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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6, 10-11, 13-19, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., (CN101912666A; hereinafter Li) in view of Nagarkar et al., (US 20180235544; hereinafter Nagarkar).
Regarding claim 1, Li (Figures 1-5) discloses a microelectrode (shown in Figure 1), comprising: a substrate (PDMS film 7); and a conductive layer (metal layer) on the substrate (7), configured to conduct an electrical signal, wherein the substrate (7) is a flexible (PDMS) substrate and comprises a cavity structure (4), the cavity structure (4) is configured to contain or release a fluid (liquid material), and hardness of the substrate (7) in a case where the cavity structure (4) contains the fluid (liquid material) is different from hardness of the substrate (7) in a case where the cavity structure (4) does not contain the fluid (liquid material), ([0016]), the substrate (PDMS film 7) comprises a first insulating laver (PDMS layer on a first side of the cavity structure 4 which is embedded in the general PDMS film 7) and a second insulating laver (PDMS layer on a second side of the cavity structure 4 which is embedded in the general PDMS film 7) formed on the first insulating layer (PDMS layer on the first side of the cavity structure 4 which is embedded in the general PDMS film 7), the cavity structure (4) is located between the first insulating layer (PDMS layer on the first side of the cavity structure 4 which is embedded in the general PDMS film 7) and the second insulating layer (PDMS layer on the second side of the cavity structure 4 which is embedded in the general PDMS film 7), and the conductive layer (metal layer) is formed on the second insulating layer (PDMS layer on the second side of the cavity structure 4 which is embedded in the general PDMS film 7), ([0016]).
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Annotated Figure 1 from the Li reference
Li fails to disclose that the fluid comprises a gas in addition to the liquid material. However, Nagarkar (Figure 1) teaches a microelectrode structure in which a fluid contained within a cavity structure (24) may be a gas or may be a liquid ([0058]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to include the fluid comprising a gas in addition to the liquid material, as taught by Nagarkar, because the modification would ensure an environment that avoids any long term damage to the electronics (Nagarkar; [0058]).
Regarding claim 2, Li (Figures 1-5) further discloses wherein the substrate (7) comprises a site region (labelled “A” in annotated Figure 1 above), a transition region (labelled “B” in annotated Figure 1 above), and a connection region (labelled “C” in annotated Figure 1 above); the conductive layer (metal layer) comprises a site part (portion of metal layer corresponding to element A), a conductive part (portion of metal layer corresponding to element B), and a connection part (portion of metal layer corresponding to element C), the site part (portion of metal layer corresponding to element A) is configured to collect and/or output the electrical signal, the connection part (portion of metal layer corresponding to element C) is configured to input and/or output the electrical signal, and the conductive part (portion of metal layer corresponding to element B) is configured to transmit the electrical signal between the site part (portion of metal layer corresponding to element A) and the connection part (portion of metal layer corresponding to element C); and the site part (portion of metal layer corresponding to element B) is in the site region (A), the conductive part (portion of metal layer corresponding to element B) is in the transition region (B), and the connection part (portion of metal layer corresponding to element C) is in the connection region (C), ([0006]-[0007], [0016]).
Regarding claim 3, Li (Figures 1-5) further discloses wherein the cavity structure (4) is in the site region (A), the transition region (B), and the connection region (C), ([0006]-[0007], [0016]).
Regarding claim 4, Li (Figures 1-5) further discloses wherein one end of the cavity structure (4) is an open end, another end of the cavity structure (4) is a closed end, the open end is in the connection region (C), and the closed end is in the site region (A), ([0006]-[0007], [0016]).
Regarding claim 5, Li (Figures 1-5) further discloses wherein the cavity structure (4) comprises a first cavity (top and bottom portions in Figure 1) and a second cavity (portion 6), and the first cavity and the second cavity are communicated with each other; the first cavity (top and bottom portions in Figure 1) has a cuboid shape, and is in the transition region (B), the connection region (C), and the site region (A); and the second cavity (portion 6) is in the site region (A), and the second cavity (portion 6) has a tip shape at the closed end ([0006]-[0007], [0016]).
Regarding claim 6, Li (Figures 1-5) further discloses wherein the tip shape comprises a triangular prism shape, a tapered shape, or an inverted trapezoidal shape ([0006]-[0007], [0016]: the portion 6 ends in a portion that tapers from the tip into the cavity).
Regarding claim 10, Li/Nagarkar teaches wherein the fluid comprises air, or single component gas (Nagarkar; [0058]).
Regarding claim 11, Li (Figures 1-5) further discloses wherein a material of the substrate (7) comprises a polymer, and the polymer comprises polyimide, parylene, or photo-sensitive epoxy resin photoresist ([0006]-[0007], [0016]).
Regarding claim 13, Li (Figures 1-5) further discloses wherein the site part (portion of metal layer corresponding to element A) comprises a plurality of electrode points, the conductive part (portion of metal layer corresponding to element B) comprises a plurality of connection lines, and the connection part (portion of metal layer corresponding to element C) comprises a plurality of connection points, the plurality of electrode points, the plurality of connection lines, and the plurality of connection points are in one-to-one correspondence, one end of a connection line is electrically connected to a corresponding electrode point, and other end of the connection line is electrically connected to a corresponding connection point ([0006]-[0007], [0016]).
Regarding claim 14, Li (Figures 1-5) further discloses a protective layer (insulating layer), wherein the protective layer covers the conductive part (portion of metal layer corresponding to element C) and exposes the site part (portion of metal layer corresponding to element A) and the connection part (portion of metal layer corresponding to element B), ([0006]-[0007], [0013], [0016], claim 8).
Regarding claim 15, Li (Figures 1-5) further discloses an occluding device (device used to cure the curable fluid in the cavity structure 4) for the microelectrode according to claim 1, wherein the occluding device (device used to cure the curable fluid in the cavity structure 4) is configured to close the cavity structure (4) after the cavity structure (4) is filled with the fluid by curing the curable fluid in the cavity structure (4) so that the cavity structure (4) contains the fluid, and to open the cavity structure (4) through the dissolution/degradation process of the fluid so that the fluid in the cavity structure (4) flows out ([0006]-[0007], [0016]).
Regarding claim 16, Li (Figures 1-5) further discloses a microelectrode system, comprising the microelectrode according to claim 1 and an occluding device (device used to cure the curable fluid in the cavity structure 4) for the microelectrode, wherein the occluding device (device used to cure the curable fluid in the cavity structure 4) is configured to close the cavity structure (4) after the cavity structure (4) is filled with the fluid by curing the curable fluid in the cavity structure (4) so that the cavity structure (4) contains the fluid, and to open the cavity structure (4) through the dissolution/degradation process of the fluid so that the fluid in the cavity structure flows out ([0006]-[0007], [0016]).
Regarding claim 17, Li (Figures 1-5) further discloses a fluid control device (vacuumizing device used to vacuumize the structure during manufacture), wherein the fluid control device is configured to inject the fluid into the cavity structure (4) or suck the fluid out of the cavity structure ([0006]-[0007], [0016]).
Regarding claim 18, Li (Figures 1-5) discloses a method for manufacturing the microelectrode according to claim 1, comprising: providing a silicon wafer (silicon substrate); forming a first (lower) insulating layer on the silicon wafer; forming a filling part (photoresist) on the first (lower) insulating layer, wherein a shape and size of the filling part (photoresist) are same as a shape and size of the cavity structure (4); forming a second insulating layer on the first insulating layer, wherein the second insulating layer covers the filling part (photoresist); forming the conductive layer (metal layer) on the second insulating layer; forming a third insulating layer on the second insulating layer, wherein the third insulating layer covers a conductive part of the conductive layer (metal layer) and exposes a site part (portion of metal layer corresponding to element A) and a connection part (portion of metal layer corresponding to element B) of the conductive layer (metal layer); dissolving the filling part (photoresist); and separating the first insulating layer from the silicon wafer so as to form the microelectrode ([0006]-[0007], [0016]).
Regarding claim 19, Li (Figures 1-5) further discloses wherein materials of the first insulating layer, the second insulating layer, and the third insulating layer are a same polymer material (PDMS), and a material of the filling part is photoresist ([0006]-[0007], [0016]).
Regarding claim 21, Li discloses a method for using the microelectrode according to claim 1, comprising: filling the fluid into the cavity structure (4) of the microelectrode and closing the cavity structure (4) by curing the fluid in the cavity structure (4); implanting the microelectrode into biological tissue; and opening the cavity structure (4) through the dissolution/degradation process of the fluid and releasing the fluid in the cavity structure (4), ([0006]-[0007], [0016]).
Claim(s) 7-9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claims 1 and 5 above.
Regarding claim 7, Li discloses the microelectrode according to claim 5, but fails to disclose wherein a width of the first cavity ranges from 30 microns to 90 microns. However, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to include a width of the first cavity ranging from 30 microns to 90 microns 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. MPEP 2144.05(I).
Regarding claim 8, Li discloses the microelectrode according to claim 5, but fails to disclose wherein a height of the first cavity ranges from 10 microns to 90 microns. However, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to include a height of the first cavity ranging from 10 microns to 90 microns 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. MPEP 2144.05(I).
Regarding claim 9, Li discloses the microelectrode according to claim 1, but fails to disclose wherein a length of the cavity structure is equal to a length of the substrate. However, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to include a length of the cavity structure equal to a length of the substrate 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. MPEP 2144.05(I).
Regarding claim 12, Li (Figures 1-5) further discloses wherein the substrate (7) comprises an insulating wall, the insulating wall surrounds the cavity structure ([0006]-[0007], [0016]: the wall structure of the substrate 7 surrounding cavity structure 4), but Li fails to disclose a thickness of the insulating wall ranges from 1 micron to 6 microns. However, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to include a thickness of the insulating wall ranging from 1 micron to 6 microns 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. MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments, filed 12/29/2025, have been fully considered.
In response to Applicant’s argument that Li fails to disclose the newly amended limitation “the substrate comprises a first insulating laver and a second insulating laver formed on the first insulating layer, the cavity structure is located between the first insulating layer and the second insulating layer, and the conductive layer is formed on the second insulating layer” in claim 1, Examiner respectfully disagrees. Figures 1-5 and paragraphs [0006]-[0007] & [0016] of Li disclose that the substrate (PDMS film 7) comprises a first insulating laver (PDMS layer on a first side of the cavity structure 4 which is embedded in the general PDMS film 7) and a second insulating laver (PDMS layer on a second side of the cavity structure 4 which is embedded in the general PDMS film 7) formed on the first insulating layer (PDMS layer on the first side of the cavity structure 4 which is embedded in the general PDMS film 7), the cavity structure (4) is located between the first insulating layer (PDMS layer on the first side of the cavity structure 4 which is embedded in the general PDMS film 7) and the second insulating layer (PDMS layer on the second side of the cavity structure 4 which is embedded in the general PDMS film 7), and the conductive layer (metal layer) is formed on the second insulating layer (PDMS layer on the second side of the cavity structure 4 which is embedded in the general PDMS film 7), ([0016]). Therefore, Examiner maintains that Li discloses this newly amended limitation.
However, Applicant’s argument that Li fails to disclose the newly amended limitation “the fluid comprises a gas” in claim 1 is found to be persuasive. Therefore, the rejection of claim 1 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art reference Nagarkar, which teaches a microelectrode comprising a cavity structure (24) having a gas as the fluid within the cavity structure (24), ([0058]). Therefore, in combination with Li, the modified device teaches the invention as claimed at least in amended claim 1.
Conclusion
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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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
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