DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 3, 2025 has been entered.
Currently, claims 1-20 are pending with claim 1 amended and claims 11-20 withdrawn. The following is a complete response to the November 3, 2025 communication.
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 .
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.
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sotzing (US Pat. Pub. 2015/0017421 A1).
Regarding claim 1, Sotzing provides for a wearable electrode for measuring bio-potentials (disclosed electrically conductive synthetic leather) comprising:
a fabric comprising an assembly of polymeric fibers and nucleophile derivatized nanoparticles dispersed therewith (see [0015] with the fabric formed of the electrically conductive fibrous substrate; see further the desiccant materials throughout as in [0015] and [0029]),
an electrically conductive polymer disposed on the fabric and at least in partial contact with the nucleophile derivatized nanoparticles (electrically conductive polymer disposed on the polymeric fiber as in [0015]), and
an interface configured for coupling to a wiring element (portion of the electrode capable of connecting to a wire element such as in [0049] providing for the electrode to be connected via an interface to a copper wire). Sotzing provides that the electrode is free of metal in that the electrically conductive fibrous substrate is disclosed throughout of the electrode being achieved without metal. See further [0015] providing for “conductive synthetic leather does not require expensive metals such as silver”.
The Examiner notes, with respect to the claimed wiring element and the further limitations of such to be of “an electrically conductive polymer” and to be “free of metal”, the preamble of the claim is directed towards “[a] wearable electrode” and the wiring element is only claimed as functionally claimed in relation to the “an interface configured for coupling to a wiring element”. The Examiner is, therefore, of the position that the further requirements set forth with respect to the wiring element in the claim are readily provided for by the interface set forth in the rejection above. Said differently, the interface of Sotzing is indeed functionally capable of coupling to a wiring element that would be both a) formed of an electrically conductive polymer and b) be free of metal. These limitations fail to structurally distinguish the claimed interface from the prior art interface of Sotzing. It is well established that if the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Sotzing provides that the polymeric fibers comprise at least one of nylon 6, nylon 66, nylon 610, nylon 12, co-polymerized nylon, polyethylene terephthalate, polytrimethylene terephthalate, spandex (polyurethane-polyurea copolymer), polybutylene terephthalate, polypropylene terephthalate, polyurethane, polypropylene, polyethylene, polyester-based polyurethane, a copolymer thereof, or a combination thereof (see the polymeric fiber materials as in [0028]).
Regarding claim 3, Sotzing provides that the nucleophile derivatized nanoparticles comprise silica, titania, alumina, calcium oxide, amine functionalized nanoparticles, or a combination thereof (see [0029] listing the relied upon desiccant materials).
Regarding claim 4, Sotzing provides that the electrically conductive polymer comprises at least one a poly(3,4-ethylenedioxythiophene), a poly(3,4-ethylenedioxy thiophene):poly(styrenesulfonate) aqueous dispersion, a substituted poly(3,4- ethylenedioxy thiophene), a poly(thiophene), a substituted poly(thiophene), a poly(pyrrole), a substituted poly(pyrrole), a poly(aniline), a substituted poly(aniline), a poly(acetylene), a poly(p- phenylenevinylene), a poly(indole), a substituted poly(indole), a poly(carbazole), a substituted poly(carbazole), a poly(azepine), a (poly)thieno[3,4-b]thiophene, a substituted poly( thieno[3,4- b]thiophene), a poly(dithieno[3,4-b:3',4'-d]thiophene), a poly(thieno[3,4-b]furan), a substituted poly(thieno[3,4-b]furan), or a derivative thereof (see the electrically conductive polymer materials as in [0024]). Regarding claim 5, Sotzing provides for various ones of the claimed materials set forth in claim 5 as in [0024]. Regarding claim 6, Sotzing provides that the fabric is stretchable and electrically insulating (see at least [0020], [0024], [0027], and [0028] that provide for the polymeric substrate forming at least a portion of the claimed fabric to be formed of the same materials as in Applicant’s own disclosure at [0072] that is disclosed as an insulating and stretchable material).
Regarding claim 7, Sotzing provides that the stretchable fabric comprises at least one of a polyurethane, a polyester-polyurethane copolymer, a blend of polyurethane or polyester- polyurethane and an additional synthetic organic polymer selected from the group consisting of a polyacrylic, a polyamide, a polycarbonate, a polyether, a polyester, a polyethylene, a polyimide, a polyurea, a polythiourea, a polysiloxane, a polyisoprene, a polybutadiene, a polyethylene oxide, a polylactic acid, and copolymers thereof (via the polymeric fibers as in [0028]).
Regarding claim 8, the Examiner is of the position that the electrode of Sotzing is capable of being washed as claimed. Such is a functional recitation of the intended use of the electrode which, at this time, fails to structurally distinguish the claimed electrode from the prior art electrode of Sotzing.
Regarding claim 9, Sotzing provides that the fabric comprises interlaced fibers, filaments, yarns, laces, meshes, nets, knitted fibers or woven fibers or wherein the fabric comprises a non-woven fabric selected from felt, twisted fibers or braided fibers (see [0017] providing for woven and non-woven arrangements), and wherein the fabric has a (1) substantial surface planar area in relation to its thickness (via the fabric being formed into a sheet as in [0083]), and (2) adequate mechanical strength to give it a cohesive structure (via the fabric able to form multiple structures throughout Sotzing including the sheet as in [0083]).
Regarding claim 10, Sotzing provides that the electrically conductive polymer is a film (see at least [0026] providing that such is a film).
Response to Arguments
Applicant's arguments filed November 3, 2025 have been fully considered but they are not persuasive.
Applicant argues on page 13 of the Remarks that “Sotzing fails to anticipate claims 1-10 as it fails to teach a wearable electrode for measuring bio-potentials where the electrode is coupled to a wiring element where both the electrode and the wiring element are free of metal” and that “Sotzing does no teach all elements of the claimed invention and cannot anticipate the claimed invention”. This is not persuasive.
First, with respect to the requirement of the electrode to be “free of metal”, the Examiner is of the position that Sotzing does indeed provide that the electrode is free of metal in that the electrically conductive fibrous substrate of Sotzing is disclosed throughout as being achieved without metal. Paragraph [0015] specifically provided that “conductive synthetic leather does not require expensive metals such as silver”. Thus, the Examiner finds that Sotzing clearly teaches the electrode to be free of metal as required in claim 1.
Turning to the newly proffered limitations with respect to the claimed wiring element, the Examiner is of the position that the wiring element is set forth within a functional recitation of the intended use of the claimed interface of the electrode. Said differently, the wiring element is not being interpreted as a structural feature of the claimed wearable electrode but, rather, as a structure that the interface needs to be functionally capable of coupling to per the limitation in claim 1 of “an interface configured for coupling to a wiring element”.
The Examiner further notes that it is well established that a functional 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 the instant case, the Examiner maintains that the interface of the electrode is functionally capable of performing the claimed “coupling” requirement in claim 1 to a wiring element wherein the wiring element can be formed from any manner of material including the claimed electrically conductive polymer that is free of metal.
It is, therefore, in view of the reasoning set forth in both the rejection of claim 1 and the Remarks above that the Examiner maintains that the rejection of claim 1-10 under 35 U.S.C. 102(a)(1) as being anticipated by Sotzing (US Pat. Pub. 2015/0017421 A1) remains tenable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
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/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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