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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/14/2023 is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “210” has been used to designate both first magnet and a second magnet in figure 2. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the electrode buried under the skin must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
Claims 1 - 5 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.
Claim 1 states: “an electrode terminal buried in the insulating base material such that a signal detection surface is included in a part of a lower surface on a side in contact with the skin surface of the insulating base material”. This is seen as indefinite because it is unclear if this is meant to mean that the “signal detection surface” is in contact with the “skin surface of the insulating base material” or the “signal detection surface” is located on the side of the insulating base material that is in contact with the skin. Further, figure 2 does not show “an electrode terminal buried in the insulating base material”. For examination purposes, it is seen as the “signal detection surface” is located on the side of the insulating base material that is in contact with the skin.
Claims 2 -5 inherit the deficiency from the claim that they depend. Claim 5 further states: “wherein the electrode terminal is made of Ag paste in the same manner as the extraction electrode”. However, claim 3 states: “wherein the corrosion-resistant material is selected from Ag-AgCl, Ag paste, AU, Pt, or carbon”. Claim 5 is seen as indefinite because it is unclear if the electrode terminal must be made of Ag paste or may also be made of Ag-AgCl AU, Pt, or carbon. Further, “ the manner” ” isn’t defined just the material the elements are made of and therefore seen as indefinite. For examination purposes it is seen as being able to be made of Ag-AgCl AU, Pt, or carbon.
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.
(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 1-3 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Banet et al. (US 20140213881 A1) herein referred to as “Banet”.
Regarding claim 1, Banet teaches: A biological signal detection electrode ([0003]; “The present invention relates to electrodes and sensors that use them to measure physiological signals from patients.”) used by being adhered to a skin surface of a living body ([0057]; Banet teaches the electrodes adhering to a patients skin), comprising: an insulating base material having electrical insulation ([0059]; Banet teaches electrode spacer (12), which is seen as a base material, made from electrically insulating material); an electrode terminal buried in the insulating base material ([Figure 6]; Benet teaches electrical traces 21a-c, that are seen as electrode terminals, that are in the electrode holder (12), which is seen as electrode terminal buried in the insulating base material because the electrode traces and implanted in the electrode holder) such that a signal detection surface is included in a part of a lower surface on a side in contact with the skin surface of the insulating base material ([Figure 4]; Banet teaches electrode (13) which lower surface facing skin surface (14) is seen as a signal detection surface) ; a conductive gel film provided on the lower surface of the insulating base material to cover the signal detection surface ([Figure 7B]; Banet teaches conductive gel (22a-c) on the lower surface of electrode (13), which is seen as the lower surface signal detection surface of electrode spacer (12)); an extraction electrode ([Figure 4] Banet teaches electrode (13)) which is connected to the electrode terminal and has a terminal unit exposed on an upper surface of the insulating base material ([Figure 6]; Banet teaches electrode (13), which is seen as an extraction electrode. Banet further teaches Electrode (13) connected to electrical traces (21a-c) and bulkhead connector (33), which is seen as a terminal unit); and a magnetic body disposed below the terminal unit in the insulating base material. ([Figure 7a-b]; Banet teaches magnetics (17a-c), which are seen as magnetic bodies that are found within the insulating base material)
Regarding claim 2, Banet teaches: The biological signal detection electrode according to Claim 1, wherein the electrode terminal is made of a corrosion-resistant material that is not corroded by the conductive gel film ([Figure 7B]; Banet teaches film (18a-c) [0060]; Banet further teaches the film being made of AG/GCL which is seen as a corrosion-resistant material).
Regarding claim 3, The biological signal detection electrode according to Claim 2, wherein the corrosion-resistant material is selected from Ag-AgCl, Ag paste, AU, Pt, or carbon. ([0056]; Banet teaches lower surface of the electrode to be coated (18a-c) with AgCl. [0060]; Banet teaches coating (18a-c) being made of a gold material).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Banet in view of Morita et al. (US 10835140 B2) herein referred to as “Morita”.
Regarding claim 4, Banet discloses: The biological signal detection electrode according to claim 1. Banet does not disclose: wherein the extraction electrode is made of Ag paste.
However, Morita discloses: wherein the extraction electrode is made of Ag paste. ( [Column 4 lines 42-45]; Morita discloses electrode (11), which is seen as an extraction electrode, with Ag paste layer (11a), which is seen as being made of Ag paste)
It would have been obvious to one of ordinary skill in the art prior to the effective filling date of claimed invention to modify the biological signal detection electrode as disclosed by Banet with the electrode made of Ag paste as disclose Marita the motivation being the simple substitution of a conductive element with an electrode, a conductive element, with the expected outcome of transmission of electrical current.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Banet in view of Marita further in view of Kuhn (US 4657023) herein referred to as “Kuhn”.
Regarding claim 5, Banet in view of Marita disclose: The biological signal detection electrode according to Claim 4. Banet does not disclose: wherein the electrode terminal is made of Ag paste in the same manner as the extraction electrode.
However, Kuhn discloses: wherein the electrode terminal is made of Ag paste in the same manner as the extraction electrode. ([Figure 2]; Kuhn discloses substrate (16) which is seen as an electrode terminal [column 2 lines 44-48]; Kuhn further discloses the substrate may be rendered conductive with the use of Ag paste, which is seen as being made of Ag paste)
It would have been obvious to one of ordinary skill in the art before the effective filling date of claimed invention to modify the biological signal detection electrode according as disclosed by Banet in view of Marita with the electrode terminal as disclosed by Kuhn the motivation being the simple substitution of an electrode terminal with an electrode to obtain the predictable result of recording biological signals.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY GEORGE CHA whose telephone number is (571)272-0749. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/CASEY GEORGE CHA/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794