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 .
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima [JP2015-181777, of record, previously cited] in view of Erickson et al. [US2002/0022873, newly cited, “Erickson”].
Fukushima discloses a method for producing an implantable electrode device (10) comprising: providing an electrically insulating support (4, 34) (paragraph 0025, 0052), providing a plurality of electrically conductive electrode elements (1) (paragraph 0030, 0033, 0053), and attaching the electrode elements to the support (paragraph 0053-56), wherein for attaching the electrode elements to the support, the electrode elements and/or the support are heated and the electrode elements are pressed against the support (paragraphs 0053-56).
Fukushima discloses a plurality of electrode elements (for example Figure 3), but does not disclose an arrangement with the elements arranged in rows next to each other and are placed in relation to each other.
Erickson discloses a method of making an implantable electrode device. Erickson discloses alternative configurations of the device including a device as shown in Figure 3, where the electrodes (20/40) are arranged in an arrangement similar to the disclosure of Fukushima, and an alternative arrangement as shown in Figure 4 wherein the electrode elements (20/40) are arranged in rows next to each other and are placed in relation to each other.
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Fukushima by substituting the electrode element arrangement with the arrangement as taught by Erickson with the electrode elements in rows next to each other as a substation of known alternatives is within the ability of one of ordinary skill.
With respect to claim 2, Fukushima discloses the support is made of a thermoplastic (paragraph 0025).
With respect to claim 3, Fukushima discloses the support is made of a material comprising polyurethane (paragraph 0025).
With respect to claim 4, Fukushima discloses attaching the at least on electrode elements to the support ,the electrode elements and/or the support are heated to a temperature greater than 100°C (paragraph 0056), it is noted the language “preferably” is considered to be described a preferred but not required feature and is therefore considered to be optional.
With respect to claim 5, Fukushima discloses the electrode elements are placed on an upper side of the support (Figure 7).
With respect to claim 6, Fukushima discloses the electrode elements are pressed against the support in such a way that an upper side of the electrode elements are flush with the upper side of the support (Figures 8 and 9).
With respect to claim 7, Fukushima discloses an electrical supply line (2) is connected to the electrode elements before the electrode elements are attached to the support (Figures 6, 7).
With respect to claim 8, Fukushima discloses the supply line (2) connected to the electrode elements (1) is attached to the support together with the electrode elements (Figures 7-9).
With respect to claim 9, the electrode elements have at least one fastening element (1c) which is pressed into the support when the at least one electrode element is attached to the support (paragraphs 0030, 0033, 0048).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima, Erickson and further in view of Kobayashi [JP2001-299713, of record, previously cited].
Fukushima as modified discloses a method for producing an implantable electrode device. Applicant is referred to paragraph 3 for a detailed discussion of Fukushima as modified. Fukushima discloses an electrode element but fails to disclose a pin such that the pin penetrates an underside of the support.
Kobayashi discloses an electrode that includes a pin such that when the electrode is attached to the support the pin penetrades an underside of the support (paragraph 0078-82; Figure 3).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Fukushima by including a pin that penetrates the underside of the support as taught by Kobayashi in order to secure the electrode and the improve the connection between the electrode and support and thereby improve the quality of the final product.
With respect to claim 11, Fukushima discloses the electrode element is attached to the support and supply line, it would have been within the ability of one of ordinary skill to select the order in which the components are combined as there are a limited number of options.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima, Erickson, and further in view of JP Publication ‘922 [JP2000-502922, of record, previously cited].
Fukushima as modified discloses a method for producing an implantable electrode device. Applicant is referred to paragraph 3 for a detailed discussion of Fukushima as modified. Fukushima discloses the electrode is connected to the support but fails to disclose an encasement.
JP Publication ‘922 discloses an enclosure made of silicone material is applied to surround a support after an electrode is attached to the support (Figure 2E).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of Fukushima by applying an encasement to surround the support as taught by JP Publication ‘922 in order to provide protection to the electrode.
With respect to claim 13, JP Publication ‘922 discloses the encasement is silicone materials (page 10, lines 15-18).
Response to Arguments
Applicant’s arguments, filed 12/9/2025, with respect to the rejection under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited Erickson. Applicant asserts previously cited Fukushima does not disclose the arrangement of electrode elements as required by the claims. Newly cited Erickson discloses electrode elements arranged in rows next to each other as required by the claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL MCNALLY whose telephone number is (571)272-2685. The examiner can normally be reached M-F 9-5.
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/DANIEL MCNALLY/Primary Examiner, Art Unit 1746
DPM
February 21, 2026