DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
2. Applicant’s election with traverse of Group II (claims 14-21) in the reply filed on 02/24/2026 is acknowledged [NOTE: Applicant’s election failed to explicitly state whether the election was made with, or without, traverse. However, since Applicant provided a ground of disagreement with the propriety of the 01/21/2026 Restriction Requirement, Applicant’s election will be treated as an election with traverse]. The traversal is on the ground(s) that “a search of the method of Group I would encompass the sensor of Group II”. This general, conclusory assertion is not found persuasive because it ignores the well-established test that inventions related as process of making and product made (as in the instant case) are independent or distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process. MPEP § 806.05(f). The 01/21/2026 Restriction Requirement satisfied this test by finding that the sensor of Group II can be made by a materially different process than that set forth in the manufacturing process of Group I, particularly one that does not require at least the viscosity-controlled dip-pull process manufacturing operations identified in the 01/21/2026 Restriction Requirement. Applicant provided no evidence or arguments addressing/challenging this finding. Accordingly, the requirement is still deemed proper, and is therefore made FINAL. Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b).
Status of Claims
3. Claims 1-21 are pending in the application [and claims 1-13 have been withdrawn from further consideration for the reasons noted above]. Therefore, claims 14-21 have been examined on the merits.
Claim Objections
4. Claims 14, 16, & 18-20 are objected to because of the following informalities:
a. In claim 14, line 1, the recitation of “the skin” should instead recite --skin of a subject--.
b. In claim 14, line 2, the recitation of “the skin of a subject” should instead recite --the skin of the subject--.
c. In claim 16, line 1, the recitation of “CNT-PDMS-SO” should instead recite --carbon nanotube-polydimethylsiloxane-silicone oil (CNT-PDMS-SO)--.
d. In claim 18, lines 1-2, the recitation of “with CNT:SO weight ratio” should instead recite --with a CNT:SO weight ratio--.
e. In claim 19, line 2, the recitation of “a subject” should recite --the subject--.
f. In claim 20, line 1, the recitation of “the one or more bioelectrical signal” should instead recite --the one or more bioelectrical signals--.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. Claims 14, 15, & 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0233124 to Connor (“Connor”) in view of a publication to Kim et al., entitled “Simple and cost-effective method of highly conductive and elastic carbon nanotube/polydimethylsiloxane composite for wearable electronics,” Sci Rep 8, 1375 (2018), published online: 22 January 2018 (hereinafter “Kim”).
8. Regarding claims 14 & 15, Connor teaches a sensor for measuring and/or monitoring one or more bioelectrical signals from the skin [e.g., EEG - Abstract, ¶[0314]; and/or applying one or more electrical signals to the skin of a subject, comprising:
a substrate [distal portion (301) - ¶’s [0315]-[0316]; FIG. 3];
a stemmed conical head microstructure [electroconductive protrusions - ¶[0315] (“a plurality of electroconductive proximal protrusions (e.g. pins, prongs, teeth, spikes, fingers, and/or protrusions), including protrusions 302, 303, and 304, which extend out from the distal portion toward the person's head in order to penetrate between hairs and come into contact with the surface of the person's head”); ¶[0322] (“In an example, a protrusion can have a conic shape. In an example, a protrusion can have a conic section shape”); & ¶[0331]] disposed on the substrate [¶[0315]];
wherein the stemmed conical head microstructure comprises a polymer composite [see ¶[0323] (“In an example, a hair-penetrating protrusion on an electrode can be made with one or more materials selected from the group consisting of… inherently-nonconductive polymer (e.g. PDMS) which has been made conductive by doping, impregnation, and/or coating with carbon structures (e.g. carbon nanotubes)”)].
Young’s Modulus
While Connor teaches that the Young’s modulus of the stemmed conical head microstructures [protrusions] may vary [e.g., ¶[0318]], Connor does not explicitly teach the following emphasized claim limitations:
[claim 14] wherein the stemmed conical head microstructure comprises a polymer composite having a Young's modulus of about 200 kPa to about 1.8 MPa; and
[claim 15] wherein the Young's modulus is about 1.7 MPa.
Kim, in a similar field of endeavor, relates to the development of a nanocomposite of carbon nanotubes (CNTs) and polydimethylsiloxane (PDMS) elastomer [Abstract, pg. 1], including for use as an electrode for biopotential acquisition (for EEG measurements) [pg. 8]. Kim further teaches that it was known to adjust or tune CNT weight concentrations to obtain desired mechanical and electrical properties of the CNT/PDMS polymer composite (e.g., the Young’s modulus (MPa) increases as the CNT (%) in PDMS increases) [see pg. 5 (“Mechanical and Electrical Properties”); and FIG. 3a (pg. 5)].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Connor such that the stemmed conical head microstructure comprises a polymer composite having a Young’s modulus based on desired mechanical and/or electrical properties for the polymer composite including, e.g., a Young's modulus of about 200 kPa to about 1.8 MPa, or wherein the Young's modulus is about 1.7 MPa, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
9. Regarding claim 19, the combination of Connor and Kim teaches a method for measuring and/or monitoring one or more bioelectrical signals from the skin [e.g., EEG - Abstract, ¶[0314] and/or applying one or more electrical signals to the skin of a subject, comprising[:]
adhering the sensor of claim 14 [see the rejection of claim 14 above which is incorporated herein] to the skin of the subject [Connor, e.g., ¶’s [0112], [0281], [0291], [0294], [0302]]; and
measuring and/or monitoring the one or more bioelectrical signals [Connor, e.g., EEG - Abstract, ¶[0314] and/or applying the one or more electrical signals.
10. Regarding claim 20, the combination of Connor and Kim teaches all of the limitations of claim 19 for the reasons set forth in detail (above) in the Office Action.
Connor further teaches wherein the one or more bioelectrical signal is selected from electromyogram (EMG), electrocardiogram (ECG), electroencephalogram (EEG) [EEG - e.g., Abstract; ¶’s [0099], [0315]], electrooculogram (EOG), electroneurogram (ENG), electrochemical skin conductance (ESC), and electrical impedance myography (EIM).
11. Regarding claim 21, the combination of Connor and Kim teaches all of the limitations of claim 19 for the reasons set forth in detail (above) in the Office Action.
Connor further teaches adhering the sensor to the skin regardless of an amount or density of hair coverage on the skin [e.g., ¶[0112]].
12. Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of the combination of Connor and Kim, as applied to claim 14 above, and further in view of U.S. Patent Application Publication No. 2023/0080867 to Lynch-Branzoi et al. ("Lynch-Branzoi").
13. Regarding claim 16, the combination of Connor and Kim teaches all of the limitations of claim 14 for the reasons set forth in detail (above) in the Office Action.
While Connor and Kim each teach a CNT-PDMS polymer composite, the combination of Connor and Kim does not explicitly teach:
wherein the polymer composite comprises CNT-PDMS-SO.
Lynch-Branzoi, in a similar field of endeavor, relates to sensors useful in medical devices, fitness monitors, and related wearable devices and items, including those that can be directly applied to the skin [e.g., ¶’s [0002], [0003]], and teaches that it was known to utilize polydimethylsiloxane-silicone oil (PDMS-SO) with conductive nanoparticles [e.g., ¶’s [0002], [0039]].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Connor and Kim such that the polymer composite comprises CNT-PDMS-SO, since such a modification amounts merely to the simple substitution of one known polymer composite for another, yielding predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
14. Regarding claims 17 & 18, the combination of Connor, Kim, and Lynch-Branzoi teaches all of the limitations of claim 16 for the reasons set forth in detail (above) in the Office Action.
The combination of Connor, Kim, and Lynch-Branzoi does not teach:
[claim 17] wherein the polymer composite comprises about 2.3 to about 2.5 wt % of CNT and about 18 to about 22 wt % of SO; &
[claim 18] wherein the polymer composite comprises CNT-PDMS-SO with CNT:SO weight ratio of 1:8.
Kim does, however, teach that it was known to adjust or tune CNT weight concentrations to obtain desired mechanical and electrical properties of the CNT/PDMS polymer composite [see pg. 5 (“Mechanical and Electrical Properties”); and FIG. 3a (pg. 5)].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Connor, Kim, and Lynch-Branzoi such that weight concentrations be adjusted/tuned based on desired mechanical and/or electrical properties including, e.g., wherein the polymer composite comprises about 2.3 to about 2.5 wt % of CNT and about 18 to about 22 wt % of SO; and wherein the polymer composite comprises CNT-PDMS-SO with CNT:SO weight ratio of 1:8, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bradford C. Blaise whose telephone number is (571)272-5617. The examiner can normally be reached on Monday - Friday 8 AM-5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached on 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Bradford C. Blaise/Examiner, Art Unit 3794