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 .
DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This action is in response to the papers filed on July 8, 2026. Pursuant to amendment filed July 8, 2026, claims 13-16, 29-30, 33-34, and 36-42 have been amended. Claims 1-12, 18-28, 32, and 35 have been canceled. Claim 43 is newly added.
Therefore claims 13-17, 29-31, 33-34, and 36-43 are currently examined.
Priority
The present application is a 35 U.S.C. 371 national stage filing of International Application No. PCT/US2017/039066, filed on June 23, 2017. Applicants' claim for the benefit of a prior-filed application parent provisional applications 62/354,627, filed June 24, 2016, and 62/354,629 filed June 24, 2016, under 35 U.S.C. 119(e) or under 35 U.S.C. 120,121, or 365(c).
Thus, the earliest possible priority for the instant application is June 24, 2016.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/08/2026 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn- Specification Objection
In view of the attached substitute specification removing reference to color drawings, the objections to the specification have been withdrawn.
Withdrawn- Drawings
In view of the amendments to the specification removing the reference to the color blue., the objections to the drawings have been withdrawn.
Withdrawn- Claim Rejections-35 USC§ 112(a)
In view of Applicants’ amendment to the claims removing recitation of positioning to not penetrate a layer of mitral/tufted (M/T) cells and memory storing instructions, the rejection of claim 1 under U.S.C. 112(b) has been withdrawn. Applicants’ arguments are moot in view of the withdrawn rejection.
Withdrawn Claim Rejection-35 USC§ 103
In view of Applicants amendment to the instant claims, requiring that the chemical sensor specifically comprise an electrocorticography assembly and planar electrocorticography (ECoG), the rejection under 35 U.S.C. 103 to claims 13-17, 29-34, and 36-42 over Dong et al. (Biosens Bioelectron. 2013 Nov 15:49:263-9. Epub 2013 May 29. 2013; see IDS 06/03/2021), in view of Zhuang et al. (Biosens Bioelectron. 2015 May 15:67:694-9. Epub 2014 Oct 28), and Guo et al. (Sensors and Actuators B: Chemical, Volume 225, 2016, Pages 34-41, ISSN 0925-4005) has been withdrawn. Applicants’ arguments are moot in view of the withdrawn rejection.
New Claim Rejections - 35 USC § 112(a) – new matter
Claims 13, 33-34, 36, and 14-17, 29-31, 37-43, by dependence, are newly 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 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. This is new matter rejection necessitated by amendment filed July 8, 2026.
37 CFR 1.118 (a) states that "No amendment shall introduce new matter into the disclosure of an application after the filing date of the application".
Claims 13, 33-34, and 36 are directed to a chemical sensor comprising an electrocorticography assembly and electrocorticography (ECoG) electrode array. Electrocorticography is defined as the intracranial recording of EEG using subdural grids directly on the surface of the cortex to capture cortical electrical activity from the cerebral cortex, typically requiring a craniotomy for grid implantation, see ScienceDirect definition and Keene et al. (Epileptic Disord. 2000 Mar;2(1):57-63.). A sensor receiving intracranial recordings using subdural grids directly on the surface of the cortex to capture electrical activity from the cerebral cortex constitutes new matter.
The specification describes an “electrode assembly,” “surface electrode,” and “grid electrode” surface electrode positioned on or over an olfactory bulb (instant specification [0005]; [0029-0030]; [0036]; [0039]). For example, the disclosure describes an electrode assembly including at least one electrode in physical contact with a chemical detectors, where the electrode may be present on the surface of the chemical detector. The disclosure further describes a grid electrode positioned on the surface of the olfactory bulb, recording optimized for subdural, epidural, or thinned-skull conditions, and a high density of surface electrode having specified inter-electrode spacing.
However, electrocorticography refers to recording electrical activity from the cerebral cortex. The claims recite an electrocorticography assembly or planar ECoG array configured for placement on or across an exterior outer surface of one or more olfactory bulbs and for receiving signals originating from a glomerular layer. The specification does not provide sufficient disclosure or support showing that applicant was in possession of the claimed ECoG-specific assembly at the time of filing.
The entirety of the disclosure does not provide any support for this claim element and is thus considered new matter.
MPEP §2163.06 notes:
If new matter is added to the claims, the examiner should reject the claims under 35
U.SC. 112, first paragraph - written description requirement. In re Rasmussen, 650 F2d 1212, 211 USPQ 323 (CCPA 1981).
MPEP §2163.02 teaches that:
Whenever the issue arises, the fundamental factual inquiry is whether a claim defines an invention that is clearly conveyed to those skilled in the art at the time the application was filed. If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application.
MPEP §2163.06 further notes:
When an amendment is filed in reply to an objection or rejection based on 35 U.SC. 112, first paragraph, a study of the entire application is often necessary to determine whether or not ''new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure. (Emphasis added).
Conclusion
Claims 13-17, 29-31, 33-34, and 36-43 are rejected. No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL D LEVIN whose telephone number is (571)270-0616. The examiner be reached 8:00 am to 5:00 pm, Monday through Friday.
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, Christopher Babic can be reached at (571) 272-8507. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.D.L./Examiner, Art Unit 1633
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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