DETAILED ACTION
This action is pursuant to claims filed on 10/14/2025. Claims 1-24 are pending, claims 1-11 and claim 23 have been withdrawn. A 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 .
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Claims 1-11 and 23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15-17, 19, and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 is rejected for failing to comply with the written description requirement because it has introduced new matter that is not present in the original disclosure. Claim 15 claims “a plurality of impedance tuners, wherein each one of the conductors includes one of the impedance tuners.” Claim 12, on which claim 15 depends, claims that the plurality of conductors are configured to “directly electrically couple one of the first EEG electrodes to a respective one of the second EEG electrodes.” In order for the connectors to directly electrically couple the first and second EEG electrodes, they must directly connect the first connectors to the second connectors with no intervening components, as shown in Fig. 4 of the instant application. Claim 15 contradicts this claim limitation because it requires that the impedance tuners be disposed on the plurality of connectors, thus there is no longer a direct connection between the first and second connectors. Additionally, neither the specification nor the drawings of the instant application disclose both having a direct electrical connection and the impedance tuners being present in the same embodiment. Therefore, because claim 15 requires both a direct electrical connection between the first and second connectors and the presence of impedance tuners on the connectors which creates an intermediary component between the connectors, the claim is rejected for failing to comply with the written description requirement as it introduces new matter not disclosed in the original filing.
Claims 16-17 and 19 are rejected due to their dependance on claim 15.
Similar to claim 15, claim 24 claims the apparatus “comprising at least one impedance tuner.” Claim 12 requires a direct electrical connection between the first and second connectors as described in the rejection of claim 15 above. Fig. 5 of the instant application shows the impedance tuners disposed on each connector, thus there is an intervening component between the first and second connectors. Neither the specification nor the drawings of the instant application disclose both having a direct electrical connection and the impedance tuners being present in the same embodiment. Therefore, because claim 24 requires both a direct electrical connection between the first and second connectors and the presence of impedance tuners which creates an intermediary component between the connectors, the claim is rejected for failing to comply with the written description requirement as it introduces new matter not disclosed in the original filing.
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 15-17 and 19 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 15 claims “a plurality of impedance tuners, wherein each one of the conductors includes one of the impedance tuners.” Claim 12, on which claim 15 depends, claims that the plurality of conductors are configured to “directly electrically couple one of the first EEG electrodes to a respective one of the second EEG electrodes.” In order for the connectors to directly electrically couple the first and second EEG electrodes, they must directly connect the first connectors to the second connectors with no intervening components, as shown in Fig. 4 of the instant application. Claim 15 contradicts this claim limitation because it requires that the impedance tuners be disposed on the plurality of connectors, thus there is no longer a direct connection between the first and second connectors. The contradictory nature of claims 15 and 12 make the scope of the claim unclear. It is unclear where the impedance tuners are intended to be placed since they cannot intervene with the direct electrical connection between the first and second electrodes. Therefore, because it is unclear where the impedance tuners are intended to be placed so as not to intervene with the direct electrical connection, the claim is rejected as indefinite.
Claims 16-17 and 19 are rejected due to their dependance on claim 15.
Similar to claim 15, claim 24 claims the apparatus “comprising at least one impedance tuner.” Claim 12 requires a direct electrical connection between the first and second connectors as described in the rejection of claim 15 above. Fig. 5 of the instant application shows the impedance tuners disposed on each connector, thus there is an intervening component between the first and second connectors. Neither the specification nor the drawings of the instant application disclose both having a direct electrical connection and the impedance tuners being present in the same embodiment. Claim 24 contradicts this claim limitation because it requires that the impedance tuners be disposed on the unitary apparatus which the original disclosure only discloses as being present on each of the connectors, thus there is no longer a direct connection between the first and second connectors. The contradictory nature of claims 24 and 12 make the scope of the claim unclear. It is unclear where the impedance tuners are intended to be placed since they cannot intervene with the direct electrical connection between the first and second electrodes. Therefore, because it is unclear where the impedance tuners are intended to be placed so as not to intervene with the direct electrical connection, the claim is rejected as indefinite.
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 on sheet 102 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 directly 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.
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 configured to electrically and mechanically couple the first conductor to the second conductor (module 110 which mechanically couples each of the cables and electrically provides for data and power transfer between them [0046]-[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 page 8, filed 10/14/2025, with respect to the objections to the drawings have been fully considered and are persuasive in light of the replacement figure 1. The objection of the drawings has been withdrawn.
Applicant’s arguments, see page 9, filed 10/14/2025, with respect to the 112b rejections of claim 14 have been fully considered and are persuasive in light of the amendments. The 112b rejection of claim 14 has been withdrawn.
Applicant’s arguments, see page 10, filed 10/14/2025, with respect to the 112b rejections of claim 15 have been fully considered and are persuasive in light of the amendments. The previous 112b rejection of claim 15 has been withdrawn.
The previous 112b rejections of claims 16, 17, and 19 have been withdrawn because the 112b rejection of claim 15, upon which they depend, has been withdrawn.
Applicant’s arguments, see page 10, filed 10/14/2025, with respect to the 112b rejections of claim 22 have been fully considered and are persuasive in light of the amendments. The previous 112b rejection of claim 22 has been withdrawn.
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 configured to electrically and mechanically couple the first conductor to the second conductor. This is not persuasive. “Coupling configuration” is an extremely broad term. It simply means that is must couple the first and second conductors. This is further limited by the claim, stating it must “electrically and mechanically couple the first conductor to the second conductor.” The claim does not provide any more specific structure on how this particular coupling is accomplished. Modul 110 is a coupling configuration because the claim does not require that that the “coupling configuration” have any specific structure or that it not be an active component in the chain of components. Modul 110 mechanically couples the cable going to electrode 10 and the cable going to electrode 20 since both cables connect to the physical module 110 as seen in Fig. 6. Regarding electrical coupling, paragraphs [0046] and [0047] clearly state that the connection lines 200 are for data and power transport between the modules. 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. In order to overcome the prior art, specific structure of the “coupling configuration” must be disclosed to actually state the structure that mechanically and electrically couples the conductors.
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. 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. 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 with respect to claim(s) 12-20 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.
Additionally, the examiner recommends the applicant amend to claim a system that positively recites the first and second electrodes as well as the structures of the electrodes and connectors, rather than a unitary apparatus that is claimed to functionally connect to the electrodes. Positively reciting the electrodes and the structures of the electrodes and connectors would strengthen the claim. This would require further search and consideration based on how the claim is amended, but would result in a substantial step towards advancing prosecution.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E MOSSBROOK whose telephone number is (703)756-1936. The examiner can normally be reached M-F 8-5.
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/W.M./ Examiner, Art Unit 3794
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