DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on January 6, 2026. Claims 8-27 are pending in the application.
Status of Objections and Rejections
All rejections from the previous office action are maintained.
New grounds of rejection under 35 U.S.C. §103 are necessitated by the amendments.
Claim Objections
Claim(s) 21 is/are objected to because of the following informalities:
Claim 21, lines 12-13: “the plurality of nonconductive nanostructures comprising a plurality of silver nanowires the plurality of conductive nanostructures focused onto the plurality of pores” is suggested to be “the plurality of nonconductive nanostructures comprising a plurality of silver nanowires, the plurality of conductive nanostructures focused onto the plurality of pores”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 14-16, 18-19, 21, and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi (S. Choi, Highly conductive, stretchable and biocompatible Ag-Au core-sheath nanowire composite for wearable and implantable bioelectronics, Nature nanotechnology, 2018(13), pp. 1048-56) in view of Zhang (Y. Zhang, High precision epidermal radio frequency antenna via nanofiber network for wireless stretchable multifunction electronics, Nature Communication, 2020 (11): 5619, pp. 1-10).
Regarding claim 14, Choi teaches a wearable bioelectronic device (Title) comprising:
a phase-separated ([Abstract]: phase separation) porous (p. 1051, col. 1, para. 2) silver nanowire nanocomposite (p. 1048, col. 2, para. 2: Ag-Au nanowires/SBS elastomer nanocomposite), the PSPN comprising:
an energy-dissipative (p. 1051, col. 2, para. 2: the applied strain is mostly dissipated in the soft SBS-rich regions) porous microstructure configured to provide a strain-invariant electrical conductivity of the PSPN (p. 1049, col. 1, para. 1: when the microstructured Ag-Au nanocomposite is stretched, the Ag-Au nanowire-rich region maintains stable electrical conduction; p. 1051, col. 2, para. 2: the electrical stability of the Ag-Au nanocomposite after a cyclic stretching test; here, the limitation “configured to” is functional limitation regarding intended result in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), the energy-dissipative porous microstructure comprising:
a porous structure (p. 1051, col. 1, para. 2) having a plurality of pores comprising open cavities (Fig. 1(c)-(d): indicating the pores are open within the nanocomposite) within the energy-dissipative porous microstructure (Fig. 1(f): since the nanocomposite is capable of being stretched with 840% strain, it must be energy-dissipative); and
a plurality of conductive nanostructures (Fig. 1: Ag-Au nanowires) forming a conductive network (p. 1048, col. 2, para. 1: the highly conductive, biocompatible and soft nanocomposites; Fig. 1(c): separated into a Ag-Au nanowire-rich phase) disposed on the porous structure (Fig. 1d), the plurality of nonconductive nanostructures focused onto the plurality of pores (Fig. 1(d): indicating, after stretching, the Ag-Au nanowires are focused on the microstructural pores) such that the plurality of pores reduce strain on the plurality of conductive nanostructures and preserve the conductive network during a strain event (p. 1049, col. 1, para. 1: when the microstructured Ag-Au nanocomposite is stretched, the Ag-Au nanowire-rich region maintains stable electrical conduction and the SBS-rich region forms an elastic microstructured strut; p. 1051, col. 2, para. 2: the applied strain is mostly dissipated in the soft SBS-rich region; Fig. 1(d), (f): indicating the pores are stretched under 840% strain without breaking, i.e., the strain being reduced on the nanostructures, which include Ag-Au nanowires for preserving the nanocomposite’s conductivity; further the limitation “such that…” is functional limitation regarding intended result in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Choi does not disclose the wearable bioelectronic device is wireless.
However, Zhang teaches a wearable electronic device using wireless technologies offering simple, battery-free platforms for human-machine interactions (p. 2, col. 1, para. 1). The highly stretchable transparent wireless electronics composed of Ag nanofibers coils and functional electronic components for power transfer and information communication ([Abstract]). The combined wearable devices and wireless technology would achieve real-time monitoring of human health (p. 2, col. 1, para. 2).
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 Choi by incorporating wireless technology as taught by Zhang because it would provide simple, battery-free platforms for human-machine interactions, which plays an essential role in soft robotics, human healthcare monitoring, and implantable medical systems (p. 2, col. 1, para. 1), e.g., for real-time monitoring of human health (p. 2, col. 1, para. 2). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 15, Choi teaches the wearable wireless bioelectronic device further comprising:
a plurality of electrodes (e.g., Fig. 5a) including a reference electrode (last page, col. 2, para. 2: an Ag/AgCl electrode as a ground) and a working electrode (Fig. 5a: e.g., recording electrode).
Regarding claim 16, Choi and Zhang discloses all limitations of claim 14, including integrating the stretchable transparent Ag NFs spiral coil with other tiny electrode components into a more complex functional wireless electronics for power transfer and data communication (Zhang, p. 7, col. 1, para. 2).
Further, the designation “wherein the wearable wireless bioelectronic device is configured to be integrated into a strain-insensitive wireless power system” is functional limitation for intended use in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 18, the designations “wherein the wearable wireless bioelectronic device is a perspiration monitoring device configured to monitor perspiration of a patient in real-time based on one or more changes in glucose and ethanol concentrations” is functional limitation for intended use in apparatus claims. MPEP 2114 (II). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 19, Choi and Zhang discloses all limitations of claim 14, including wherein the wearable wireless bioelectronic device is a battery-free passive electronic device that is not coupled to a battery (Zhang, p. 7, col. 2, para. 1: a battery-free mode).
Regarding claim 21, Choi teaches a wearable bioelectronic device (Title) comprising:
a phase-separated ([Abstract]: phase separation) porous (p. 1051, col. 1, para. 2) silver nanowire nanocomposite (p. 1048, col. 2, para. 2: Ag-Au nanowires/SBS elastomer nanocomposite), the PSPN comprising:
an energy-dissipative (p. 1051, col. 2, para. 2: the applied strain is mostly dissipated in the soft SBS-rich regions) porous microstructure configured to provide a strain-invariant electrical conductivity of the PSPN (p. 1049, col. 1, para. 1: when the microstructured Ag-Au nanocomposite is stretched, the Ag-Au nanowire-rich region maintains stable electrical conduction; p. 1051, col. 2, para. 2: the electrical stability of the Ag-Au nanocomposite after a cyclic stretching test; here, the limitation “configured to …” is functional limitation regarding intended result in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), the energy-dissipative porous microstructure comprising:
a porous structure (p. 1051, col. 1, para. 2) having a plurality of pores comprising open cavities (Fig. 1(c)-(d): indicating the pores are open within the nanocomposite) within the energy-dissipative porous microstructure (Fig. 1(f): since the nanocomposite is capable of being stretched with 840% strain, it must be energy-dissipative),
wherein the porous structure comprises a porous multiscale elastomer matrix (Fig. 1(a); p. 1048, col. 2, para. 2: SBS-elastomer; Fig. 1(d): a network of open pores in different dimensions; [Abstract]: an elastomeric block-copolymer matrix); and
a plurality of conductive nanostructures (Fig. 1: Ag-Au nanowires) forming a conductive network (p. 1048, col. 2, para. 1: the highly conductive, biocompatible and soft nanocomposites; Fig. 1(c): separated into a Ag-Au nanowire-rich phase) disposed on the porous structure (Fig. 1d), the plurality of nonconductive nanostructures comprising a plurality of silver nanowires ([Abstract]: gold-coated silver nanowires) the plurality of conductive nanostructures focused onto the plurality of pores (Fig. 1(d): indicating, after stretching, the Ag-Au nanowires are focused on the microstructural pores) such that the plurality of pores reduce strain on the plurality of conductive nanostructures and preserve the conductive network during a strain event (p. 1049, col. 1, para. 1: when the microstructured Ag-Au nanocomposite is stretched, the Ag-Au nanowire-rich region maintains stable electrical conduction and the SBS-rich region forms an elastic microstructured strut; p. 1051, col. 2, para. 2: the applied strain is mostly dissipated in the soft SBS-rich region; Fig. 1(d), (f): indicating the pores are stretched under 840% strain without breaking, i.e., the strain being reduced on the nanostructures, which include Ag-Au nanowires for preserving the nanocomposite’s conductivity; further, the limitation “such that…” is functional limitation regarding intended result in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Choi does not disclose the wearable bioelectronic device is wireless.
However, Zhang teaches a wearable electronic device using wireless technologies offering simple, battery-free platforms for human-machine interactions (p. 2, col. 1, para. 1). The highly stretchable transparent wireless electronics composed of Ag nanofibers coils and functional electronic components for power transfer and information communication ([Abstract]). The combined wearable devices and wireless technology would achieve real-time monitoring of human health (p. 2, col. 1, para. 2).
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 Choi by incorporating wireless technology as taught by Zhang because it would provide simple, battery-free platforms for human-machine interactions, which plays an essential role in soft robotics, human healthcare monitoring, and implantable medical systems (p. 2, col. 1, para. 1), e.g., for real-time monitoring of human health (p. 2, col. 1, para. 2). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 23, the designation “wherein the wearable wireless bioelectronic device is configured to be integrated into a multiplexed biochemical sensing system” is functional limitation for intended use in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 24, Choi and Zhang discloses all limitations of claim 14. Choi does not disclose a stretchable biochemical sensing interface formed of the PSPN; and a spiral coil communicatively coupled to the stretchable biochemical sensing interface, the spiral coil configured to transmit and receive wireless signals.
However, Zhang teaches the stretchable transparent device having a stretchable biochemical sensing interface formed of the PSPN (Fig. 6(a): the chips and LED); and a spiral coil communicatively coupled to the stretchable biochemical sensing interface (Fig. 6(a): spiral coil), the spiral coil configured to transmit and receive wireless signals (p. 8, col. 1, para. 1: the coil chows outstanding wireless transmission capability even in the tensile state).
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 Choi by incorporating a biochemical sensing interface and a spiral coil for transmitting and receiving wireless signals as taught by Zhang because they enable both short-distance content recognition by NFC and long-distance audio transmission by FM for potential applications in information identification systems, soft robotics, and wearable electronics (p. 8, col. 1, para. 1). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 25, Choi and Zhang discloses all limitations of claim 14, including the wearable wireless bioelectronic device comprising a high-precision epidermal radio frequency (RF) antenna via Ag NFs network for wireless stretchable multifunction electrodes (Zhang, p. 7, col. 2, para. 2), or using near-field communication (NFC) technology via an external reader, e.g., any NFC-enabled smartphone, tablet, or watch (p. 7, col. 2, para. 1; also see Fig. 6).
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 Choi and Zhang by incorporating both RF and NFC antenna into the stretchable PSPN for both long-distance and short-distance communication (Zhang, p. 2, col. 2, para. 1). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 26, Choi teaches wherein the PSPN has a percolation threshold below 0.01 (p. 1051, col. 1, para. 1: Vc = 0.0037).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Zhang, and further in view of Chiao (US 2011/0140703).
Regarding claim 17, Choi and Zhang discloses all limitations of claim 14, but fail to teach the wearable wireless bioelectronic device o further comprising: a voltage multiplier circuit configured to increase a voltage associated with the wearable wireless bioelectronic device.
However, Chiao teaches a wireless pH sensor including a passive transponder (tag) and a reader (¶72). The battery less operation relies on the inducting coupling between reader and tag coils antennas (¶72). The transponder of the passive wireless pH sensor comprises a voltage multiplier, which consists of diodes and capacitors amplifying the voltage from hundreds of millivolts to volts (¶73).
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 Choi and Zhang by incorporating voltage multiplier as taught by Chiao because it would multiply voltage and provide more power for transponding the wireless signal (¶73). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Zhang, and further in view of Hsu (US 11,388,573).
Regarding claim 20, Choi and Zhang discloses all limitations of claim 14, including the wearable wireless bioelectronic device comprising a high-precision epidermal radio frequency (RF) antenna via Ag NFs network for wireless stretchable multifunction electrodes (Zhang, p. 7, col. 2, para. 2), or using near-field communication (NFC) technology via an external reader, e.g., any NFC-enabled smartphone, tablet, or watch (p. 7, col. 2, para. 1; also see Fig. 6).
Choi and Zhang fail to teach a Bluetooth low energy antenna configured to provide a wireless communication connection with one or more external devices.
However, Hsu teaches multiple wireless communication protocols, such as Wi-Fi, Bluetooth, near-field communications (NFC) between devices (col. 2, ll. 10-13). Hsu teaches using multiple wireless communications for a wireless wearable device, for example, positioning a NFC antenna near or next to a Bluetooth antenna sitting on a same carrier (col. 3, ll. 24-26, 40-42).
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 Choi and Zhang by substituting NFC communication with the Bluetooth communication or incorporating Bluetooth communication because they are suitable and alternative protocols for wireless communications of a wearable device (col. 3, ll. 24-26). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Claim(s) 22 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Zhang, and further in view of Zhu (H.W. Zhu, Printable elastic silver nanowire-based conductor for washable electronic textiles, Nano Research, 2020, 13(10), pp. 2879-84).
Regarding claim 22, Choi and Zhang discloses all limitations of claim 21, but fails to teach the porous multiscale elastomer matrix comprises a polyurethane material.
However, Zhu teaches a printable elastic conductors for healthcare monitoring and wearable computation ([Abstract]), which is a composite elastic conductor based on Ag nanowires (NWs) and polyurethane elastomer ([Abstract]).
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 Choi and Zhang by substituting the SBS elastomer with one made of polyurethane as taught by Zhu. The suggestion for doing so would have been that polyurethane is a suitable material for the elastomer to form a elastic silver nanowire-based conductor and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07. Here, the substitution of one known element for another would yield nothing more than predictable results. MPEP 2141(III)(B).
Regarding claim 27, Choi and Zhang discloses all limitations of claim 21, but fails to teach wherein the PSPN has a percolation threshold below 0.0007.
However, Zhu teaches a printable elastic conductors for healthcare monitoring and wearable computation ([Abstract]), which is a composite elastic conductor based on Ag nanowires (NWs) and polyurethane elastomer ([Abstract]). The composite is made from thermoplastic polyurethane (TPU) that has a similar surface energy with aqueous Ag NWs dispersion (p. 2879, col. 2, last para.). A phase inversion process induces the regional concentration of Ag NWs, giving the phase inversed nanocomposite an ultralow percolation threshold of 0.12 vol.% and high conductivity of 3,668 S∙cm-1 (p. 2880, col. 1, para 1), which is 0.0012 and close to the recited range.
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 Choi and Zhang by adjusting the percolation threshold of the PSPN within the claimed range because lowering percolation threshold would increase the conductivity (Fig. 2(d)). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I). Further, the fact that decreasing the percolation threshold corresponds to increasing conductivity renders the percolation threshold a result-effective variable. Thus, the percolation threshold can be optimized through routine experimentation to obtain the desirable conductivity of the nanocomposite. MPEP 2144.05 (II)(B).
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Applicant argues the cited art does not teach the plurality of pores comprising open cavities or the PSPN is a pre-formed three-dimensional porous elastomer scaffold (Response, p. 8, para. 3) or the conductive nanostructures focused onto the plurality of pores such that the plurality of pores (Response, p. 8, para. 4). These arguments are unpersuasive. Choi teaches a microstructured Ag-Au nanocomposite including Ag-Au nanowires within a SBS elastomer (Fig. 1; p. 1048, col. 2, last para.). Fig. 1 indicates the fabricated composite includes a porous elastic matrix having open cavities (Fig. 1(d): SBS matrix), and Ag-Au nanowires are focused onto the pores (Fig. 1(d): right). With such a structure, the nanocomposite have both good conductivity due to Ag-Au nanowires and softness and stretchability due to the SBS elastomer and the formed cushioned microstructure (p. 1049, col. 1, para. 1). The phase separation occurs during the formation, and it is read as the recited “phase-separated porous silver nanowire nanocomposite (PSPN)” in the claims. The formation process, if claimed, is directed to product-by-process limitation, and the patentability of a product does not depend on its method of production.
Further, the limitations “configured to provide a strain-invariant electrical conductivity of the PSPN” and “such that the plurality of pores reduce strain on the plurality of conductive nanostructures and preserve the conductive network during a strain event” are functional limitations regarding intended result in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)). In response to the argument that Choi teaches an inverse relationship between strain and conductivity as shown in Fig. 3c (p. 9, last para.), Examiner notes that “preserving” the conductivity under stretching does not mean preserving the exact same conductivity value, but the material’s conductivity is well preserved for its intended use (Choi, Fig. 3c: indicating the conductivity is “preserved” till a 250% strain before it collapses at 25⁰C). Choi explicitly discloses the applied strain is mostly dissipated in the soft SBS-rich regions, and the electrical stability of the Ag-Au nanocomposite shows that even after the Ag-Au nanocomposite was stretched with 10, 20, and 30% applied strain repetitively over 3,000 times, there was no significant change in performance (p. 1051, col. 2, para. 2; Supplemental Fig. 10).
Applicant argues the prior art references fail to teach the claimed percolation thresholds (p. 10, para. 2). This argument is unpersuasive because Choi teaches a percolation threshold of about 0.0037 (p. 1051, col. 1, para. 1), which is below 0.01, and the new reference, Zhu, is now relied on to teach the percolation threshold is about 0.0012, which is close to the value below 0.0007.
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 extension fee 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.
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/C. SUN/Primary Examiner, Art Unit 1795