DETAILED ACTION
This Office Action is responsive to the Applicant’s communication filed 12 June 2024. In view of this communication, claims 3, 5-13, 16-24, 32-34, and 37-43 are pending in the application.
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 .
Election/Restrictions
Claims 32-34 and 37-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 24 June 2026.
Applicant's election with traverse of group 1, claims 3, 5-13, and 16-24 in the reply filed on 24 June 2026 is acknowledged. No arguments were provided in the Applicant’s election. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 12, 18, and 22 are objected to because of the following informalities:
Regarding claim 12, claim 12 should end in a period instead of a comma.
Regarding claim 18, claim 18 recites that “the compression” is provided by the stretchable garment. Since claim 16 does not refer to compression of any kind, claim 18 should be amended to depend from claim 17, where the compression is first defined.
Regarding claim 22, claim 22 refers to the ground wire or layer and second wire or layer, which are first defined in claim 21. Therefore, claim 22 should be amended to depend on claim 21.
Appropriate corrections are required.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-8, 11, and 16-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Brien (WO 2014/204323 A1), hereinafter referred to as O’Brien.
Regarding claim 5, O’Brien teaches the wearable electronic device according to claim 16, wherein the stretchable electronic sensor comprises a non-elastic tab at a first end and a second end of the stretchable electronic sensor, wherein the surface area between the non-elastic tabs defines the area of stretchability of the stretchable electronic sensor (page 13, claim 22: the sensor comprises tabs which enable it to be integrated into the wearable item by sewing or another bonding method).
Regarding claim 6, O’Brien teaches the wearable electronic device according to claim 16, wherein the inner stretchable conductive fabric layer of the stretchable electronic sensor has a surface area that is less than the first inner stretchable dielectric layer or the second inner stretchable dielectric layer (see Figs. 13-15 and page 6, final two paragraphs: the fabric electrode layers are shown formed smaller than the dielectric layers).
Regarding claim 7, O’Brien teaches the wearable electronic device according to claim 16, wherein the first outer stretchable conductive fabric layer, the second outer stretchable conductive fabric layer and the inner stretchable conductive fabric layer of the stretchable electronic sensor are knit fabric or woven fabrics (page 3, paragraph 11: the electrodes may be woven or knit conductive materials).
Regarding claim 8, O’Brien teaches the wearable electronic device according to claim 7, wherein the knit fabrics and woven fabrics are selected from the group consisting of conductive polyester, conductive nylon, conductive natural fibers, including conductive cotton and cotton blends, conductive polypropylene, knit or woven fabrics coated with a conductive ink or other conductive layer or material, and combinations of any of the foregoing (page 4, third paragraph: the knit fabric is coated with electrically conductive particles).
Regarding claim 11, O’Brien teaches the wearable electronic device according to claim 16, wherein the stretchable conductive fabric layers of the stretchable electronic sensor comprise a fabric material woven or knitted from fibers coated with conductive nanoparticles and/or nanofibers (page 4, paragraph 3: the electrodes are formed by coating the fabric with conductive particles).
Regarding claim 16, O’Brien teaches a wearable electronic device comprising a stretchable electronic sensor, the stretchable electronic sensor comprises:
- a first outer stretchable conductive fabric layer (88a);
- a first inner stretchable dielectric layer (89a);
- an inner stretchable conductive fabric layer (88b);
- a second inner stretchable dielectric layer (89b); and
- a second outer stretchable conductive fabric layer (88c);
wherein an adhesive layer is sandwiched between each of the layers of the stretchable electronic sensor, wherein the adhesive layer comprises an adhesive film (page 9, paragraphs 3-4: glue layers formed between layers of the fabric and dielectric to promote bonding), wherein the adhesive film preserves porosity between adjacent layers (page 9, paragraph 4: the glue layers are designed to keep the fabric breathable), and wherein the layers of the stretchable electronic sensor are joined together to form the stretchable electronic sensor (page 9, first paragraph: the sensor is stretchable);
wherein the wearable electronic device comprises a stretchable garment (see page 9, last paragraph: the disclosed sensor could be used in a garment),
wherein the stretchable garment comprises an outer surface and an inner surface; wherein the stretchable electronic sensor is coupled to or integrated into the stretchable garment at a location where it is desirable to monitor motion of a user (page 9, paragraph 5: the sensor may be integrated into clothing used to measure the motion of joints such as a finger, ankle, hip, or shoulder), wherein the stretchable garment comprises one of the first inner stretchable dielectric layer or the second inner stretchable dielectric layer of the stretchable electronic sensor (see Fig. 26);
wherein one of the first outer stretchable conductive fabric layer and the second outer stretchable conductive layers is contactable with the user's skin (see page 9, paragraph 6: the sensor is incorporated into a glove such that it contacts the fingers of the user).
Regarding claim 17, O’Brien teaches the wearable electronic device according to claim 16, wherein the wearable electronic device is configured to apply compression to the stretchable electronic sensor so as to maintain contact between the stretchable electronic sensor and the user’s skin (Fig. 16 and page 9, paragraph 5: the sensor 44 may be incorporated into a compression sock 45 which would maintain contact between the sensor and the skin of a joint such as a knee, ankle, etc.).
Regarding claim 18, O’Brien teaches the wearable electronic device according to claim 17, wherein the compression is provided by the stretchable garment (Fig. 16 and page 9, paragraph 5: the compression is provided by the sock 45).
Regarding claim 19, O’Brien teaches the wearable electronic device according to claim 16, wherein the stretchable garment is selected from the group consisting of modular knee sleeves, modular ankle sleeves, modular elbow sleeves, gloves, leggings, tights, shirts, unitards and combinations of one or more of the foregoing (Fig. 16 and page 9, paragraph 5: the sensor 44 may be incorporated into a compression sock 45 or another sleeve configured to measure a knee or elbow joint).
Regarding claim 20, O’Brien teaches the wearable electronic device according to claim 16, wherein the wearable electronic device comprises one or more stretchable electronic sensors, wherein each stretchable electronic sensor is coupled to or integrated into the stretchable garment at a location where it is desired to monitor motion of a user (Figs. 17-18 and page 9, paragraphs 6-8: multiple fabric sensors may be integrated into a garment such as a shirt or trousers).
Regarding claim 21, O’Brien teaches the wearable electronic device according to claim 16, wherein the stretchable electronic sensor comprises a ground wire or layer connected to the first or second outer stretchable conductive fabric layer and a second wire or layer connected to the inner stretchable conductive fabric layer (Fig. 27 and page 7, paragraph 12: the outer electrode 94 is grounded and the inner electrode 92 is a signal electrode).
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3, 10, 12-13, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien in view of Daniels et al. (US 20200353239 A1).
Regarding claim 3, O’Brien teaches the wearable electronic device according to claim 16, but does not teach that the layers of the stretchable electronic sensor are joined together by laminating the layers using at least one of heat or pressure.
Daniels et al. does teach that the layers of the stretchable electronic sensor are joined together by laminating the layers using at least one of heat or pressure (Daniels et al. paragraph 264: the layers of the sensor are joined in a lamination process which involves both heat and pressure).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to laminate the sensor of O’Brien with the heat and pressure process of Daniels et al. because the lamination process of Daniels et al. provides a robust and water-proof connection between the layers of the sensor (Daniels et al. paragraph 264).
Regarding claim 10, O’Brien teaches the wearable electronic device according to claim 16, but does not teach that the adhesive layer of the stretchable electronic sensor is a film or web, wherein the thermoplastic film or web is selected from the group consisting of ethylene-vinyl acetate, polyolefin-based hot melt adhesives, polyamides, thermoplastic polyurethane, epoxies, polyvinyl acetate, polyimides, polyacrylates, polyesters, and combinations of the foregoing.
Daniels et al. does teach that the adhesive layer of the stretchable electronic sensor is a film or web, wherein the thermoplastic film or web is selected from the group consisting of ethylene-vinyl acetate, polyolefin-based hot melt adhesives, polyamides, thermoplastic polyurethane, epoxies, polyvinyl acetate, polyimides, polyacrylates, polyesters, and combinations of the foregoing (Daniels et al. paragraph 257: the adhesive joining the fabric conductive layers may be a hotmelt adhesive).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the adhesive of O’Brien from a hotmelt adhesive as taught by Daniels et al. because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416."
Regarding claim 12, O’Brien teaches the wearable electronic device according to claim 11, but does not teach that the fibers comprise natural fibers or polymer fibers, wherein the polymer fibers comprise nylon, polyester, polyurethane, and combinations of one or more of the foregoing.
Daniels et al. does teach that the fibers comprise natural fibers or polymer fibers, wherein the polymer fibers comprise nylon, polyester, polyurethane, and combinations of one or more of the foregoing (Daniels et al. paragraph 24: conductive fabrics may comprise polyester woven fabric).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the fibers of O’Brien from polyester as taught by Daniels et al. because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416."
Regarding claim 13, O’Brien teaches the wearable electronic device according to claim 11, but does not teach that the conductive nanoparticles and/or nanofibers are selected from the group consisting of silver, gold, copper, zinc oxide, aluminum, tin, nickel, carbon black, carbon nanofibers, carbon nanotubes, graphite, graphene, iron and iron compounds, and combinations thereof
Daniels et al. does teach that the conductive nanoparticles and/or nanofibers are selected from the group consisting of silver, gold, copper, zinc oxide, aluminum, tin, nickel, carbon black, carbon nanofibers, carbon nanotubes, graphite, graphene, iron and iron compounds, and combinations thereof (Daniels et al. paragraph 24: conductive fabrics may comprise polyester woven fabric).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select silver for the nanoparticles of O’Brien as taught by Daniels et al. because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416."
Regarding claim 22, O’Brien teaches the wearable electronic device according to claim 16, but does not teach that the ground wire or layer and second wire or layer are coupled to a controller to receive signals from the stretchable electronic sensor and measure and monitor capacitive response resulting from the motion of the user.
Daniels et al. does teach that the ground wire or layer and second wire or layer are coupled to a controller to receive signals from the stretchable electronic sensor and measure and monitor capacitive response resulting from the motion of the user (Daniels et al. paragraph 342: a microprocessor may be provided to detect electrical signals from the skin the user via the sensor).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the sensor of O’Brien et al. with a controller as taught by Daniels et al. because the controller of Daniels et al. allows an operator of the device to detect and interpret signals from the user and transmit feedback to the user (Daniels et al. paragraph 342).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. in view of Sauro et al. (US 20160035456 A1), hereinafter referred to as Sauro et al.
Regarding claim 9, O’Brien teaches the wearable electronic device according to claim 16, that the first outer stretchable conductive fabric layer, the second outer stretchable conductive fabric layer and the inner stretchable conductive fabric layer of the stretchable electronic sensor have a surface resistivity of less than about 10 Ω /sq, more preferably less than about 1 Ω/sq.
Sauro et al. does teach that the first outer stretchable conductive fabric layer, the second outer stretchable conductive fabric layer and the inner stretchable conductive fabric layer of the stretchable electronic sensor have a surface resistivity of less than about 10 S2/sq, more preferably less than about 1 Ω /sq (Sauro et al. paragraphs 11 and 13: the surface resistivity of the conductive polymer may be no greater than 10 Ω/sq).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the stretchable conductive fabric layers of O’Brien with the surface resistivity disclosed by Sauro et al. because it would have been routine optimization to arrive at the claimed invention and a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. in view of Fu et al. (CN 203841685 U), hereinafter referred to as Fu et al.
Regarding claim 23, O’Brien et al. teaches the wearable electronic device according to claim 16, but does not teach that the air permeability of the stretchable electronic sensor is greater than 50 1/m2s.
Fu et al. teaches that increasing the air permeability of the device can help to keep the sensor flush against the subject’s skin and improve the functioning of the sensor. Therefore, it would have been routine optimization to arrive at the claimed invention and a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien et al. in view of Hunt et al. (US 11559438 B2), hereinafter referred to as Hunt et al.
Regarding claim 24, O’Brien et al. teaches the wearable electronic device according to claim 16, that the water vapor permeability of the stretchable electronic sensor is greater than about 30 g/m2h.
Hunt et al. does teach that the water vapor permeability of the stretchable electronic sensor is greater than about 30 g/m2h (Hunt et al. column 12, lines 25-30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to tailor the water vapor permeability of O’Brien et al. to the value taught by Hunt et al. to enable the evaporation of fluids that may cause a separation of the device from the user’s skin or interfere with the operation of the sensor (Hunt et al. column 22, lines 50-55).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John B Freal whose telephone number is (571)272-4056. The examiner can normally be reached Mon-Fri 7:00-3:00.
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/JOHN B FREAL/Examiner, Art Unit 2847
/TIMOTHY J THOMPSON/Supervisory Patent Examiner, Art Unit 2847
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