DETAILED ACTION
This action is pursuant to claims filed on 12/18/2025. Claims 1-14 are pending. A final action on the merits of claims 1-14 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
The foreign priority date of 11/17/2022 for foreign application number JP 2022-184475 is acknowledged. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Acknowledgment is made of applicant's claim for foreign priority based on an application JP 2023-82859 filed in Japan on 5/19/2023. 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 attempt under the priority document exchange program on 4/17/2024 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 7-8 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 7 and 8 both state that limitations are “optional” such as “Y optionally forms a ring together with […]” in claim 7, and “R101f optionally form a ring together with […]” in claim 8. 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 7 and 8 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) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (hereinafter ‘Hatakeyama’, US 20200317840 A1) in view of Hatakeyama et al. (hereinafter ‘Hatakeyama ‘665’, US 20210307665 A1) and in further view of Hatakeyama et al. (hereinafter ‘Hatakeyama ‘897’, EP 3067897 A1).
Regarding independent claim 1, Hatakeyama discloses a bio-electrode (bio-electrode of Fig. 1) comprising an electro-conductive base material (electro-conductive base material 2 in Fig. 1) and a living body contact layer (living body contact layer 3 in Fig. 1) formed on the electro-conductive base material ([0131]: the living body contact layer is formed on the electro-conductive base material), wherein
the living body contact layer comprises an electro-conductive polymer composite ([0013]-[0017]: the bioelectrode comprises a living body contact layer that is formed of a component A which is a polymer compound and a lithium titanate powder) and one or more additives ([0128]: electrical conductivity can be improved by adding a carbon material and to improve stretchability and adhesion to the skin by additives and so forth), wherein
the electro-conductive polymer composite including
a component B: a dopant polymer ([0016]-[0017]: the living body contact layer comprises a polymer compound with a repeating unit-a), and
the component B dopant polymer contains a repeating unit having any of fluorosulfonic acid, fluorosulfonimide, and N-carbonyl-fluorosulfonamide ([0016]: the polymer compound has a repeating unit-a selected from ammonium salt, a sodium salt, a potassium salt, and a silver salt of any of fluorosulfonic acid, fluorosulfonimide, and N-carbonyl-fluorosulfonamide) and has a weight-average molecular weight of 1,000 to 500,000 ([0088]: the molecular weight of the component is preferably 2000-500,000; because the range taught by the prior art is entirely within the claimed range, the range is anticipated; see MPEP 2131.03).
However, Hatakeyama is silent to the living body contact layer comprising one or more groups selected from an ionic additive and a silicone compound having a polyglycerin structure.
Hatakeyama ‘665 teaches a bioelectrode comprising a body contacting layer that includes a resin component and an ionic material formed of repeating units that are the same as both Hatakeyama and the present invention ([0045], [0111]-[0114]). Hatakeyama ‘665 further teaches that the layer can comprise an electric conductivity improver such as a metal powder, carbon material, silicon powder, or a lithium titanate powder ([0045]). Again, this is very similar to the electrode of Hatakeyama that includes carbon or lithium titanate to improve electrical conductivity. Hatakeyama ‘665 goes on to further state that the bio-electrode composition may contain an ionic additive such as sodium chloride, potassium chloride, calcium chloride, magnesium chloride, saccharin sodium salt, acesulfame potassium, and other salts ([0174]). Additionally, Hatakeyama ‘665 states that the bio-electrode composition may contain a silicone compound having a polyglycerin structure ([0175]). Utilizing these additives can help to increase the ionic conductivity of the bio-electrode composition ([0174]). Additionally, it would be of routine skill in the art to combine the ionic additives or the silicone compound of Hatakeyama ‘665 with the bioelectrode of Hatakeyama because doing so would maintain operability, since their base structures are nearly identical, and would lead to the expected outcome of increased ionic conductivity. 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 ionic additives and the silicone compound of Hatakeyama ‘665 with the bioelectrode of Hatakeyama in order to improve ionic conductivity.
However, the Hatakeyama/Hatakeyama ‘665 combination is silent to the polymer composite including a π-conjugated polymer.
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]). While not specifically directed towards a bioelectrode, all of the benefits of the conductive material of Hatakeyama ‘897 would positively impact the bioelectrode of the Hatakeyama/Hatakeyama ‘665 combination 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 the Hatakeyama/Hatakeyama ‘665 combination with the conductive layer of Hatakeyama ‘897 to form a layer with composed of a π-conjugated polymer and a dopant polymer that results in excellent conductivity, transparency, flatness, flexibility, and durability as well as low surface roughness.
Regarding claim 2, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 1, wherein the electro-conductive base material is a network (Hatakeyama [0136]: the electro-conductive base material can be a cloth, which is a network of fibers, or a mesh form of woven wires material which is a network of wires), and the living body contact layer is formed so as to cover the network and enter a mesh of the network (Hatakeyama [0137]: the living-body contact layer is formed on the electro-conductive base material; [0145]: the method for applying the electrode composition onto the base material can include dip coating which would inherently result in a degree of penetration of the coating into a wire mesh).
Regarding claim 3, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 1, wherein the electro-conductive base material comprises one or more selected from the group consisting of gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, and carbon (Hatakeyama [0135]: the electro-conductive base material may comprise one or more species selected from gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, and carbon).
Regarding claim 4, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 1 as described above. The combination further teaches the component A π-conjugated polymer is a polymerized product of one or more precursor monomers selected from the group consisting of monocyclic aromatic compounds, polycyclic aromatic compounds, acetylenes, and derivatives thereof (Hatakeyama ‘897 [0034]: examples of the precursor monomer of the π-conjugated polymer include monocyclic aromatic compounds such as pyrroles, thiophenes, thiophene vinylenes, selenophenes, tellurophenes, phenylenes, phenylene vinylenes, and anilines; polycyclic aromatic compounds such as acenes; and acetylenes; and a homopolymer or a copolymer of these monomers).
Regarding claim 5, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 4/1 as described above. The combination further teaches the monocyclic aromatic compounds are pyrroles, thiophenes, thiophenevinylenes, selenophenes, tellurophenes, phenylenes, phenylenevinylenes, or anilines, and the polycyclic aromatic compounds are acenes (Hatakeyama ‘897 [0034]: examples of the precursor monomer of the π-conjugated polymer include monocyclic aromatic compounds such as pyrroles, thiophenes, thiophene vinylenes, selenophenes, tellurophenes, phenylenes, phenylene vinylenes, and anilines; polycyclic aromatic compounds such as acenes).
Regarding claim 6, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 1, wherein the component B dopant polymer has any of repeating units represented by the following general formulae (1)-1 to (1)-4 (Hatakeyama [0018]: the repeating unit a is preferably a repeating unit having at least one of the structures represented by the following formulae (1)-1 to (1)-4; the formulas match as shown),
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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, Rf1 and Rf2 being a single oxygen atom bonded to a single carbon atom to form a carbonyl group when Rf1 and Rf2 represent an oxygen atom, and Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group, at least one of Rf1 to Rf4 being a fluorine atom or a trifluoromethyl group; Rf5, Rf6, and Rf7 each represent a fluorine atom, a trifluoromethyl group, or a linear or branched alkyl group having 1 to 4 carbon atoms, having at least one fluorine atom; M+ represents an ion selected from a hydrogen ion, an ammonium ion, a sodium ion, and a potassium ion; and “m” represents an integer of 1 to 4 (Hatakeyama [0018]: the language matches the limitations above).
Regarding claim 7, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 6/1 as described above, wherein the component B dopant polymer has one or more repeating units selected from repeating units-A1 to -A7 represented by the following general formulae (2) (Hatakeyama [0020]: the repeating unit a is preferably at least one repeating unit selected from repeating units a1-a7 as shown by the formula; the formulas match as shown),
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675
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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, R14, and R15 each independently represent a single bond or a linear, branched, or cyclic hydrocarbon group having 1 to 13 carbon atoms, the hydrocarbon group is unsubstituted or substituted with one or more groups selected from an ester group, an ether group, an amide group, a carbamate group, a thiocarbamate group, and a urea group; R7 represents a linear or branched alkylene group having 1 to 4 carbon atoms, one or two hydrogen atoms in R7 being unsubstituted or substituted with a fluorine atom; X1, X2, X3, X4, X6, and X7 each independently represent a single bond, a phenylene group, a naphthylene group, an ether group, an ester group, or an amide group; X5 represents a single bond, an ether group, or an ester group; Y represents an oxygen atom or an -NR19- group; R19 represents a hydrogen atom, a linear, branched or cyclic alkyl group having 2 to 12 carbon atoms, or a phenyl group and is unsubstituted or substituted with one or more groups selected from an ether group, a carbonyl group, an ester group, and an amide group; Y optionally 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, having 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 a hydrogen ion, an ammonium ion, a sodium ion, and a potassium ion (Hatakeyama [0018] and [0020]: the language matches the limitations above; furthermore, while the placeholders of X-7, X5, R15, and R17 are different between the Hatakeyama and the instant application, the specific examples of a5 and a7 from [0069]-[0071] match the specific examples of a5 and a7 of the instant application thus disclosing that the chemical structures are the same).
Regarding claim 8, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 7/6/1 as described above, wherein the component B dopant polymer contains, as the ammonium ion, an ammonium ion represented by the following general formula (3) (Hatakeyama [0022]: the component contains the repeating unit-a having the ammonium salt structure which contains an ammonium ion shown by the formula (3); the formulas match as shown),
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262
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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, R101d, R101e, R101f, and R101g unsubstituted or substituted with one or more groups selected from 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 optionally form a ring together with a nitrogen atom bonded to R101d and R101e, or R101d, R101e, and R101f and when a ring is formed, R101d and R101e, or R101d, R101e, and R101f form an alkylene group having 3 to 10 carbon atoms or a heteroaromatic ring having, in the ring, the nitrogen atom in the general formula (3) (Hatakeyama [0022]: the limitations match).
Regarding claim 9, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 1, wherein the living body contact layer comprises a component C: a resin ([0091]: the living body layer can comprise a resin), wherein the component C resin is one or more kinds selected from a (meth)acrylate resin, a (meth)acrylamide resin, a urethane resin, polyvinyl alcohol, polyvinylpyrrolidone, polyoxazoline, polyglycerin, polyglycerin-modified silicone, cellulose, polyethylene glycol, and polypropylene glycol (Hatakeyama [0091]: the resin can be silicone type, an acrylic type, or a urethane type – urethane type resin is urethane resin).
Regarding claim 10, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 1, wherein the living body contact layer comprises a component D, wherein the component D is one or more selected from a carbon powder, a metal powder, a silicon powder, and a lithium titanate powder ([0013]-[0015]: the bioelectrode comprises a lithium titanate powder; [0033]: the bioelectrode further comprises a carbon material in addition to the lithium titanate powder).
Regarding claim 11, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 10, wherein the carbon powder is one or both of carbon black and carbon nanotube ([0035]: the carbon material is more preferably either or both of carbon black and carbon nanotube).
Regarding claim 12, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses the bio-electrode according to claim 10/1 as described above, wherein the metal powder is any of gold nanoparticles, silver nanoparticles, copper nanoparticles, and silver nanowire ([0118]: the inventive bio-electrode composition can also contain a metal powder selected from gold, silver, platinum, copper; [0120]: size of 100 μm or less which is interpreted as a nanoparticle since the size is not defined by the claim).
Furthermore, it would have been an obvious matter of design choice to modify the size of the powder to nanoparticles, since such a modification would have involved a mere change in the size of a component. 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).
Regarding independent claim 13, Hatakeyama discloses a bio-electrode composition (bio-electrode of Fig. 1) comprising an electro-conductive polymer composite and one or more additives ([0128]: electrical conductivity can be improved by adding a carbon material and to improve stretchability and adhesion to the skin by additives and so forth), wherein
the electro-conductive polymer composite including
a component B: a dopant polymer ([0016]-[0017]: the living body contact layer comprises a polymer compound with a repeating unit-a), wherein
the component B dopant polymer has any of repeating units represented by the following general formulae (1)-1 to (1)-4 ((Hatakeyama [0018]: the repeating unit a is preferably a repeating unit having at least one of the structures represented by the following formulae (1)-1 to (1)-4; the formulas match the prior art as shown) and
M+ in the repeating units represents a sodium ion or a potassium ion (Hatakeyama [0018]: M+ represents an ion selected from an ammonium ion or a potassium ion),
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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, Rf1 and Rf2 being a single oxygen atom bonded to a single carbon atom to form a carbonyl group when Rf1 and Rf2 represent an oxygen atom, and Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group, at least one of Rf1 to Rf4 being a fluorine atom or a trifluoromethyl group; Rf5, Rf6, and Rf7 each represent a fluorine atom, a trifluoromethyl group, or a linear or branched alkyl group having 1 to 4 carbon atoms, having at least one fluorine atom; and “m” represents an integer of 1 to 4 (Hatakeyama [0018]: the language matches the limitations above).
However, Hatakeyama is silent to the bioelectrode composition comprising one or more groups selected from an ionic additive and a silicone compound having a polyglycerin structure.
Hatakeyama ‘665 teaches a bioelectrode comprising a body contacting layer that includes a resin component and an ionic material formed of repeating units that are the same as both Hatakeyama and the present invention ([0045], [0111]-[0114]). Hatakeyama ‘665 further teaches that the layer can comprise an electric conductivity improver such as a metal powder, carbon material, silicon powder, or a lithium titanate powder ([0045]). Again, this is very similar to the electrode of Hatakeyama that includes carbon or lithium titanate to improve electrical conductivity. Hatakeyama ‘665 goes on to further state that the bio-electrode composition may contain an ionic additive such as sodium chloride, potassium chloride, calcium chloride, magnesium chloride, saccharin sodium salt, acesulfame potassium, and other salts ([0174]). Additionally, Hatakeyama ‘665 states that the bio-electrode composition may contain a silicone compound having a polyglycerin structure ([0175]). Utilizing these additives can help to increase the ionic conductivity of the bio-electrode composition ([0174]). Additionally, it would be of routine skill in the art to combine the ionic additives or the silicone compound of Hatakeyama ‘665 with the bioelectrode of Hatakeyama because doing so would maintain operability, since their base structures are nearly identical, and would lead to the expected outcome of increased ionic conductivity. 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 ionic additives and the silicone compound of Hatakeyama ‘665 with the bioelectrode of Hatakeyama in order to improve ionic conductivity.
However, the Hatakeyama/Hatakeyama ‘665 combination is silent to the polymer composite including a π-conjugated polymer.
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]). While not specifically directed towards a bioelectrode, all of the benefits of the conductive material of Hatakeyama ‘897 would positively impact the bioelectrode of the Hatakeyama/Hatakeyama ‘665 combination 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 the Hatakeyama/Hatakeyama ‘665 combination with the conductive layer of Hatakeyama ‘897 to form a layer with composed of a π-conjugated polymer and a dopant polymer that results in excellent conductivity, transparency, flatness, flexibility, and durability as well as low surface roughness.
Regarding claim 14, the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination discloses a method for manufacturing a bio-electrode having an electro-conductive base material and a living body contact layer formed on the electro-conductive base material (Hatakeyama [0143]), the method comprising:
applying the bio-electrode composition according to claim 13 onto the electro-conductive base material (Hatakeyama [0143]: applying the inventive bioelectrode composition onto the electro-conductive base material; the Hatakeyama/Hatakeyama ‘665/Hatakeyama ‘897 combination form the layer of claim 13 as described above); and
curing the bio-electrode composition to form the living body contact layer (Hatakeyama [0143]: curing the bio-electrode composition to form the living body contact layer).
Response to Arguments
Applicant’s arguments, filed 12/18/2025, on page 9, with respect to the 112b rejections of claims 7 and 8 have been fully considered but are not persuasive. While the examiner acknowledges that most of the recitations of “optionally” have been removed, there is still an optional limitation in claim 7 and another in claim 8 as described above. Therefore, the 112b rejections of claims 7 and 8 are maintained.
Applicant’s arguments filed 12/18/2025 with respect to the 112b rejections of claims 1-14 have been fully considered but are not persuasive. Applicant initially argues that the Hatakeyama/Hatakeyama ‘897 combination does not disclose the living body contact layer comprising “one or more selected from the group of an ionic additive and a silicone compound having a polyglycerin structure.” This argument, however, is moot because the ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant additionally argues that Hatakeyama teaches away from the invention as claimed. This is also not persuasive. Applicant points to paragraph [0154] of Hatakeyama and states that the Comparative Examples use ionic additives as evidence Hatakeyama teaches away from utilizing ionic additives. Paragraph [0154], nor any portion of Hatakeyama, discusses specifically utilizing ionic additives in the bioelectrode composition. The comparative examples simply blend a conventional salt with the resin rather than the inventive ionic material and a resin ([0168]). As shown in Tables 1 and 2 of Hatakeyama, the additives are substantially the same for both the inventive bioelectrodes and the comparative examples, and the ionic material, which forms component A, is different. The additives claimed are completely separate parts of the bioelectrode composition; they are not the ionic material or the conventional salt that are discussed in the Inventive and Comparative Examples. In fact, in paragraph [0128] of Hatakeyama, additives are even considered to improve conductivity, such as through the use of carbon particles, or to improve stretchability and adhesion. Therefore, Hatakeyama does not teach away from utilizing ionic additives and even contemplates the use of additives to improve function. Thus, the rejection of claim 1 remains because combining Hatakeyama with ionic additives and silicone compounds is obvious to one of ordinary skill in the art in view of Hatakeyama ‘665 as described above.
The rejection of claim 13 remains for the same reasons.
The rejections of dependent claims remain because the rejections of the independent claims remain.
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