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 .
Election/Restrictions
Applicant's election with traverse of Group I, Species A1-B1, claims 20-21, 25-29, 31 in the reply filed on 7/14/25 is acknowledged. The traversal is on the ground(s) that there is no serious burden since the Groups are related. However, the fact that the claimed groups may be related does not obviate the need and burden to search for the different claim limitations in each Group. Regarding the species, Applicant likewise asserts there is no serious burden since these all fall under a large umbrella of power and data transmission methods. This is also not found persuasive because these are different alternative modalities which require different references. For example, a reference with RF transmission would not read on a claim for light transmission. Nevertheless, should allowable subject matter be identified, the groups/species may be considered for rejoinder.
The requirement is still deemed proper and is therefore made FINAL.
Claims 22-24, 30, 32-39 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/14/25.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor 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 out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-21, 25-29, 31 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 20: At line 2, the claim recites “at least one electrode”, but at lines 4 and 9, the claim recites “the electrodes”. It is not clear if the claim requires a minimum of one electrode or a minimum of a plurality of electrodes. Examiner suggests referring back to “the at least one electrode” at lines 4 and 9 for consistency.
Claim 25: Parent claim 20 requires at least “one” electrode, so it is not clear to recite selectively activating “the electrodes”, since multiple electrodes would be required. Assuming claim 20 is changed to more clearly recite “at least one electrode” as noted above, then claim 25 also needs further correction. Examiner would suggest adding at line 1 of claim 25, “wherein the implantable device comprises at least two electrodes”, or similar correction.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 20, 21, 26, 31 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Allen (US 2022/0176123).
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Regarding claim 20, Allen discloses the same invention as claimed (Figures 2A and 11A shown above for example), including an implantable system for treatment of an eye disease (abstract) comprising: an implantable device having at least one electrode thereon (Figures 1, 2A), a control circuit (Figure 11A: 81), and an implantable transducer for receiving a power signal (Figure 11A: see RF between implanted and wearable units; Paragraphs 55, 259), the implantable device sized and shaped for placement in, on or adjacent to the eye such that issuance of an electric signal with the electrodes has an effect on cells of the eye (abstract; Figure 2A); and an external device having an external transducer for issuing a power signal to the implantable transducer (Figure 11A: wearable unit); wherein the control circuit of the implantable device is configured to receive power from the implantable transducer and route electrical signals to the electrodes for treatment of a disease of the eye (Figure 11A: see 80 and 81); and wherein the power signal generated by the external device is unrelated to any visual appearance of an object (Paragraph 12).
Regarding claim 21, Allen discloses RF as recited (Paragraphs 55, 259).
Regarding claim 26, Allen discloses both data and power as recited (Figure 11B).
Regarding claim 31, Allen discloses a programmable output pattern as recited (Paragraphs 13-22).
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.
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) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Allen (US 2022/0176123) in view of Franke (US 2016/0121118).
Regarding claim 25, Allen does not disclose first and second transducing units to selectively activate electrodes as recited. However, Franke teaches first and second transducing units that are separately activatable so as to selectively activate electrodes depending on which transducing unit is activated (Paragraph 107), in order to control stimulation by transmission frequency. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Allen as taught by Franke to include selective activation via transducing units as recited, in order to control stimulation by transmission frequency.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Allen (US 2022/0176123) in view of Chow (US 2003/0014089).
Regarding claim 27, Allen discloses macular degeneration as recited (Paragraph 24). Allen does not disclose retinal tacks as recited. However, Chow teaches treating macular degeneration (Paragraph 13), where the stimulation is unrelated to any visual appearance of an object (Paragraph 65, end), may also be accomplished with a retinal stimulation device secured via retinal tacks (Paragraphs 78, 86), in order to securely anchor the retinal device to the retina of the patient. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Allen as taught by Chow to include retinal tacks as recited, in order to securely anchor the retinal device to the retina of the patient.
Allowable Subject Matter
Claim 28-29 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chow (US 2003/0014089) shows separate stimulation devices may be arranged symmetrically around and not blocking the macula (Paragraphs 15, 84-85), and that the macular diameter is typically 3-5mm (Paragraph 52).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eugene T Wu whose telephone number is (571)270-5053. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Layno can be reached at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eugene T Wu/Primary Examiner, Art Unit 3796