DETAILED ACTION
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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “urging member” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
According to the specification, the urging member is a spring.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 33 is 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 33 recites that a radiotranslucent electrode body widens from a base adjacent the dry electrode unit toward a distal end configured to contact the body surface. Claim 1, however, recites that a proximal end of the radiotranslucent electrode body is configured to be deployed against a body surface. It is unclear if a distal end or a proximal end of the electrode body is configured to contact the body surface. For this examination, the claim is being interpreted such that either a proximal end or distal end of the radiotranslucent electrode body is configured to contact the body surface.
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 12, 14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al.’674 (US Pub No. 2015/0257674 – previously cited) in view of Nitta et al.’632 (JP 6927632 B2 – previously cited).
For this examination, the US translation of Nitta et al.’632 previously provided by the Office will be referenced.
Regarding claim 12, Figures 1-5 of Jordan et al.’674 disclose a system comprising a dry physiological electropotential signal (EEG) acquisition electrode (sections [0006], [0014], [0102] and [0104]), the electrode comprising: a radiotranslucent electrode body (sections [0013-0014], [0105] and [0109]), and a conductive coating disposed on a surface of the radiotranslucent electrode body to a conductor operably coupling the electrode unit to a receiver (sections [0105-0111]), wherein at least the radiotranslucent electrode body and the conductive coating are configured such that, when a proximal end of the radiotranslucent electrode body is deployed against a body surface: the conductive coating provides signal communication from the body surface to the conductor operably coupled to the receiver (sections [0105-0111]), and a radiographic view of objects underlying the body surface remains obtainable through the conductive coating and the radiotranslucent electrode body (sections [0013], [0103], [0109]).
Jordan et al.’674 discloses all of the elements of the current invention, as discussed above, except for the radiotranslucent electrode body extending outward from a dry electrode unit. Nitta et al.’632 teaches a radiotranslucent electrode body (section [0041]) wherein the electrode body extends outward from a dry electrode unit (see Figures 1, 3, 7, and 8 of copy of Nitta et al.’632 provided by Applicant). Nitta et al.’632 teaches that a protruding electrode body allows for a scalp contact surface of the electrode to come into contact with the scalp of a subject while avoiding the hair (sections [0034-0035]). Section [0038] further teaches that this provides for measuring EEGs with high accuracy.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the electrode body of Jordan et al.’674 such that it extends outward from a dry electrode unit, as taught by Nitta et al.’632, as this would allow for better scalp surface contact with the electrode body, thus resulting in higher accuracy EEG signal acquisition.
With regard to the recitation in claim 1 that the radiographic view of objects underlying the body surface remains simultaneously obtainable through the conductive coating and the radiotranslucent electrode body, while Jordan et al.’674 fails to explicitly recite that the radiographic views are simultaneously obtainable while EEG signals are acquired, section [0041] of Nitta et al.’632 teaches that with radiotranslucent EEG electrodes, radiographic views are capable of being obtained simultaneously with EEG signals.
Regarding claim 14, Jordan et al.’674 discloses that the electrode body is coupled to an adjustable elastic headband (see ABSTRACT, Figures 1-5, sections [0014] and [0100]).
Regarding claim 16, Jordan et al.’674 discloses that the electrode body comprises non-conducting materials (section [0105]).
Regarding claim 17, Jordan et al.’674 discloses that the conductive coating comprises a silver/silver chloride coating (section [0105]).
Regarding claim 18, the electrode unit is configured as an EEG electrode (see TITLE, ABSTRACT, sections [0102] and [0105]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al.’674 in view of Nitta et al.’632, as applied to claim 12, further in view of El-Imad et al.’275 (GB 2516275 A – previously cited).
Jordan et al.’674 in view of Nitta et al.’632 discloses all of the elements of the current invention, as discussed in paragraph 7 above, except for the electrode unit comprising a clip. It is noted that section [0105] of Jordan et al.’674 discloses that the electrode body may be attached to the elastic headband by “other means”. As modified by Nitta et al.’632, the entire electrode unit would be attached to the elastic headband by “other means”. El-Imad et al.’275 teaches attaching an electrode unit to a headband via a clip (see clip 22 of Figure 7), wherein the clip allows the electrode unit to be removably engageable with the headband such that it may be positioned and re-positioned accurately (page 8, lines 9-20).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the electrode unit of Jordan et al.’674 in view of Nitta et al.’632 such that it includes a clip, as El-Imad et al.’275 teaches that this would allow the electrode unit to be removably engageable with the elastic headband, thus allowing the electrode unit to be positioned and re-positioned onto the elastic headband accurately.
Claims 15 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al.’674 in view of Nitta et al.’632, as applied to claim 12, further in view of Connor’124 (US Pub No. 2022/0233124).
Regarding claim 15, Jordan et al.’674 in view of Nitta et al.’632 discloses all of the elements of the current invention, as discussed in paragraph 7 above, except for the electrode further comprising a plurality of electrode bodies extending away from the dry electrode unit, the plurality of electrode bodies each comprising an urging member configured to urge the electrode body away from the electrode unit against the body surface. Figure 1 of Nitta et al.’632 shows a plurality of electrode bodies 14 extending away from the electrode unit.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the electrode of Jordan et al.’674 in view of Nitta et al.’632 to include a plurality of electrode bodies extending away from the dry electrode unit, as it would merely be combining prior art elements according to known methods to yield predictable results.
Jordan et al.’674 in view of Nitta et al.’632 discloses all of the elements of the current invention, as discussed above, except for the plurality of electrode bodies each comprising an urging member configured to urge the electrode body away from the electrode unit against the body surface. Figures 17-19 of Connor’124 teach an electrode comprising a plurality of electrode bodies extending away from a dry electrode unit (the TITLE indicates that the EEG electrodes shown in the Figures are dry EEG electrodes), the plurality of electrode bodies each comprising an urging member configured to urge the electrode body away from the electrode unit against a body surface (sections [0368-0370], [0374-0375]). Section [0375] teaches that including individual urging members for each protruding electrode body enables independent movement of different protrusions.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the electrode of Jordan et al.’674 in view of Nitta et al.’632 such that each electrode body comprises an urging member configured to urge the electrode body away from the electrode unit against the body surface, as Connor’124 teaches that this would (1) compel each protrusion toward the body surface (i.e., provide better contact between the electrode body and the body surface), and (2) enable independent movement of each protrusion.
Regarding claim 33, Jordan et al.’674 in view of Nitta et al.’632 discloses all of the elements of the current invention, as discussed in paragraph 7 above, except for the radiotranslucent electrode body widening from a base adjacent the dry electrode unit toward a distal end configured to contact the body surface. Figure 8 of Connor’124 discloses a dry electrode unit wherein an electrode body 802,803 widens from a base 801 adjacent the dry electrode unit toward a distal end configured to contact the body surface.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the electrode of Jordan et al.’674 in view of Nitta et al.’632 such that its radiotranslucent electrode body protrusions widen from a base adjacent the dry electrode unit towards a distal end configured to contact the body surface as it would merely be the simple substitution of one known protrusion shape (that shown in Figure 8 of Connor’124) for another (that shown in Figure 1 of Nitta et al.’632) to obtain predictable results.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Nitta et al.’632 in view of Ives et al.’274 (US Pub No. 2010/0059274).
For this examination, the US translation of Nitta et al.’632 previously provided by the Office will be referenced.
Regarding claim 34, Figure 1 of Nitta et al.’632 discloses a dry physiological electropotential signal acquisition electrode (section [0035] discloses that the electrode does not use conductive paste), the electrode comprising: a radiotranslucent electrode body 14 extending outward from a dry electrode unit 12,20, wherein when the radiotranslucent electrode body is configured such that a proximal end of the radiotranslucent electrode body is deployed against a body surface, it provides communication from the body surface to a conductor (section [0035]), and a radiographic view of objects underlying the body surface remain simultaneously obtainable through the radiotranslucent electrode body (section [0041] of Nitta et al.’632 teaches that with radiotranslucent EEG electrodes, radiographic views are capable of being obtained simultaneously with EEG signals).
Nitta et al.’632 discloses all of the elements of the current invention, as discussed above, except for the electrode comprising a conductive coating disposed on an outer surface of the radiotranslucent electrode body. Ives et al.’274 teaches providing a conductive coating on the outer surface of a radiotranslucent electrode body in order to significantly improve the recording quality of the electrode (section [0042]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the electrode of Nitta et al.’632 to include a conductive coating disposed on an outer surface of the radiotranslucent electrode body, as taught by Ives et al.’274, as this would significantly improve the recording quality of the electrode.
Nitta et al.’632 in view of Ives et al.’274 discloses all of the elements of the current invention, as discussed above, except for explicitly reciting that the conductor operably couples the electrode unit to a receiver. Official notice is being taken that it is well known in the art to operably couple a conductor of a physiological electrode to a receiver in order to allow the signals sensed by the conductor to be processed and analyzed (both Ives et al.’274 and Jordan et al.’674 teach operably coupling a conductor within an EEG electrode to a receiver for the purposes of processing and analyzing signals sensed by the electrode). As such, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have operably coupled the conductor of Nitta eta l.’632 in view of Ives et al.’274 to a receiver (e.g., an EEG machine) so that signals sensed by the electrode can be processed and analyzed.
Response to Arguments
Applicant's arguments filed 16 January 2026 have been fully considered.
Applicant’s amendment to the Abstract has overcome the previous objection of the Specification.
Applicant’s amendments to the claims have overcome the previous objection of claim 12 and the previous rejection of claim 13 under 35 U.S.C. 112(b). However, as noted in paragraph 5 above, a new rejection under 35 U.S.C. 112(b) has been made for newly added claim 33.
Regarding Applicant’s arguments against the rejection of claim 12 under 35 U.S.C. 103, the arguments are not persuasive.
Applicant first argues that because Ives describes an electrode wherein “conductive jelly must be applied to the electrodes”, that the electrode of Jordan is not a dry electrode. This argument is not persuasive as an electrode is a dry electrode as long as no conductive paste is applied to the electrode. This is supported by Jordan in section [0104]: “Disc and cup electrodes can be classified as being either dry electrodes or wet electrodes, depending on the presence of an electrolyte on the surface attached to the skin”. (emphasis added) Structurally, there is no teaching in either Jordan or Ives that the disclosed electrodes themselves house or include any jelly or electrolytic gel, or that jelly or gel is attached to the electrodes during manufacturing of the electrodes/the electrodes come with jelly or gel pre-attached. Without the jelly or gel present, the electrodes are dry electrodes. Jordan also implies that the electrodes used with its elastic head strap are dry electrodes: “Dry electrodes are generally attached to a skin surface mechanically, such as by means of pressure applied by an elastic cloth, as used in the present head strap.” (emphasis added) For these reasons, Applicant’s arguments that Jordan does not teach a dry electrode unit are not persuasive.
Applicant next argues that because an adhesive layer is present between the body surface and the conductive electrode taught by Jordan in view of Nitta, that Jordan in view of Nitta fails to teach an electrode wherein when a proximal end of the radiotranslucent electrode body is deployed against a body surface, the conductive coating provides signal communication from the body surface to the conductor. This argument is not persuasive as the claim does not require the conductive coating to be deployed directly against the body surface. Even with an adhesive layer present between the body surface and the conductive coating, the conductive coating provides signal communication from the body surface to the conductor. Any EEG signal sensed by the electrode of Jordan in view of Nitta is communicated to the conductor and the receiver via the conductive coating; the presence of the adhesive layer does not prevent signals from being communicated from the body surface to the conductor via the conductive coating.
With regard to claim 12, Applicant’s argument that Nitta’s protruding portion 14 fails to teach the recited “conductive coating disposed on a surface” is not persuasive as Nitta was not relied upon to teach a conductive coating disposed on a surface. It is noted, however, that for claim 34, Nitta is able to be modified by Ives such that its protrusions 14 are coated with a conductive coating. As discussed in paragraph 10 above, Ives teaches providing a conductive coating on the outer surface of a radiotranslucent electrode body in order to significantly improve the recording quality of the electrode (section [0042]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the dry electrodes of Nitta et al.’632 to include a conductive coating disposed on an outer surface of the radiotranslucent electrode body, as this would significantly improve the recording quality of the electrode.
Regarding Applicant’s argument that neither Jordan nor Nitta teaches applying a conductive coating to the outer surface of a protruding electrode body that contacts the scalp, the Examiner notes that claim 12 does not recite that the conductive coating is disposed on an outer surface of a protruding body that contacts the scalp; it recites that the coating is disposed on “a surface”. Ives, which is cited in section [0105] of Jordan, specifically recites coating a surface of an electrode with a conductive coating.
Applicant’s argument that the Examiner’s proposed modification would require a change to the principle of Nitta’s invention is not persuasive as the reference to Nitta was not modified for the rejection of claim 12. Instead, Jordan was modified such that its electrode comprises protrusions. The modification would have been obvious as Nitta teaches that EEG electrodes that include protrusions provide high accuracy EEG readings. As Nitta specifically teaches a reason to include protrusions on EEG electrodes, the modification to Jordan was not made using impermissible hindsight.
Applicant next argues that Jordan-Ives teaches away from protruding electrodes because Ives allegedly identifies protruding electrodes as a drawback to be overcome. This argument is not persuasive as section [0010] of Ives, the section which Applicant relies upon to provide evidence of protruding electrodes being a drawback that needs to be overcome, does not actually teach that electrodes with protrusions are a drawback that need to be overcome. Section [0010] states that electrodes that protrude from headgear can be a drawback; “electrodes that protrude from a headgear” is not the same as “electrodes with protrusions”. Regarding Applicant’s argument that the drawbacks to be overcome include poor surface contact and pressure points created by protruding electrodes, section [0038] of Nitta notes that because the protrusions easily undergo elastic deformation, contracting, and/or tilting, the electrodes can be securely brought into contact with any area of the head, and section [0036] of Nitta specifically teaches that its protrusions are elastically deformable and therefore a subject with not feel discomfort because of the protrusions. These teachings by Nitta overcome the drawbacks taught by Ives.
Regarding the prior art rejections of claims 15, 33, and 34, new grounds of rejections have been made in light of the claim amendments/additions.
While new rejections for claims 12, 14, and 16-18 were not made using Nitta as a primary reference (doing so would not have been necessitated by amendment), claims 12, 14, and 16-18, along with claim 34, could be rejected under 35 U.S.C. 103 as being unpatentable over Nitta et al.’632 in view of Ives et al.’274.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lawrence et al.’683 (US Pub No. 2016/0302683 – previously cited) teaches an EEG electrode body comprising a clip (section [0039]). Mirsattari et al. (MRI compatible EEG electrode system… – previously cited) and Das et al. (The Utility of Conductive Plastic Electrodes… – previously cited) both teach use of radiotranslucent EEG electrodes. Furthermore, it is noted that Connor’124 teaches that EEG electrodes can be made by coating any of a number of different materials with silver chloride (sections [0186], [0219], [0233], [0243], [0245], [0247]). Section [0186] specifically teaches coating electrode bodies that extend from a dry electrode unit with silver chloride.
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.
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/ETSUB D BERHANU/Primary Examiner, Art Unit 3791