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 in the reply filed on 9/9/2025 is acknowledged. The traversal is on the ground(s) that the Examiner has not made a prima facie case for restriction, specifically that the device as claimed cannot be made to practice another and materially different method and that the method as claimed cannot be used to make another and materially different product. While the Examiner does not believe either statement to be true, the argument is irrelevant. This is a 371 application, and therefore the claims are governed using Unity of Invention requirements (see MPEP 823 and 1850). The applicant is arguing US Restriction guidelines, which are not applicable to the current application.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/9/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/15/2023 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greenberg et al. (US 2006/0259112, hereinafter Greenberg).
Regarding claims 1 and 4, Greenberg discloses a 3D retinal stimulation device (see abstract). The device includes a substrate 11/60 having a top surface, a bottom surface and a plurality of edges connecting the top and bottom surfaces, as seen in figures 25, 26, 39 and 40. A plurality of electrodes 13 are provided between the top and bottom surfaces and the plurality of edges comprise at least one flat, inclined surface between the top surface and bottom surface, as seen in figures 25, 26, 39 and 40.
Regarding claim 2, As seen in figure 25, the angle between the bottom surface and the inclined surface is 60 degrees or less when measured with a protractor, and the angle between top surface and the inclined surface is 120 degrees or more when measured with a protractor.
Regarding claim 3, whether something is vertical or not depends on how the object is held relative to the horizon. As seen below, when held appropriately, there is a vertical portion between the inclined surface and the bottom surface.
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Regarding claim 5, figure 40 shows a plurality of concave portions on the top surface extending from a side surface of the electrodes 13 toward the bottom surface
Regarding claim 6, as seen in figures 21 and 22, the electrode array is rectangular, so one edge is longer than another.
Claim Rejections - 35 USC § 103
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 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Greenberg in view of Scorsone et al. (US 2013/0228547, hereinafter Scorsone).
Greenberg discloses the applicant’s basic invention but is silent as to height of the 3D electrodes. Scorsone is also directed to a 3D retinal stimulation device and thus is analogous art with Greenberg. Scorsone discloses that the height of 3D electrodes in a retinal stimulation device may be 40 micrometers or less (par. 0116). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date that the 3D retinal electrodes of Greenberg can be 40 micrometers or less as taught by Scorsone without affecting the overall purpose and operation of the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric D Bertram whose telephone number is (571)272-3446. The examiner can normally be reached Monday-Friday 8am-6pm Central Time.
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, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796