DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Newly submitted claim 17 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 1-14, filed 5/26/22 and examined in the Office action mailed 7/30/25, were directed towards a frequency-selective signal damper, an electrode, a sensor, and a device. Claims directed towards a method of frequency-selective signal damping were not present in the claims filed 5/26/22.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 17 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
The general policy of the Office is not to permit the applicant to shift to claiming another invention after an election is once made and action given on the elected subject matter. Note that the applicant cannot, as a matter of right, file a request for continued examination (RCE) to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). When claims are presented which the examiner holds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
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.
Claim(s) 1-8 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yan et al. (CN 111956868) {English machine translation for citation}.
Regarding claims 1-8: Yan et al. (CN ‘868) discloses a chitosan/gelatin composite gel [abstract], wherein Embodiment 1 [0050-0058] prepares a gel by dissolving 1% (w/v) chitosan and 0.5% (w/v) gelatin in water (85 oC) adjusted to a pH of about 5. The resulting solution was electrophoretically deposited on a stainless steel electrode to afford chitosan/gelatin composite gel (corresponding to ~ 50 parts by weight gelatin per 100 parts by weight chitosan) [0050-0058].
The claimed effects and physical properties, i.e. non-Newtonian fluid behavior; and hydrogel exhibiting sol-gel phase transition [instant claim 1]; the viscous polymer exhibits shear thinning in a damping region or a noise region, wherein the hydrogel has a sol phase in the damping region or the noise region [instant claim 2]; the viscous polymer has a Deborah number of 1 or lower in a damping region or a noise region [instant claim 3]; in a damping frequency band, the damper has a tangent delta value based on a frequency in a range of 4 or greater [instant claim 6]; the damper selectively damps a physical signal having a frequency below or equal to 50Hz at a temperature below 50 degrees C [instant claim 8], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 16: Yan et al. (CN ‘868) discloses the basic claimed damper [as set forth above with respect to claim 1].
“[E]ven 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) [See MPEP 2113].
Claim(s) 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yan et al. (CN 111956868) {English machine translation for citation}.
Regarding claims 9-10: Yan et al. (CN ‘868) discloses a chitosan/gelatin composite gel [abstract], wherein Embodiment 1 [0050-0058] prepares a gel by dissolving 1% (w/v) chitosan and 0.5% (w/v) gelatin in water (85 oC) adjusted to a pH of about 5. The resulting solution was electrophoretically deposited on a stainless steel electrode to afford chitosan/gelatin composite gel (corresponding to ~ 50 parts by weight gelatin per 100 parts by weight chitosan) [0050-0058].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
“[E]ven 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) [See MPEP 2113].
The claimed effects and physical properties, i.e. non-Newtonian fluid behavior; and hydrogel exhibiting sol-gel phase transition [instant claim 9], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yan et al. (CN 111956868) {English machine translation for citation}.
Regarding claims 11-12: Yan et al. (CN ‘868) discloses a chitosan/gelatin composite gel [abstract], wherein Embodiment 1 [0050-0058] prepares a gel by dissolving 1% (w/v) chitosan and 0.5% (w/v) gelatin in water (85 oC) adjusted to a pH of about 5. The resulting solution was electrophoretically deposited on a stainless steel electrode to afford chitosan/gelatin composite gel (corresponding to ~ 50 parts by weight gelatin per 100 parts by weight chitosan) [0050-0058]. Yan et al. (CN ‘868) discloses soaking the chitosan/gelatin composite gel with sodium alginate and chitosan solutions to afford a chitosan/gelatin/sodium alginate composite multilayer gel, which was subsequently freeze dried to afford a multi-layer artificial blood vessel [0050-0058].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
The claimed effects and physical properties, i.e. non-Newtonian fluid behavior; and hydrogel exhibiting sol-gel phase transition [instant claim 11], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yan et al. (CN 111956868) as applied to claim 1 above.
Regarding claim 15: Yan et al. (CN ‘868) discloses the basic claimed damper [as set forth above with respect to claim 1]; wherein Yan et al. (CN ‘868) discloses mixed solutions having chitosan concentrations of 0.5% to 2% (w/v) and gelatin concentrations of 0.1% to 4% (w/v) [0040].
Yan et al. (CN ‘868) does not specifically disclose a mixed solution of chitosan/gelatin of 5 wt%. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Allowable Subject Matter
Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Yan et al. (CN 111956868) does not disclose the chitosan/gelatin composite gel stacked on an opposing face of a vibration measuring sensor. While Kang et al. (US 9,927,311) discloses vibration sensors [abstract], Kang et al. (US ‘311) does not disclose a frequency-selective signal damper comprising a viscous polymer exhibiting non-Newtonian fluid behavior and a hydrogel exhibiting sol-gel phase transition stacked on an opposing face of the vibration sensor.
Response to Arguments
Applicant's arguments filed 10/30/25 have been fully considered but they are not persuasive. The rejection of claims based upon Yan et al. (CN 111956868) is maintained.
Yan et al. (CN ‘868) was relied on for disclosing a chitosan/gelatin composite gel [abstract], wherein Embodiment 1 [0050-0058] prepares a gel by dissolving 1% (w/v) chitosan and 0.5% (w/v) gelatin in water (85 oC) adjusted to a pH of about 5. The resulting solution was electrophoretically deposited on a stainless steel electrode to afford chitosan/gelatin composite gel (corresponding to ~ 50 parts by weight gelatin per 100 parts by weight chitosan) [0050-0058].
The Declaration under 37 CFR 1.132 filed 1.132 is insufficient to overcome the rejection of claims 1-12 based upon Yan et al. (CN ‘868) as set forth in the last Office action because: While the data for the DMA sweeps at concentrations of 6, 2, 1.5, and 0.6 wt% of gelatin-chitosan (2:1 ratio) samples shows tan δ values at concentrations of 1.5 wt% or lower correspond to a fluid-like phase where no phase transition from viscous to elastic behavior occurs, data for gelatin to chitosan at a 1:2 ratio was not presented. Yan et al. (CN ‘868) discloses chitosan/gelatin composite gel (~ 50 parts by weight gelatin per 100 parts by weight chitosan [1:2 gelatin to chitosan ratio]) [0050-0058]. It is not possible for the Examiner to conclude a 1:2 gelatin to chitosan ratio at concentrations of 1.5 wt% or lower do not show a phase transition. Accordingly, the rejection of claims based upon Yan et al. (CN ‘868) (and the associated inherency statement via In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01]) is maintained.
Yan et al. (CN ‘868) discloses electrophoretically depositing the chitosan/gelatin composite gel on a stainless steel electrode to afford chitosan/gelatin composite gel. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02]. Additionally, the electrode configured to measure a bio-signal appears to be a product by process limitation. “[E]ven 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) [See MPEP 2113].
Yan et al. (CN ‘868) discloses soaking the chitosan/gelatin composite gel with sodium alginate and chitosan solutions to afford a chitosan/gelatin/sodium alginate composite multilayer gel, which was subsequently freeze dried to afford a multi-layer artificial blood vessel [0050-0058]. The examiner maintains the position that the artificial blood vessel obtained by coating the chitosan/gelatin composite gel with alginate/chitosan gel layer [i.e. the composite gel disposed on alginate/chitosan gel (sensor) corresponds to claimed sensor, as an artificial blood vessel detects a signal (pulse)]. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767