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.
DETAILED ACTION
This is in response to the claims filed February 19, 2026, in which claims 21-40 were presented for examination, of which claims 21-35 were withdrawn by the Examiner, due to being drawn to a nonelected embodiment.
Election/Restrictions
Applicant’s election without traverse of Species IV (Fig. 14-15) in the reply filed on February 19, 2026, is acknowledged.
As MPEP 821 Treatment of Claims Held To Be Drawn to Nonelected Inventions states,
Claims found to be drawn to nonelected inventions, including claims drawn to nonelected species or inventions that may be eligible for rejoinder, are treated as indicated in MPEP § 821.01 through § 821.04.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
The following claims are withdrawn from consideration as they are directed to a nonelected invention: Claims 21-35. See 37 CFR 1.142(b).
These claims are not drawn to the elected invention as required by the restriction, due to including method limitations that are not found within other Species.
Therefore, Examiner has withdrawn claims 21-35.
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 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Hill et al. “Hill” (US PG 2004/0009729) in view of ROH et al. “ROH” (US PG Pub. 2017/0268136).
Regarding claim 36, Hill discloses a method of forming a smart yarn (combination of 110, 120, and 160, Fig. 1-4, Par. 0059, method as presented in claim 26), comprising:
depositing a first volume of solder (Par. 0035, lines: 8-10) onto a first terminal location at a sensor site (Par. 0032, see annotated Fig. 1 below) on a first wire of a set of wires (120, Fig. 1 and 3);
depositing a second volume of solder (Par. 0035, lines: 8-10) onto a second terminal location at the sensor site (Par. 0032, see annotated Fig. 1 below) on a second wire of the set of wires (120, examiner notes the “second wire” is different from the “first wire” due to being in a different location, Fig. 1 and 3);
placing a sensor (160) onto the set of wires at the sensor site (as shown in annotated Fig. 1 below);
heating the set of wires proximal the sensor site to reflow the first volume of solder and the second volume of solder, thereby bonding the sensor to the set of wires at the sensor site (Par. 0032 and Par. 0057); and
combining textile fibers (110, Par. 0029, lines: 1-2, “fiber of cotton”) with the set of wires and the sensor to form the smart yarn (Par. 0069).
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Fig. 1-Examiner Annotated
Hill does not disclose solder paste.
However, ROH teaches yet another smart yarn, wherein ROH teaches using solder paste (Par. 0057, lines: 9-15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solder used as disclosed by Hill, by using a solder paste as taught by ROH, in order to enhance securement at the sensor site(s).
Regarding claim 37, Hill in view of ROH disclose depositing packing material on the sensor site (Par. 0073, lines: 8-11 of Hill); and arranging packing fibers longitudinally along a length of the set of wires (as shown in Fig. 1).
Regarding claim 38, Hill in view of ROH disclose further comprising radially twisting the packing fibers (110) and the set of wires (120, Par. 0067, lines: 5-7, Par. 0068 of Hill).
Regarding claim 39, Hill in view of ROH disclose combining the textile fibers with the set of wires and the sensor comprises wrapping together the set of wires and the sensor with the textile fibers (Par. 0034 of Hill, examiner notes shown as “wrapping together” in Fig. 1 due to weaving).
Claim Rejections - 35 USC § 102
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.
(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.
Claim 40 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hill.
Regarding claim 40, Hill discloses a method, comprising:
interweaving a segment of a smart yarn into a garment (Par. 0069 and Par. 0089, see claim 26 of Hill), wherein the smart yarn comprises a first wire (1150a), a second wire (1150b) parallel to the first wire (as shown in Fig. 10A), and a series of sensor sites, each sensor site of the series of sensor sites comprising a sensor (1170, Par. 0070, lines: 1-4, Par. 0071, lines: 7-13, examiner notes element 1170 acts as a sensor due to being an active material), the sensor comprising a first terminal in contact with the first wire and a second terminal in contact with the second wire (examiner notes the “terminals” are portions of sensors connected to yarn 1120a) ; and
connecting the first wire and the second wire to corresponding terminals on a controller (1160a and 1160b, Par. 0081, lines: 1-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
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, ALISSA TOMPKINS can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
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