DETAILED ACTION
Summary
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s arguments and claim amendments submitted on February 2, 2026 have been entered into the file. Currently claims 1-33 and 38-39 are cancelled, claims 43-44 and 53-54 amended, resulting in claims 34-37 and 40-54 pending for examination.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
The following rejections address the selection of ethylene glycol from the list of conductors:
Claims 34-37, 41, and 43-48 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)1,2 in view of Ellis (US 4388370)2 and Okuzaki (JP 2011-001391)1,2,3.
With respect to claim 34-35, 41, and 46-47, Kinlen teaches fibers containing intrinsically conductive polymers (ICP) (col. 1, lines 6-8). The ICP-containing fiber may be prepared by coating at least one of the filaments (base fibers) extruded during a fiber spinning process to form a filament bundle which is processed into the ICP-containing fiber (col. 4, lines 36-42). Preferably the coating formulation is applied to filaments (base fiber) that are not completely solidified to provide improved adherence of the ICP to the filament (adheres to the base fibers) (col. 5, lines 27-30). The fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen is silent as to carbon coating a circumference of the filaments (base fibers).
Ellis teaches an electrically-conductive fiber with antistatic properties comprising a fiber substrate formed from two polymeric components in a sheath/core configuration and finely divided electrically-conductive particles penetrating into the sheath component so as to form a phase independent of the polymeric material of the sheath component in an annular region located at the periphery of the sheath component (col. 1, lines 55-68). The particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2).
Since both Kinlen in view of Ellis teaches core fibers coated with a sheath of polymer 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 filament of Kinlen to include a carbon black coating layer as described by Ellis in order to provide a fiber with antistatic properties.
Kinlen in view of Ellis is silent as to the base fiber being impregnated with and/or adhered to a conductor containing ethylene glycol as an additive.
Okuzaki teaches a conductive polymer material that can be rapidly and repeatedly expanded, contracted, and deformed in a gas such as air by an external stimulus in a normal indoor humidity environment (paragraph [0008]). In the conductive polymer material it is preferable to add ethylene glycol (paragraph [0013]). By adding ethylene glycol the conductivity of the polymer film can be remarkably improved (paragraph [0013]).
Since both Kinlen in view of Ellis and Okuzaki teach conductive polymers, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the ICP of Kinlen in view of Ellis to include ethylene glycol, in order to improve the conductivity of the coating.
With respect to claims 36-37, Kinlen in view of Ellis and Okuzaki teaches all the limitations of claim 34 and 35 above.
Kinlen is silent as to the base fibers being straight fibers or twisted fibers.
Ellis further teaches that in the case of application of the conductive material to a multifilament yarn if is preferred that the yarn should have low or zero twist (col. 3, lines 2-10).
Since both Kinlen and Ellis teach electrically conductive fibers, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the fibers of Kinlen, which comprise the filaments (base fibers), to have wither low or zero twist (straight) because Ellis teaches that these are known fiber structures for electrically conductive fibers.
With respect to claim 43-44, Kinlen in view of Ellis and Okuzaki teaches all the limitations of claim 34 above. The recitation "a biological electrode" in claim 43 and “an implantable electrode” in claim 44 have not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
In the instant case, and electrode is known in the art as an electrical conductor used to make contact with a nonmetallic part of a circuit. As claims 43-44 depend from claim 34 which is directed to a conductive fiber, the body of the claim does not depend on the preamble for completeness. Furthermore, as discussed above, Kinlen in view of Ellis and Okuzaki teach the claimed conductive fiber with a carbon coating. Therefore it is expected the fiber of Kinlen in view of Ellis and Okuzaki is suitable as acting as a biological electrode and an implantable electrode.
With respect to claim 45, Kinlen in view of Ellis and Okuzaki teaches all the limitations of claim 44 above. Kinlen further teaches the coating formulation may also contain a binder material to enhance adherence of the ICP to the polymer filament (base fiber) (col. 8, lines 49-51). The coating step is preferably performed in such a manner that when filaments (base fibers) are processed together to form a fiber (composite fiber), substantially the entire length of the fiber contains ICP (col. 10, lines 50-57). Additionally Ellis teaches the fibers being used in a multifilament yarn (col. 3, lines 3-10).
With respect to claim 48, Kinlen in view of Ellis and Okuzaki teaches all the limitations of claim 34 above. As discussed above Ellis teaches the electrically conductive particles penetrate into the sheath (col. 1, lines 55-68) and the particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2). Therefore the carbon content of the carbon material is 80 to 100 mass %.
Claim 40 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)4,5 in view of Ellis (US 4388370)2 and Okuzaki (JP 2011-001391)1,2,6 as applied to claim 34 above, and further in view of Probst (US 2006/0116443)2.
With respect to claim 40, Kinlen in view of Ellis and Okuzaki teaches all the limitations of claim 34 above.
Kinlen in view of Ellis and Okuzaki is silent as to the conductor coating a circumference of the carbon layer.
Probst teaches carbon black coated with a metal component selected from the group consisting of nickel, iron, cobalt, yttrium, copper, and iridium (conductor) (paragraphs [0005]-[0013]). The carbon black compositions can be used with polymers (paragraph [0056]) and can be used in fibers and coatings to provide EMI shielding (paragraphs [0059], [0063]-[0064]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the carbon black coating of Kinlen in view of Ellis and Okuzaki to include a metal coating of one of the metals listed in Probst (conductor) in order to provide a fiber that provides EMI shielding.
Claim 42 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)7,8 in view of Ellis (US 4388370)2 and Okuzaki (JP 2011-001391)1,2,9 as applied to claim 34 above, and further in view of Sharma (US 2007/0089800)1,2.
With respect to claim 42, Kinlen in view of Ellis and Okuzaki teaches all the limitations of claim 34 above. Kinlen further teaches the fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen in view of Ellis and Okuzaki is silent as to the filament (base fiber) comprising silk, wool, collagen, elastic fiber, cotton, hemp, or jute.
Sharma teaches several fiber-based conductors, including solid conductors (FIGs. 1A-1D), partitioned conductors (FIGs. 1E-1F and 1I-1K), conductors with coatings (FIGs. 1G, 1H, 1L), combinations (FIGs. 1K-1N), and bundled strands (FIGs. 1O-1P). Some fibers are doped (paragraph [0190]) and others are coated in metallic conductor layers, additional conductive layers, and/or insulating layers (paragraphs [0191]-[0193]). Suitable materials include conductive carbon (paragraph [0202]), intrinsically conductive polymers (paragraph [0196]), conductive metals (paragraph [0191]), and insulating plastics (paragraph [0191]). Sharma further teaches suitable yarn materials include cotton, nylon, rayon, polyesters, spandex, and polyester/cotton blends (paragraph [0184]).
Since both Kinlen in view of Ellis and Okuzaki and Sharma teach fiber based conductors which may include ICP, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the filament of Kinlen in view of Ellis and Okuzaki to be cotton because it would yield the predictable result of a conductive fiber. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B). It is noted that the ICP coating of Kinlen would remain suitable for application of the carbon black from the teachings of Ellis.
The following rejections address the selection of glycerol from the list of conductors:
Claims 34-37, 41, and 43-51 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)10,11 in view of Ellis (US 4388370)2 and Irwin (“Conductive Polymer-Coated Threads as Electrical Interconnects in e-Textiles”).
With respect to claim 34-35, 41, 46-47, and 49-51, Kinlen teaches fibers containing intrinsically conductive polymers (ICP) (col. 1, lines 6-8). The ICP-containing fiber may be prepared by coating at least one of the filaments (base fibers) extruded during a fiber spinning process to form a filament bundle which is processes into the ICP-containing fiber (col. 4, lines 36-42). Preferably the coating formulation is applied to filaments (base fiber) that are not completely solidified to provide improved adherence of the ICP to the filament (adheres to the base fibers) (col. 5, lines 27-30). The fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen is silent as to carbon coating a circumference of the filaments (base fibers).
Ellis teaches an electrically-conductive fiber with antistatic properties comprising a fiber substrate formed from two polymeric components in a sheath/core configuration and finely divided electrically-conductive particles penetrating into the sheath component so as to form a phase independent of the polymeric material of the sheath component in an annular region located at the periphery of the sheath component (col. 1, lines 55-68). The particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2).
Since both Kinlen in view of Ellis teaches core fibers coated with a sheath of polymer 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 filament of Kinlen to include a carbon black coating layer as described by Ellis in order to provide a fiber with antistatic properties.
Kinlen in view of Ellis is silent as to the base fiber being impregnated with and/or adhered to a conductor containing glycerol as an additive.
Irwin teaches a fiber coated with a conductive polymer where the conductive polymer interpenetrates the fiber matrix to form a robust product with a high volume of conductive material (Introduction). Poly(3,4-ethylenedioxythiopene):poly(styrenesulfonate) (PEDOT:PSS) was deposited onto silk fibers from an ethylene glycol solution (Introduction). PEDOT is a well-known and well-studied intrinsically conductive polymer (ICP) (Introduction). It was discovered that when high boiling point, protic solvents such as glycerol or ethylene glycol are added to PEDOT:PSS emulsions conductivities reach 1000 S/cm (Discussion).
Since both Kinlen in view of Ellis and Irwin teach fibers comprising ICP, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the ICP of Kinlen in view of Ellis to include glycerol, in order to improve the conductivity of the coating.
With respect to claims 36-37, Kinlen in view of Ellis and Irwin teaches all the limitations of claim 34 and 35 above.
Kinlen is silent as to the base fibers being straight fibers or twisted fibers.
Ellis further teaches that in the case of application of the conductive material to a multifilament yarn if is preferred that the yarn should have low or zero twist (col. 3, lines 2-10).
Since both Kinlen and Ellis teach electrically conductive fibers, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the fibers of Kinlen, which comprise the filaments (base fibers), to have wither low or zero twist (straight) because Ellis teaches that these are known fiber structures for electrically conductive fibers.
With respect to claim 43-44, Kinlen in view of Ellis and Irwin teaches all the limitations of claim 34 above. The recitation "a biological electrode" in claim 43 and “an implantable electrode” in claim 44 have not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
In the instant case, and electrode is known in the art as an electrical conductor used to make contact with a nonmetallic part of a circuit. As claims 43-44 depend from claim 34 which is directed to a conductive fiber, the body of the claim does not depend on the preamble for completeness. Furthermore, as discussed above, Kinlen in view of Ellis and Irwin teach the claimed conductive fiber with a carbon coating. Therefore it is expected the fiber of Kinlen in view of Ellis and Irwin is suitable as acting as a biological electrode and an implantable electrode.
With respect to claim 45, Kinlen in view of Ellis and Irwin teaches all the limitations of claim 44 above. Kinlen further teaches the coating formulation may also contain a binder material to enhance adherence of the ICP to the polymer filament (base fiber) (col. 8, lines 49-51). The coating step is preferably performed in such a manner that when filaments (base fibers) are processed together to form a fiber (composite fiber), substantially the entire length of the fiber contains ICP (col. 10, lines 50-57). Additionally Ellis teaches the fibers being used in a multifilament yarn (col. 3, lines 3-10).
With respect to claim 48, Kinlen in view of Ellis and Irwin teaches all the limitations of claim 34 above. As discussed above Ellis teaches the electrically conductive particles penetrate into the sheath (col. 1, lines 55-68) and the particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2). Therefore the carbon content of the carbon material is 80 to 100 mass %.
Claim 40 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)12,13 in view of Ellis (US 4388370)2 and Irwin (“Conductive Polymer-Coated Threads as Electrical Interconnects in e-Textiles”) as applied to claim 34 above, and further in view of Probst (US 2006/0116443)2.
With respect to claim 40, Kinlen in view of Ellis and Irwin teaches all the limitations of claim 34 above.
Kinlen in view of Ellis and Irwin is silent as to the conductor coating a circumference of the carbon layer.
Probst teaches carbon black coated with a metal component selected from the group consisting of nickel, iron, cobalt, yttrium, copper, and iridium (conductor) (paragraphs [0005]-[0013]). The carbon black compositions can be used with polymers (paragraph [0056]) and can be used in fibers and coatings to provide EMI shielding (paragraphs [0059], [0063]-[0064]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the carbon black coating of Kinlen in view of Ellis and Irwin to include a metal coating of one of the metals listed in Probst (conductor) in order to provide a fiber that provides EMI shielding.
Claim 42 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)14,15 in view of Ellis (US 4388370)2 and Irwin (“Conductive Polymer-Coated Threads as Electrical Interconnects in e-Textiles”) as applied to claim 34 above, and further in view of Sharma (US 2007/0089800)1,2.
With respect to claim 42, Kinlen in view of Ellis and Irwin teaches all the limitations of claim 34 above. Kinlen further teaches the fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen in view of Ellis and Irwin is silent as to the filament (base fiber) comprising silk, wool, collagen, elastic fiber, cotton, hemp, or jute.
Sharma teaches several fiber-based conductors, including solid conductors (FIGs. 1A-1D), partitioned conductors (FIGs. 1E-1F and 1I-1K), conductors with coatings (FIGs. 1G, 1H, 1L), combinations (FIGs. 1K-1N), and bundled strands (FIGs. 1O-1P). Some fibers are doped (paragraph [0190]) and others are coated in metallic conductor layers, additional conductive layers, and/or insulating layers (paragraphs [0191]-[0193]). Suitable materials include conductive carbon (paragraph [0202]), intrinsically conductive polymers (paragraph [0196]), conductive metals (paragraph [0191]), and insulating plastics (paragraph [0191]). Sharma further teaches suitable yarn materials include cotton, nylon, rayon, polyesters, spandex, and polyester/cotton blends (paragraph [0184]).
Since both Kinlen in view of Ellis and Irwin and Sharma teach fiber based conductors which may include ICP, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the filament of Kinlen in view of Ellis and Irwin to be cotton because it would yield the predictable result of a conductive fiber. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B). It is noted that the ICP coating of Kinlen would remain suitable for application of the carbon black from the teachings of Ellis.
The following rejections address the selection of sorbitol from the list of conductors:
Claims 34-37, 41, 43-50 and 52 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)16,17 in view of Ellis (US 4388370)2 and Elder (US 2007/0085061).
With respect to claim 34-35, 41, 46-47, 49-50, and 52, Kinlen teaches fibers containing intrinsically conductive polymers (ICP) (col. 1, lines 6-8). The ICP-containing fiber may be prepared by coating at least one of the filaments (base fibers) extruded during a fiber spinning process to form a filament bundle which is processes into the ICP-containing fiber (col. 4, lines 36-42). Preferably the coating formulation is applied to filaments (base fiber) that are not completely solidified to provide improved adherence of the ICP to the filament (adheres to the base fibers) (col. 5, lines 27-30). The fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen is silent as to carbon coating a circumference of the filaments (base fibers).
Ellis teaches an electrically-conductive fiber with antistatic properties comprising a fiber substrate formed from two polymeric components in a sheath/core configuration and finely divided electrically-conductive particles penetrating into the sheath component so as to form a phase independent of the polymeric material of the sheath component in an annular region located at the periphery of the sheath component (col. 1, lines 55-68). The particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2).
Since both Kinlen in view of Ellis teaches core fibers coated with a sheath of polymer 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 filament of Kinlen to include a carbon black coating layer as described by Ellis in order to provide a fiber with antistatic properties.
Kinlen in view of Ellis is silent as to the base fiber being impregnated with and/or adhered to a conductor containing sorbitol as an additive.
Elder teaches a process for increasing the electrical conductivity of a polymer film (paragraph [0002]). Elder further teaches that the solution used may comprise at least one dihydroxy or polyhydroxy compounds (paragraph [0022]). In the examples the addition of sorbitol increased the conductivity of the polymer film by a factor of 10 (paragraph [0070]). Elder also acknowledges that it is well known in the art that adding sorbitol can increase the conductivity of the film after annealing (paragraph [0004]).
Since both Kinlen in view of Ellis and Elder teach conductive polymer compositions, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the ICP of Kinlen in view of Ellis to include sorbitol in order to increase the conductivity of the ICP.
With respect to claims 36-37, Kinlen in view of Ellis and Elder teaches all the limitations of claim 34 and 35 above.
Kinlen is silent as to the base fibers being straight fibers or twisted fibers.
Ellis further teaches that in the case of application of the conductive material to a multifilament yarn if is preferred that the yarn should have low or zero twist (col. 3, lines 2-10).
Since both Kinlen and Ellis teach electrically conductive fibers, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the fibers of Kinlen, which comprise the filaments (base fibers), to have wither low or zero twist (straight) because Ellis teaches that these are known fiber structures for electrically conductive fibers.
With respect to claim 43-44, Kinlen in view of Ellis and Elder teaches all the limitations of claim 34 above. The recitation "a biological electrode" in claim 43 and “an implantable electrode” in claim 44 have not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
In the instant case, and electrode is known in the art as an electrical conductor used to make contact with a nonmetallic part of a circuit. As claims 43-44 depend from claim 34 which is directed to a conductive fiber, the body of the claim does not depend on the preamble for completeness. Furthermore, as discussed above, Kinlen in view of Ellis and Elder teach the claimed conductive fiber with a carbon coating. Therefore it is expected the fiber of Kinlen in view of Ellis and Elder is suitable as acting as a biological electrode and an implantable electrode.
With respect to claim 45, Kinlen in view of Ellis and Elder teaches all the limitations of claim 44 above. Kinlen further teaches the coating formulation may also contain a binder material to enhance adherence of the ICP to the polymer filament (base fiber) (col. 8, lines 49-51). The coating step is preferably performed in such a manner that when filaments (base fibers) are processed together to form a fiber (composite fiber), substantially the entire length of the fiber contains ICP (col. 10, lines 50-57). Additionally Ellis teaches the fibers being used in a multifilament yarn (col. 3, lines 3-10).
With respect to claim 48, Kinlen in view of Ellis and Elder teaches all the limitations of claim 34 above. As discussed above Ellis teaches the electrically conductive particles penetrate into the sheath (col. 1, lines 55-68) and the particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2). Therefore the carbon content of the carbon material is 80 to 100 mass %.
Claim 40 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)18,19 in view of Ellis (US 4388370)2 and Elder (US 2007/0085061) as applied to claim 34 above, and further in view of Probst (US 2006/0116443)2.
With respect to claim 40, Kinlen in view of Ellis and Elder teaches all the limitations of claim 34 above.
Kinlen in view of Ellis and Elder is silent as to the conductor coating a circumference of the carbon layer.
Probst teaches carbon black coated with a metal component selected from the group consisting of nickel, iron, cobalt, yttrium, copper, and iridium (conductor) (paragraphs [0005]-[0013]). The carbon black compositions can be used with polymers (paragraph [0056]) and can be used in fibers and coatings to provide EMI shielding (paragraphs [0059], [0063]-[0064]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the carbon black coating of Kinlen in view of Ellis and Elder to include a metal coating of one of the metals listed in Probst (conductor) in order to provide a fiber that provides EMI shielding.
Claim 42 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)20,21 in view of Ellis (US 4388370)2 and Elder (US 2007/0085061) as applied to claim 34 above, and further in view of Sharma (US 2007/0089800)1,2.
With respect to claim 42, Kinlen in view of Ellis and Elder teaches all the limitations of claim 34 above. Kinlen further teaches the fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen in view of Ellis and Elder is silent as to the filament (base fiber) comprising silk, wool, collagen, elastic fiber, cotton, hemp, or jute.
Sharma teaches several fiber-based conductors, including solid conductors (FIGs. 1A-1D), partitioned conductors (FIGs. 1E-1F and 1I-1K), conductors with coatings (FIGs. 1G, 1H, 1L), combinations (FIGs. 1K-1N), and bundled strands (FIGs. 1O-1P). Some fibers are doped (paragraph [0190]) and others are coated in metallic conductor layers, additional conductive layers, and/or insulating layers (paragraphs [0191]-[0193]). Suitable materials include conductive carbon (paragraph [0202]), intrinsically conductive polymers (paragraph [0196]), conductive metals (paragraph [0191]), and insulating plastics (paragraph [0191]). Sharma further teaches suitable yarn materials include cotton, nylon, rayon, polyesters, spandex, and polyester/cotton blends (paragraph [0184]).
Since both Kinlen in view of Ellis and Elder and Sharma teach fiber based conductors which may include ICP, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the filament of Kinlen in view of Ellis and Elder to be cotton because it would yield the predictable result of a conductive fiber. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B). It is noted that the ICP coating of Kinlen would remain suitable for application of the carbon black from the teachings of Ellis.
The following rejections address the selection of polyethylene glycol-polypropylene glycol copolymer from the list of conductors:
Claims 34-37, 41, 43-50, and 53 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)22,23 in view of Ellis (US 4388370)2 and Maeno (US 4830779).
With respect to claim 34-35, 41, 46-47, 49-50, and 53, Kinlen teaches fibers containing intrinsically conductive polymers (ICP) (col. 1, lines 6-8). The ICP-containing fiber may be prepared by coating at least one of the filaments (base fibers) extruded during a fiber spinning process to form a filament bundle which is processes into the ICP-containing fiber (col. 4, lines 36-42). Preferably the coating formulation is applied to filaments (base fiber) that are not completely solidified to provide improved adherence of the ICP to the filament (adheres to the base fibers) (col. 5, lines 27-30). The fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen is silent as to carbon coating a circumference of the filaments (base fibers).
Ellis teaches an electrically-conductive fiber with antistatic properties comprising a fiber substrate formed from two polymeric components in a sheath/core configuration and finely divided electrically-conductive particles penetrating into the sheath component so as to form a phase independent of the polymeric material of the sheath component in an annular region located at the periphery of the sheath component (col. 1, lines 55-68). The particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2).
Since both Kinlen in view of Ellis teaches core fibers coated with a sheath of polymer 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 filament of Kinlen to include a carbon black coating layer as described by Ellis in order to provide a fiber with antistatic properties.
Kinlen in view of Ellis is silent as to the base fiber being impregnated with and/or adhered to a conductor containing polyethylene glycol-polypropylene glycol copolymer as an additive.
Maeno teaches an electrically conductive resin composition containing metallic powder as a main electrically conductive material, capable of exhibiting good electrical conductivity and stable electrical conductivity for a long term even at a low content of the metallic powder (col. 1, lines 7-12). The hydroxyl-containing compounds usable in the invention include polypropylene glycol-ethylene oxide products such as polyethylene glycol (col. 4, lines 15-17 and col. 5, lines 39-51). The hydroxyl-containing compound should be used in an amount of 0.08 parts by weight or more, preferably 0.1 parts by weight of more, more preferably 0.1 to 7.5 parts by weight (col. 5, lines 52-62). The use of less than 0.08 parts by weight of the hydroxyl-containing compound cannot desirably improve the electrical conductivity and the electromagnetic wave shielding properties of the resultant composition (col. 5, lines 52-62).
Since both Kinlen in view of Ellis and Maeno teach conductive polymer compositions, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the ICP on Kinlen in view of Ellis to include 0.1 to 7.5 wt% polypropylene glycol-polyethylene glycol in order to increase the electrical conductivity and electromagnetic wave shielding of the ICP.
With respect to claims 36-37, Kinlen in view of Ellis and Maeno teaches all the limitations of claim 34 and 35 above.
Kinlen is silent as to the base fibers being straight fibers or twisted fibers.
Ellis further teaches that in the case of application of the conductive material to a multifilament yarn if is preferred that the yarn should have low or zero twist (col. 3, lines 2-10).
Since both Kinlen and Ellis teach electrically conductive fibers, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the fibers of Kinlen, which comprise the filaments (base fibers), to have wither low or zero twist (straight) because Ellis teaches that these are known fiber structures for electrically conductive fibers.
With respect to claim 43-44, Kinlen in view of Ellis and Maeno teaches all the limitations of claim 34 above. The recitation "a biological electrode" in claim 43 and “an implantable electrode” in claim 44 have not been given patentable weight because it is a recitation of intended use that occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
In the instant case, and electrode is known in the art as an electrical conductor used to make contact with a nonmetallic part of a circuit. As claims 43-44 depend from claim 34 which is directed to a conductive fiber, the body of the claim does not depend on the preamble for completeness. Furthermore, as discussed above, Kinlen in view of Ellis and Maeno teach the claimed conductive fiber with a carbon coating. Therefore it is expected the fiber of Kinlen in view of Ellis and Maeno is suitable as acting as a biological electrode and an implantable electrode.
With respect to claim 45, Kinlen in view of Ellis and Maeno teaches all the limitations of claim 44 above. Kinlen further teaches the coating formulation may also contain a binder material to enhance adherence of the ICP to the polymer filament (base fiber) (col. 8, lines 49-51). The coating step is preferably performed in such a manner that when filaments (base fibers) are processed together to form a fiber (composite fiber), substantially the entire length of the fiber contains ICP (col. 10, lines 50-57). Additionally Ellis teaches the fibers being used in a multifilament yarn (col. 3, lines 3-10).
With respect to claim 48, Kinlen in view of Ellis and Maeno teaches all the limitations of claim 34 above. As discussed above Ellis teaches the electrically conductive particles penetrate into the sheath (col. 1, lines 55-68) and the particles of conductive material may be carbon black (col. 2, lines 47-48; claim 2). Therefore the carbon content of the carbon material is 80 to 100 mass %.
Claim 40 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)24,25 in view of Ellis (US 4388370)2 and Maeno (US 4830779) as applied to claim 34 above, and further in view of Probst (US 2006/0116443)2.
With respect to claim 40, Kinlen in view of Ellis and Maeno teaches all the limitations of claim 34 above.
Kinlen in view of Ellis and Maeno is silent as to the conductor coating a circumference of the carbon layer.
Probst teaches carbon black coated with a metal component selected from the group consisting of nickel, iron, cobalt, yttrium, copper, and iridium (conductor) (paragraphs [0005]-[0013]). The carbon black compositions can be used with polymers (paragraph [0056]) and can be used in fibers and coatings to provide EMI shielding (paragraphs [0059], [0063]-[0064]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the carbon black coating of Kinlen in view of Ellis and Maeno to include a metal coating of one of the metals listed in Probst (conductor) in order to provide a fiber that provides EMI shielding.
Claim 42 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kinlen (US 6228492)26,27 in view of Ellis (US 4388370)2 and Maeno (US 4830779) as applied to claim 34 above, and further in view of Sharma (US 2007/0089800)1,2.
With respect to claim 42, Kinlen in view of Ellis and Maeno teaches all the limitations of claim 34 above. Kinlen further teaches the fiber-forming polymer may be a polyamide, a polyester, an acrylic, or derivatives thereof (col. 3, lines 28-35).
Kinlen in view of Ellis and Maeno is silent as to the filament (base fiber) comprising silk, wool, collagen, elastic fiber, cotton, hemp, or jute.
Sharma teaches several fiber-based conductors, including solid conductors (FIGs. 1A-1D), partitioned conductors (FIGs. 1E-1F and 1I-1K), conductors with coatings (FIGs. 1G, 1H, 1L), combinations (FIGs. 1K-1N), and bundled strands (FIGs. 1O-1P). Some fibers are doped (paragraph [0190]) and others are coated in metallic conductor layers, additional conductive layers, and/or insulating layers (paragraphs [0191]-[0193]). Suitable materials include conductive carbon (paragraph [0202]), intrinsically conductive polymers (paragraph [0196]), conductive metals (paragraph [0191]), and insulating plastics (paragraph [0191]). Sharma further teaches suitable yarn materials include cotton, nylon, rayon, polyesters, spandex, and polyester/cotton blends (paragraph [0184]).
Since both Kinlen in view of Ellis and Maeno and Sharma teach fiber based conductors which may include ICP, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the filament of Kinlen in view of Ellis and Maeno to be cotton because it would yield the predictable result of a conductive fiber. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B). It is noted that the ICP coating of Kinlen would remain suitable for application of the carbon black from the teachings of Ellis.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 34, 36, 40-41, 49, and 54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 10-11, and 13 of U.S. Patent No. 11,862,35928. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to the instant claims 34, 49, and 54, claim 1 of Tsukada claims a conductive polymer fiber, wherein a conductor containing a conductive polymer impregnates and adheres to base fibers, the base fibers, the conductor is arranged with close adhesion to said base fibers, the conductor contains sphingosine as an additive, and metal or carbon coats an exterior surface of said base fibers (claim 1; Tsukada). Claim 2 of Tsukada further claims wherein said carbon conductor coats the circumference of said base fibers (Tsukada; claims 2 and 4).
With respect to the instant claim 36, claim 1 of Tsukada further claims the base fibers as straight fibers (Tsukada; claim 1).
With respect to the instant claim 40, claim 1 of Tsukada further claims an exterior surface of said metal or carbon coating being coated by said conductor (Tsukada; claim 1).
With respect to the instant claim 41, claim 1 of Tsukada further claims wherein the base fibers are selected from the group consisting of nylon, polyester, acrylic, aramid, polyurethane, and carbon fiber (Tsukada; claim 1).
With respect to the instant claims 34, 49, and 54, claim 10 of Tsukada claims a conductive polymer fiber, wherein a conductor containing a conductive polymer impregnates and adheres to base fibers, the base fibers, the conductor is arranged with close adhesion to said base fibers, the conductor contains phosphatidylcholine as an additive, and metal or carbon coats an exterior surface of said base fibers (claim 10; Tsukada). Claim 2 of Tsukada further claims wherein said carbon conductor coats the circumference of said base fibers (Tsukada; claims 11 and 13).
With respect to the instant claim 36, claim 1 of Tsukada further claims the base fibers as straight fibers (Tsukada; claim 10).
With respect to the instant claim 40, claim 1 of Tsukada further claims an exterior surface of said metal or carbon coating being coated by said conductor (Tsukada; claim 10).
With respect to the instant claim 41, claim 1 of Tsukada further claims wherein the base fibers are selected from the group consisting of nylon, polyester, acrylic, aramid, polyurethane, and carbon fiber (Tsukada; claim 10).
Response to Arguments
Response – Claim Rejections 35 USC §103
Applicant’s arguments filed February 2, 2026 have been fully considered and are not persuasive.
On pages 7-10 of the response Applicant submits that it is difficult for the filaments of Kinlen to use a carbon black bath which would need to be maintained at a temperature above the melting point of the ICP, and it is difficult to soften the ICP of Kinlen by heat. Applicant also submits that the ICP sheath has higher processing temperatures than the melt-processable core, and concludes that operation at a temperature high enough to soften the ICP sheath would melt the core and would not maintain the conductive fibers of Kinlen.
The Examiner respectfully disagrees. It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference … Rather, the test is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See MPEP 2145(III). As discussed in the rejections previously and above, the combination of Kinlen in view of Ellis suggests applying carbon black to the sheath of the fiber of Kinlen in order to provide the fiber with antistatic properties.
However, the claimed combination cannot change the principle of operation of the primary reference or render the reference inoperable for its intended purpose. See MPEP 2145(III). Applicant submits that the process of Ellis would destroy the fiber of Kinlen because the ICP sheath would require heating to a temperature that would damage the core, which has a lower melting point than the sheath. However, arguments presented by Applicant cannot take the place of evidence on the record. See MPEP 2145(I). There is no evidence in either Kinlen or Ellis which suggests the core fiber of Kinlen would be melted beyond recovery, and Applicant has not provided evidence to support this assertion.
As discussed previously, patents are relevant as prior art for all they contain. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP 2123. The polymeric material of Kinlen is not limited to polypropylene, but rather includes all polymers which are melt-processible, such as polyamides, polyesters, and polypropylenes (Kinlen; col. 4, lines 64-67). The ICP is also not limited to polyaniline, but includes other polymers such as polypyrrole and polythiophene (Kinlen; col. 5, lines 48-62). The ICP coating may also comprise a thermoplastic film-forming nonconductive polymer comprising a dispersion of ICP particles, and the coating formulation may also include a binder (col. 8, lines 36-67).
Kinlen further teaches that it will be understood by those skilled in the art that the intended use of the coated fiber will dictate, to a large extent, which polymer would be preferred for forming the fiber (Kinlen; col. 5, lines 1-8). It is therefore within the ambit of the ordinary artisan to choose the appropriate combination of fiber polymer and ICP containing coating to receive the carbon black as described by Ellis. For example, it is within the skill of the ordinary artisan to choose a thermoplastic film-forming polymer to contain the ICP which has an appropriate softening temperature for processing. It is further noted that Ellis also discloses the fiber may be subjected to heated at a temperature below the softening temperature of the core component, as well as below the softening temperature of the sheath (Ellis; col, 2, lines 44-46).
Previously, Applicant referenced the examples in Kinlen where the sheath is polyaniline and the core is polypropylene. It is known in the art that polyaniline has a glass transition temperature of 105-220oC (“Thermal transitions and mechanical properties of films of chemically prepared polyaniline”; abstract) and polypropylene has a melting point of 160-170oC (“Polypropylene Melting Point and PP Softening Temperatures Explained”). There is a sufficient temperature range of 105-160oC were the polyaniline sheath would be softened and the polypropylene would not be melted in order to apply the carbon black using a bath as described by Ellis. There are therefore combinations in Kinlen which use a coating of solely ICP and a melt-processible core that are suitable for the method of Ellis, and it is within the ambit of the ordinary artisan to choose the appropriate combinations as discussed above.
On pages 10-11 of the response Applicant submits with respect to claim 40 that it is unclear that carbon black fine particles which are respectively coated with the metal of Probst are usable in the method of using a carbon black bath as suggested in Ellis. Applicant further submits that even if combined, the obtained structure is different than that discloses in claim 40.
These arguments are not persuasive. As discussed above, it is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference … Rather, the test is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See MPEP 2145(III). As discussed in the rejection above, 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 carbon black coating of Kinlen in view of Ellis (and others) to include a metal coating as described in Probst in order to provide a fiber that provides EMI shielding.
As also discussed above, it is within the ambit of the ordinary artisan to choose the appropriate ICP coating materials from Kinlen to receive the coated carbon black, including using binders, a thermoplastic film-forming polymer, and a pure ICP coating. As established above polyaniline can be softened at temperatures of 105-160oC while maintaining the polypropylene core. Probst discusses treating the coated carbon at temperatures of 325oC (Probst; paragraph [0101]). There is therefore no evidence in Probst that the coated carbon black cannot be used in the bath described by Ellis.
Applicant posits that the coated carbon black of Probst does not meet the claimed structure but does not explain the differences between the proposed combination and the claim. Claim 40 is directed to a circumference of the carbon layer being coated with a conductor. Probst teaches the coating of carbon black with a metal component (Probst; paragraphs [0005]-[0013]). Therefore a circumference of the carbon black coating will necessarily be coated with the metal component.
On pages 11-12 of the response Applicant submits with respect to claim 53 that a person skilled in the art would not use the combination suggested in Maeno because a person skilled in the art cannot expect whether or not suitable effects are obtained.
These arguments are not persuasive. Claim 53 does not exclude the presence of other materials in the conductor, therefore it is within the ambit of the ordinary artisan to include the diphosphonic acid derivative and the metallic powder if deemed necessary as alleged. It is noted, however, that it is clear from the teachings of Maeno that the polyethylene glycol by itself does effect the resulting electrical conductivity and electromagnetic wave shielding, because if the polyethylene glycol is not within the discussed range the resulting electrical conductivity and electromagnetic wave shielding are considered undesirable (Maeno; col. 5, lines 52-62). The ordinary artisan would therefore expect to see some level of improvement of the electrical conductivity and electromagnetic wave shielding through the incorporation of polyethylene glycol only.
Response – Double Patenting
The double patenting rejections are maintained because the terminal disclaimed filed on February 2, 2026 was disapproved due to use of the incorrect form. Please use PTO/AIA /26 and resubmit the terminal disclaimer (no new fee required).
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 Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached on Monday - Friday, 7:30am - 4:00pm EST.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Cited in IDS
2 Previously presented
3 Machine Translation used as reference
4 Cited in IDS
5 Previously presented
6 Machine Translation used as reference
7 Cited in IDS
8 Previously presented
9 Machine Translation used as reference
10 Cited in IDS
11 Previously presented
12 Cited in IDS
13 Previously presented
14 Cited in IDS
15 Previously presented
16 Cited in IDS
17 Previously presented
18 Cited in IDS
19 Previously presented
20 Cited in IDS
21 Previously presented
22 Cited in IDS
23 Previously presented
24 Cited in IDS
25 Previously presented
26 Cited in IDS
27 Previously presented
28 Hereinafter referred to as Tsukada
Prosecution Insights