrodes.
Should the applicant wish for the EEG electrodes to a patentable weight, a system must be claimed that directly claims the two sets of electrodes. Currently, the electrodes are simply part of the intended use of the device because they are not part of the unitary apparatus.
Applicant’s arguments that Yeo discloses a stretchable biopath that cannot couple two separate external EEG electrodes is not persuasive. The conductors mapped to the unitary apparatus, as described above, are not the entire patch. They are instead the conductors between a first set of contacts and a set of electrodes. Applicant argues that these are internal circuit board connections, which is not the case. The conductors connect the electrodes to the circuit board as seen in Fig. 1. They are a component disposed on the elastomer layer 102, not part of the circuit board 112. The conductors 114, while called “stretchable circuits,” are not processing circuits but are instead simply meander lines that conduct signals between the electrodes and the actual circuit board 112 (Yeo [0095]). These conductors are wholly capable of functioning to connect two sets of electrodes. Applicant’s arguments regarding the signal path that Yeo takes is not persuasive because the circuit board is not part of the unitary apparatus as mapped in the rejection above. The conductors have connectors on both ends which can be connected to whatever electronic component is desired, whether that be a circuit board or another electrode.
In order to overcome Yeo, specific structure must be provided in the claims clearly indicating what the device is. As currently claimed, the only structure present in the claims is a plurality of first connectors, a plurality of second connectors, and a plurality of conductors. These structures are not given any particular structure and are presented extremely broadly.
Therefore, the rejection of claim 12 is maintained.
Applicant’s arguments regarding the 102 rejections of claims 21 and 22 have been fully considered but are not persuasive. Applicant initially argues that Shin does not disclose a coupling configuration comprising a first connector on the first conductor and a second connector on the second conductor, wherein the first and second connectors are configured to electrically and mechanically couple the first conductor to the second conductor. This is not persuasive. “Coupling configuration comprising a first connector on the first conductor and a second connector on the second conductor” is an extremely broad term. It simply means that the conductors must have connectors that. This is an inherent feature of Shin since that is how the conductors connect to the ports 118 as described above. This is further limited by the claim, stating the connectors must “electrically and mechanically couple the first conductor to the second conductor. As seen in Fig. 6, the connectors and ports 118 mechanically couple to the conductors and the conductors to each other since the connectors connect to module 110 which is attached to both conductors. Regarding electrical coupling, paragraphs [0046] and [0047] clearly state that the connection lines 200 are for data and power transport between the modules and that electrical signal passes through ports 118, and thus pass through the connectors attached thereto. As seen in Fig. 6, module 120, on which electrode 20 is housed, contains the battery. Thus, in order for module 130, on which electrode 30 is housed, to receive power, it must flow down cable 200 to module 110 where it is then directed to module 130 down the other cable 200. Power flow is a form of electrical coupling and since power inherently flows from module 120, through module 110, to module 130, module 110 electrically couples the first and second conductors 200.
Applicant further argues that Shin does not disclose the ability to change an “electrical distance” between the first end and the second end is increased or decreased and that the elasticity of Shin is for comfort, not for changing an electrical distance. This is not persuasive. Again, the applicant does not claim the structure that accomplishes this function, “configured to facilitate a movement of the second conductor relative to the first conductor” is extremely broad. This can be as simple as holding one end of the second conductor in place such that the “second end” can move relative to the first conductor. Regarding an electrical distance increasing or decreasing, paragraph [0036] of Shin states that the connection line 200 may have flexibility and elasticity. Elasticity and flexibility both inherently provide for a degree of stretch. The instant application, in paragraph [0025] states that the electrical distance can be changed by utilizing a stretchable conductor to facilitate the lengthening. Shin teaches that the conductors are elastic and thus have a degree of stretch and are in turn capable of changing the electrical distance between the first end and second end. Shin thus teaches that the module 110 facilitates the movement of the second conductor relative to the first conductor such that an electrical distance between the first end and second end is increased or decreased because the module 110 holds one end of each of the conductors stationary while the other ends can be moved via stretching to increase the electrical distance between the first end and the second end. The reason for this elasticity is not pertinent because it still accomplishes the claimed function. Therefore, the rejection to claim 21 is maintained.
The rejection of claim 22 is maintained because the rejection of claim 21 is maintained.
Applicant’s arguments regarding claim 18 have been fully considered but are not persuasive. Applicant argues that to modify Yeo’s connectors to be rigid would render the device unsuitable. This is not persuasive. Having small, rigid connectors would not render the device unsuitable. As explained above, the flexibility of the device is maintained since the conductors are still stretchable. Small, rigid connectors for connection to a circuit board or to electrodes would not hinder the device’s ability to conform to the skin. As explained by Cohen, this would provide for more stable connections while maintaining the flexibility of the device. The claim does not limit the entire unitary apparatus to be rigid, nor does it describe what the rigid structure is. Thus, adding a degree of rigidity to the connectors would be obvious to one of ordinary skill in the art to ensure the connections are stable. Therefore, the rejection of claim 18 is maintained.
The rejections of claims 13-17, 19-20, and 22-24 are maintained because the rejections of the independent claims are maintained and the applicant does not specifically challenge the prior art as applied to those claims.
Conclusion
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/W.M./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
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