DETAILED ACTION
This action is pursuant to the claims filed on June 1, 2026. Claims 1-5 and 7-13 are pending. Claims 6 is/are canceled. A final action on the merits of claims 1-5 and 7-13 is as follows.
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 . 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 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.
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 of this title, 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 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.
Claims 1-2, 5-7 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lai et al. (hereinafter ‘Lai’, U.S. PGPub. No. 2017/0027473), and further in view of Ono (U.S. PGPub. No. 2024/0225510).
In regard to independent claims 1, 12 and 13, Lai discloses a wearable bioelectrode or biosensor (a physiology sensing device 1 in Fig. 1-2) comprising:
a flexible sheet electrode (substrate 10) comprising:
a flexible base material (interlacing a plurality of weft threads 12 and a plurality of warp threads 14 as shown in Figs. 1-2, [0035], [0039]); and
an elastomer electrode layer (conductive coating layer 16) provided over the flexible base material (conductive coating layer 16 disposed and embedded within the interlacing threads 12 as shown in Figs. 1-2, [0035]);
wherein the elastomer electrode layer is formed over an outside of the flexible base material and includes a lamination layer including a conductive elastomer layer ([0040]: a physical and protective support layer formed by the conductive coating layer 16 forming in part, an upper surface of the device 1);
in a case where a surface resistance value of the conductive elastomer layer before an abrasion test, which is performed 1000 times using a Martindale E method according to the following procedure, is refined as R0, and a surface resistance value of the conductive elastomer layer after the abrasion test is defined as R2, a surface resistance ratio expressed as R2/R0 is less than or equal to 20, (procedure) a sample test piece having a circular shape is prepared from the flexible sheet electrode, the sample test piece is installed in a Martindale abrasion tester, and the abrasion best is performed on the conductive elastomer layer in the elastomer electrode layer under conditions of an abrasion portion having a diameter of φ30 mm and a pressing weight of 9 kPa in conformity with JIS L 1096 Martindale E method (the examiner notes that the claim limitation is drawn to the method of a known abrasion test, therefore, the specific limitations directed to the Martindale method is inherent when the prior art discloses conducting the Martindale method; [0060]: “Sample wearing resistance test was using JIS-L-1096 method as a reference. The wearing resistance of the sample were tested under Martindale machine for fraction of 1,000 times.” Based upon Table 3, the surface resistance ration is (1,780Ω/m2 / 250 Ω/m2 ) 7.12 and (1,560Ω/m2 / 150 Ω/m2 ) 10.4 which are all smaller than 20).
However, Lai does not disclose wherein the non-conductive filler contains silica particles.
Ono discloses a silicone rubber-based composition comprising conductive material and silica to form an electrode ([0085]-[0086], [0189]-[0194]). Ono further teaches that silica particles in the silicone rubber-based composition improves the hardness or mechanical strength of the elastomer ([0189]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the non-conductive filler of Lai with silica particles as taught by Ono as doing so improves the overall hardness or mechanical strength of the conductive elastomer layer ([0189]).
In regard to claim 2, Given that Lai discloses performing the abrasion test 1,000 times using the Martindale E method ([0060]), it inherently discloses performing the abrasion test 500 times. In addition, the claimed surface resistance ratio of the abrasion test performed at 1,000 times is about 10.4; therefore, the abrasion test performed at 500 will be substantially lower than 10.4 which meets the claim limitation of the surface resistance ratio that is less than or equal to 10.
In regards to claim 5-6, Lai further discloses an impregnation layer formed over an inside of the flexible base material (portion labeled as h2 in Fig. 1-2), wherein the impregnation layer includes the conductive elastomer layer (h2 portion includes conductive coating layer 16); wherein the conductive elastomer layer contains a conductive filler (the coating layer 16) and a non-conductive filler ([0041]: “the conductive coating layer 16 is made of a hydrophobic adhesive and a plurality of conductive particles distributed among the conductive coating layer 16… the hydrophobic adhesive is polyurethane (PU), silicone resin, polyethylene terephthalate (PET), polyacrylates and the like”).
In regards to claim 7, Lai further discloses wherein the conductive filler contains scale-like silver ([0041]: the conductive coating layer 16 is made of a hydrophobic adhesive and a plurality of conductive particles distributed among the conductive coating layer 16… the plurality of conductive particles includes silver).
In regards to claim 9, Lai further discloses wherein a content of the conductive filler in the conductive elastomer layer is greater than or equal to 50% by mass and less than or equal to 90% mass ([0042]: “the ratio of the conductive particles in the conductive coating layer 16 is preferably 20-70wt”).
In regards to claim 10, Lai further discloses wherein the conductive elastomer layer contains silicone rubber ([0041]: the conductive coating layer 16 is made of a hydrophobic adhesive which includes silicone resin).
In regards to claim 11, Lai further discloses wherein the flexible base layer is woven fabric or knitted fabric ([0035]: fabric substrate 10 is formed by interlacing threads; [0039]: the fabric substrate 10 is made by weaving or knitting).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lai and Ono as applied to claim 1 above, and further in view of Gu et al. (hereinafter ‘Gu’, U.S. PGPub. No. 2018/0256105).
In regards to claims 3-4, Lai/Ono combination discloses the invention substantially as claimed in claim 1 and discussed above.
Lai/Ono combination does not explicitly disclose wherein the abrasion test is performed 500 times using the Martindale E method according to the procedure, a surface resistance value (R1) of the conductive elastomer layer is less than or equal to 5 Ω and after 100 times, the surface resistance value of the conductive elastomer layer is less than or equal to 10 Ω.
Gu teaches a wearable dry electrode comprising a base fabric and conductive layer that are attached to the base fabric (abstract). Specifically, the conductive layer comprises a high conductivity having a surface resistance value in the range of 0.01 m Ω /m2 and 50 m Ω /m2 ([0037]). The examiner notes that Lai discloses that the surface resistance of 150 m Ω /m2 ([0053]). However, the surface resistance value depends on various parameters including the material of the electrode composition (e.g. amount of conductive material within the composition) and electrode dimension, therefore, the concept of modifying the surface resistance value of Lai by adding more conductive materials that have very low resistances in an electrode composition as taught by Gu to arrive at the claimed surface resistance value of R1 of 5 Ω and R2 of 10 Ω involves routine skill in the art and a predictable result of low surface resistance for better electrode skin contact.
Response to Arguments
Applicant’s Remarks filed on June 1, 2026 is fully acknowledged.
With respect to Applicant’s argument that Lai (U.S. PGPub. No. 2017/0027473) fails to disclose “the conductive elastomer layer contains a thermosetting elastomer, a conductive filler and a non-conductive filler” as required in independent claim 1. Lai discloses an elastomer electrode layer (conductive coating layer 16 in Figs. 1-2) provided over the flexible base material (interlacing threads 12 in Figs. 1-2). Lai further discloses that the conductive coating layer is made of a hydrophobic adhesive which includes silicone resin, which is a type of thermoset polymer or elastomer and a plurality of conductive particles ([0041]). Although Applicant argues that the adhesive or binder component, e.g. silicone, should not be equated with the newly added non-conductive filler, the examiner notes that the Examiner has not equated the non-conductive filler to the silicone resin of Lai. Therefore, as argued by Applicant, Lai does not disclose a non-conductive filler is persuasive.
In the previous Office action, Ono (U.S. PGPub. No. 2024/0225510) was relied upon to teach that in a silicone rubber-based conductive composition comprising conductive material similar to Lai, one of ordinary skill in the art can also incorporate a non-conductive filler, silica, so as to provide a desired hardness or mechanical strength of the elastomer ([0189]). In response to applicant's argument that Ono’s silica in a silicone rubber composition does not teach or suggest in the context of a wearable flexible electrode required in maintain stable resistance after abrasion, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, incorporating silica, a non-conductive filler, to provide a desired hardness or mechanical strength of a conductive elastomeric composition like that of Lai would have been obvious. Therefore, Applicant’s argument against the combination of Lai and Ono is not persuasive and the rejection has been made in above Office action.
In regards to claims 3 and 4, Applicant’s arguments are solely directed towards the secondary reference, Gu (U.S. PGPub. No. 2018/0256105) failure to cure the above-noted deficiency of independent claim 1. Given this lack of additional argument, the rejections under 35 U.S.C. 103 is tenable.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 EUNHWA KIM whose telephone number is (571)270-1265. The examiner can normally be reached 9AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EUN HWA KIM/Primary Examiner, Art Unit 3794 6/24/2026
Prosecution Insights