DETAILED ACTION
This action is pursuant to claims filed on 12/26/2025. Claims 1-20 are pending. A final action on the merits of claims 1-20 is as follows.
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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application JP 2023-7511 filed in Japan on 1/20/2023. It is noted, however, that applicant has not filed a certified copy of the foreign application as required by 37 CFR 1.55 and the retrieval attempts under the priority document exchange program failed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 9-16 all state that several limitations are “optional” such as “hydrocarbon group optionally having either or both selected from an ester group or an ether group” in claims 9-12 or “R101d, R101e, R101f, and R101g […] and optionally have one or more selected from the group consisting of an ether group, a carbonyl group, an ester group, a hydroxy group, a carboxy group, an amino group, a nitro group, a sulfonyl group, a sulfinyl group, a halogen atom, and a sulfur atom” in claims 13-16. There are other instances recited in the claims as well. Optional limitations render the metes and bounds of the claim indeterminate because it is not clear whether the limitations are required or not, or if the limitations are required but must be selected from the provided group. Therefore, claims 9-16 are rejected for failing to particularly point out and distinctly claim the subject matter of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 5, 7, 9, 11, 13, 15, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (hereinafter ‘Hatakeyama’, US 20210371663 A1) in view of Quintanar et al. (hereinafter ‘Quintanar’, US 20130345539 A1).
Regarding independent claim 1, Hatakeyama discloses a bio-electrode (bioelectrode shown in Figs. 1-3) has layers on a substrate (layers 20, 2, and 3 in Fig. 3), the layers comprising: (A) an electro-conductive layer ([0192]: electro-conductive base 2 in Figs. 1-3) comprising an electro-conductive wiring ([0242]-[0246]: electroconductive paste is printed on layer 20 and is the electroconductive layer; the electro-conductive wiring is formed by the electro-conductive paste); and (B) an ionic polymer containing layer ([0021]-[0022]: the bioelectrode includes an ionic polymer material layer; layer 3 in Figs. 1-3) comprising a polymer comprising a repeating unit-a having at least one selected from fluorosulfonic acid, fluorosulfonimide, and N-carbonyl-fluorosulfonamide, ([0024]: the ionic polymer material comprises a repeating unit-a having a structure selected from the group consisting of salts of ammonium, sodium, potassium, and silver formed with any of fluorosulfonic acid, fluorosulfonimide, and N-carbonyl-fluorosulfonamide) and having the weight-average molecular weight in a range of 1,000 to 500,000 ([0145]: the weight-average molecular weight can be 1,000 or more and 500,000 or less).
However, Hatakeyama is silent to the electro-conductive wiring that forms the electro-conductive layer having a width of 200 μm or less.
Quintanar teaches a lightweight, radio translucent electrode assembly that connects to non-integrated electrodes for monitoring physiological parameters ([Abstract]). The electrically conductive elements of Quintanar are printed onto the substrate ([0020]). The printed conductive traces extend to where the non-integrated electrode connects to the sensor as seen in Figs. 4-7. The design can take a variety of forms as seen in Figs. 4-7, forming a key-hole type shape which is similar to Hatakeyama. The geometries of the conductor region must be sufficient to conduct electricity while being thin enough to maintain radio-translucency ([0060]). In one preferred example, Quintanar teaches that the width of the conductive traces is 17 microns, well below the claimed 200 micrometers. Printing the conductive traces of Hatakeyama in a pattern similar to that of Figs. 4-7 in Quintanar would be of ordinary skill in the art as a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. Additionally, while Hatakeyama is silent to the size of the printed traces, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the conductive trace size and pattern of Quintanar with the printed electro-conductive layer of Hatakeyama such that the layer utilizes 17-micron wide traces to form a radio translucent pattern.
Regarding claim 3, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 1, wherein the electro-conductive wiring having a width of 200 μm or less is a printed pattern ([0242]-[0246]: electroconductive paste is printed on layer 20 and is the electroconductive layer; the electro-conductive wiring is formed by the electro-conductive paste) formed by an electro-conductive paste comprising a particle of gold, silver, copper, or nickel, or a fusion layer of a metal nanowire comprising gold, silver, copper, nickel, or alloy thereof ([0058]: the electro-conductive base material can comprise one or more species selected from the group consisting of gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, and carbon).
Regarding claim 5, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 1, wherein the repeating unit-a has a partial structure shown by any of the following general formulae (1)-1 to (1)-4 ([0029]: the repeating unit-a is preferably shown by the general formulae (1)-1 to (1)-4; the formulas are identical),
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wherein Rf1 and Rf2 each represent a hydrogen atom, a fluorine atom, an oxygen atom, a methyl group, or a trifluoromethyl group, provided that when Rf1 and Rf2 represent an oxygen atom, the single oxygen atom represented by Rf1 and Rf2 bonds to a single carbon atom to form a carbonyl group; Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group, and at least one of Rf1 to Rf4 is a fluorine atom or a trifluoromethyl group; Rf5, Rf6, and Rf7 each represent a fluorine atom, a trifluoromethyl group, a linear or branched alkyl group having 1 to 4 carbon atoms, or an aryl group having 6 to 10 carbon atoms, and have at least one fluorine atom or trifluoromethyl group; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion; “m” represents an integer of 1 to 4 ([0030]-[0033]: the above limitations are disclosed).
Regarding claim 7, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 3, wherein the repeating unit-a has a partial structure shown by any of the following general formulae (1)-1 to (1)-4 ([0029]: the repeating unit-a is preferably shown by the general formulae (1)-1 to (1)-4; the formulas are identical),
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wherein Rf1 and Rf2 each represent a hydrogen atom, a fluorine atom, an oxygen atom, a methyl group, or a trifluoromethyl group, provided that when Rf1 and Rf2 represent an oxygen atom, the single oxygen atom represented by Rf1 and Rf2 bonds to a single carbon atom to form a carbonyl group; Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group, and at least one of Rf1 to Rf4 is a fluorine atom or a trifluoromethyl group; Rf5, Rf6, and Rf7 each represent a fluorine atom, a trifluoromethyl group, a linear or branched alkyl group having 1 to 4 carbon atoms, or an aryl group having 6 to 10 carbon atoms, and have at least one fluorine atom or trifluoromethyl group; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion; “m” represents an integer of 1 to 4 ([0030]-[0033]: the above limitations are disclosed).
Regarding claim 9, the Hatakeyama/Quintanar combination discloses the bio-electrode composition according to claim 5, wherein the repeating unit-a comprises at least one selected from the group consisting of repeating units A1 to A7 shown by the following general formula (2) ([0035]: the repeating unit-a comprises a repeating unit selected from the groups a1 to a7 following the general formula 2 which is the same),
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wherein, R1, R3, R5, R8, R10, R11, and R13 each independently represent a hydrogen atom or a methyl group; R2, R4, R6, R9, R12, and R14 each independently represent a single bond or a linear, branched, or cyclic hydrocarbon group having 1 to 13 carbon atoms, the hydrocarbon group optionally having either or both of an ester group and an ether group; R7 represents a linear or branched alkylene group having 1 to 4 carbon atoms, and one or two hydrogen atoms in R7 are optionally substituted with a fluorine atom; X1, X2, X3, X4, X6, and X7 each independently represent any of a single bond, a phenylene group, a naphthylene group, an ether group, an ester group, and an amide group; X5 represents any of a single bond, an ether group, and an ester group; Y represents an oxygen atom or a -NR19- group; R19 represents any of a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 12 carbon atoms, and phenyl group, optionally comprise one or more group selected from the group consisting of ether group, carbonyl group, ester group, and amide group; and Y forms a ring together with R4; Rf1’ and Rf5’ each represent a fluorine atom, a trifluoromethyl group, or a linear or branched alkyl group having 1 to 4 carbon atoms, and have at least one fluorine atom; “m” represents an integer of 1 to 4; a1, a2, a3, a4, a5, a6, and a7 satisfy 0≤a1≤1.0, 0≤a2≤1.0, 0≤a3≤1.0, 0≤a4≤1.0, 0≤a5≤1.0, 0≤a6≤1.0, 0≤a7≤1.0, and 0<a1+a2+a3+a4+a5+a6+a7≤1.0; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion ([0036]: the limitations above are met; while the claimed limitation additionally utilizes R14, R14 can optionally represent a single bond which is disclosed in a7 of Hatakeyama because R14 is left out and there is simply a single bond in its place; furthermore, Hatakeyama does not list Rf1’ representing an alkyl group, but again that is an “or” statement that does not require that limitation; finally, the limitations a1-a7 are “less than or equal to” and “greater than or equal to” ranges that are disclosed by Hatakeyama as the ranges disclosed simply don’t include all of the endpoints, but because the disclosed range is entirely within the claimed range, the limitations are met).
Regarding claim 11, the Hatakeyama/Quintanar combination discloses the bio-electrode composition according to claim 7, wherein the repeating unit-a comprises at least one selected from the group consisting of repeating units A1 to A7 shown by the following general formula (2) ) ([0035]: the repeating unit-a comprises a repeating unit selected from the groups a1 to a7 following the general formula 2 which is the same),
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wherein, R1, R3, R5, R8, R10, R11, and R13 each independently represent a hydrogen atom or a methyl group; R2, R4, R6, R9, R12, and R14 each independently represent a single bond or a linear, branched, or cyclic hydrocarbon group having 1 to 13 carbon atoms, the hydrocarbon group optionally having either or both of an ester group and an ether group; R7 represents a linear or branched alkylene group having 1 to 4 carbon atoms, and one or two hydrogen atoms in R7 are optionally substituted with a fluorine atom; X1, X2, X3, X4, X6, and X7 each independently represent any of a single bond, a phenylene group, a naphthylene group, an ether group, an ester group, and an amide group; X5 represents any of a single bond, an ether group, and an ester group; Y represents an oxygen atom or a -NR19- group; R19 represents any of a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 12 carbon atoms, and phenyl group, optionally comprise one or more group selected from the group consisting of ether group, carbonyl group, ester group, and amide group; and Y forms a ring together with R4; Rf1’ and Rf5’ each represent a fluorine atom, a trifluoromethyl group, or a linear or branched alkyl group having 1 to 4 carbon atoms, and have at least one fluorine atom; “m” represents an integer of 1 to 4; a1, a2, a3, a4, a5, a6, and a7 satisfy 0≤a1≤1.0, 0≤a2≤1.0, 0≤a3≤1.0, 0≤a4≤1.0, 0≤a5≤1.0, 0≤a6≤1.0, 0≤a7≤1.0, and 0<a1+a2+a3+a4+a5+a6+a7≤1.0; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion ([0036]: the limitations above are met; while the claimed limitation additionally utilizes R14, R14 can optionally represent a single bond which is disclosed in a7 of Hatakeyama because R14 is left out and there is simply a single bond in its place; furthermore, Hatakeyama does not list Rf1’ representing an alkyl group, but again that is an “or” statement that does not require that limitation; finally, the limitations a1-a7 are “less than or equal to” and “greater than or equal to” ranges that are disclosed by Hatakeyama as the ranges disclosed simply don’t include all of the endpoints, but because the disclosed range is entirely within the claimed range, the limitations are met).
Regarding claim 13, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 9, wherein the repeating unit-a comprises an ammonium ion shown by the following general formula (3) as an ammonium ion for forming an ammonium salt ([0038]: the component comprises an ammonium ion shown by the following formula (3) as the M+, this would form the salt with the anions shown in a1-a7 or (1)-1 to (1)-4),
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wherein, R101d, R101e, R101f, and R101g each represent a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 15 carbon atoms, a linear, branched, or cyclic alkenyl group or alkynyl group having 2 to 12 carbon atoms, or an aromatic group having 4 to 20 carbon atoms, and optionally have one or more selected from the group consisting of an ether group, a carbonyl group, an ester group, a hydroxy group, a carboxy group, an amino group, a nitro group, a sulfonyl group, a sulfinyl group, a halogen atom, and a sulfur atom; and R101d and R101e, or R101d, R101e, and R101f, are optionally bonded to each other together with a nitrogen atom bonded therewith to form a ring in which R101d and R101e, or R101d, R101e, and R101f, represent an alkylene group having 3 to 10 carbon atoms, or to form a heteroaromatic ring having the nitrogen atom in the general formula (3) within the ring ([0039]: the above limitations are disclosed).
Regarding claim 15, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 11, wherein the repeating unit-a comprises an ammonium ion shown by the following general formula (3) as an ammonium ion for forming an ammonium salt ([0038]: the component comprises an ammonium ion shown by the following formula (3) as the M+, this would form the salt with the anions shown in a1-a7 or (1)-1 to (1)-4),
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wherein, R101d, R101e, R101f, and R101g each represent a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 15 carbon atoms, a linear, branched, or cyclic alkenyl group or alkynyl group having 2 to 12 carbon atoms, or an aromatic group having 4 to 20 carbon atoms, and optionally have one or more selected from the group consisting of an ether group, a carbonyl group, an ester group, a hydroxy group, a carboxy group, an amino group, a nitro group, a sulfonyl group, a sulfinyl group, a halogen atom, and a sulfur atom; and R101d and R101e, or R101d, R101e, and R101f, are optionally bonded to each other together with a nitrogen atom bonded therewith to form a ring in which R101d and R101e, or R101d, R101e, and R101f, represent an alkylene group having 3 to 10 carbon atoms, or to form a heteroaromatic ring having the nitrogen atom in the general formula (3) within the ring ([0039]: the above limitations are disclosed).
Regarding claim 17, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 1, further comprising one or more resin (C) ([0147]: a resin is blended into the bio-electrode composition) selected from the group consisting of (meth)acrylate resin, (meth)acrylamide resin, urethane resin, polyurethane (meth)acrylate, polyvinyl alcohol, polyvinylpyrrolidone, polyoxazoline, polyglycerin, polyglycerin-modified silicone, polyglycerin(meth)acrylate, cellulose, polyethylene glycol, and polypropylene glycol, as a component of the layer (B) ([0153]: the resin can be a polyurethane resin which is a urethane resin).
Regarding claim 19, the Hatakeyama/Quintanar combination discloses a method for manufacturing a bio-electrode according to claim 1, the method comprising: forming the layer (A) on a substrate by applying a solution comprising a metal nanowire, or by printing an electro-conductive paste containing a conductive particle ([0242]: the electroconductive base is formed by printing a conductive paste DOTITE FA-333); and forming the layer (B) on the layer (A) by coating a bio-electrode composition comprising the polymer ([0208]: the bio-electrode composition, which comprises the polymer, was coated onto the electro-conductive base).
Claim(s) 2, 4, 6, 8, 10, 12, 14, 16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama/Quintanar combination as applied to claim 1 in further view of Hatakeyama et al. (hereinafter ‘Hatakeyama ‘897’, EP 3067897 A1).
Regarding claim 2, the Hatakeyama/Quintanar combination discloses the bio-electrode according to claim 1, wherein a laminate film (layers 2 and 3 form a laminated film as shown in Figs. 1-3), being a combination of the layer (A) and the layer (B), has a visible light transmittance of 50% or more (this is a property of the layer – because Hatakeyama discloses the same ionic layer as the claimed invention and the printed traces of the combination are within the disclosed width, it is the examiner’s position that the laminate film of the Hatakeyama/Quintanar combination would inherently have the claimed transmittance value).
While it is the examiner’s position that the claimed transmittance is an inherent property of the combination, it is not outright stated in Hatakeyama.
Hatakeyama ‘897 teaches a conductive material comprising a π-conjugated polymer and a dopant polymer which contains one or more repeating units and has a weight-average molecular weight in the range of 1,000 to 500,000 ([Abstract]). Furthermore, the dopant polymer contains a fluorinated sulfonic acid, similar to the polymer compound of Hatakeyama, and contains one or more repeating units selected from a1 to a4 represented in formula 1 of Hatakeyama ‘897 ([0042]). The repeating units a1-a4 represented by the various formulas of Hatakeyama ‘897 ([0042]-[0046]) are identical to several of the selections for repeating unit-a of the polymer compound for Hatakeyama ([0068]-[0071]) and the instant application ([0164]-[0169]). Hatakeyama ‘897 further teaches that utilizing a conductive material formed of a composite between a dopant polymer and a π-conjugated polymer with a gold or silver nanowire forms a conductive material that has excellent conductivity, transparency, flatness, flexibility, durability, and low surface roughness ([0027]-[0030]). The transmittance created by the layer of Hatakeyama ‘897 is above 50% in all of the specific examples as shown in Table 1. While not specifically directed towards a bioelectrode, all of the benefits of the conductive material of Hatakeyama ‘897 would positively impact the bioelectrode of Hatakeyama and because the repeating units that form the respective polymers have identical subunit options, the combination would not be rendered inoperable. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the conductive layer of Hatakeyama with the conductive layer of Hatakeyama ‘897 to form a layer that results in excellent conductivity, the claimed transmittance, flatness, flexibility, and durability as well as low surface roughness. Lastly, because the laminate film is a film composed of the polymer layer and the printed electro-conductive layer, the sections of the laminate film that are devoid of the printed electro-conductive wires would have the same transmittance as the polymer layer, thus the laminate film has a transmittance of 50% or more.
Regarding claim 4, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 2, wherein the electro-conductive wiring having a width of 200 μm or less is a printed pattern ([0242]-[0246]: electroconductive paste is printed on layer 20 and is the electroconductive layer; the electro-conductive wiring is formed by the electro-conductive paste) formed by an electro-conductive paste comprising a particle of gold, silver, copper, or nickel, or a fusion layer of a metal nanowire comprising gold, silver, copper, nickel, or alloy thereof ([0058]: the electro-conductive base material can comprise one or more species selected from the group consisting of gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, and carbon)
Regarding claim 6, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 2, wherein the repeating unit-a has a partial structure shown by any of the following general formulae (1)-1 to (1)-4 ([0029]: the repeating unit-a is preferably shown by the general formulae (1)-1 to (1)-4; the formulas are identical),
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wherein Rf1 and Rf2 each represent a hydrogen atom, a fluorine atom, an oxygen atom, a methyl group, or a trifluoromethyl group, provided that when Rf1 and Rf2 represent an oxygen atom, the single oxygen atom represented by Rf1 and Rf2 bonds to a single carbon atom to form a carbonyl group; Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group, and at least one of Rf1 to Rf4 is a fluorine atom or a trifluoromethyl group; Rf5, Rf6, and Rf7 each represent a fluorine atom, a trifluoromethyl group, a linear or branched alkyl group having 1 to 4 carbon atoms, or an aryl group having 6 to 10 carbon atoms, and have at least one fluorine atom or trifluoromethyl group; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion; “m” represents an integer of 1 to 4 ([0030]-[0033]: the above limitations are disclosed).
Regarding claim 8, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 4, wherein the repeating unit-a has a partial structure shown by any of the following general formulae (1)-1 to (1)-4 ([0029]: the repeating unit-a is preferably shown by the general formulae (1)-1 to (1)-4; the formulas are identical),
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wherein Rf1 and Rf2 each represent a hydrogen atom, a fluorine atom, an oxygen atom, a methyl group, or a trifluoromethyl group, provided that when Rf1 and Rf2 represent an oxygen atom, the single oxygen atom represented by Rf1 and Rf2 bonds to a single carbon atom to form a carbonyl group; Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group, and at least one of Rf1 to Rf4 is a fluorine atom or a trifluoromethyl group; Rf5, Rf6, and Rf7 each represent a fluorine atom, a trifluoromethyl group, a linear or branched alkyl group having 1 to 4 carbon atoms, or an aryl group having 6 to 10 carbon atoms, and have at least one fluorine atom or trifluoromethyl group; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion; “m” represents an integer of 1 to 4 ([0030]-[0033]: the above limitations are disclosed).
Regarding claim 10, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode composition according to claim 6, wherein the repeating unit-a comprises at least one selected from the group consisting of repeating units A1 to A7 shown by the following general formula (2) ([0035]: the repeating unit-a comprises a repeating unit selected from the groups a1 to a7 following the general formula 2 which is the same),
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wherein, R1, R3, R5, R8, R10, R11, and R13 each independently represent a hydrogen atom or a methyl group; R2, R4, R6, R9, R12, and R14 each independently represent a single bond or a linear, branched, or cyclic hydrocarbon group having 1 to 13 carbon atoms, the hydrocarbon group optionally having either or both of an ester group and an ether group; R7 represents a linear or branched alkylene group having 1 to 4 carbon atoms, and one or two hydrogen atoms in R7 are optionally substituted with a fluorine atom; X1, X2, X3, X4, X6, and X7 each independently represent any of a single bond, a phenylene group, a naphthylene group, an ether group, an ester group, and an amide group; X5 represents any of a single bond, an ether group, and an ester group; Y represents an oxygen atom or a -NR19- group; R19 represents any of a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 12 carbon atoms, and phenyl group, optionally comprise one or more group selected from the group consisting of ether group, carbonyl group, ester group, and amide group; and Y forms a ring together with R4; Rf1’ and Rf5’ each represent a fluorine atom, a trifluoromethyl group, or a linear or branched alkyl group having 1 to 4 carbon atoms, and have at least one fluorine atom; “m” represents an integer of 1 to 4; a1, a2, a3, a4, a5, a6, and a7 satisfy 0≤a1≤1.0, 0≤a2≤1.0, 0≤a3≤1.0, 0≤a4≤1.0, 0≤a5≤1.0, 0≤a6≤1.0, 0≤a7≤1.0, and 0<a1+a2+a3+a4+a5+a6+a7≤1.0; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion ([0036]: the limitations above are met; while the claimed limitation additionally utilizes R14, R14 can optionally represent a single bond which is disclosed in a7 of Hatakeyama because R14 is left out and there is simply a single bond in its place; furthermore, Hatakeyama does not list Rf1’ representing an alkyl group, but again that is an “or” statement that does not require that limitation; finally, the limitations a1-a7 are “less than or equal to” and “greater than or equal to” ranges that are disclosed by Hatakeyama as the ranges disclosed simply don’t include all of the endpoints, but because the disclosed range is entirely within the claimed range, the limitations are met).
Regarding claim 12, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode composition according to claim 8, wherein the repeating unit-a comprises at least one selected from the group consisting of repeating units A1 to A7 shown by the following general formula (2) ([0035]: the repeating unit-a comprises a repeating unit selected from the groups a1 to a7 following the general formula 2 which is the same),
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wherein, R1, R3, R5, R8, R10, R11, and R13 each independently represent a hydrogen atom or a methyl group; R2, R4, R6, R9, R12, and R14 each independently represent a single bond or a linear, branched, or cyclic hydrocarbon group having 1 to 13 carbon atoms, the hydrocarbon group optionally having either or both of an ester group and an ether group; R7 represents a linear or branched alkylene group having 1 to 4 carbon atoms, and one or two hydrogen atoms in R7 are optionally substituted with a fluorine atom; X1, X2, X3, X4, X6, and X7 each independently represent any of a single bond, a phenylene group, a naphthylene group, an ether group, an ester group, and an amide group; X5 represents any of a single bond, an ether group, and an ester group; Y represents an oxygen atom or a -NR19- group; R19 represents any of a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 12 carbon atoms, and phenyl group, optionally comprise one or more group selected from the group consisting of ether group, carbonyl group, ester group, and amide group; and Y forms a ring together with R4; Rf1’ and Rf5’ each represent a fluorine atom, a trifluoromethyl group, or a linear or branched alkyl group having 1 to 4 carbon atoms, and have at least one fluorine atom; “m” represents an integer of 1 to 4; a1, a2, a3, a4, a5, a6, and a7 satisfy 0≤a1≤1.0, 0≤a2≤1.0, 0≤a3≤1.0, 0≤a4≤1.0, 0≤a5≤1.0, 0≤a6≤1.0, 0≤a7≤1.0, and 0<a1+a2+a3+a4+a5+a6+a7≤1.0; and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, and a potassium ion ([0036]: the limitations above are met; while the claimed limitation additionally utilizes R14, R14 can optionally represent a single bond which is disclosed in a7 of Hatakeyama because R14 is left out and there is simply a single bond in its place; furthermore, Hatakeyama does not list Rf1’ representing an alkyl group, but again that is an “or” statement that does not require that limitation; finally, the limitations a1-a7 are “less than or equal to” and “greater than or equal to” ranges that are disclosed by Hatakeyama as the ranges disclosed simply don’t include all of the endpoints, but because the disclosed range is entirely within the claimed range, the limitations are met).
Regarding claim 14, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 10, wherein the repeating unit-a comprises an ammonium ion shown by the following general formula (3) as an ammonium ion for forming an ammonium salt ([0038]: the component comprises an ammonium ion shown by the following formula (3) as the M+, this would form the salt with the anions shown in a1-a7 or (1)-1 to (1)-4),
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wherein, R101d, R101e, R101f, and R101g each represent a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 15 carbon atoms, a linear, branched, or cyclic alkenyl group or alkynyl group having 2 to 12 carbon atoms, or an aromatic group having 4 to 20 carbon atoms, and optionally have one or more selected from the group consisting of an ether group, a carbonyl group, an ester group, a hydroxy group, a carboxy group, an amino group, a nitro group, a sulfonyl group, a sulfinyl group, a halogen atom, and a sulfur atom; and R101d and R101e, or R101d, R101e, and R101f, are optionally bonded to each other together with a nitrogen atom bonded therewith to form a ring in which R101d and R101e, or R101d, R101e, and R101f, represent an alkylene group having 3 to 10 carbon atoms, or to form a heteroaromatic ring having the nitrogen atom in the general formula (3) within the ring ([0039]: the above limitations are disclosed).
Regarding claim 16, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 12, wherein the repeating unit-a comprises an ammonium ion shown by the following general formula (3) as an ammonium ion for forming an ammonium salt ([0038]: the component comprises an ammonium ion shown by the following formula (3) as the M+, this would form the salt with the anions shown in a1-a7 or (1)-1 to (1)-4),
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wherein, R101d, R101e, R101f, and R101g each represent a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 15 carbon atoms, a linear, branched, or cyclic alkenyl group or alkynyl group having 2 to 12 carbon atoms, or an aromatic group having 4 to 20 carbon atoms, and optionally have one or more selected from the group consisting of an ether group, a carbonyl group, an ester group, a hydroxy group, a carboxy group, an amino group, a nitro group, a sulfonyl group, a sulfinyl group, a halogen atom, and a sulfur atom; and R101d and R101e, or R101d, R101e, and R101f, are optionally bonded to each other together with a nitrogen atom bonded therewith to form a ring in which R101d and R101e, or R101d, R101e, and R101f, represent an alkylene group having 3 to 10 carbon atoms, or to form a heteroaromatic ring having the nitrogen atom in the general formula (3) within the ring ([0039]: the above limitations are disclosed).
Regarding claim 18, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 2, further comprising one or more resin (C) ([0147]: a resin is blended into the bio-electrode composition) selected from the group consisting of (meth)acrylate resin, (meth)acrylamide resin, urethane resin, polyurethane (meth)acrylate, polyvinyl alcohol, polyvinylpyrrolidone, polyoxazoline, polyglycerin, polyglycerin-modified silicone, polyglycerin(meth)acrylate, cellulose, polyethylene glycol, and polypropylene glycol, as a component of the layer (B) ([0153]: the resin can be a polyurethane resin which is a urethane resin).
Regarding claim 20, the Hatakeyama/Quintanar/Hatakeyama ‘897 combination discloses the method for manufacturing a bio-electrode according to claim 2, the method comprising: forming the layer (A) on a substrate by applying a solution comprising a metal nanowire, or by printing an electro-conductive paste containing a conductive particle ([0242]: the electroconductive base is formed by printing a conductive paste DOTITE FA-333); and forming the layer (B) on the layer (A) by coating a bio-electrode composition comprising the polymer ([0208]: the bio-electrode composition, which comprises the polymer, was coated onto the electro-conductive base).
Response to Arguments
Applicant's arguments filed 12/26/2025 regarding the 112b rejections of claims 9-16 have been fully considered but they are not persuasive. The applicant argues that the use of the term “optionally” does not introduce ambiguity because the specification describes the embodiments and further points to the primary reference Hatakeyama which uses the same term. This is not persuasive. The phrase “optionally” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The scope of the claims are indefinite because it is unclear whether the limitations that follow should or should not be included. Additionally, the fact that a piece of prior art utilizes similar terms is irrelevant. The examiner recommends amending the claims to remove the term “optionally” and replace with language such as --substituted or unsubstituted with--. Therefore, the 112b rejections of claims 9-16 are maintained.
Applicant's arguments filed 12/26/2025 regarding the 103 rejections of claims 1, 3, 5, 7, 9, 11, 13, 15, 17, and 19 have been fully considered but they are not persuasive. The Applicant argues that Hatakeyama teaches away from utilizing a metal nanowire in the bio-electrode. This is not persuasive. The paragraphs the applicant cites regarding Hatakeyama discuss adding metal nanowires to the bio-electrode composition layer. The bio-electrode composition layer is the skin contacting layer 3 in Figs. 1 and 2 and described in paragraph [0192]. This is a separate layer from the electro-conductive base 2 as described in paragraph [0192]. The printed pattern of the electro-conductive paste forms the conductive traces of the electro-conductive base, as described in the rejection of record ([0242]-[0243]). Thus, Hatakeyama clearly teaches printing conductive traces that form a conductive path, just like the instant application (instant application [0019]). The instant application does not use the term “wire” the same as it is typically used in the art. The “wires” of the instant application are printed electro-conductive paste containing metal particles (instant application [0019]). This is consistent with conductive traces and art was applied accordingly. The portion that is cited in the rejection of record as the conductive traces of Hatakeyama and further modified by Quintanar are not the conductive additives to the body contacting layer, but are instead a separate layer of printed traces on the electro-conductive base. Quintanar is simply used to teach the width of the printed metal traces. The combination with Quintanar does not teach metal nanowires in the skin contacting layer as argued by the applicant. Thus, the applicant’s point that Hatakeyama teaches away from nanowires is not applicable because the paragraph cited by the applicant is discussing nanowires as conductive particles in the skin-contacting layer, not printed traces of the electro-conductive base.
Applicant’s arguments that the electrode of Hatakeyama cannot be transparent are not persuasive. Firstly, the claim does not require the electrode be transparent. Claim 1 makes no mention of transparency. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Quintanar teaches the geometries of the conductor region must be sufficient to conduct electricity while being thin enough to maintain radio-translucency ([0060]). In one preferred example, Quintanar teaches that the width of the conductive traces is 17 microns, well below the claimed 200 micrometers ([0073]). The Hatakeyama/Quintanar has the same structure as the claimed invention. Thus, it would inherently have similar transparency.
Claim 2 is the only claim that mentions any sort of transmittance value as it claims the transmittance of the laminate composition. However, this rejection is not challenged. For further clarity, the rejection of claim 2 is emphasized to show that the combination of record for claim 2 teaches the claimed transmittance value. Hatakeyama discloses the same ionic layer as the claimed invention and the printed traces of the combination are within the disclosed width, thus it is the examiner’s position that the laminate film of the Hatakeyama/Quintanar combination would inherently have the claimed transmittance value. Furthermore, the combination with Hatakeyama ‘897 clearly discloses the benefits of an electrode layer with the claimed transmittance as described above. Additionally, the laminate film is a film composed of the polymer layer and the printed electro-conductive layer, the sections of the laminate film that are devoid of the printed electro-conductive wires would have the same transmittance as the polymer layer, thus the laminate film has a transmittance of 50% or more.
Therefore, the arguments presented are not persuasive and the rejection of claim 1 is maintained.
The rejections of the independent claims 2-20 are maintained because the rejection of claim 1 is maintained.
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 WILLIAM E MOSSBROOK whose telephone number is (703)756-1936. The examiner can normally be reached M-F 8-5.
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/W.M./Examiner, Art Unit 3794