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 .
Response to Amendment
This is an office action in response to applicant’s arguments and remarks filed on September 18, 2025. Claims 1-10 and 13-31 are pending in the application. Claims 23-29 are withdrawn, and claims 1-10, 13-22, and 30-31 are being examined herein.
Status of Objections and Rejections
The objections to the claims are withdrawn in view of Applicant’s amendment.
The rejection of the claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of Applicant’s amendment.
All other rejections from the previous office action are maintained and modified as necessitated by the amendments.
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.
Claims 1, 4-10, 13-15, 17-18, and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen et al., Self-Powered Wearable Electronics Based on Moisture Enabled Electricity Generation, Advanced Materials, Vol. 30, Issue 18, 1705925 (2018) (hereinafter “Shen’’), as evidenced by Applicant’s specification with respect to claims 1 and 10.
Regarding claim 1, Shen teaches a self-powered sensing device (a self-powered wearable monitor device, abstract, pg. 2, left column, first paragraph ) comprising:
an electronics component (a humidity/breathing sensor, abstract, pg. 2, left column, first paragraph, pg. 6, left column, second paragraph);
a sensing component (a moisture-enabled electricity generator (MEEG), Figs. 1 & 3a, pg. 1, right column, last paragraph, pg. 4, right column), the sensing component including:
an active material electrode layer (a bottom electrode made of aluminum, Fig. 3a, pg. 4, right column; as evidenced by Applicant’s instant specification, the active material electrode layer may include aluminum, see para. [0066] of the instant US PGPub);
a less active electrode layer (a top electrode made of copper, Fig. 3a, pg. 4, right column; as evidenced by Applicant’s instant specification, the less active electrode layer may include copper, see para. [0066] of the instant US PGPub);
a middle layer between the active material electrode layer and the less active electrode layer, the middle layer incorporating at least one material with nano- and/or micro- scale structures (a layer of titanium dioxide nanowire networks (TDNNs) between the bottom electrode and the top electrode, Fig. 1a, pg. 1, right column, last paragraph, pg. 2, left column, last paragraph, Fig. 3a, pg. 4, right column).
The limitations “self-powered” and “electricity is generated by the sensing component to power the electronics component when moisture comes into contact with the middle layer due to electrophysical or electrochemical reactions between the active material electrode layer and the middle layer” are interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The self-powered wearable monitor device disclosed by Shen teaches all of the structural limitations of the claim and thus is configured for and capable of performing the functional limitations. Examiner further notes that Shen teaches that the TDNN MEEG generates electricity to power the humidity/breathing sensor when the moisture in human breath interacts with the TDNN layer which is adjacent to the bottom electrode, and the configuration of TDNN sandwiched between the top and bottom electrodes generates output voltages under moisture environment which indicates electrochemical reaction (pg. 1, right column, last paragraph, pg. 2, left column, first paragraph, pg. 4, right column, Figs. 3c-3e, pg. 5, left column, first and second paragraphs, pg. 6, left column, second paragraph, pg. 7, left column), so the self-powered wearable monitor device of Shen is capable of the functional limitations “self-powered” and “electricity is generated by the sensing component to power the electronics component when moisture comes into contact with the middle layer due to electrophysical or electrochemical reactions between the active material electrode layer and the middle layer”. Additionally, generally, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP § 2112.01(I).
Regarding claim 4, Shen teaches wherein the middle layer is porous and hydrophilic (the hydrophilic titanium dioxide nanowire networks containing 3D nanochannels and pores, Figs. 1d-1e, pg. 1, right column, last paragraph, pg. 2, right column, second paragraph, Figs. 3c-3e).
Regarding claim 5, Shen teaches wherein the active material electrode layer and the less active electrode layer are in direct electrical contact with the middle layer (the bottom electrode and the top electrode are in direct electrical contact with and sandwich the layer of TDNNs, Fig. 1a, pg. 2, left column, last paragraph, right column, first paragraph, pg. 4, right column).
Regarding claim 6, Shen teaches wherein absorption of moisture, gas, or fluid by the middle layer generates a voltage difference between the active material electrode layer and the less active electrode layer (the diffusion of water molecules from ambient moisture generates a voltage between the bottom electrode and the top electrode of the MEEG, Fig. 1a, pg. 1, right column, last paragraph, Fig. 3a, pg. 4, right column, pg. 5, left column, first and second paragraphs).
The limitation “absorption of moisture, gas, or fluid by the middle layer generates a voltage difference between the active material electrode layer and the less active electrode layer” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The self-powered wearable monitor device disclosed by Shen teaches all of the structural limitations of the claim and thus is configured for and capable of performing the functional limitation as recited supra.
Regarding claim 7, Shen teaches wherein the middle layer comprises TiO2 nanowires (the titanium dioxide nanowire networks, Fig. 1, pg. 1, right column, last paragraph).
Regarding claim 8, Shen teaches the hydrophilic titanium dioxide nanowire networks (Fig. 1, pg. 1, right column, last paragraph). The Applicant is advised that the limitation “treated via a hydrophilic treatment” is a product-by-process limitation. Generally, even though product- by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Thus, the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. MPEP § 2113(I). The process of treating via a hydrophilic treatment does not structurally change the hydrophilic middle layer, so Shen’s layer of hydrophilic titanium dioxide nanowire networks teaches the structure implied by the hydrophilic treatment as claimed.
Regarding claim 9, Shen teaches the hydrophilic titanium dioxide nanowire networks (Fig. 1, pg. 1, right column, last paragraph). The Applicant is advised that the limitation “the hydrophilic treatment comprises an oxygen plasma treatment or acid oxidation” is a product-by- process limitation. Generally, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. Thus, the structure implied by the process steps should be considered when assessing the patentability of product- by-process claims over the prior art. MPEP § 2113(I). The process of hydrophilic treatment comprising oxygen plasma treatment or acid oxidation does not structurally change the hydrophilic middle layer, so Shen’s layer of hydrophilic titanium dioxide nanowire networks teaches the structure implied by the hydrophilic treatment comprising oxygen plasma treatment or acid oxidation as claimed.
Regarding claim 10, Shen teaches wherein a material of the less active electrode layer is less chemically or physically reactive with respect to moisture compared to a material of the active material electrode layer (the top electrode is made of copper and the bottom electrode is made of aluminum, Fig. 3a, pg. 4, right column; as evidenced by Applicant’s instant specification, copper is less chemically or physically reactive with respect to moisture compared to aluminum, para. [0012], [0077] of the instant US PGPub).
The limitation “less chemically or physically reactive with respect to moisture” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The self-powered wearable monitor device disclosed by Shen teaches all of the structural limitations of the claim and thus is configured for and capable of performing the intended use and/or functional language as recited supra.
Regarding claim 13, Shen teaches wherein the electronics component comprises an application specific sensor (the humidity/breathing sensor, abstract, pg. 2, left column, first paragraph, pg. 6, left column, second paragraph).
Regarding claim 14, Shen teaches wherein the application specific sensor comprises a humidity sensor (the humidity/breathing sensor, abstract, pg. 2, left column, first paragraph, pg. 6, left column, second paragraph).
Regarding claim 15, claim 13 recites “wherein the electronics component comprises at least one of a low-energy wireless device, a low-energy wireless communication device, a Bluetooth™ low energy (BLE) device, or an application specific sensor,” and therefore, the limitation “wherein the low-energy wireless device is powered by absorption of moisture by the middle layer generating a voltage difference between the active material electrode layer and the less active electrode layer” of claim 15 is further limiting an optional component of claim 13 and is not further limiting the electronics component when the electronics component comprises an application specific sensor.
Regarding claim 17, Shen teaches wherein the active material electrode layer comprises Aluminium (Al) (the bottom electrode is made of aluminum, Fig. 3a, pg. 4, right column).
Regarding claim 18, Shen teaches wherein the passive electrode layer comprises copper (the top electrode is made of copper, Fig. 3a, pg. 4, right column).
Regarding claim 30, Shen teaches wherein the middle layer comprises a matrix or compacted structure of the at least one material with nano- or micro-scale structures that can absorb moisture from an ambient gas and that has at least one nanoscale or microscale dimension (the layer of titanium dioxide nanowire networks (TDNNs) having a nanomesh structure facilitates diffusion of water molecules from ambient moisture, Fig. 1, pg. 1, right column, last paragraph, pg. 2, left column, last paragraph, Figs. 3b-3e, pg. 5, left column, first and second paragraphs).
The limitation “absorb moisture from an ambient gas” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The TDNNs layer disclosed by Shen teaches all of the structural limitations of the claim and thus is configured for and capable of performing the intended use and/or functional language as recited supra.
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.
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Shen as applied to claim 1 above, and further in view of Hatanaka et al. (US 4,120,813 A).
Regarding claim 2, Shen teaches the layer of titanium dioxide nanowire networks (TDNNs) which facilitate the diffusion of water molecules from ambient moisture (Shen, Fig. 1a, pg. 1, right column, last paragraph, pg. 2, left column, last paragraph, Fig. 3a, pg. 4, right column). Shen fails to teach wherein the middle layer comprises pressed graphite-based powder or graphite.
Hatanaka teaches a humidity sensor made by dispersing a conductive material in a hygroscopic resin (Hatanaka, abstract). Hatanaka teaches that graphite is dispersed in the hygroscopic resin to control the resistivity of the humidity sensor (Hatanaka, col. 3, lns. 61-67, col. 4, lns. 9-12). Hatanaka teaches that the solid film 4 having the graphite dispersed therein is disposed between two electrodes 2, 3 and has micrometer dimensions (Hatanaka, Fig. 1, col. 7, lns. 20-35). Hatanaka teaches that the hygroscopic resin absorbs moisture in the ambient humidity and the graphite therein causes the humidity sensor to exhibit high sensitivity to humidity while maintaining high stability in humidity sensing operation for a long time (Hatanaka, col. 3, lns. 44-58).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the layer of titanium dioxide nanowire networks of Shen with the micrometer sized solid film having graphite dispersed therein as taught by Hatanaka in order to yield the predictable result of absorbing moisture in the ambient humidity and causing the humidity sensor to exhibit high sensitivity to humidity while maintaining high stability in humidity sensing operation for a long time (Hatanaka, col. 3, lns. 44-58). Simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007); MPEP § 2143(I)(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Regarding claim 3, claim 2 recites “wherein the middle layer comprises pressed graphite-based powder or graphite,” and therefore, the limitation “wherein the pressed graphite powder is pressed into a disc-shaped middle layer’ of claim 3 is further limiting an optional component of claim 2 and is not further limiting the middle layer when the middle layer comprises graphite.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Shen as applied to claim 1 above, and further in view of Krasnow et al. (US 2017/0354546 A1).
Regarding claim 16, Shen teaches the electronics component (the humidity/breathing sensor, Shen, abstract, pg. 2, left column, first paragraph, pg. 6, left column, second paragraph). Shen fails to teach wherein the electronics component comprises a radio component.
Krasnow teaches a moisture-sensitive device provided with a fluid-sensitive battery, where exposure of the battery to fluid causes the battery to provide a voltage that can be used for power (Krasnow, abstract). Krasnow teaches that the moisture-detecting device may include a radio to transmit radio-frequency signals that indicate the presence of fluids to a receiver device (Krasnow, para. [0039], [0066]-[0067]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the humidity/breathing sensor of Shen to include a radio component as taught by Krasnow because it would be able to transmit radio-frequency signals that indicate the presence of fluids to a receiver device. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Claims 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al., Self-Powered Wearable Electronics Based on Moisture Enabled Electricity Generation, Advanced Materials, Vol. 30, Issue 18, 1705925 (2018) (hereinafter “Shen’’) in view of Krasnow et al. (US 2017/0354546 A1), as evidenced by Applicant’s instant specification with respect to claim 19.
Regarding claim 19, Shen teaches a system for moisture detection (a system for moisture monitoring, Shen, abstract) comprising:
at least one self-powered sensing device (a self-powered wearable monitor device, Shen, abstract, pg. 2, left column, first paragraph), the at least one self-powered sensing device including:
an electronics component (a humidity/breathing sensor, Shen, abstract, pg. 2, left column, first paragraph, pg. 6, left column, second paragraph); and
a sensing component (a moisture-enabled electricity generator (MEEG), Shen, Figs. 1 & 3a, pg. 1, right column, last paragraph, pg. 4, right column), the sensing component including:
an active material electrode layer (a bottom electrode made of aluminum, Shen, Fig. 3a, pg. 4, right column; as evidenced by Applicant’s instant specification, the active material electrode layer may include aluminum, see para. [0066] of the instant US PGPub);
a less active electrode layer (a top electrode made of copper, Shen, Fig. 3a, pg. 4, right column; as evidenced by Applicant’s instant specification, the less active electrode layer may include copper, see para. [0066] of the instant US PGPub);
a middle layer between the active material electrode layer and the less active electrode layer, the middle layer incorporating at least one material with nano- and/or micro- scale material (a layer of titanium dioxide nanowire networks (TDNNs) between the bottom electrode and the top electrode, Shen, Fig. 1a, pg. 1, right column, last paragraph, pg. 2, left column, last paragraph, Fig. 3a, pg. 4, right column).
Shen teaches that wearable electronics including smart mobile devices can be powered by the moisture-enabled electricity generator (MEEG) (Shen, pg. 1, left column, right column, last paragraph). Shen fails to teach an endpoint node for receiving a signal transmitted by the electronics component when powered by the sensing component.
Krasnow teaches a moisture-sensitive device provided with a fluid-sensitive battery, where exposure of the battery to fluid causes the battery to provide a voltage that can be used to power a transmitter which provides a wireless transmission to a smartphone indicating that moisture has been detected (Krasnow, abstract, para. [0027]). Krasnow teaches that the smartphone could provide an auditory, visual, or other indication to a user to inform the user that moisture is present, for example in a diaper, so that the user can then change the diaper (Krasnow, para. [0027], [0043], [0066]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the self-powered wearable monitor device of Shen to transmit a signal to a smartphone as taught by Krasnow because a user of the smartphone can then be notified that moisture has been detected, and this can notify the user that a diaper is in need of changing. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
The limitations “self-powered,” “electricity is generated by the sensing component to power the electronics component when moisture comes into contact with the middle layer due to electrophysical or electrochemical reactions between the active material electrode layer and the middle layer,” and “for receiving a signal transmitted by the electronics component when powered by the sensing component” are interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The system for moisture monitoring disclosed by Modified Shen teaches all of the structural limitations of the claim and thus is configured for and capable of performing the functional limitations. Examiner further notes that Modified Shen teaches that the TDNN MEEG generates electricity to power the humidity/breathing sensor when the moisture in human breath interacts with the TDNN layer which is adjacent to the bottom electrode, and the configuration of TDNN sandwiched between the top and bottom electrodes generates output voltages under moisture environment which indicates electrochemical reaction (pg. 1, right column, last paragraph, pg. 2, left column, first paragraph, pg. 4, right column, Figs. 3c-3e, pg. 5, left column, first and second paragraphs, pg. 6, left column, second paragraph, pg. 7, left column), so the system for moisture monitoring of Modified Shen is capable of the functional limitations “self-powered” and “electricity is generated by the sensing component to power the electronics component when moisture comes into contact with the middle layer due to electrophysical or electrochemical reactions between the active material electrode layer and the middle layer”. Additionally, generally, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP § 2112.01(I). Examiner further notes that Modified Shen teaches that the self-powered wearable monitor device transmits a signal to a smartphone (see modification supra), so the system for moisture monitoring of Modified Shen is capable of the functional limitation “for receiving a signal transmitted by the electronics component when powered by the sensing component.”
Regarding claim 20, Modified Shen teaches wherein the endpoint node is a smartphone (the smartphone, Krasnow, para. [0027], [0043], [0066], see modification supra).
Regarding claim 21, Modified Shen teaches that the self-powered wearable monitor device comprises the humidity/breathing sensor (Shen, abstract, pg. 2, left column, first paragraph, pg. 6, left column, second paragraph) and may comprise multiple MEEG cells connected in series or in parallel to increase the output (Shen, abstract, pg. 2, left column, first paragraph, Fig. 4, pg. 5, right column, second through fourth paragraphs). Modified Shen fails to teach wherein the at least one self-powered sensing device comprises at least two self-powered sensing devices for creating a mesh network. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to duplicate the self-powered wearable monitor device of Modified Shen to provide more sensors at multiple locations to detect humidity and more MEEG cells to increase the output. Additionally, generally, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B).
Regarding claim 22, Modified Shen teaches wherein the at least one self-powered sensing device is integrated within a custom-wearable device (the self-powered wearable monitor device, Shen, abstract, pg. 2, left column, first paragraph).
The limitation “wherein the at least one self-powered sensing device is integrated within a piece of clothing, a band-aid, a diaper, a custom-wearable device or a bedsheet” is interpreted as intended use language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The self-powered wearable monitor device disclosed by Modified Shen teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use limitation as recited in the rejection supra.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Shen as applied to claim 1 above, and further in view of Feldman et al. (US 2010/0213082 A1), as evidence by Applicant’s instant specification.
Regarding claim 31, Shen teaches wherein the active material electrode layer comprises an elemental metal which reacts with non-oxidizing acids at room temperature, but does not combust in a reaction with water or oxygen at room temperature in an air ambient at normal atmospheric pressure (the bottom electrode is made of aluminum, Shen, Fig. 3a, pg. 4, right column; as evidenced by Applicant’s instant specification, the active material electrode layer may include aluminum which reacts with non-oxidizing acids at room temperature, but does not combust in a reaction with water or oxygen at room temperature in an air ambient at normal atmospheric pressure, see para. [0077] of the instant US PGPub). Shen fails to teach wherein the active material electrode layer comprises plural elemental metals and their alloys which react with non-oxidizing acids at room temperature, but do not combust in a reaction with water or oxygen at room temperature in an air ambient at normal atmospheric pressure.
Feldman teaches a self-powered analyte determining device that includes a working electrode having analyte sensing components (Feldman, abstract). Feldman teaches that the materials of the electrode may include a mixture of aluminum, iron, magnesium, and their alloys (para. [0064]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the aluminum electrode of Shen with an electrode including a mixture of aluminum, iron, magnesium, and their alloys as taught by Feldman in order to yield the predictable result of an electrode in a self-powered wearable monitor device. As evidenced by Applicant’s instant specification, materials such as magnesium, aluminum, iron, and alloys of these elemental metals react with non-oxidizing acids at room temperature, but do not combust in a reaction with water or oxygen at room temperature in an air ambient at normal atmospheric pressure (see para. [0077] of the instant US PGPub).
The limitation “react with non-oxidizing acids at room temperature, but do not combust in a reaction with water or oxygen at room temperature in an air ambient at normal atmospheric pressure” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The bottom electrode disclosed by Modified Shen teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use and/or functional language as recited supra.
Response to Arguments
Applicant's arguments filed September 18, 2025 have been fully considered but they are not persuasive.
In the arguments presented on page 8 of the amendment, Applicant argues that in Shen, the power is generated within the TiO2 layer, while in the amended independent claims, the principle for voltage generation is due to the interaction/reaction between the middle layer and the active materials. Applicant asserts that this discrepancy in principles is reflected in huge differences in voltage amplitude, approximately 2V for the claimed system versus approximately 0.45 V for the system taught in Shen, so the claimed system provides an improvement over current systems (namely the system taught in Shen). Applicant asserts that Shen teaches that “Our previous work shows that the voltage generation from TDNNs exposed to moisture may be due to the diffusive flow of ions along the extensive network of nanochannels in the TiO2 structure,” so Shen attributes the voltage generation to the diffusive flow of ions within the TiO2 structure, rather than the interactions between fluid and the active material electrode as claimed. Applicant asserts that in Shen, the work function difference in the electrode is considered as the main factor; however, in the current application, the work function is not considered as a main factor contributing to the voltage generation. Applicant asserts that according to Shen, the Nernst voltage has very little influence on the electricity output, and the work function difference is not the main cause of voltage generation, so one skilled in the art when reading Shen would and could not expect that the electrode can generate the Nernst voltage or consider generating electricity using the Nernst voltage.
Examiner respectfully disagrees. In response to applicant's argument that Shen fails to teach “due to electrophysical or electrochemical reactions between the active material electrode layer and the middle layer”, 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. In this case, Shen teaches that the TDNN MEEG generates electricity to power the humidity/breathing sensor when the moisture in human breath interacts with the TDNN layer which is adjacent to the bottom electrode, and the configuration of TDNN sandwiched between the top and bottom electrodes generates output voltages under moisture environment which indicates electrochemical reaction (pg. 1, right column, last paragraph, pg. 2, left column, first paragraph, pg. 4, right column, Figs. 3c-3e, pg. 5, left column, first and second paragraphs, pg. 6, left column, second paragraph, pg. 7, left column), so the self-powered wearable monitor device of Shen is capable of the functional limitation “electricity is generated by the sensing component to power the electronics component when moisture comes into contact with the middle layer due to electrophysical or electrochemical reactions between the active material electrode layer and the middle layer”. Additionally, generally, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP § 2112.01(I).
In the arguments presented on page 8 of the amendment, Applicant argues that Shen teaches that “The electricity output is not sensitive to the type of the top electrode material. We use aluminum because this material is inexpensive and can be easily deposited compared to other conductive materials” (Page 14251, paragraph 1 in RESULTS AND DISCUSSION section).
Examiner respectfully disagrees. It is unclear where Applicant is citing this teaching as Shen comprises pages 1-8, and Examiner could not find such teaching in the prior art reference.
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 VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794