DETAILED ACTION
This action is pursuant to the claims filed on 12/21/2023. Claims 1-15 are pending. A first action on the merits of claims 1-15 is as follows.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/19/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 9 is/are objected to because of the following informalities:
Claim 9; “the textiled electrode” should read “the textile electrode” to maximize clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 2-6, 8, 10-15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 2 recites the broad recitations of “amounts preferably to at least 100 mL”, and the claim also recites “more preferably to at least 250 mL, most preferably to at least 500 mL” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 3 recites the broad recitations of “a cross-sectional area of each through hole is greater than 0.4 mm2 … “ and/or wherein the cross- sectional area of each through hole is smaller than 50 mm2” and the claim also recites “preferably greater than 1 mm2, most preferably greater than 2 mm2 … preferably smaller than 30 mm2, most preferably smaller than 10 mm2” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims
Claim 4 recites the broad recitations of “at least 3%” and “at most 30%” respectively, and the claim also recites “preferably at least 5%, most preferably at least 7%” and “preferably at most 20%, most preferably at most 10%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites the broad recitations of “a ratio of the maximum dimension to the thickness is greater than 1” and “preferably greater than 2, more preferably greater than 3, most preferably greater than 4” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6 recites the broad recitations of “a water vapor transmission rate lower than 10,000 g/m2/d” and “preferably lower than 5,000 g/m2/d, most preferably lower than 2,000 g/m2/d” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 recites the term “preferably” in the claim. The presence of “preferably” makes the claim indefinite as it is unclear if the limitation following “preferably” is a required feature of the claim or merely an optional limitation.
Claim 10 recites the term “preferably” twice in the claim. The presence of “preferably” makes the claim indefinite as it is unclear if the limitation following “preferably” is a required feature of the claim or merely an optional limitation.
Claim 11 recites the term “preferably” in the claim. The presence of “preferably” makes the claim indefinite as it is unclear if the limitation following “preferably” is a required feature of the claim or merely an optional limitation.
Claim 12 recites “A method of manufacturing the textile electrode according to claim 1…” followed by numerous limitations not reciting antecedent basis to the electrode of claim 1. Such as, “an electrically conductive laminar electrode with a first surface and a second surface”, “a person”, “a resistance to water penetration”, “a textile backing”, etc. All of these terms will be interpreted to recite antecedent basis to the same limitations recited in claim 1. Claims 13-15 inherit this deficiency.
Claim 13 recites the broad recitations of “amounts preferably to at least 100 mL”, and the claim also recites “more preferably to at least 250 mL, most preferably to at least 500 mL” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 recites the broad recitations of “a water vapor transmission rate lower than 10,000 g/m2/d” and “preferably lower than 5,000 g/m2/d, most preferably lower than 2,000 g/m2/d” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 recites the term “preferably” in the claim. The presence of “preferably” makes the claim indefinite as it is unclear if the limitation following “preferably” is a required feature of the claim or merely an optional limitation.
Allowable Subject Matter
Claims 1 and 7 are allowed.
Claims 2-6, 8, 10-15 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).
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 1-15, the Macia Barber (WO 2012/066056), Baxi (WO 2018/004614), Chen (U.S. PGPub No. 2023/0293076), Oren (U.S. PGPub No. 2019/0231267), Berg (U.S. PGPub No. 2015/0359485), Gonopolskiy (U.S. PGPub No. 2010/0292546) references fail to teach the laminar electrode comprising through holes extending from the first surface to the second surface of the laminar electrode, wherein the laminar electrode comprises a material which, at areas without any through holes, has a higher resistance to water penetration than the textile material of the backing; wherein the material of the laminar electrode, at areas without any through holes, has a resistance to water penetration that is greater than 10 mBar. The Macia Barber reference discloses through holes extending an electrode that are filled with silicone rubber and fails to teach the electrode being laminar having a higher resistance to water penetration than the textile material of the backing with the specific resistance to water penetration. The Baxi and Chen references teach similar devices but also fail to cure the above noted deficiencies. The Oren, Berg, and Gonopolskiy teach devices with through holes but fail to teach the limitations stated above. As such, any combination of the above noted references to arrive at any of claims 1-15 would necessarily rely on impermissible hindsight benefit using information gleaned from the applicant’s specification. No other pertinent prior art reference were found that would overcome the above deficiencies. Therefore, there is no motivation (either in these references or elsewhere in the art) for making such specific and significant modifications thereto to arrive at claim(s) 1-15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam Z Minchella whose telephone number is (571)272-8644. The examiner can normally be reached M-Fri 7-3 EST.
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/ADAM Z MINCHELLA/Primary Examiner, Art Unit 3794
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