DETAILED ACTION
This action is pursuant to the claims filed on 07/29/2026. Claims 1-4 are pending. A final action on the merits of claims 1-4 is as follows.
Response to Amendment
Applicant’s amendment to the claims are acknowledged and entered accordingly.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is/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.
Claim 4 recites the limitation "stirring carbon black and a polyurethane resin" in line 3. Line 2 of the claim incorporates “the bioelectrode according to claim 1” which recites “carbon black and a polyurethane resin”. Thus, it is unclear if the recitation in line 3 of claim 4 intends to recite antecedent basis to the same limitations already recited in the claim or if the limitations in line 3 recite a second and distinct carbon black and polyurethane resin. For examination purposes, this limitation will be interpreted to read “stirring the carbon black and the polyurethane resin”.
Claim Rejections - 35 USC § 103
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(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamemoto (JP 2020180406).
Regarding claim 1, Kamemoto teaches A bioelectrode having a multilayer structure of a conductor and a fiber base material composed of non-conductive fibers (Pg 2-3 of translation; electrode comprises base fiber), wherein the conductor contains carbon black and a polyurethane resin (bottom of pg 3, conductive substance is carbon black; pg 4-5, binder is a polymer urethane resin), a content of the carbon black is 15 to 35 mass% with respect to the conductor (Pg 3-4, carbon black is 20-50% by mass), the carbon black is dispersed in a particulate form at least on a surface of the conductor (Pg 13, CB and binder are mixed in a solution and applied to base fiber (i.e., CB is dispersed in particulate form on surface of the conductor)), a ratio of a longest distance to a shortest distance between particles of the carbon black and adjacent particles of the carbon black (longest distance/shortest distance) is 1 to 20 on the surface of the conductor (Pg 8, surfactant is used to ensure uniform dispersion of carbon black (i.e., a ratio of 1), and the surface of the conductor has a wet rubbing fastness of grade 4 or higher (Pg 3 conductor has wet friction fastness of grade 3 or higher; examiner notes a grade of “3 or higher” overlaps the claimed range of “4 or higher”).
Kamemoto fails to explicitly teach the content of the carbon black is 15 to 35 mass%.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the mass% of carbon black of Kamemoto to use a mass% between 15 to 35% as applicant appears to have placed no criticality on the claimed range and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kamemoto fails to explicitly teach the surface of the conductor has a wet rubbing fastness of grade 4 or higher.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Kamemoto to use a wetting fastness of grade 4 or higher to arrive at claim 1. Doing so would be obvious to one of ordinary skill in the art as Kamemoto discloses the same structure as the claimed bioelectrode such that modifying the wet rubbing fastness to be grade 4 or higher would yield the predictable result of advantageously suppressing the occurrence of contamination of the skin and clothing by the conductive substance (Pg 3 of translation).
Regarding claim 3, in view of the combination of claim 1 above, Kamemoto further teaches wherein a difference in impedance between the electrodes before and after 20 times of washing according to JIS L 0217 (1995) 103 method is 0.2 kOhm or less (Pg 11, difference in impedance after 20 washes under JIS L0217 (1995) is 2KOhm or less). Therefore it would have been obvious to one having ordinary skill in the art at before the effective filing date of the claimed invention to have modified Kamemoto to use a difference in impedance is 0.2 KOhm or less after washing 20 times, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). One would have done because Kamemoto identifies minimizing the impedance difference after washing as a result effective variable in providing increased durability and re-usability to the conductive substance after wash cycles (Pg 11 of Kamemoto translation).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamemoto (JP 2020180406) in view of Taden (WO 2017/009160).
Regarding claim 4, Kamemoto teaches A method for manufacturing a bioelectrode, by which the bioelectrode according claim 1 is manufactured (see rejection of claim 1 above), the method comprising: a step of stirring carbon black and a polyurethane resin by a homomixer with a planetary ball mill to form a solution (Pg 8 of translation; planetary ball mill which is a homogenizer is used to mix carbon black conductor with polyurethan resin and surfactant; examiner notes “a homomixer with a planetary ball mill” is interpreted as the planetary ball mill being the type of homomixer used which is congruent with para. [0068] of the applicant’s specification); a step of mixing and defoaming the solution containing carbon black and the polyurethane to obtain a coating liquid (Pg 5 discloses use of defoaming agent, thus mixing the components with a planetary ball mill as disclosed is a step of mixing and defoaming); and a step of applying the coating liquid onto one surface of a fiber base material composed of non-conductive multifilament fibers and drying the coating liquid (Pg 8, coating liquid is provided on the base fiber by a usual method such as coating and then heating the fiber structure (i.e., drying); pg 9 disclosing material of base fiber being non-conductive multifilament fibers).
Kamemoto fails to teach the step of mixing and defoaming the solution being a separate mixing step from the stirring step.
In related prior art, Taden teaches a similar method of manufacturing where a first step of stirring (Pg 20 of translation; a first step of mixing the 2-phase mixture) followed by a step of mixing and defoaming (Pg 20, reaction was stopped and a defoamer was added with continued mixing). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of manufacturing of Kamemoto in view of Taden to incorporate the step of stirring a solution of carbon black and polyurethane resin separately from a step of mixing and defoaming the solution to arrive at the method of claim 4. Doing so would be obvious to one of ordinary skill in the art as utilizing a two step process of first stirring the solution together followed by mixing and defoaming is well-known in the art to yield predictable results therein as evidenced by the Taden reference.
Allowable Subject Matter
Claim 2 is allowed.
The following is an examiner’s statement of reasons for allowance: Regarding claims 2, the references fail to teach “a ratio of an area having a spreading resistance value of 4 to 6 logΩ measured by scanning spreading resistance microscopy (SSRM) in the surface of the conductor is 8% to 18%”. Applicant’s remarks dated 07/29/2026 are persuasive in establishing the technical significance and criticality of the above noted range, such that any combination of the prior art of record to arrive at the claimed device would necessarily rely on impermissible hindsight benefit using information gleaned from the applicant’s specification. No other pertinent prior art reference were found that would overcome the above deficiencies. Therefore, there is no motivation (either in these references or elsewhere in the art) for making such specific and significant modifications thereto to arrive at claim(s) 2.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see remarks, filed 07/29/2026, with respect to the rejection(s) of claim(s) 2 and 4 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the Taden reference with respect to claim 4.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam Z Minchella whose telephone number is (571)272-8644. The examiner can normally be reached M-Fri 7-3 EST.
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.
/ADAM Z MINCHELLA/Primary Examiner, Art Unit 3794
Prosecution Insights