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 .
Response to Amendment
The Amendments filed March 09, 2026 have been entered. Currently, claims 1-2, 4-14 are pending in the application.
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 1-2, 4-9, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Shacham-Diamand (W.O. Application No. 2014024187 A1), and further in view of Mau (U.S. Patent No. 6811957 B1).
Regarding independent claim 1, Shacham-Diamand discloses a microelectromechanical system (10) (page 8, lines 11-12; page 18, lines 28-29 & Figs. 1A-1D), comprising:
at least one electrode (111, 112, 113) (page 9 lines 18-24), wherein the at least one electrode comprises a glassy carbon material (page 9, lines 24-26);
at least one substrate (100), wherein the at least one substrate comprises a flexible polymeric substrate (page 7, lines 30-32; page 14, lines 10-14), and wherein the at least one electrode is disposed on, coupled with or otherwise layered on the at least one substrate (page 11, lines 20-27), and wherein the microelectromechanical system is suitable for use in humans (page 2, lines 26-29).
However, Shacham-Diamand does not disclose the glassy carbon material being made from lithographically-patterned pyrolyzed carbon.
Mau, in the same field of endeavor, teaches a process for preparing a patterned layer of aligned carbon nanotubes on a substrate using a photolithographic patterning method (Col. 2, lines 11-45), wherein the substrate to which a photoresist layer is applied can be any substrate which is capable of withstanding the pyrolysis conditions for nanotube growth and is capable of supporting aligned carbon nanotube growth (Col. 3, lines 53-57; Col. 5, lines 31-38). After synthesis of the carbon nanotubes on the substrate, the photoresist material remaining on the substrate may be dissociated from the carbon nanotubes. This may be achieved by transferring the patterned carbon nanotube layer to another substrate, such as a polymer substrate capable of supporting carbon nanotube growth (Col. 6, lines 18-28).
It would have been prima facie obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to have incorporated the manufacturing method taught by Mau involving the processing steps of making the glassy carbon material from the lithographically-patterned pyrolyzed carbon, and then transferring the glassy carbon to the flexible polymer substrate disclosed in Shacham-Diamand for the purpose of allowing the creation of the electrodes on a substrate that is able to sustain and is more compatible with the high-temperature processing steps required to make the glassy carbon and then transferring the finished product to the flexible “receiver” substrate that is more compatible with the implantable microelectromechanical system.
Regarding claim 2, Shacham-Diamand/Mau combination discloses wherein
the electrode is suitable for EEG applications (Shacham-Diamand, page 21, lines 24-26).
Examiner highlights the fact that the microelectromechanical system of Shacham-Diamand is capable of detecting local field potential signals (i.e., electrical recordings which measure activity of neurons), which is suitable for EEG applications.
Regarding claims 4 and 5, Shacham-Diamand discloses the invention substantially as claimed in claim 1 discussed above.
However, it does not disclose the electrode comprising at least one microscale dimension.
Mau, in the same field of endeavor, teaches the aligned nanotubes have a uniform tubular length of 25 μm (Col. 7, lines 50-56).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the electrode of Shacham-Diamand to be at the micro length taught by Mau for the purpose of creating a microelectromechanical system that is compatible with EEG applications.
Regarding claim 6, Shacham-Diamand discloses the invention substantially as claimed in claim 5 discussed above.
However, it does not disclose the at least one dimension comprising a length, a height, a depth, a width or a combination thereof.
Mau, in the same field of endeavor, teaches the aligned nanotubes have a uniform tubular length of 25 μm (Col. 7, lines 50-56).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the electrode of Shacham-Diamand to be at the micro length taught by Mau for the purpose of creating a microelectromechanical system that is compatible with EEG applications.
Regarding claim 7, Shacham-Diamand discloses the invention substantially as claimed in claim 6 discussed above.
However, it does not disclose the at least one microscale dimension comprising a length, a height, a depth, a width or a combination thereof.
Mau, in the same field of endeavor, teaches the aligned nanotubes have a uniform tubular length of 25 μm (Col. 7, lines 50-56).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the electrode of Shacham-Diamand to be at the micro length taught by Mau for the purpose of creating a microelectromechanical system that is compatible with EEG applications.
Regarding claim 8, Shacham-Diamand discloses the invention substantially as claimed in claim 7 discussed above.
However, it does not disclose wherein the at least one dimension has an individual or combined length, height, depth, width or combination thereof of less than about 25 microns.
Mau, in the same field of endeavor, teaches the aligned nanotubes have a uniform tubular length of 25 μm. However, the length of the aligned nanotubes can be varied over a wide range (from a few to several tens of micrometers) in a controllable fashion (Col. 7, lines 50-56).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the electrode of Shacham-Diamand to be at the micro length taught by Mau for the purpose of creating a microelectromechanical system that is compatible with EEG applications.
Regarding claim 9, Shacham-Diamand discloses the invention substantially as claimed in claim 7 discussed above.
However, it does not disclose wherein the at least one dimension has an individual or combined length, height, depth, width or combination thereof of less than about 10 microns.
Mau, in the same field of endeavor, teaches the aligned nanotubes have a uniform tubular length of 25 μm. However, the length of the aligned nanotubes can be varied over a wide range (from a few to several tens of micrometers) in a controllable fashion (Col. 7, lines 50-56).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the electrode of Shacham-Diamand to be at the micro length taught by Mau for the purpose of creating a microelectromechanical system that is compatible with EEG applications.
Regarding claim 11, Shacham-Diamand/Mau combination discloses a system
that is biocompatible with a mammal (Shacham-Diamand, page 2, lines 26-29).
Regarding claim 13, Shacham-Diamand/Mau combination discloses a system
being a sensor (Shacham-Diamand, page 4, lines 15-16).
Claims 10, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shacham-Diamand (W.O. Application No. 2014024187 A1), in view of Mau (U.S. Patent No. 6811957 B1), and further in view of Nishida (U.S. Application No. 20090299166 A1).
Regarding independent claim 10, Shacham-Diamand discloses a microelectromechanical system (10) (page 8, lines 11-12; page 18, lines 28-29 & Figs. 1A-1D), comprising:
at least one electrode (111, 112, 113) (page 9 lines 18-24), wherein the at least one electrode comprises a glassy carbon material (page 9, lines 24-26);
at least one flexible polymeric substrate (100) (page 7, lines 30-32; page 14, lines 10-14), and wherein the at least one electrode is disposed on, coupled with or otherwise layered on the at least one substrate (page 11, lines 20-27), and wherein the microelectromechanical system is suitable for use in humans (page 2, lines 26-29).
However, Shacham-Diamand does not disclose the glassy carbon material being made from lithographically-patterned pyrolyzed carbon.
Mau, in the same field of endeavor, teaches a process for preparing a patterned layer of aligned carbon nanotubes on a substrate using a photolithographic patterning method (Col. 2, lines 11-45), wherein the substrate to which a photoresist layer is applied can be any substrate which is capable of withstanding the pyrolysis conditions for nanotube growth and is capable of supporting aligned carbon nanotube growth (Col. 3, lines 53-57; Col. 5, lines 31-38). After synthesis of the carbon nanotubes on the substrate, the photoresist material remaining on the substrate may be dissociated from the carbon nanotubes. This may be achieved by transferring the patterned carbon nanotube layer to another substrate, such as a polymer substrate capable of supporting carbon nanotube growth (Col. 6, lines 18-28).
It would have been prima facie obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to have incorporated the manufacturing method taught by Mau involving the processing steps of making the glassy carbon material from the lithographically-patterned pyrolyzed carbon, and then transferring the glassy carbon to the flexible polymer substrate disclosed in Shacham-Diamand for the purpose of allowing the creation of the electrodes on a substrate that is able to sustain and is more compatible with the high-temperature processing steps required to make the glassy carbon and then transferring the finished product to the flexible “receiver” substrate that is more compatible with the implantable microelectromechanical system.
However, Shacham-Diamand/Mau combination do not teach at least one
bump pad, wherein the at least one electrode is coupled with the at least one bump pad via at least one conductive metal.
Nishida, in the same field of endeavor, teaches a method of fabricating a MEMS
flexible substrate on a neural probe (100), wherein the probe includes a flexible
substrate (410) which includes metal traces (406) that are sputtered and patterned onto
the substrate in order to receive/transmit signals from the electrodes (pa. 0022), and
bond pads (414) which are formed on the substrate (pa. 0023, 0028 & Figs. 1, 4A-4C).
It would have been prima facie obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to have added bond pads to the sensor
system of Shacham-Diamand for the purpose of allowing signal communications
between electrodes and other external circuitry.
Regarding claim 12, Shacham-Diamand/Mau/Nishida combination discloses
a system that is biocompatible with a mammal (Shacham-Diamand, page 2, lines 26-
29).
Regarding claim 14, Shacham-Diamand/Mau/Nishida combination discloses
a system being a sensor (Shacham-Diamand, page 4, lines 15-16).
Response to Arguments
Applicant’s arguments, see pages 5-13, filed 03/09/2026, with respect to the 103 rejection of claim 1 under Shacham-Diamand and Madou, and claim 10 under Shacham-Diamand, Madou, and Nishida have been fully considered.
With regards to independent claims 1 and 10, Applicant argues that the Shacham-Diamand reference teaches metal being deposited by lithography without mentioning carbon with respect to this technique. Furthermore, Applicant contends that the reference also does not teach or suggest a flexible substrate. However, Examiner, respectfully, disagrees.
While the Shacham-Diamand reference does teach an alternative fabrication process in which involves patterning a metal layer onto a silicon wafer substrate via lithography (page 16, lines 16-26), this embodiment is not being relied on by the Examiner. In the rejection described above, the Shacham-Diamand is used to disclose an embodiment including at least one flexible polymeric substrate (100) (page 7, lines 30-32; page 14, lines 10-14), and at least one electrode is disposed on, coupled with or otherwise layered on the at least one substrate (page 11, lines 20-27). Therefore, the rejection using the Shacham-Diamand reference is maintained.
With regards to independent claims 1 and 10, Applicant argues that the polymeric substrate as claimed by Shacham-Diamand would not survive the processes disclosed and taught by Madou. Examiner finds this argument to be persuasive, and therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Mau (U.S. Patent No. 6811957 B1).
Conclusion
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/A.V.G./Examiner, Art Unit 3794
/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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