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 amendment filed May 19th, 2026 has been entered. Claims 1-12 and 14-21 remain pending in the application. Applicant’s amendments to the claims have overcome the objections previously set forth in the Non-Final Office Action mailed February 24th, 2026.
Response to Arguments
Applicant's arguments filed May 19th, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments, see Pages 8-9, regarding the claimed range for L3 as a functional design parameter, the examiner respectfully disagrees. The applicant has pointed to Paragraph [0354] of the disclosure, which recites “Using proximal portions 125, distal portions 135 and middle portions 130 having similar length, notably comprised between 30 % and 40% of the total length Lt of the arm 25 allows for a good compromise between a good mechanical resistance and a good ability of the different subsets 62 to be implanted in different areas of the biological tissue”. This range discloses a narrow and specific range that results in a desired effect. While the broad range disclosed in claim 1 encompasses this specified range, the broadness of the range as claimed in claim 1 does not encompass the disclosure as references by the applicant. The specifics of the disclosure provide that the proximal portion, distal portion and middle portion has a similar length which is not encompassed in the recited claim language. Therefore as described in the previous rejection, the broad range of 10-60% of the total length does not provide criticality as it a broad range, and the combination of the different lengths of the set of arms of the implant is what provides the desired effect of “a good mechanical resistance and a good ability of the different subsets 62 to be implanted in different areas of the biological tissue”. The examiner suggests incorporating all of these specific dimensions for the proximal, distal, and middle portions into the claim to show criticality of these dimensions.
Further applicant’s arguments, see Pages 9-10, that Kipke does not disclose the hierarchal structure and the sheath as described in claim 1. The examiner respectfully disagrees, as the hierarchal structure is broadly claimed as the “distal”, “middle” and “proximal” portions are claimed very broadly and therefore the examiner can interpret them as broadly as they are claimed. In doing so, the examiner can interpret broadly what the different sections of the device as shown in Kipke are considered as “distal”, “middle” and “proximal”. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding applicant’s arguments that the backing 170 as described by Kipke cannot read on the sheath described by the applicant’s disclosure, the examiner respectfully disagrees. The sheath as claimed is broadly claimed as an insulating material comprising a proximal, middle, and distal end. Therefore since Kipke discloses an insulating material comprising a proximal, middle, and distal end, the examiner is of the position that Kipke reads on the applicant’s claims.
Further applicant argues, Page 10, that Kipke fails to disclose “a set of arms” as claimed, the examiner respectfully disagrees. As can be seen in the modified Figures 1, the set of arms includes the modules 110, while the modules include planar, tile-like units, there is no limit within the claim for the shape or structure wherein these modules 110 do not read on the claim. Kipke further discloses the flexibility that is provided through the use of the modular flexible substrate, Paragraphs [0015] and [0026]-[0027].
Further the applicant argues that Kipke fails to disclose the organization of wires into bundles and subsets as claimed, see Page 10-11. However the examiner respectfully disagrees, as described above the backing layer of Kipke reads on the sheath described by applicant’s claim 1. Further the hierarchal structure is shown in modified Figure 7B as the bundle of conductive wires decreases into a subset. Therefore the disclosure of Kipke reads on the disclosed structure described in claim 1.
Lastly, the applicant has argued that the combination of the teaching of Kipke in view of Yoon is inappropriate as the devices solve different problems with incompatible solutions, however the examiner respectfully disagrees. While Kipke may disclose wherein the electrode array may be placed on the outer surface of the brain, the examiner is of the position that the insertion device made of biodegradable material would be beneficial for the purposes of reducing the immune response when the device is implanted (Yoon, Paragraphs [0029]-[0028]). Therefore in applying the device to the patient’s brain surface, the immune response would be reduced. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Therefore the applicant’s arguments are not found to be persuasive. Claims 1, 2, 4-7, 9-14, 16, 18, and 19-20 remain rejected under 35 U.S.C. 103 as being unpatentable over Kipke et al. (US 20130144365) herein referred to as “Kipke” further in view of Yoon et al. (US 20140288458) herein referred to as “Yoon”, Claims 3, 17, and 21 remain rejected under 35 U.S.C. 103 as being unpatentable over Kipke in view of Yoon further in view of Harding et al. (US 10,265,514) herein referred to as “Harding”, Claim 8 remains rejected under 35 U.S.C. 103 as being unpatentable over Kipke in view of Yoon further in view of Lieber et al. (US 20160302682) herein referred to as “Lieber”, and Claim 15 remains rejected under 35 U.S.C. 103 as being unpatentable over Kipke in view of Yoon further in view of Negi (US 20170007813) herein referred to as “Negi”.
Claim Objections
Claim 1 and 6 are objected to because of the following informalities:
Claim 1, line 20, recites “wherein the third portion has a third length L3, the third length L3 being comprised” should read -- wherein the third portion has a third length (L3), the third length (L3) being comprised --;
Claim 1, line 21, recites “between 10 % and 60 % of the total length Lt of the implant” should read -- between 10% and 60% of the total length (Lt) of the implant --;
Claim 6, line 3 recites “sheath are comprised between 30 percent and 40 percent of a total length of the” should read -- sheath are comprised between 30%% --.
Appropriate correction is required.
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.
Claims 1, 2, 4-7, 9-14, 16, 18, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kipke et al. (US 20130144365) herein referred to as “Kipke” further in view of Yoon et al. (US 20140288458) herein referred to as “Yoon”.
Regarding claim 1, Kipke discloses an implant (neural device 100, implanted on the outer surface of the brain, Paragraphs [0003] and [0015], Figure 1),
adapted to be implanted at least partially in a biological tissue of an animal (the neural device is implanted in the brain, Paragraph [0003] and [0024]),
comprising an implant body (implant body 100, Figure 1) and a set of electrically conductive wires (set of electrically conductive wires 120, Paragraph [0015], Figure 1),
each conductive wire comprising a first portion electrically connected to the implant body (first portion 120, connected to implant body 110, see modified Figure 1 and modified Figure 7B below),
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a second portion and a third portion configured to form an electrical connection to the biological tissue (see modified Figure 7B below),
the second portion being interposed between the first portion and the third portion (see modified Figure 7B below),
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wherein the implant comprises a set of arms wherein each arm comprises an electrically insulating sheath (set of arms are each of the electrode modules 110, Figure 1, the modular flexible substrate may be supported by a backing 170 of flexible material (i.e., insulating sheath), Paragraph [0015], Figure 1) and a bundle of said electrically conductive wires (bundle of electrically conductive wire, see modified Figure 7B below),
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each bundle comprising at least two subsets of electrically conductive wires (see modified Figure 7B below),
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each subset comprising at least two electrically conductive wires (each subset comprises at least two electrically conductive wires, Figure 7B),
each sheath having a single proximal portion (see modified Figure 7B below), a set of middle portions (see modified Figure 7B below) and a set of distal portions (see modified Figure 7B below),
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each middle portion corresponding to a subset of electrically conductive wires (each middle portion corresponds to a subset of electrically conductive wires, see modified Figure 7B below),
each distal portion corresponding to a single conductive wire (each distal portion corresponds to a single conductive wire, see modified Figure 7B below),
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the single proximal portion of each sheath extending from the implant body and encasing the first portion of each conductive wire of the bundle (single proximal portion of sheath extends from the implant body 100, Figure 1),
each middle portion of the sheath extending from the proximal portion and encasing the second portion of each conductive wire of the corresponding subset (each middle portion of the sheath extends from the proximal portion and encases the second portion of each conductive wire, see modified Figure 1 below),
and each distal portion of the sheath extending from a middle portion and encasing the third portion of a single conductive wire of the bundle (each distal portion extends from a middle portion encasing the third portion of a single conductive wire of the bundle, see modified Figure 1 below).
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However Kipke does not explicitly disclose wherein the third portion has a third length L3, the third length L3 being comprised between 10% and 60% of the total length Lt of the implant. It would have been an obvious matter of design choice to include wherein the third portion has a third length L3, the third length L3 being comprised between 10% and 60% of the total length Lt of the implant, as the applicant has placed no criticality on the claimed dimension (broad range, applicant’s specification Page 12, lines 23-26) and since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Further Kipke does not explicitly disclose wherein the implant comprises at each distal portion an insertion device made of biodegradable material.
Yoon discloses a neural probe for in vivo communication with biological tissue including stimulating neurons and/or recording neural electrical activity (Abstract) wherein the implant comprises at each distal portion an insertion device made of biodegradable material (biodegradable coating 18 may provide the necessary mechanical stiffness or integrity for insertion, Figures 5-6, Paragraph [0028]).
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 Kipke to incorporate the teachings of Yoon by including wherein the implant comprises at each distal portion an insertion device made of biodegradable material. The motivation to do so being to allow for the biodegradable material to dissolve quickly once inserted into the surrounding tissue to reduce immune system responses (Yoon, Paragraphs [0028-0029]).
Regarding claim 2, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein each arm extends from the implant body along a main direction (each arm extends from the implant on a main direction, see modified Figure 1), the main directions of the arms being coplanar (main directions are coplanar, Figure 1).
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Regarding claim 4, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein the implant body comprises a main portion and an attachment portion (main portion and attachment portion, see modified Figure 1 below),
the attachment portion extending from the main portion (attachment portion extends from the main portion, see modified Figure 1 below),
each arm extending from the attachment portion (each arm extends from the attachment portion, see modified Figure 1 below).
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However, Kipke in view of Yoon does not explicitly disclose the attachment portion being shaped as a circular sector. However, it would have been an obvious matter of design choice to make the different portions of the attachment portion to be shaped as a circular sector, as the applicant has placed no criticality on the shape (the attachment portion is for example, shaped as a circular sector, Page 21, line 5, applicant’s specification). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 5, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein each arm comprises at least three subsets of conductive wires, each subset comprising at least three conductive wires (see modified Figure 7B below).
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Regarding claim 6, Kipke in view of Yoon discloses the implant according to claim 1.
However, Kipke in view of Yoon does not explicitly disclose wherein the lengths of each proximal, middle and distal portion are each comprised between 30 percent to 40 percent of a total length of the arm. However it would be obvious to one having ordinary skill in the art before the effective filing date to have modified Kipke to include wherein a length of the proximal portion, a length of the middle portion and a length of the distal portion of each sheath are each comprised between 30 percent and 40 percent of a total length of the arm as applicant appears to have placed no criticality on the claimed range (Page 11 and Page 12) and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. (MPEP 2144.05(II)(B)).
Regarding claim 7, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein: each conductive wire of at least one subset is electrically connected to at least one other conductive wires of the subset, and/or the distal portion of at least one sheath is linked to a distal portion of at least one other sheath of the same subset by a linking portion of the sheath, the linking portion being fixed to both distal portions linked by the linking portion (distal portions of the sheaths are linked together by a linking portion, see modified Figure 1 below); and/or a face of at least one conductive wire or of at least one sheath is nanostructured.
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Regarding claim 9, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein the implant comprises an electrical connector configured to be electrically connected to an apparatus distinct from the implant body (the conductive interconnect through conductive traces 420 arranged to extend between the modular electrode array and the electronic subsystem 440, Figure 4),
the implant body comprising electrical conductors configured to connect each conductive wire to the electrical connector (implant body comprises electrical interconnects 120 which are connected to the conductive traces 420 extending between the modular electrode array and the electronic subsystem 440, Figure 4).
Regarding claim 10, Kipke in view of Yoon discloses the implant according to claim 9.
Kipke further discloses wherein the implant comprises an extension piece (extension piece, see modified Figure 4 below) connecting the implant body to a transfer module of the implant (extension piece connects the implant body to a transfer module 440, Figure 4), the transfer module being able to exchange data with the apparatus distinct from the implant body(the electronic subsystem 440 exchanges data with the recording system 460, Figure 4, Paragraph [0023]) the extension piece comprising a substrate (extension piece comprises substrate 470, Paragraph [0021]) and conductive lines supported by the substrate (conductive lines 420 and interconnects are supported by the substrate 470, Figure 4),
the substrate comprising a first extreme portion (see modified Figure 4 below),
a second extreme portion and an intermediate portion interposed between the first extreme portion and the second extreme portion (see modified Figure 4 below),
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the extension piece being connected to the electrical connector at the first extreme portion (extension piece is connected to the electrical connector at the first extreme portion, Figure 4),
each conductive line being configured to carry an electrical current between the first extreme portion and the second extreme portion (conductive lines carry an electrical current between the first and second extreme portions, Figure 4, Paragraph [0021]),
a thickness of the intermediate portion being inferior or equal to the thickness of the first extreme portion and inferior or equal to the thickness of the second extreme portion (thickness of intermediate portion is equal to the thickness of first and second extreme portions, Figure 4).
Regarding claim 11, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein the implant body is integral with the arms (implant body 100 is integral with the arms 170, see Figure 1).
Regarding claim 12, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses wherein at least one conductive wire of one arm is electrically connected, through the implant body to a conductive wire of another arm (all conductive wires are electrically connected through the conductive interconnect 120, see Figure 1 and Figure 7A-7B).
Regarding claim 14, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses a method for fabricating an implant according to claim 1 (method 900 of manufacturing a neural device, Paragraph [0029], Figure 9),
wherein each sheath is made of an electrically insulating first material (attaching a backing to the modular flexible substrate, Paragraph [0031], wherein the backing 170 is made from a flexible material, such as silicone or another flexible polymer (i.e., seen as electrically insulating materials), Paragraph [0015]),
the method comprising: a step for fabricating a first layer made of the electrically insulating first material (attaching a backing to the modular flexible substrate, Paragraph [0031]),
a step for depositing, onto the first layer, at least one second layer of an electrically conductive second material to form the electrically conductive wires (conductive interconnect is formed and coupled to the electrodes at 915, Paragraph [0032], see Figure 9), and,
a step for depositing, onto the first and second layers a third layer of the electrically insulating first material so as to form each sheath (after the first and second portion interconnect molds are clamped together, the insulation material (i.e., silicone is injected into the interconnect mold and cured in an oven, thereby simultaneously forming the insulation shape and adhering the insulation around the coiled interconnects, Paragraph [0033]).
However Kipke does not explicitly disclose a step of fixing an insertion device onto each distal portion.
Yoon discloses a step of fixing an insertion device onto a distal portion of a probe (the coating 18 can be applied over the desired portions of the shank 12 and/or tip 16 by dip-coating, soft-lithography, laser machining or other suitable methods, Paragraph [0028]).
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 Kipke to incorporate the teachings of Yoon by including a step of fixing an insertion device onto each distal portion. The motivation to do so being to apply a biodegradable material to the probe that dissolves quickly once inserted into the surrounding tissue to reduce immune system responses and further make the structure more rigid overall (Yoon, Paragraphs [0028-0029]).
Regarding claim 16, Kipke in view of Yoon discloses the implant according to claim 1.
Kipke further discloses a method for implanting an implant, a step of implanting, in a biological tissue of an animal, at least one implant according to claim 1 (at least a portion of the electrode modules may be designed for conform closely with brain surfaces of gyrated brain, (i.e., implant in the tissue of the animal), Paragraph [0026] and [0024]).
However Kipke does not explicitly disclose wherein the step of implanting comprises inserting at least each distal portion of the implant into biological tissue using the insertion device at each distal portion.
Yoon discloses wherein the step of implanting comprises inserting at least each distal portion of the implant into biological tissue using the insertion device at each distal portion (the biodegradable coating 18 may provide the necessary mechanical stiffness or integrity for insertion, Paragraph [0028]).
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 Kipke to incorporate the teachings of Yoon by including wherein the step of implanting comprises inserting at least each distal portion of the implant into biological tissue using the insertion device at each distal portion. The motivation to do so being to provide the necessary mechanical stiffness or integrity for insertion (Yoon, Paragraphs [0028-0029]).
Regarding claim 18, Kipke in view of Yoon discloses the implant according to claim 7.
Kipke further discloses wherein each conductive wire of at least one subset is electrically connected to at least one other conductive wires of the subset by at least one electrical conductor linking the third portions of the conductive wires (each conductive wire of at least one subset is electrically connected to at least one other conductive wire of the subset by at least one electrical conductor linking the third portions of the conductive wires through the connector (first portion of the implant is a connector that links all conductive wires), Figure 7B).
Regarding claim 19, Kipke in view of Yoon discloses the implant according to claim 1.
However Kipke does not explicitly disclose wherein the biodegradable material of the insertion device is selected between polylactic coglycolic acid (PLGA), biosoluble polyethylene glycol, Poly Capra Lactone, cellulose, silk, or Chitosan based compounds.
Yoon discloses wherein the biodegradable material of the insertion device is selected between polylactic coglycolic acid (PLGA), biosoluble polyethylene glycol, Poly Capra Lactone, cellulose, silk, or Chitosan based compounds (the biodegradable coating 18 is Silk-I protein polymer, other possible coating materials include poly-lactic-co-glycolic acid (PLGA), Chitosan, collage, or any other biodegradable material, Paragraph [0028]).
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 Kipke to incorporate the teachings of Yoon by including wherein the biodegradable material of the insertion device is selected between polylactic coglycolic acid (PLGA), biosoluble polyethylene glycol, Poly Capra Lactone, cellulose, silk, or Chitosan based compounds. The motivation to do so being to provide a biodegradable material to reduce immune response upon insertion (Yoon, Paragraphs [0028-0029]).
Regarding claim 20, Kipke in view of Yoon discloses the implant according to claim 1.
However Kipke does not explicitly disclose wherein the insertion device is arrow-shaped.
Yoon discloses wherein the insertion device is arrow-shaped (coating 18 is arrow-shaped, see Figures 5-6).
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 Kipke to incorporate the teachings of Yoon by including wherein the insertion device is arrow-shaped. The motivation to do so being to provide the necessary mechanical properties for easy insertion (Yoon, Paragraphs [0028-0029])
Claims 3, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kipke in view of Yoon further in view of Harding et al. (US 10,265,514) herein referred to as “Harding”.
Regarding claim 3, Kipke in view of Yoon discloses the implant according to claim 2.
Kipke discloses wherein an angle between the main directions of a pair of successive arms being notably equal for each pair of successive arms (angle between arms is equal, see Figure 1), however Kipke in view of Yoon does not explicitly disclose wherein each arm extends radially from the implant body.
Harding discloses an implantable sensing and stimulation device comprising a plurality of flexible arms extending from a central hub (Abstract), wherein each arm extends radially from the implant body (an implanted system 100/600 is able to provide direct therapy to targeted areas of the patient, Col. 10, lines 12-13, see modified Figures 1 and 6 below)
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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 Kipke to incorporate
the teachings of Harding by including wherein each arm extends radially from the implant body. The motivation to do so being to facilitate an even spacing between the flexible arms around the central hub for sensing and stimulating at different positions around the hub (Harding, Col. 14 lines 10-62).
Regarding claim 17, Kipke in view of Yoon and Harding discloses the implant according to claim 3.
However Kipke in view of Yoon does not explicitly disclose wherein an angle between the main directions of a pair of successive arms is equal for each pair of successive arms.
Harding discloses wherein an angle between the main directions of a pair of successive arms is equal for each pair of successive arms (the at least eight flexible arms extending radially outward from a central hub, Col. 14, lines 11-12, the at least eight flexible arms are arranged in a star configuration in which the arms extend radially outward from the central hub at evenly spaced positions, Col. 14, lines 16-19, see modified Figures 1 and 6 below).
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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 Kipke in view of Yoon to incorporate the teachings of Harding by including wherein an angle between the main directions of a pair of successive arms being notably equal for each pair of successive arms. The motivation to do so being to facilitate an even spacing between the flexible arms around the central hub for sensing and stimulating at different positions around the hub (Harding, Col. 14 lines 10-62).
Regarding claim 21, Kipke in view of Yoon and Harding discloses the implant according to claim 3.
However Kipke in view of Yoon and Harding does not explicitly disclose wherein the proximal portion has a width being comprised between 5 μm and 10 cm and a thickness being comprised between 500 nm and 300 μm, the middle portion has a width being comprised between 5 μm and 1 cm and a thickness being comprised between 500 nm and 300 μm, the distal portion has a width being comprised between 200 nm et 30 μm and a thickness being comprised between 200 nm and 600 μm. It would have been an obvious matter of design choice to include disclose wherein the proximal portion has a width being comprised between 5μm et 10cm and a thickness being comprised between 500 nm and 300 μm, the middle portion has a width being comprised between 5 pm and 1 cm and a thickness being comprised between 500 nm and 300μm, the distal portion has a width being comprised between 200 nm and 30 μm and a thickness being comprised between 200 nm and 600 μm, as the applicant has placed no criticality on the claimed dimensions (broad range, applicant’s specification Pages 16-18) and since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kipke in view of Yoon further in view of Lieber et al. (US 20160302682) herein referred to as “Lieber”.
Regarding claim 8, Kipke in view of Yoon discloses the implant according to claim 1.
However, Kipke in view of Yoon does not explicitly disclose wherein each conductive wire comprises a metallic film having a thickness of 1 nanometers to 3000 nanometers.
Lieber discloses the use of nanoscale wires in probes inserted into biological tissue (Paragraph [0005]-[0007]) wherein the thickness of a metal layer may be from 1 nanometer to 3000 nanometers (the thickness of a metal layer may be less than 1 micrometer, less than about 700 nm, less than about 600 nm, less than about 500 nm, less than about 300 nm, less than about 200 nm, less than about 100 nm, less than about 80 nm, less than about 50 nm, less than about 30 nm, less than about 10 nm, less than about 5 nm, less than about 2 nm, etc., Paragraph [0059]).
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 Kipke in view of Yoon to incorporate the teachings of Lieber by including wherein each conductive wire comprises a metallic film having a thickness of 1 nanometer to 3000 nanometers. The motivation to do so being to control the amount and type of stress the device can withstand by controlling the thickness of the layers (Lieber, Paragraph [0058]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kipke in view of Yoon further in view of Negi (US 20170007813) herein referred to as “Negi”.
Regarding claim 15, Kipke in view of Yoon discloses the method according to claim 14.
However Kipke in view of Yoon does not explicitly disclose wherein the method further comprises a step for etching away part of the third layer so as to define, for each conductive wire, an opening for electrically connecting the conductive wire to a cortex, the part of the third layer being etched away using an ion beam.
Negi discloses an implantable electrode array (Paragraph [0042]), wherein the conductive traces are formed using ion beam etching (ion beam can be used to etch away the metal to form conductive traces, Paragraphs [0063]-[0066]), for each conductive wire, an opening for electrically connecting the conductive wire to a cortex (the multi-site electrode arrays provide recordings sites in a three dimensional region of cortex, Paragraph [0072]).
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 Kipke in view of Yoon to incorporate the teachings of Negi by including wherein the conductive layer is etched away using an ion beam. The motivation to do so being to use a method that etches in controllable patterns at the nanometer scale for more precise and accurate traces (Negi, Paragraphs [0064] and [0066]).
Conclusion
THIS ACTION IS MADE FINAL. 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tolosa et al. (US 2020/0085375) discloses a biocompatible multi-electrode device capable of being implanted in sensitive tissue (Abstract). Lauritzen et al. (US 2014/0222103) discloses a visual prosthesis for implantation in the brain (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dana Stumpfoll whose telephone number is (703)756-4669. The examiner can normally be reached 9-5 pm (CT), M-F.
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, Joanne Rodden can be reached on (303) 297-4276. 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 Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.S./Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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