DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed July 14, 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues that Hatakeyama and Watanabe each fail to suggest a bio-electrode composition that comprises a resin having both a urethane bond and a salt within a single resin. Examiner respectfully disagrees. Hatakeyama teaches at least mixing a salt of ionic N-carbonyl-sulfonamide salt with a urethane-based resin and further explains that “the use of this mixture enables constant adhesion to skin and stable electric-signal collection for a long term” (see para. 0082; see also para. 0088). Hatakeyama also teaches the above salt as a pendant (see para. 0097). Watanabe teaches a bio-electrode having a resin containing a main chain having a urethane bond and side chains (see para. 0033). A person having ordinary skill in the art would be able to combine the teachings above to derive a resin that comprises a main chain having a urethane bond and a sulfonamide salt as a side chain.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Properties of urethane that make it useful as a main chain in bio-electrode resins were well understood at the effective filing date of the claimed invention, as evidenced by Watanabe (see e.g., para. 0009, “Urethane may be usable for bio-electrodes since urethane is also excellent in biocompatibility, and the electric insulation property is not so high as that of silicone). Watanabe also teaches that polyurethanes with side chains can be formed through a reaction between dihydroxy groups and isocyanates (see para. 0060), which is similar to how the instant application forms the claimed invention (see para. 0054).
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, 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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (US 20220079461 A1) in view of Watanabe et al. (US 20190127578 A1).
Regarding Claim 1, Hatakeyama et al. teaches a bio-electrode composition comprising a salt selected from the group consisting of salts of ammonium, sodium, potassium, and silver formed with sulfonamide (see para. 0041-0042, “The bio-electrode composition preferably further comprises . . . a repeating unit-c 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”). However, Hatakeyama et al. does not explicitly disclose the polymer compound described above as part of the side chain of a compound that has a urethane bond in its main chain.
Watanabe et al. teaches a similar bio-electrode composition comprising a resin component with urethane bonds in its main chain (see para. 0034). Watanabe does not explicitly teach the component’s side chains being formed with sulfonamide salts, but does disclose similar salts as an electro-conductive material present in the bio-electrode composition (see para. 0024). Watanabe also teaches that polyurethanes with side chains can be formed through a reaction between dihydroxy groups and isocyanates (see para. 0060), which is similar to how the instant application forms the claimed invention (see para. 0054).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sulfonamide salt of Hatakeyama et al. by incorporating the teachings of a polyurethane main chain disclosed in Watanabe et al., resulting in a resin component having a urethane bond in its main chain and a salt of ammonium, sodium, potassium, or silver formed with sulfonamide in its side chain. Doing so would aid in adjusting the desired polymer stretchability and strength, a motivation also cited in both Hatekayama et al. (see e.g. para. 0168) and Watanabe et al. (see e.g. para. 0060).
Regarding Claim 2, Hatakeyama et al. teaches the salt polymer described above can be described by the following formula:
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wherein Rf7 can represent a fluorine atom and M+ represents an ion selected from the group consisting of an ammonium ion, a sodium ion, a potassium ion, and a silver ion (see para. 0043).
Watanabe et al. teaches the resin component has a polyether main chain and two side chains (each with silicon-containing groups) as shown by the following formula (see para. 0032):
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A resin component combining the teachings of Hatakeyama et al. and Watanabe et al. would have the sulfonamide side chain replacing the silicone side chains. A foreseeable product of such a reaction would be a component anticipating the claimed formula:
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wherein, as part of the structure of the main chain, following the general structure of polyether-based polyurethanes observable in the resin of Watanabe et al., it would be obvious for:
R1 and R3 to represent a single bond, or a linear or branched alkylene group having 1 or more carbon atoms
R2 to represent a hydrogen atom, a hydroxy group, or a linear or branched alkyl or alkoxy group having 1 or more carbon atoms
and regarding the side chain, following the disclosed structure of the salt polymer described above:
R4 would represent a single bond or a linear, branched, or cyclic hydrocarbylene group having 1 or more carbon atoms, and optionally having a carbonyl group
R5 would be substituted with a fluorine atom
And M+ would represent an ammonium ion, sodium ion, potassium ion, or silver ion.
Therefore, a person having ordinary skill in the art, in view of Hatakeyama et al. and Watanabe et al., and motivated as per Claim 1 above to modify the sulfonamide salt in the bioelectrode composition of Hatakeyama et al. to incorporate urethane bonds in the main chain, would arrive at the claimed invention.
Regarding Claim 3, Watanabe et al. discloses an ammonium ion represented by the following general formula:
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wherein
R1 to R4 each represent a hydrogen atom, a linear, branched, or cyclic alkyl group having 1 to 15 carbon atoms, an alkenyl group having 2 to 12 carbon atoms, or an alkynyl group having 2 to 5 carbon atoms (see para. 0024); and
each optionally have an ether group, an ester group, a carbonyl group, a sulfonyl group, a cyano group, an amino group, a nitro group, hydroxy group, a sulfur atom, sulfonyl group, or a halogen atom, and are optionally bonded to each other to form a ring (see para. 0024).
Although the specific structure of the ammonium ion is not elaborated on in Hatakeyama et al., the ammonium ion for the sulfonamide salt is disclosed generally (see para. 0043) and it would have been obvious for one of ordinary skill in the art before the effective date of the claimed invention to incorporate the teachings of Watanabe to use the specific structure disclosed in Hatakeyama et al. for the combined resin component discussed in the claims above.
Regarding Claims 4-5, Hatakeyama et al. discloses a bio-electrode composition comprising a separate resin selected from the group consisting of a silicone resin, a (meth)acrylate resin, and a urethane resin (see para. 0034).
Regarding Claim 6, Hatakeyama et al. discloses a bio-electrode composition comprising a carbon material and/or a metal powder (see para. 0046).
Regarding Claim 7, Hatakeyama et al. discloses a bio-electrode composition wherein the carbon material is one or both of carbon black and carbon nanotube (see para. 0047).
Regarding Claims 8-9, Hatakeyama et al. discloses a bio-electrode composition wherein the metal powder is a metal powder selected from the group consisting of gold, silver, platinum, copper, tin, titanium, nickel, aluminum, tungsten, molybdenum, ruthenium, chromium, and indium (see para. 0048).
Regarding Claim 10, Hatakeyama et al. discloses a bio-electrode composition comprising an organic solvent (see para. 0051).
Regarding Claim 11, Hatakeyama et al. discloses a bio-electrode composition comprising an electro-conductive base material and a living body contact layer formed on the electro-conductive base material, wherein the living body contact layer is a cured product of the bio-electrode composition (see para. 0053-0054)
Regarding Claim 13, Hatakeyama et al. 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, the method comprising: applying the bio-electrode composition onto the electro-conductive base material; and curing the bio-electrode composition to form the living body contact layer (see para. 0058-0060).
Regarding Claims 12 and 14, Hatakeyama et al. discloses an electroconductive base material that 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, carbon, and electro-conductive polymer (see para. 0056).
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 CHRISTIAN M SARCENO ROBLES whose telephone number is (571)272-8786. The examiner can normally be reached M-F: 8:30AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.S./ Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/ Supervisory Patent Examiner, Art Unit 3794
