DETAILED ACTION
This action is pursuant to the claims filed on November 30, 2023. Claims 1-16 are pending. A first action on the merits of claims 1-16 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 . 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 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.
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 5-9 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 pre-AIA the applicant regards as the invention.
Claim 5 recites “wherein the repeating unit-a1, having a hydroxy group and/or a carboxy group in the dopant polymer…”. However, it is unclear if the hydroxy group and/or the carboxy group of claim 5 are the same repeating unit-a1 as recited in claim 1 or different repeating unit-a1.
Claims 5-7 and 9 recite “optionally” as follows:
Claim 5, ln. 10: “optionally having an ether group or an ester group”;
Claim 6, ln. 10: “optionally forming a carbonyl group together”
Claim 6, ln. 13: “optionally being substituted with a fluorine atom”
Claim 7, ln. 12: “optionally having one or more selected from an ester group, an ether group, an amide group, a carbamate group, a thiocarbamate group, and a urea group”
Claim 7, ln. 17: “optionally being substituted with a fluorine atom”
Claim 7, ln. 24: “optionally has one or more group”
Claim 7, ln. 26: “optionally forms a ring atom”
Claim 9, ln. 11: “optionally having one or more 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”
Claim 9, ln. 16: “optionally form a ring together with a nitrogen atom bonded to…”
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). Accordingly, claim 8 is rejected by virtue of its dependency on claim 7.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4, and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama (hereinafter ‘Hatakeyama ‘632’ U.S. PGPub. No. 2018/0193632), and further in view of Hatakeyama (hereinafter ‘Hatakeyama ‘015’, U.S. PGPub. No. 2016/0268015).
In regard to independent claim 1 and claims 2 & 10, Hatakeyama ‘632 discloses a biomedical electrode composition ([0091]-[0094]: “[t]he present invention provides a biomedical electrode”) including an electro-conductive polymer composite polymer ([0094]: “a biomedical electrode 1 shown in Fig. 1 is used, as shown in Fig. 2, a living body contact layer 3 (or, a layer in which a carbon material 4 is dispersed in a polymer compound 5)”) comprising:
A) an ionic repeating unit “a” having a sodium salt, a potassium salt, or an ammonium salt which contains a sulfonic group and an imide group, specifically a bis(sulfonyl)imide anion ([0043]-[0044] & [0046]);
B) a repeating unit “b” having a (meth)acrylate ([0043]-[0044] & [0046], thus meeting claim 10);
C) a repeating unit “c” having a fluorine atom or a silicon atom; and/or
D) a repeating unit “d” having one or more groups selected from a hydroxy group, carboxyl group, oxirane group, and oxetrane group ([0017]-[0018], [0023], [0051]-[0052]) [0023]); and
E) a crosslinking agent ([0086]-[0088]: isocyanate compound used as a crosslinking agent, thus meeting claim 2).
However, Hatakeyama ‘632 fails to disclose 1) a π-conjugated polymer, and 2) a dopant polymer containing a repeating unit-a1 having a hydroxy group and/or a carboxy group and a repeating unit-a2 comprising a sulfonic acid, fluorosulfonimide, and N-carbonyl-fluorosulfonamide, the dopant polymer having a weight-average molecular weight of 1,000 to 500,000.
Hatakeyama ‘015 teaches an electro-conductive polymer composite for electrode ([0033]: “[a] conductive film… functions as a transparent electrode layer”; [0036]: “a conductive film having high conductivity, transparency and flatness as well as superior flexibility”) including:
(A) a π-conjugated polymer ([0019]-[0020]: “a conductive material comprises: (A) a π-conjugated polymer”) and
(B) a dopant polymer containing a repeating unit-a2 ([0021], [0052]-[0082]: “(B)” a dopant polymer which contains one or more repeating units selected from “a1” to “a4”), having a sulfonic acid, fluorosulfomide, and N-carbonyl-fluorosulfonamide ([0052] & [0054]: the repeating unit “a2” comprises a list of compounds in paragraph [0052] which comprises R3 (functionalized group), a fluorinated sulfonic acid defined in [0054] and X representing a hydrogen atom, a lithium atom, a sodium atom, a potassium atom, an amine compound, or a sulfonium compound), the dopant polymer having a weight-average molecular weight of 1,000 to 500,000 ([0080]: “[t]he weight-average molecular weight of the dopant polymer of the component (B) is in the range of 1,000 to 500,000, preferably 2,000 to 200,000”).
Hatakeyama ‘015 explains that a dopant polymer having a repeating unit that contains fluorinated sulfonic acid ([0052]) allows for the dopant to interact with the π-conjugated polymer to therefore provide a transparent and flat electrode film ([0037]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the bio-electrode composition of Hatakeyama ‘632 and incorporate a π-conjugated polymer and a dopant polymer containing a repeating unit having a fluorinated sulfonic acid as taught by Hatekeyama ‘015 instead of the bis(sulfonyl)imide anion of the repeating unit “a” of the polymer of Hatakeyama ‘632, thereby arriving at the claimed invention. Doing so provides for an electro-conductive polymer composite that has excellent conductivity, transparency, flatness, flexibility so that the electrode film may function as a transparent electrode layer, especially as a flexible transparent electrode ([0035]).
In regards to claim 3, in view of the combination in claim 1 above, Hatekayama ‘015 further discloses wherein the π-conjugated polymer (A) is a polymerized product of one or more precursor monomers selected from the group consisting of monocyclic aromatic compounds, polycyclic aromatic compounds, acetylenes, and derivates thereof ([0044]: the precursor monomer 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 can be used as the component (A)). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the precursor monomer as claimed to provide for the π-conjugated polymer as doing so provides for the electro-conductive polymer composite that has excellent conductivity, transparency, flatness, flexibility ([0035]).
In regards to claim 4, in view of the combination in claim 1 above, Hatekayama ‘015 further discloses wherein the monocyclic aromatic compounds are pyrroles, thiophenes, thiophenevinylenes, selenophenes, tellurophenes, phenylenes, phenylenevinylenes, or anilines, and the polycyclic aromatic compounds are acenes ([0044]: the precursor monomer 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 can be used as the component (A)). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the precursor monomer as claimed to provide for the π-conjugated polymer as doing so provides for the electro-conductive polymer composite that has excellent conductivity, transparency, flatness, flexibility ([0035]).
In regards to claim 11, Hatakeyama ‘632/Hatakeyama ‘015 combination further discloses as a component (E), one or more selected from a carbon powder, a metal powder, a silicon powder, and a lithium titanate powder ([0024]: “the biomedical electrode composition further includes a carbon material, an ITO particle, or a particle coated with a metal selected from silver, gold, platinum, copper, and nickel”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide additional conductive particles as claimed as doing so provides for the electro-conductive polymer composite that has excellent conductivity ([0035]).
In regards to claim 12, Hatakeyama ‘632/Hatakeyama ‘015 combination further discloses wherein the carbon powder is one or both of carbon black and carbon nanotube ([0027]: “the carbon material is carbon black and/or carbon nanotube”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide additional conductive particles as claimed as doing so provides for the electro-conductive polymer composite that has excellent conductivity ([0035]).
In regards to claim 13, Hatakeyama ‘632/Hatakeyama ‘015 combination further discloses wherein the metal powder is any of gold nanoparticles, silver nanoparticles, copper nanoparticles, gold nanowire, silver nanowire, and copper nanowire ([0085]: “[a] conductive improver other than a carbon material can be added to the biomedical electrode composition… a nanoparticle such as gold, silver…”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide additional conductive metal powder as claimed as doing so provides for the electro-conductive polymer composite that has excellent conductivity ([0035]).
In regards to claim 14, Hatakeyama ‘632/Hatakeyama ‘015 combination further discloses a bio-electrode comprising an electro-conductive base material ([0096]: “[t]he biomedical electrode includes a conductive substrate” see substrate 2 in Fig. 1) and a living body contact layer formed on the electro-conductive base material ([0099]: “a living body contact layer formed on the conductive substrate”; layer 3 in Fig. 1), wherein the living body contact layer comprises the electro-conductive polymer composite comprised in the bio-electrode composition according to claim 1 (see the rejection of claim 1 above).
In regards to claim 15, Hatakeyama ‘632/Hatakeyama ‘015 combination further discloses 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 ([0097]: “The conductive substrate is not particularly restricted so long as it is conductive, preferably e.g., one or more substances selected from gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium, and carbon”).
In regards to claim 16, Hatakeyama ‘632/Hatakeyama ‘015 combination further discloses a method for manufacturing a bio-electrode having an electro-conductive base material ([0096]) and a living body contact layer ([0099]) formed on the electro-conductive base material ([0105]: “[a] method for manufacturing a biomedical electrode including a conductive substrate and a living body contact layer formed on the conductive substrate”), the method comprising: applying the bio-electrode composition according to claim 1 onto the electro-conductive base material (for details on the composition, see the rejection of claim 1, [0105]: applying the biomedical electrode composition to the conductive substrate); and curing the bio-electrode composition to form the living body contact layer ([0105]: curing the biomedical electrode composition to form the living body contact layer).
Claim 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama ‘632 and Hatakeyama ‘015’ as applied to claim 1 and further in view of Hatakeyama ‘740 (hereinafter Hatakeyama ‘740, U.S. PGPub. No. 2019/0209740).
In regards to claim 6, Hatakeyama ‘632/Hatakeyama ‘015 combination discloses the invention substantially as claimed in claim 1 and discussed above.
However, Hatakeyama ‘632/Hatakeyama ‘015 combination does not disclose the dopant polymer (B) containing the repeating unit-a2 as claimed in claim 6.
Hatakeyama ‘740 teaches a repeating unit of an electro-conductive material of a bio-electrode composition comprising the claimed general formula:
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In addition, Hatakeyama ‘740 teaches Rf1 to Rf4 represents a hydrogen atom, a fluorine atom, or a trifluoromethyl group, Rf1 and Rf2 optionally forming a carbonyl group together ([0023]: “Rf1 and Rf2 each represent a hydrogen atom, a fluorine atom, a trifluoromethyl group, or an oxygen atom… Rf2 also represents an oxygen atom to form a carbonyl group together with a carbon atom bonded therewith”… “Rf3 and Rf4 each represent a hydrogen atom, a fluorine atom, or a trifluoromethyl group”); Rf5 represents a hydrogen atom, a fluorine atom, or a linear or branched alkyl group having 1 to 4 carbon atoms ([0023]: “Rf5, Rf6, and Rf7 each represent a fluorine atom, or a linear or branched alkyl group having 1 to 4 carbon atoms”); Rf6 and Rf7 each represent a fluorine atom or a linear or branched alkyl group having 1 to 4 carbon atoms ([0023]: “Rf5, Rf6, and Rf7 each represent a fluorine atom, or a linear or branched alkyl group having 1 to 4 carbon atoms”); “m” represents an integer of 0 to 4 ([0023]: “m” is an integer of 1 to 4”); and M+ represents an ion selected from a hydrogen ion, an ammonium ion, a sodium ion, and a potassium ion ([0023]: “X+ represents a sodium ion, a potassium ion, or a cation having an ammonium ion structure”).
Given that Hatakeyama ‘632/Hatakeyama ‘015 combination discloses providing fluorosulfonic acid salt but is silent as to the specific formulae, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the repeating unit-a2, fluorinated sulfonic acid, of the dopant polymer (B) of Hatakeyama ‘632/Hatakeyama ‘015 combination and provide the specific formulae of the fluorosulfonic acid salt as taught by Hatakeyama ‘740 to thereby provide a bio-electrode composition capable of forming a living body contact layer for a bio-electrode that is excellent in electric conductivity and biocompatibility, light in weight, manufacturable at low cost, and free from large lowering of the electric conductivity even when it is wetted with water or dried ([0020]).
In regards to claim 7, in view of the combination in claim 6 above, Hatakeyama ‘740 further teaches wherein the repeating unit-a2, the fluorosulfonic acid salt, is selected from repeating units A2-1 to A2-7 represented by the following formula:
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General formula disclosed in paragraph [0073] of Hatakeyama ’740:
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wherein R5 , R7, R9, R12, R14, R15, and R17 each independently represent a hydrogen atom or a methyl group ([0027]: “R5 , R7, R9, R12, R14, R15, and R17 each independently represent a hydrogen atom or a methyl group”), and R6 , R8, R10, R13, R16, R19, and R20 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 one or more selected from an ester group, an ether group, an amide group, a carbamate group, a thiocarbamate group, and a urea group ([0027]: “R6 , R8, R10, R13, R16, R19, and R20 each independently represent any of a single bond, an ester group, or a linear, branched, or cyclic hydrocarbon group having 1 to 12 carbon atoms optionally having either or both of an ether group and an ester group”), the hydrocarbon group optionally having one or more selected from an ester group, an ether group, an amide group, a carbamate group, a thiocarbamate group, and a urea group ([0027]: “a linear, branched, or cyclic hydrocarbon group…optionally having either or both of an ether group and an ester group”); R11 represents a linear or branched alkylene group having 1 to 4 carbon atoms, one or two hydrogen atoms in R11 optionally being substituted with a fluorine atom ([0027]: “R11 represents linear or branched alkylene group having 1 to 4 carbon atoms, and one or two of the hydrogen atoms in R11 are optionally substituted with a fluorine atom”); Y1-Y7 each independently represent a single bond, a phenylene group a naphthylene group, an ether group an ester group, or an amide group ([0027]: “Z1… Z7 each independently represent any of a single bond, a phenylene group, a naphthylene group, and ether group, an ester group, or an amide group”; note that Y is represented as Z in the chemical structures above); Y5 represents a single bond, an ether group, or an ester group ([0027]: “Z5 represents any of a single bond, an ether group, or an ester group”); Z represents an oxygen atom or an -NR18- group ([0027]: “Y represents an oxygen atom or an -NR18- group”); R18 represents a hydrogen atom, or a linear or branched alkyl group having 1 to 4 carbon atoms, optionally bonded to R8 to form a ring”); “m” represents an integer of 0 to 4 ([0027]: “m” is an integer of 1 to 4); a21-1,a2-2,a2-3,a2-4,a2-5,a2-6,and a2-7 satisfy 0≤(a2-1)<1.0, 0≤(a2-2)<1.0, 0≤(a2-3)<1.0, 0≤(a2-4)<1.0, 0≤(a2-5)<1.0, 0≤(a2-6)<1.0, 0≤(a2-7)<1.0, and 0<(a2-1)+(a2-2)+(a2-3)+(a2-4)+(a2-5)+(a2-6)+(a2-7)<1.0 ([0027]: “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”); M+ represents an ion selected from a hydrogen ion, an ammonium ion, a sodium ion, and a potassium ion ([0023]&[0027]: “X+ represents a sodium ion, a potassium ion, or a cation having an ammonium ion structure”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the repeating unit-a2, fluorinated sulfonic acid, of the dopant polymer (B) of Hatakeyama ‘632/Hatakeyama ‘015 combination and provide the specific formulae of the fluorosulfonic acid salt comprising the specific functional groups as taught by Hatakeyama ‘740 to thereby provide the bio-electrode composition capable of having excellent in electric conductivity and biocompatibility, light in weight, manufacturable at low cost, and free from large lowering of the electric conductivity even when it is wetted with water or dried ([0020]).
In regards to claim 8, in view of the combination in claim 7 above, Hatakeyama ‘740 teaches Rf1 has at least one fluorine atom ([0023]: “Rf1… represent a hydrogen atom, a fluorine atom, a trifluoromethyl group, or an oxygen atom”), and the Rf5 is a fluorine atom or a trifluoromethyl group in the general formulate 2 ([0023]: “Rf5… represent a fluorine atom, or a linear or branched alkyl group having 1 to 4 carbon atoms”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the repeating unit-a2, fluorinated sulfonic acid, of the dopant polymer (B) of Hatakeyama ‘632/Hatakeyama ‘015 combination and provide the specific formulae of the fluorosulfonic acid salt comprising the claimed functional group as taught by Hatakeyama ‘740 to thereby change the composition to form a bio-electrode composition capable of forming a living body contact layer for a bio-electrode that is excellent in electric conductivity and biocompatibility, light in weight, manufacturable at low cost, and free from large lowering of the electric conductivity even when it is wetted with water or dried ([0020]).
In regards to claim 9, in view of the combination in claim 7 above, Hatakeyama ‘740 further discloses wherein the fluorosulfonic acid salt contains, as the ammonium ion, an ammonium ion represented by the following general formula:
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Formula disclosed by Hatakeyama ‘740:
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Hatakeyama ‘740 further teaches wherein R101d, R101e, R101f, 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 ([0070]: “wherein R1 to R4 each represent a hydrogen atom, a linear branched, or cyclic alkyl group having 1 to 20 carbon atoms…”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the repeating unit-a2, fluorinated sulfonic acid, of the dopant polymer (B) of Hatakeyama ‘632/Hatakeyama ‘015 combination and provide the specific formulae of the fluorosulfonic acid salt as taught by Hatakeyama ‘740 to thereby provide the bio-electrode composition having excellent in electric conductivity and biocompatibility, light in weight, manufacturable at low cost, and free from large lowering of the electric conductivity even when it is wetted with water or dried ([0020]).
Allowable Subject Matter
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Hatakeyama ‘632, Hatakeyama ‘015, and Hatakeyama ‘740 fail to disclose, teach, or suggest the particular repeating unit-a1 having the hydroxy group and/or the carboxy group in the dopant polymer (b) having a repeating unit A1-1 and/or a repeating unit A1-2 represented by the following general formulae:
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wherein R1 and R3 each independently represent a hydrogen atom or a methyl group; X1 and X2 each independently represent a single bond, a phenylene group, a naphthylene group, an ether group, an ester group, or an amide group; R2 and R4 each independently represent a single bond or a linear, branched, or cyclic hydrocarbon group having 1 to 20 carbon atoms and optionally having an ether group or an ester group; “m” and “n” each represent an integer of 1 to 5; and a1-1 and a1-2 satisfy 0≤(a1-1)<1.0, 0≤(a1-2)<1.0, and 0<(a1-1)+(a1-2)<1.0.
Although Hatakeyama ‘632 discloses the following general formulae in paragraph [0072] and as shown below, the general formulae of the repeating monomers comprising hydroxy group is different from the claimed general formulae.
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It would be hindsight reasoning to substitute the repeating monomers of Hatakeyama ‘632 with the claimed formulae.
Accordingly, claim 5 recites allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUNHWA KIM whose telephone number is (571)270-1265. The examiner can normally be reached 9AM-5:30PM.
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/EUN HWA KIM/Primary Examiner, Art Unit 3794 1/2/2025