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
Applicant’s election without traverse of Group II in the reply filed on May 15th, 2025 is acknowledged.
Claims 1 and 3-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 15th, 2025.
Claim Status
Claim 2 is currently pending and under consideration. Claims 2 has been amended. Claims 1 and 3-15 are herein withdrawn as being drawn toward a non-elected group in accordance with the restriction requirement mailed on May 15th, 2026.
Response to Arguments
Applicant’s arguments filed September 5th, 2025, with respect to the rejection(s) of claim(s) 2 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Akamatsu (U.S. Publication 2019/0031929) in view of Ledger et al. (U.S. Patent No. 5,693,010).
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akamatsu (U.S. Publication 2019/0031929) in view of Ledger et al. (U.S. Patent No. 5,693,010).
Regarding claim 2, Akamatsu discloses a pressure-sensitive adhesive sheet (Fig. 3)for placement on adherent surfaces (¶120 adherend), comprising:
an electrically peelable pressure-sensitive adhesive (Fig. 3) comprising:
an electrically conductive member 4, and
a pressure-sensitive adhesive layer 1 in direct contact with the electrically conductive member 4 (Fig. 3 shows , and
one additional conductive member (¶0120 conductive adherend).
Akamatsu further discloses the electrically conductive member and the additional conductive member being placed on opposite sides of the adhesive layer for the purpose of applying the electrical current through the entire adhesive layer (¶0120 it is preferable to perform the current-carrying by connecting terminals to one end and the other end of the adhesive sheet; Fig. 4 shows connection at alpha and beta on opposite ends).
Akamatsu does not expressly disclose the adhesive sheet being applied on skin, or the additional conductive member being not in electrical contact with any of said pressure-sensitive adhesive layer and said electrically conductive member, wherein the one more additional conductive members are provided so as to establish electrical contact to the skin upon applying the sheet.
Regarding the additional conductive member being not in electrical contact with any of said-pressure sensitive adhesive layer and said electrically conductive member, wherein the additional conductive member is provided so as to establish electrical contact to the skin upon applying the sheet, however, in the same field of endeavor of establishing electrical contact through the skin between two conductive members, Ledger teaches including an electrically conductive member 12 and an additional conductive member 14 together in a device to be placed on a surface to which the device adheres, wherein the electrically conductive members are electrically isolated, i.e. not in electrical contact with each other, from one another (Col. 5 lines 1-59 electrical insulator positioned between donor electrode and donor reservoir and the counter electrode and counter reservoir…insulator prevents device from short-circuiting through a path which does not include the body surface to which device is applied) before being placed on the patient skin for the purpose of forcing the electrical current to flow through the skin of the patient by not short-circuiting through a path that doesn’t include the skin (Col. 5 lines 1-59).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the adhesive sheet of Akamutsu to have included an additional conductive member electrically isolated from the other components of the adhesive sheet as taught by Ledger for the purpose directing the electrical flow path such that electrical current only occurs through a path which includes the adherend and does not short-circuit through an alternate path (Col. 5 lines 1-59 of Ledger electrical insulator positioned between donor electrode and donor reservoir and the counter electrode and counter reservoir…insulator prevents device from short-circuiting through a path which does not include the body surface to which device is applied).
Akamutsu in view of Ledger do not expressly disclose or suggest the adherend being skin and therefore do not expressly disclose or suggest the limitations of “applied to skin” or “establish electrical contact to the skin”, however, these limitations are considered functional language depicting the intended use of the adhesive layer to have an adherend of a patient skin surface (¶0002 of applicant’s specification maximize the bonding strength of the medical adhesive to human skin”). 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 the claim, then it meets the claim. In the instant case, the device of Akamutsu in view of Ledger discloses all the structure as claimed, and is further used disclosed to be utilized as an adherent structure capable of adhering to a separate object, i.e. adherent. As such, it is of performing the functions as claimed (i.e. it is capable of being applied to skin and thus establishing electrical contact with skin as the adherent).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sibalis (U.S. Patent No. 5,605,536) discloses isolated electrodes placed on skin
Marchitto et al. (U.S. Publication 2004/0236269) discloses isolated electrodes placed on skin.
Akamatsu et al. (U.S. Publication 2018/0265750) Fig. 4 discloses two electrically conductive elements that can be independently electrically activated with a substrate 31 made from electrically insulating materials, i.e. plastic or paper-based substrate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER DANIEL SMITH whose telephone number is (571)272-8564. The examiner can normally be reached Monday - Friday 7:30am-5:00pm.
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/PETER DANIEL SMITH/Examiner, Art Unit 3781
/CATHARINE L ANDERSON/Primary Examiner, Art Unit 3781
