www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/292,555
`
`05/10/2021
`
`Bret W. Ludwig
`
`81139US007/083749-118
`
`8426
`
`200663
`
`7590
`
`02/03/2025
`
`Vorys-Solventum
`Vorys, Sater, Seymour and Pease LLP
`909 Fannin St.
`
`EXAMINER
`
`ANTISKAY, BRIAN MICHAEL
`
`HOUSTON,TX 77010
`
`3794
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/03/2025
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`IPDocketing @ Solventum.com
`VDocketHou @vorys.com
`vorys_docketing @cardinal-ip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`171292,555
`Ludwig etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Brian M Antiskay
`3794
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 08/14/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-2,4-6 and 23-39 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 29-39 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-2,4-6 and 23-28 is/are rejected.
`[) Claim(s)__ is/are objectedto.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b){) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12).) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`—_c)LJ None ofthe:
`b)LJ Some**
`a)D) All
`1.) Certified copies of the priority documents have been received.
`2.1 Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20250125
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`underthefirst inventor to file provisions of the AIA. Claims 1-2, 4-6, and 23-39 are
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`currently pending. Claims 7-22 were canceled, and claims 29-39 are withdrawn by
`
`original presentation (see below).
`
`Election/Restrictions
`
`Newly submitted claims 29-39 are directed to an invention that is independent or
`
`distinct from the invention originally claimed for the following reasons: they would have
`
`been included as GroupIV if presented originally, and would have been withdrawn for
`
`the same reason asthey include the same technical features (conductive substrate,
`
`layer of conductive particles, a supporting layer, and an electrical connector) as claim1
`
`of Group | (confirmed in the Remarks on 08/14/2024).
`
`Since applicant has received an action on the merits for the originally presented
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`invention, this invention has been constructively elected byoriginal presentation for
`
`prosecution on the merits. Accordingly, claims 29-39 withdrawn from consideration as
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`being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
`
`To preservearight to petition, the reply to this action mustdistinctly and
`
`specifically point out supposed errors in the restriction requirement. Otherwise, the
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`election shall be treated as a final election without traverse. Traversal must be timely.
`
`Failure to timely traverse the requirement will result in the loss of right to petition under
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 3
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`37 CFR 1.144.
`
`If claims are subsequently added, applicant must indicate which of the
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`subsequently added claims are readable upon the elected invention.
`
`Should applicant traverse on the ground that the inventions are not patentably
`
`distinct, applicant should submit evidenceoridentify such evidence now of record
`
`showing the inventions to be obvious variants or clearly admit on the record that this is
`
`the case. In either instance,
`
`if the examiner finds one of the inventions unpatentable
`
`overthe prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
`
`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall concludewith one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor ora jointinventor
`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 outand distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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 24 recites that the first conductive coating covers moreof the electrically
`
`conductive particles than the second conductive coating, howeverthefirst coating is the
`
`coating mentioned in claim 1, which is the portion of the conductive particle already. The
`
`conductive particle is made of a ceramic coating with conductive material (thefirst
`
`coating as redefined in claim 24). The part that is unclear is how can thefirst conductive
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`coating cover more of the conductive particle whenit is already part of the conductive
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 4
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`particle.
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`It is assumed thatin line two, the “electrically conductive particles” should
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`probably be “the ceramic particles’.
`
`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 1-2, 6, 23-24, and 27-28 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Hatakeyama et al. US Publication 2017/0323698 (hereinafter
`
`Hatakeyama) in view of Dietz et al. US Publication 2004/0204658 (hereinafter
`
`Dietz) and in further view of Derry WO 2017/112394 (hereinafter Derry).
`
`Regarding claim 1, Hatakeyama discloses an electrode comprising: an
`
`electrically conductive substrate with a first major surface and a second major surface
`
`(2); a discontinuous layerof electrically conductive particles (elements 4 as per Figures
`
`1-2) wherein at least some of the electrically conductive particles are in contact with the
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`second major surface of the conductive substrate (Figures 1-2) and wherein the
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`electrically conductive particles comprise ceramic particles includes a conductive
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`coating ([0086] which details both silica and quartz); a supporting layer with a first major
`
`surface and a second major surface (5), where thefirst major surface of the supporting
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`layer is in contact with the second major surface of the electrically conductive substrate
`
`(Figures’ 1-2, elements 2, 5), and the supporting layer envelopes the electrically
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`conductive particles such that the at least one part of at least one of the electrically
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`conductive particles protrudes from the second major surface of the supporting layer
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`(Figures 1-2 at elements 4-5), but is silent on the particles being pointed for penetration
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`as well as the electrical connector.
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 5
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`Dietz teaches an electrode that includes conductive particles that comprise
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`shaped particles with at least one point for penetrating skin (Figure 11 as well as [0051]-
`
`[0052] which details that the particles can be shaped as claimed and that they can be
`
`conductive due to the material choice). Therefore, it would have been obviousto the
`
`skilled artisan before the effective filing date to utilize the pointed shaping as taught by
`
`Dietz with the device of Hatakeyama in order to abrade the outer layer of skin to aid in
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`signal acquisition.
`
`Derry teaches an electrode that includes a discontinuous conductive layer of
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`particles (page 3 lines 29-36) in electrical contact with the second major surface of the
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`electrically conductive substrate and an electrical connector (connector as per page 7
`
`lines 9-16 which electrically connected to the particles and conductive substrate
`
`mentioned in page 5 lines 1-19), and protruding from the electrically conductive
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`substrate (page 7 lines 9-16). Therefore, it would have been obviousto the skilled
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`artisan before the effectivefiling date to utilize the electrical connector and particle
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`pattern of Derry with the electrode of Hatakeyama as predictable results would have
`
`ensued (electrical connector is well-known to be used to connect an electrode to any
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`processor in order to function, and the particle pattern is to provide multiple particle
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`channels instead of a single one, increasing the viability of the results, or can afford
`
`different types of sensing for the same device).
`
`Regarding claim 2, Hatakeyama as modified by Dietz and Derry discloses that
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`the electrically conductive particles comprise non-compressive shaped particles
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`(shaping from Dietz as mentioned above) wherein at least one dimension of the shaped
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`particles is 175-1,500 micrometers ([0015] which details the sizing).
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 6
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`Regarding claim 6, Hatakeyama discloses the particles as mentioned above and
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`further details that the particles extend beyond the supporting layer by 50-1000 microns
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`([0015][0017] which details that the sizing can be similar but that the ratio of the two can
`
`by be enough that would meet the claimed range).
`
`Regarding claims 23-24, Hatakeyama discloses that the particles have a single
`
`coating (silver) as mentioned above, but are silent on additional coatings. Dietz teaches
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`a plurality of abrading particles that include coating conductive material for the electrode
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`in a plurality of coatings ([0051]).
`
`If the coatings are on top of each other as is expected
`
`as per [0051], one would inherently have to cover moreof theinitial particle than the
`
`next as the subsequent coated layers would not even contact the particle. Therefore,it
`
`would have been obviousto the skilled artisan before the effectivefiling date to utilize
`
`the additional coatings as taught by Dietz with the conductive particles of Hatakeyama
`
`as predictable results would have ensued (different metals offer different known
`
`properties such as increased biocompatibility, conductivity, and price points).
`
`Regarding claim 27, Hatakeyama discloses the electrically conductive substrate
`
`as mentioned abovebutis silent on the additional polymeric film. Derry teaches a
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`conductive layer and a polymeric film layer (the conductive substrate as per page 5
`
`lines 1-19 and the polymeric film as per page 7 lines 7-9). It would have been obvious to
`
`the skilled artisan before the effectivefiling date to utilize the polymeric film as taught by
`
`Derry with the device of Hatakeyama in orderto insulate the exposed conductive
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`substrate as is standard in the art.
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 7
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`Regarding claim 28, Hatakeyama discloses that the electrode lacks an electrolyte
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`gel (Figures 1-2, where there is no gel or electrolyte required in order for the device to
`
`function, see also whole document).
`
`Claims 4-5 and 25-26 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Hatakeyama in view of Dietz and Derry, and in further view of
`
`Dunaganetal. US Publication 2011/0130640 (hereinafter Dunagan).
`
`Regarding claims 4-5 and 25-26, Hatakeyama discloses a supporting layer that is
`
`an adhesive (abstract, the resin layer has adhesion properties), but is silent onit
`
`including a two PSA with a layer between them (stacked arrangement as detailed in
`
`claim 25). Dunagan teaches an electrode that includes a transfer tape (layer 108),
`
`wherein the transfer tape comprises a three-layer construction comprisingafirst
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`pressure sensitive adhesive layer (108a), a second pressure sensitive adhesive layer
`
`(108b), and a film layer between thefirst pressure sensitive adhesive layer and the
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`second pressure adhesive layer (108c). It would have been obvious to the skilled
`
`artisan before the effectivefiling date to utilize the tape as taught by Dunagan with the
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`device of Hatakeyama in order to allow for maximum conductivity (via 108c) while
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`ensuring strong adhesion with the surrounding PSAlayers.
`
`Response to Arguments
`
`Applicant's arguments with respect to claims 1-2 and 4-6 have been considered
`
`but are mootin view of the new ground(s) of rejection. New art has been applied above
`
`to remedy any deficiencies in the prior art of record.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 8
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`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 eventa 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-MONTHshortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`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
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`statutory period for reply expire later than SIX MONTHS from the date of this final
`
`action.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Brian M Antiskay whose telephone numberis (571)270-
`
`5179. The examiner can normally be reached M-F 10am-6pm EST.
`
`Examinerinterviews 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:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Joseph Stoklosa can be reached on 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 Centeris
`
`

`

`Application/Control Number: 17/292,555
`Art Unit: 3794
`
`Page 9
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`available to registered users. To file and manage patent submissions in Patent Center,
`
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`
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`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/BRIAN M ANTISKAY/
`Examiner, Art Unit 3794
`
`/JOSEPH A STOKLOSA/
`Supervisory Patent Examiner, Art Unit 3794
`
`