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 .
Response to Amendment
This action is responsive to applicant’s amendment filed 7/24/2026.
Claims 1, 12-28, 30-32 are pending.
Claims 1, 16-21 are withdrawn from further consideration as being drawn to a nonelected Groups III-V.
The previous rejection of claims 22, 28 and 29 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendment.
The previous rejection of claims 12, 15, 22, and 24-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lynch-Branzoi et al (WO2021154903) is maintained in view of applicant’s amendment.
The previous rejection of claims 13, 14 and 30 under 35 U.S.C. 103 as being unpatentable over Lynch-Branzoi et al (WO2021154903) in view of Yang et al (US2019/0271659) is maintained in view of applicant’s amendment.
The previous rejection of claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Lynch-Branzoi et al (WO2021154903) in view of Nosker et al (US2021/0403326) is maintained in view of applicant’s amendment.
Claim Interpretation
The law held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In re Marosi 710 F.2d 799,218 USPQ 289 (Fed. Cir. 1983).
The elastomer composite recited in claim 12 is limited by and defined by the process of claim 1. If the product in claim 12 is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 32 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 32 recites “the polymer matrix exhibits fewer voids and separations at interfaces between the exfoliated layered material and the polymer matrix than an elastomeric composite prepared by combining the elastomer precursor, the elastomer precursor curing agent, and the exfoliated layered material using only a single-rotor shear mixer in the absence of the planetary shear mixer”. The recitation was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention.
Claims 31 and 32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 31 and 32 recite a limitation “the elastomer composite comprises a polymer matrix…”.
This limitation does not have support in the specification and ordinary skill in the art would not be reasonably apprised of the scope of the invention. The polymer matrix appears to refer to the elastomeric precursor recited in claim 1. A claim is indefinite when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1314, 110 USPQ 2d 1785, 1789 (Fed. Cir. 2014).
Claim Rejections - 35 USC § 102
Claims 12, 15, 22, and 24-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lynch-Branzoi et al (WO2021154903).
Regarding claim 12, Lynch-Branzoi discloses a electrochemical sensor (page 4, ln 5-14), comprising: a substrate; an elastomeric filled with conductive 2D nanoparticles, formed by filling elastomer polymer precursors and/or corresponding elastomer polymer curing agents or their precursors with conductive 2D nanoparticles by shear exfoliation of a layered material, followed by mixing the two components and curing to form the elastomer filled with conductive 2D nanoparticles (abstract; page 13, ln 21-22); and a plurality of electrodes suitable for electrochemical sensing (page 12, ln 9-30; page 13, ln 10-12).
Regarding claim 15, Lynch-Branzoi discloses the substrate includes at least one of fabrics, rubbers, plastics, metal, wood, electronic components, gloves, wrist bands, shoe soles, and belts (page 12, pages 11-13).
Regarding claim 22, Lynch-Branzoi discloses the layered material is graphite and the exfoliated 2D nanoparticles are graphene (page 13, line 21).
Regarding claim 24, Lynch-Branzoi discloses the elastomer is a silicone (page 9, ln 28; ECOFLEX/Dragon Skin Part A, page 13, line 22).
Regarding claim 25, Lynch-Branzoi discloses the silicone is polydimethylsiloxane (PDMS) (page 9, ln 28).
Regarding claim 26, Lynch-Branzoi discloses the layered material is graphite and the elastomer is a silicone (page 13, line 21-22).
Regarding claim 27, Lynch-Branzoi discloses the at least one layered material is present in a concentration of about 35% to about 50% by weight of the elastomeric composite (page 13, line 21-22; page 16, ln 7).
Regarding claim 28, Lynch-Branzoi discloses the exfoliated 2D nanoparticles (graphene nanoflakes GNFs) are obtained through shear mixing the layered material with the elastomer precursor (page 13, ln 21-22).
Claim Rejections - 35 USC § 103
Claims 13, 14 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch-Branzoi et al (WO2021154903) as applied above, further in view of Yang et al (US2019/0271659).
Regarding claims 13, 14, Lynch-Branzoi discloses a sensor described above and is incorporated herein by reference. Lynch-Branzoi does not disclose the plurality of electrodes includes a counter electrode formed from platinum (Pt) and a reference electrode formed from silver/silver chloride (Ag/AgCl). Yang discloses an electrochemical sensor comprising the plurality of electrodes includes a counter electrode formed from platinum (Pt) and a reference electrode formed from silver/silver chloride (Ag/AgCl), wherein the working electrode comprises graphene (para 0070-72). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to fabricate the electrochemical sensor according to Yang using the elastomer filled with graphene of Lynch-Branzoi as the working electrode, which can be used to detect chemicals that are advantageous for the production of various types of sensors as well as health monitoring devices with a reasonable expectation of success for use in applications include medical sensors such as those that measure patient movement, medical and laboratory PPE, electronic sensors for heat and exposure, health monitoring devices for measuring posture, activity and vital signs, and biosensing devices for measuring frailty, balance and posture. Products incorporating the devices include medical devices, laboratory PPE, health and fitness devices, and various electronics (page 13, ln 10-18).
Regarding claim 30, Yang discloses the working electrode is configured to detect dopamine (para 0065). In addition, the working electrode, which comprises the elastomer filled with graphene of Lynch-Branzoi, is compositionally similar to the claimed working sensor and therefore would expect to work similar (detect dopamine).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Lynch-Branzoi et al (WO2021154903) as applied above, further in view of Nosker et al (US2021/0403326).
Lynch-Branzoi discloses a sensor described above and is incorporated herein by reference. Lynch-Branzoi does not disclose the graphite is in the form of graphite flakes having an average length within the range from about 800 µm to about 2000 µm. Nosker discloses graphite flakes of about 1000 microns in length are used in material for biosensors (para 0069). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the graphite flakes of about 1000 microns in length to fabricate the elastomer filled with graphene of Lynch-Branzoi, with a reasonable expectation of success for use in applications include medical sensors such as those that measure patient movement, medical and laboratory PPE, electronic sensors for heat and exposure, health monitoring devices for measuring posture, activity and vital signs, and biosensing devices for measuring frailty, balance and posture. Products incorporating the devices include medical devices, laboratory PPE, health and fitness devices, and various electronics.
Response to Arguments
Applicant's arguments filed 7/24/2026 have been fully considered but they are not persuasive.
Regarding to applicant’s arguments that Lynch-Branzoi does not disclose "a plurality of electrodes suitable for electrochemical sensing" because "electrical leads, electrical connectors, or electrodes" serve an entirely different purpose from the electrochemical sensing electrodes required by claim 12. Applicant pointed to the Specification, which described the electrochemical sensing involves a three-electrode electrochemical cell configuration: (1) a working electrode (e.g. the elastomeric composite formed according to claim 1), (2) a counter electrode formed from platinum (Pt), and (3) a reference electrode formed from silver/silver chloride (Ag/AgCl). See as-filed application, at 11 [0024] and [0025]. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., The sensor detects analytes (e.g., dopamine) via electrical impedance spectroscopy (EIS) by measuring changes in charge transfer resistance at the electrode-analyte interface) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In addition, the preamble “electrochemical sensor” and limitation “electrodes suitable for electrochemical sensing” direct to an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim Shoes oy Firebug LLC v. Stride Rite Children’s Grp., LLC, 262 F.3d 1362, 2020 USPG2d To7CL (Fed. Cir. 2020). Lynch-Branzoi discloses the sensor material can transduce external stimuli such as chemical reaction (page 9) and the GNF-enhanced elastomers can be used to chemicals (page 13), therefore the sensor of Lynch-Branzoi meets the claimed electrochemical sensor and suitable for electrochemical sensing. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ 569 (CCPA 1982).
Regarding to applicant’s arguments that Yang teaches away from bulk composite working electrodes. However, the law held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In addition, the working electrode, which comprises the elastomer filled with graphene of Lynch-Branzoi, is compositionally similar to the claimed working sensor and therefore would expect to work similar (detect dopamine). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claims 12-15, 22-28, 30-32 are unpatentable for the reasons of record.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/HAIDUNG D NGUYEN/ Primary Examiner, Art Unit 1761
10/8/2026
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