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 I , claims 18-25, in the reply filed on 10/28/2025 is acknowledged.
Claims 26-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/28/2025.
Claim Rejections - 35 USC § 112
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 19 and 25 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.
Regarding claim 19, claim 19 recites “the total amount (100 vol.%)” in line 2. It is unclear if the limitations within the parentheses are part of the claimed invention or an example of the term.
Regarding claim 25, claim 25 recites the limitation "the movement of the human body" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to recite “the movement of the human body” as “a movement of a human body”.
Claim Rejections - 35 USC § 102
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 18-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiigi et al. (HIROSHI SHIIGI et al., Smart Golden Leaves Fabricated by Integrating Au Nanoparticles and Cellulose Nanofibers , ChemNanoMat, 2019, PP. 581 - 585; cited in the IDS filed 05/12/2023).
Regarding claim 18, Shiigi teaches a composite film (abstract and Figs. 1-3 arrangement of AuNPs on CNFs that form a gold leaf) comprising electroconductive nanoparticles (abstract and Figs. 1 and 2, AuNPs) and nanofibers (abstract and Figs. 1 and 2, CNFs), wherein
the nanofibers have a plurality of gaps therebetween that are communicated with an outside (abstract and Figs. 1 and 2 teaches AuNPs between various CNFs, therefore the CNFs comprise gaps therebetween that are in communication with an outside environment to allow the AuNPs to be between the CNFs);
the electroconductive nanoparticles adhere to the surface of the nanofibers and exist in the plurality of gaps (abstract, Figs. 1 and 3, and page 583, left column, last sentence, teach AuNPs bind and act as linkers between various CNFs, therefore the AuNPs adhered to and exist between gaps of CNFs; page 582, right column, first paragraph teaches AuNPs dispersedly bound to CNFs);
the nanofibers are hydrophilic and biocompatible (abstract and Fig. 3 teaches cellulose nanofibers, which are structurally hydrophilic and biocompatible; note that the instant specification, paragraph [0012], discusses the nanofiber comprises cellulose; therefore, Shiigi’s nanofiber is the same as the instant invention and must have the same properties as claimed, MPEP 2112.01);
the composite film is electroconductive (Fig. 3C teaches the gold leaf with measured electrical resistance, therefore the gold leaf is electroconductive), has a total reflectance of lower than 50% of that of a pure metal foil (abstract and Figs. 1-3 teach a composite film of AuNPs and CNFs; Fig. 1 teaches hybrid films with 13 vol.% of AuNPs; the instant specification, paragraph [0053], discusses the composite film is AuNPs and CNFs, and paragraph [0011] teaches the amount of nanoparticles is 2-20 vol.%; therefore, Shiigi’s composite film is the same as the instant invention and must have the same properties, e.g. total reflectance, as claimed, MPEP 2112.01), and is used in close contact with a body to be contacted that is hydrophilic- treated or that contains moisture (interpreted as an intended use of the composite film, see MPEP 2114; the gold leaf is structurally capable of being used as claimed at a later time; note that “a body” is not positively recited structurally);
the composite film can achieve a moisture content of 2.5 times its dry weight (abstract and Figs. 1-3 teach a composite film of AuNPs and CNFs; Fig. 1 teaches hybrid films with 13 vol.% of AuNPs; the instant specification, paragraph [0053], discusses the composite film is AuNPs and CNFs, and paragraph [0011] teaches the amount of nanoparticles is 2-20 vol.%; therefore, Shiigi’s composite film is the same as the instant invention and must have the same properties or functions, e.g. moisture content, as claimed, MPEP 2112.01); and
a change in the resistance value of the composite film caused by an increase or decrease of a liquid existing in the plurality of gaps is 0.5 ohm or smaller (abstract and Figs. 1-3 teach a composite film of AuNPs and CNFs; Fig. 1 teaches hybrid films with 13 vol.% of AuNPs; the instant specification, paragraph [0053], discusses the composite film is AuNPs and CNFs, and paragraph [0011] teaches the amount of nanoparticles is 2-20 vol.%; therefore, Shiigi’s composite film is the same as the instant invention and must have the same properties or functions, e.g. change in resistance value, as claimed, MPEP 2112.01).
Note that “body” and “liquid” are not positively recited structurally and is interpreted as a functional limitation of the claimed system. A claim is only limited by positively recited elements; thus, inclusion of the material or article (“body” and “liquid”) worked upon by a structure (composite film) being claimed does not impart patentability to the claims (see MPEP 2115).
Regarding claim 19, Shiigi further teaches wherein the amount of the electroconductive nanoparticles is 2.0 to 20 vol.% with respect to the total amount (100 vol.%) of the electroconductive nanoparticles and the nanofibers (Fig. 1 teaches hybrid films with 13 vol.% of AuNPs).
Regarding claim 20, Shiigi further teaches wherein the nanofiber comprises cellulose (abstract, “cellulose nanofibers”).
Regarding claim 21, Shiigi further teaches wherein the electroconductive nanoparticle comprises a metal, a metal oxide, or carbon (abstract, “gold nanoparticles”).
Regarding claim 22, Shiigi further teaches wherein a tensile strength of the composite film is 0.5 to 100 MPa (Fig. 1e).
Regarding claim 23, Shiigi further teaches wherein the body to be contacted is skin or a tissue in a living body (interpreted as an intended use of the composite film, see MPEP 2114; the gold leaf is structurally capable of being used to contact skin or tissue in a living body as claimed at a later time; note that “body” is not positively recited structurally).
Note that “body” and “skin or a tissue in a living body” are not positively recited structurally and is interpreted as a functional limitation of the claimed system. A claim is only limited by positively recited elements; thus, inclusion of the material or article (“body” and “skin or a tissue in a living body”) worked upon by a structure (composite film) being claimed does not impart patentability to the claims (see MPEP 2115).
Regarding claim 24, Shiigi further teaches wherein the body to be contacted comprises metal, glass, plastic, ceramic, or carbon (interpreted as an intended use of the composite film, see MPEP 2114; the gold leaf is structurally capable of being used to contact metal, glass, plastic, ceramic, or carbon as claimed at a later time; note that “metal, glass, plastic, ceramic, or carbon” is not positively recited structurally).
Note that “body” and “metal, glass, plastic, ceramic, or carbon” are not positively recited structurally and is interpreted as a functional limitation of the claimed system. A claim is only limited by positively recited elements; thus, inclusion of the material or article (“body” and “metal, glass, plastic, ceramic, or carbon”) worked upon by a structure (composite film) being claimed does not impart patentability to the claims (see MPEP 2115).
Regarding claim 25, Shiigi further teaches wherein the composite film has flexibility (page 584, left column teaches the gold leaves possess flexibility) due to which the composite film is deformed or expands or contracts in accordance with the movement of the human body when having been attached to the human body (interpreted as an intended use of the composite film, see MPEP 2114; the gold leaf is structurally capable of deforming, expanding or contracting as claimed at a later time; note that “human body” is not positively recited structurally), and shows a change in the resistance value caused by the movement of the human body is 2.0 ohm or smaller (interpreted as an intended use of the composite film, see MPEP 2114; abstract and Figs. 1-3 teach a composite film of AuNPs and CNFs; Fig. 1 teaches hybrid films with 13 vol.% of AuNPs; the instant specification, paragraph [0053], discusses the composite film is AuNPs and CNFs, and paragraph [0011] teaches the amount of nanoparticles is 2-20 vol.%; therefore, Shiigi’s composite film is the same as the instant invention and must have the same properties or functions, e.g. change in resistance value, as claimed, MPEP 2112.01).
Note that “movement” and “human body” are not positively recited structurally and is interpreted as a functional limitation of the claimed system. A claim is only limited by positively recited elements; thus, inclusion of the material or article (“movement” and “human body”) worked upon by a structure (composite film) being claimed does not impart patentability to the claims (see MPEP 2115).
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.
In an alternative interpretation of claim 18, claim is rejected under 35 U.S.C. 103 as being unpatentable over Shiigi et al. (HIROSHI SHIIGI et al., Smart Golden Leaves Fabricated by Integrating Au Nanoparticles and Cellulose Nanofibers , ChemNanoMat, 2019, PP. 581 - 585; cited in the IDS filed 05/12/2023) in view of Frey et al. (US 20130299214 A1) and Naficy et al. (WO 2020000062 A1).
In this alternative interpretation, Shiigi is interpreted as failing to teach “a total reflectance of lower than 50% of that of a pure metal foil”, “can achieve a moisture content of 2.5 times its dry weight”, and “a change in the resistance value of the composite film caused by an increase or decrease of a liquid existing in the plurality of gaps is 0.5 ohm or smaller”.
Regarding claim 18, Shiigi teaches a composite film (abstract and Figs. 1-3 arrangement of AuNPs on CNFs that form a gold leaf) comprising electroconductive nanoparticles (abstract and Figs. 1 and 2, AuNPs) and nanofibers (abstract and Figs. 1 and 2, CNFs), wherein
the nanofibers have a plurality of gaps therebetween that are communicated with an outside (abstract and Figs. 1 and 2 teaches AuNPs between various CNFs, therefore the CNFs comprise gaps therebetween that are in communication with an outside to allow the AuNPs to be between the CNFs);
the electroconductive nanoparticles adhere to the surface of the nanofibers and exist in the plurality of gaps (abstract, Figs. 1 and 3, and page 583, left column, last sentence, teach AuNPs bind and act as linkers between various CNFs, therefore the AuNPs adhered to and exist between gaps of CNFs; page 582, right column, first paragraph teaches AuNPs dispersedly bound to CNFs);
the nanofibers are hydrophilic and biocompatible (abstract and Fig. 3 teaches cellulose nanofibers, which are structurally hydrophilic and biocompatible; note that the instant specification, paragraph [0012], discusses the nanofiber comprises cellulose; therefore, Shiigi’s nanofiber is the same as the instant invention and must have the same properties as claimed, MPEP 2112.01);
the composite film is electroconductive (Fig. 3C teaches the gold leaf with measured electrical resistance, therefore the gold leaf is electroconductive), and is used in close contact with a body to be contacted that is hydrophilic- treated or that contains moisture (interpreted as an intended use of the composite film, see MPEP 2114; the gold leaf is structurally capable of being used as claimed at a later time; note that “a body” is not positively recited structurally);
While Shiigi teaches the composite film holds great promise for applications including coatings, smart papers, electronic skins, and wearable devices (abstract), Shiigi fails to teach: the composite film has a total reflectance of lower than 50% of that of a pure metal foil; the composite film can achieve a moisture content of 2.5 times its dry weight; and a change in the resistance value of the composite film caused by an increase or decrease of a liquid existing in the plurality of gaps is 0.5 ohm or smaller.
Frey teaches an article having a substrate having a nanostructured surface and a conductor micropattern on the surface (abstract), wherein the article can comprise conductor micropatterns to function as sensor elements (paragraph [0223]). Frey teaches problems of metal-based conductors, such as undesired reflected light, and the desire to reduce reflection (paragraphs [0002]-[0007]). Frey teaches conductive micropatterns may have an antireflective property, and may have a reflectance of less than 50% (paragraph [0076]). Frey teaches the article can comprise nanoparticles and nanofibers (paragraph [0102]). Frey teaches articles have desirable antireflection properties (paragraph [0162]).
Since Frey teaches conductive articles that include nanoparticles and nanofibers, similar to Shiigi, 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 composite film of Shiigi to incorporate the teachings of conductive articles with total reflectance lower than 50% of Frey (paragraph [0076]) to provide: the composite film has a total reflectance of lower than 50% of that of a pure metal foil. Doing so would have a reasonable expectation of successfully improving optical properties and reduce undesired reflected light as discussed by Frey (paragraphs [0002]-[0007]).
While Shiigi teaches the composite film holds great promise for applications including coatings, smart papers, electronic skins, and wearable devices (abstract), modified Shiigi fails to teach: the composite film can achieve a moisture content of 2.5 times its dry weight; and a change in the resistance value of the composite film caused by an increase or decrease of a liquid existing in the plurality of gaps is 0.5 ohm or smaller.
Naficy teaches a hydrogel for pH sensing that are flexible, for incorporation in medical devices and wearable technologies (abstract; page 1, first paragraph). Naficy teaches conventional electrolytic pH sensors cannot be directly used in wet environments and commercial sensors are incompatible with biological systems where nature and biological species are mostly soft, wet, and delicate (page 1, last paragraph - page 2, first paragraph). Naficy teaches flexible pH sensors based on nanomaterials such as nanoparticles have improved performance and stability (page 2, second full paragraph). Naficy teaches hydrogel mixtures can include conductive nanoparticles or nanowires (page 22, fourth paragraph). Naficy teaches embodiments where the substrate comprises cellulose (page 32, fourth full paragraph). Naficy teaches resistance varies linearly with pH (page 26, third paragraph). Naficy teaches the hydrogel includes a polymer that is swellable in water, such as at least 4 times its own weight in water (page 13, last paragraph - page 14, first paragraph). Naficy teaches electrical stability of the films during bending and twisting is particularly important for flexible sensor applications (page 42, last paragraph).
Shiigi teaches gold leaf-coated beads exhibited no changes in electrical resistance after 50 cycles (page 583, right column, last paragraph). Shiigi teaches the gold leaf-coated bead exhibited good thermal resistance and average electrical resistance of approximately 1 ohm with a variation of +-0.1ohm (page 584, left column). Shiigi teaches no change in surface morphology of the gold leaf-coated microbeads after an ultrasonication in a water (page 584, left column).
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 composite film of modified Shiigi to incorporate the teachings of flexible sensors that can be used in wet environments that are able to swell to at least 4 times its weight and electrical stability of the films of Naficy (page 1, last paragraph - page 2, first paragraph; page 13, last paragraph - page 14, first paragraph; page 42, last paragraph) and the teachings of stable electrical resistance with variation of 0.1 ohm of Shiigi (page 583, right column, last paragraph; page 584, left column) to provide: the composite film can achieve a moisture content of 2.5 times its dry weight; and a change in the resistance value of the composite film caused by an increase or decrease of a liquid existing in the plurality of gaps is 0.5 ohm or smaller. Doing so would have a reasonable expectation of successfully improving stability of resistance of the composite film and compatibility of the composite film in wet environments, such as with biological species as discussed by Naficy (page 1, last paragraph - page 2, first paragraph; page 42, last paragraph).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nagaoka et al. (JP 2018-154921 A; cited in the IDS filed 05/12/2023, see machine translation) teaches a composite planar body comprising cellulose nanofibers and metal nanoparticles (page 2).
Zhang et al. (TAIJI ZHANG et al., "Biotemplated Synthesis of Gold Nanoparticle-Bacteria Cellulose Nanofiber Nanocomposites and Their Application in Biosensing", Advanced Functional Materials, 2010, PP. 1152 - 1160; cited in the IDS filed 05/12/2023) teaches gold nanoparticle-bacteria cellulose nanofiber nanocomposites for biosensing (abstract; Fig. 1).
Park et al., (Park et al., “An Organic/Inorganic Nanocomposite of Cellulose Nanofibers and ZnO Nanorods for Highly Sensitive, Reliable, Wireless, and Wearable Multifunctional Sensor Applications”, ACS Appl. Mater. Interfaces 2019, 11, 48239−48248) teaches a composite film comprising nanorod and cellulose nanofibers (abstract; Fig. 1).
Bains et al. (US 20180294067 A1) teaches a polymer matrix film (abstract), wherein conductive materials useful in the preparation of a polymer matrix film of the invention may be comprised of conductive particles including, but not limited to, graphitized carbon and metallic nanoparticles, such as gold or silver nanoparticles, graphene, single- or multi-walled carbon nanotubes, and carbon nanofibers, or mixtures thereof (paragraph [0015]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H NGUYEN whose telephone number is (571)272-2338. The examiner can normally be reached M-F 7:30A-5:00P.
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/HENRY H NGUYEN/Primary Examiner, Art Unit 1758