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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 4, 2026 has been entered.
Status of Objections and Rejections
All objections and rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 21-27 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 recites the limitation “multiscale pores comprising open cavities of nano-scale and micro-scale,” which is not disclosed in the specification and is deemed to be new matter. The specification merely discloses a porous multiscale elastomer matrix (PGpub ¶7), wherein the formed porous microstructure 42 comprises a plurality of multiscale pores 44 (¶51). Further, the specification explicitly discloses microscale porosity present in the polymer matrix (¶69), which seems to mean that the pore size is in the microscale. The disclosed porous material’s nano/microstructures (¶69) seems to mean the nanocomposite comprises micro-scale pores and nano-scale Ag NWs. Thus, this limitation of multiscale pores comprising open cavities of nano-scale and micro-scale is new matter.
Dependent claims 22-27 are rejected due to their dependencies on claim 21.
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 and 18-19 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) nanocomposite (PSPN) (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),
wherein the plurality of conductive nanostructures is focused onto the plurality of pores at respective pore surfaces of the plurality of pores (see Supplemental, Fig. 6; here, Examiner notes that the phase separation into SBS-rich phase and the Ag-Au nanowires-rich phase would necessarily lead to the conductive nanowires focused on the pore surfaces) such that the plurality of pores reduces strain on the plurality of conductive nanostructures (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), reduces a percolation threshold of the PSPN (p. 1050, col. 2, last para.: the high aspect ratio of the ultralong nanowires significantly reduces their percolation threshold in the nanocomposite), and preserve the conductive network (p. 1051, col. 1, para. 1: the conductivity of the Ag-Au nanocomposite remained unchanged, i.e., preserving its conductivity) during a strain event (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).
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) 21-27 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 claims 21-22, Choi teaches a wearable bioelectronic device (Title) comprising:
a phase-separated ([Abstract]: phase separation) porous (p. 1051, col. 1, para. 2) nanocomposite (PSPN) (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 multiscale pores (Fig. 1(c)-(d): indicating the pores with different sizes 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),
wherein the plurality of conductive nanostructures focused onto the plurality of multiscale pores (see Supplemental, Fig. 6; here, Examiner notes that the phase separation into SBS-rich phase and the Ag-Au nanowires-rich phase would necessarily lead to the conductive nanowires focused on the pore surfaces) such that the plurality of pores reduces strain on the plurality of conductive nanostructures (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) and preserve the conductive network (p. 1051, col. 1, para. 1: the conductivity of the Ag-Au nanocomposite remained unchanged, i.e., preserving its conductivity) during a strain event (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).
Choi does not teach the multiscale pores comprising open cavities of nano-scale and micro-scale (claim 21) or the porous multiscale elastomer matrix comprises a polyurethane material (claim 22).
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 materials used in Zhu are the same materials of the instant specification (see Fig. 1; PGpub ¶43). Further, the method of preparation of Ag NWs-PU nanocomposite is by evaporation of the solvent to form the porous microstructure (Zhu, p. 2880, col. 1, para. 3-5; PGpub, ¶¶50-51), and thus the formed porous microstructure using the same materials and forming process would result in the similar structures, i.e., resulting the multiscale pores having open cavities of nano-scale and micro-scale.
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 materials with Ag NWs and PU elastomer as taught by Zhu forming the microstructures having multiscale pores comprising open cavities of nano-scale and micro-scale because Ag NWs and PU elastomer are suitable materials for PSPN bioelectronic device, 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). As a result, the same materials and forming process would lead to the similar structure of PSPN, i.e., having the multiscale pores having open cavities of nano-scale and micro-scale.
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, Zhang, and Zhu disclose all limitations of claim 21. Choi and Zhu do 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 and Zhu by incorporating a biochemical sensing interface and a spiral coil for transmitting and receiving wireless signals as taught by Zhu 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, Zhang, and Zhu disclose all limitations of claim 21. Choi and Zhu do not disclose the wearable wireless bioelectronic device further comprising a stretchable near-field communication (NFC) antenna formed of the PSPN.
However, Zhang teaches 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 Zhu 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).
Regarding claim 27, Choi, Zhang, and Zhu 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. Further, Choi teaches the theoretical percolation threshold Vc,ideal = 0.0009 (Choi, p. 1051, col. 1, para. 1), which is further closer 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, Zhang, and Zhu 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 conductive nanostructures focused onto the plurality of pores, more specifically, at respective pore surface as recited in claim 1 (Response, p. 9, section 1). This argument is unpersuasive. Examiner refers to Choi, Fig. 6 that the phase separation into SBS-rich phase and the Ag-Au nanowires-rich phase having the conductive nanowires focused on the pore surfaces. Fig. 1(d) (left figure) of Choi merely illustrate the nanocomposite showing SBS rich region, and cannot be deemed to be one pore. Upon stretching, it indicates there are numerous pores in the SBS rich region (Fig. 1(d), right figure). Further, Fig. 2(c) of Zhu shows the Ag NWs surround the solution that would be evaporated, and will necessarily result in these Ag NWs focused on pore surfaces.
Applicant argues the cited references fail to teach a reduction in percolation threshold attributed to the focusing of conductive nanostructure onto respective pores surfaces (p. 10, section 2). This argument is unpersuasive. First, the reduction in percolation threshold of the PSPN is recited after the term “such that..” which introduces a clause 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)).
Applicant argues the cited art does not teach or suggest the claimed multiscale pores (p. 11, section 3). First, the instant specification fails to teach the multiscale pores are open cavities of nano-scale and micro-scale. The multiscale pores would be interpreted as pores with different sizes. Second, Applicant fails to recite the specific ranges of pore sizes rather than general terms of nano-scale and micro-scale. In the art, microscale is typical from 1 to 1000 µm and nanoscale is typical from 1 to 1000 nm (i.e., 1 µm), which are overlapping or at least connected with each other in the spectrum of length scale. Applicant fails to provide any reasoning or evidence that such a collective pore size range would necessarily lead to the advantageous of the claimed device. Third, use of the same materials and processing method (the combination of Choi, Zhang, and Zhu versus the instant application) would result in similar nanostructure composite, e.g., multiscale pores comprising open cavities of nano-scale and micro-scale.
In response to applicant's argument that the any modification of Choi’s strain-invariant electrical conductivity would impermissibly change the principle of operation of Choi (p. 12, section 4). This argument is unpersuasive. Choi teaches a nanocomposite composed of Ag NWs that provides conductivity and an elastic polymer matrix that provides stretchability. Applicant fails to provide any evidence or reasoning that modified Choi, e.g., being wireless or focusing the Ag NWs on the pore surface would change the principle of operation of Choi.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached on M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795
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