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 .
Claim Interpretation
The term “urethan” in claim 1 is being interpreted as being equivalent of urethane. If the Applicants disagree, they are requested to clarify.
Structures (1)-1 and (1)-2 of component (A) of claim 3 are interpreted as having an “open” chain, which can include other units. The addition of other diol reactants will result in different units, disclosed in the Specifications, paragraph 49. One of ordinary skill in the art will recognize that the NH will necessarily be bonded to the residual isocyanate compound. If the Applicants disagree, they are requested to clarify.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 6-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0209740, Hatakeyama et al.
Hatakeyama et al. teach a bio-electrode composition having a urethane bond in the main chain, see paragraph 21, a polymer compound having fluorosulfonic acid salts, where the salt can be a sodium, potassium or an ammonium cation, see paragraph 23. Hatakeyama et al. further teach that the main chain of the polymer does contain urethane and a silicone in the backbone, see paragraph 21. Claim 1 states that component A has a urethane bond in the main chain, which is disclosed by Hatakeyama et al. in paragraph 21. Regarding claim 1, the bioelectrode composition is anticipated by Hatakeyama et al.
As for claim 2, Hatakeyama et al. teach isocyanate group containing compound reacting with hydroxyl or hydroxy silicone compounds to form a urethane resin, see paragraph 107.
As for claim 3, Hatakeyama et al. teach an ammonium salt where the R groups on the salt can each represent a linear, branched or cyclic alkyl group having 1 to 20 carbons, and optionally contain a thiol, ester, carbonyl, sulfonyl, cyano, amino, nitro, alkenyl, or a halogen group, see paragraph 70. Further Hatakeyama et al. disclose a structure of tetramethyl ammonium which falls within the limitations of claim 3, see paragraph 81.
Regarding claims 6-9, Hatakeyama et al. teach electric conductivity improvers such as carbon black, carbon nanotubes, silver and gold coated particles (Ag-coated powder) are used as additives, see paragraph 167.
As for claim 10, Hatakeyama et al. disclose that it is preferable that the bio-electrode further comprise an organic solvent, see paragraph 35.
As for claim 11, Hatakeyama et al. teach a bio-electrode comprising of an electro-conductive base material and a living body contact layer formed from an electroconductive base material, see paragraph 41. The electroconductive base material described refers to the polymer material consisting of fluorosulfonic acid salts coming off the main chain containing a urethane bond, see paragraphs 21-23, which meet the limitations of claim 1.
As for claim 12, Hatakeyama et al. teach that the electro-conductive base material comprises from gold, silver, silver chloride, platinum, aluminum, magnesium, tin, tungsten, iron, copper, nickel, stainless steel, chromium, titanium and carbon, see paragraph 44. The electro-conductive polymer being in the electro-conductive based material is referred to in paragraph 41 and is described in paragraphs 21-23 and meet the limitations of claim 1.
As for claim 13, Hatakeyama et al. teach a bioelectrode having an electro-conductive base material and a living body contact layer, see paragraph 41. Hatakeyama et al. further teach that the living body contact layer is cured, see paragraph 42. The electro-conductive polymer being in the electro-conductive based material is referred to in paragraph 41, and is described in paragraphs 21-23 and meets the limitations of claim 1.
As for claims 14, Hatakeyama et al. teach electric conductivity improvers such as carbon black, carbon nanotubes, silver and gold coated particles (Ag-coated powder) are used as additives, see paragraph 167. The electro-conductive polymer, meeting the limitations of claim 1, is taught to be present in the electro-conductive base material which is referred to in paragraph 41.
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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0209740, Hatakeyama et al. as applied to claim 1 above, and further in view of EP 3,718,471, Hatakeyama et al.
Regarding claims 4 and 5: Hatakeyama et al., US 2019/0209740, teach the bio-electrode composition of claim 1, which contains a urethane and a silicone chain contained in the main chain of the polymer, see paragraph 21. Hatakeyama et al. further disclose that in case of heating and curing the composition at room temperature for a long time, appropriate resins should be used, see paragraph 140. Further paragraph 140 states the temperature range is from 50 to about 250 °C.
Hatakeyama et al., US 2019/0209740, does not teach other resin component added besides the component A and B of claim 1.
Hatakeyama et al., EP 3,718,471, teach a bio-electrode composition that is comprised of a polymer containing a repeating unit having fluorosulfonic acid, which forms a salt with either ammonium, sodium, potassium, and silver, see paragraph 12. The other part of the electrode is a lithium titanate powder, paragraph 12. Further the electrode contains an adhesive resin such as silicone, urethane or acrylate type, see paragraph 77. These resins make it possible to obtain adhesion between the bio-electrode and skin to obtain electric signals that are stable for a long time, see paragraph 77.
It would have been obvious for one with ordinary skill in the art at the effective date of filing to have been obvious to combine the teachings of a urethane containing resin of Hatakeyama et al., US 2019/0209740, and modifying the composition with other resins such as silicone, urethane, or acrylate type of resins together from EP 3,718,471 because adding said resins help withstand the curing temperatures, and improve adhesion between the bioelectrode and skin to obtain electric signals that are stable for a long time as noted above with reasonable expectation of success as both have a similar composition of electrodes for the same application. DyStar Textifarben GmbH & co. Deeutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). See MPEP 2143 (I)(G).
Allowable Subject Matter
Claim 2 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Hatakeyama, US 2019/0209740 et al. a bio-electrode composition having a urethane bond in the main chain, see paragraph 21, a polymer compound having fluorosulfonic acid salts, where the salt can be a sodium, potassium or an ammonium cation. Hatakeyama et al. also teach of a urethane polymer in the backbone of the polymer. Hatakeyama et al. do not teach the ionic sulfonate group being directly on the urethane unit.
Sukhorukova et al., “Synthesis of Anionic Polyurethane Ionomers”, Ukrainian Chem. J., 1981, 47 (3), 286-290, teach polyurethane ionomer compositions. The structures disclosed are shown in Figures 1a-c below, see p. 286. The structures do have similarities, and it is disclosed that the R, R’ and R’’ groups are hydrocarbon radicals of diisocyanate, oligoether, and dihydrazide respectively. Claim 2 teaches the R group comes from the diol of the urethane segment, which is not disclosed, and is not obvious to one of ordinary skill in the art to make that adjustment to the bioelectrode composition.
Figure 1a-c
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VLADIMIR VLADIMIROVICH ZOTOV whose telephone number is (571)272-0627. The examiner can normally be reached 8-5.
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/V.V.Z./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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