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 Arguments
Applicant's amendments and associated arguments filed 6/13/2026 have been fully considered but they are not persuasive. Applicant argues that Greenberg does not disclose electrodes formed as a hemispherical shape. The Examiner respectfully disagrees. As seen in figures 39 and 40, the electrodes have curved corners. This is considered a “hemispherical shape.” “Hemispherical” is defined by Merriam-Webster (https://www.merriam-webster.com/dictionary/hemispheric) as “having the shape of a half of a sphere or a roughly spherical body.” The shape of the electrodes in Greenberg is half of a roughly spherical body.
Figure 39 of Greenberg shows the electrodes 13 accommodated within a plurality of cavites formed in a matrix over the substrate.
Furthermore, while the claim states that the electrodes 13 extend from the top surface to the bottom surface, figures 3 and 4 of the applicant’s disclosure show that the electrodes 120 do not contact the bottom surface 112. As seen below in annotated figure 39 of Greenberg, the electrodes 13 extend from a top surface to a bottom surface, corresponding to the figures of the applicant’s disclosure:
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The rejections are still considered proper.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the newly recited limitation of the electrodes having a hemispherical shape must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-4 and 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 having a top surface, a bottom surface and a plurality of edges connecting the top and bottom surfaces, as seen in figure 39. 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 figure 39. The shape of the electrodes in Greenberg is half of a roughly spherical body, and thus is “hemispherical” by definition. while the claim states that the electrodes 13 extend from the top surface to the bottom surface, figures 3 and 4 of the applicant’s disclosure show that the electrodes 120 do not contact the bottom surface 112. As seen below in annotated figure 39 of Greenberg, the electrodes 13 extend from a top surface to a bottom surface, corresponding to the figures of the applicant’s disclosure:
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Regarding claim 2, as seen in figure 39, 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 6, as seen in figure 37, 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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Greenberg.
Greenberg is silent as to the portions of the top surface between the electrodes having concave shape. However, upon reviewing the applicant’s original specification, the applicant provided no criticality or importance to the concave shape. It has been held that the configuration of a claimed structure is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). Furthermore, creating curved edges instead of sharp corners would allow for the contact portion of the top surface to be more atraumatic to the tissue of the patient. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the shape of the top surface to be concave as this would be a matter of choice since the applicant provided no criticality or importance to the concave shape, and since the concave shape would have the benefit of being atraumatic, as described above.
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, specifically US 2023/0034483, US 2002/0111658 and US 2007/005536, all of which disclose 3D retinal stimulation devices with electrode arrays.
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 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
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