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 without traverse of Group I, Claims 1-12 and 19-24, in the reply filed on 12/17/2025 is acknowledged.
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Priority
Receipt is acknowledged of certified copies of papers (GERMANY 10 2020 126 759.2 10/12/2020) required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements dated 4/11/2023; 6/5/2023 and 1/10/2024 have been considered and made of record.
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 1-11 and 19-24 are 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.
In claim 1, at lines 7 and 12, “the membrane microelectrode unit” lack clear antecedent basis. Note: Claim 1 previously recites “at least two membrane microelectrode units”. As a result, it is not clear which of the “at least two” is being reference by “the”. Clarification and/or correction is requested.
In claim 8, recitation of a plurality narrow and broad ranges in the same claim is considered to be indefinite because the metes and bounds of the claim cannot be clearly determined (MPEP 2173.05(c)(I)). Claim 8 will be interpreted as the claimed range is “a distance (d2) of 0.5 to 500 um”. Clarification and/or correction is requested.
In claim 11, at line 6, “the at least one membrane microelectrode unit” lacks antecedent basis. Note: Claim 1 previously recites “at least two membrane microelectrode units”. Clarification and/or correction is requested.
Claims 23 and 24 are considered indefinite because it is not clear what structure of the previously recited structures of claims 1 and 7 is being further limited. It appears that the piezoelectric film is the intended structure. Clarification and/or correction is requested.
Claims 2-7, 9, 10 and 19-22 are indefinite because they depend from an indefinite claim and do not cure the deficiencies of the claim from which they depend.
Claim Rejections - 35 USC § 102
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 1-5, 12 and 19-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi et al. (KR 20190109066 and corresponding machine translation)(Attached PTO-892).
With respect to claim 1, the reference of Choi et al. discloses:
A piezoelectric membrane microelectrode array (10) (Figs. 1 and 2) configured to spatially resolved electrical or mechanical stimulation and simultaneous spatially resolved measurement of electrical or mechanical activity of biological material (page 3 of the translation),
wherein the piezoelectric membrane microelectrode array comprises:
at least two membrane microelectrode units, the membrane microelectrode units (10) being arranged on a substrate (101, 102)(Fig. 2);
wherein the membrane microelectrode unit comprises at least one piezoelectric membrane (100) adapted to mechanically stimulate or measure mechanical activity of biological material, the at least one piezoelectric membrane comprising a piezoelectric film (104), wherein the piezoelectric film is arranged on the substrate, wherein the piezoelectric film is deformable; and
wherein the membrane microelectrode unit comprises at least a first microelectrode (110) adapted to electrically stimulate or measure electrical activity of biological material (page 3 of the translation).
With respect to claim 2, the first microelectrode (110) and the piezoelectric film (104) are spaced apart (Figs. 1 and 2).
With respect to claim 3, the substrate (101, 102) comprises at least two regions (Figs. 1 and 2), a first region having a first layer thickness and a second region having a second layer thickness, wherein the first layer thickness is greater than the second layer thickness, and wherein the piezoelectric film (104) is disposed within the second region of the substrate (101, 102).
With respect to claim 4, the first microelectrode (110) is arranged within the first or second region of the substrate (101, 102)(Figs. 1 and 2).
With respect to claim 5, the piezoelectric membrane (100) comprises at least one first electrode (103 or 105), wherein the at least one first electrode (103 or 105) is electrically conductively coupled to the piezoelectric film (104).
With respect to claim 12, the reference of Choi et al. discloses:
A membrane microelectrode unit (10) (Figs. 1 and 2) configured for electrical or mechanical stimulation and simultaneous measurement of electrical or mechanical activity of biological material (page 3 of the translation), wherein the membrane microelectrode unit is arranged on a substrate (101, 102);
wherein the membrane microelectrode unit comprises;
at least one piezoelectric membrane (100) adapted to mechanically stimulate or measure mechanical activity of biological material, the at least one piezoelectric membrane comprising a piezoelectric film (104), wherein the piezoelectric film is arranged on the substrate, wherein the piezoelectric film is deformable; and
wherein the membrane microelectrode unit comprises at least a first microelectrode (110) adapted to electrically stimulate or measure electrical activity of biological material (page 3 of the translation).
With respect to claims 19-22, in the absence of further positively recited structural elements, the piezoelectric membrane microelectrode array of the reference of Choi et al. is considered to be structurally capable of being used in the manner required of claims 19-22.
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.
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 6, 7, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (KR 20190109066 and corresponding machine translation)(Attached PTO-892) in view of Le Rhun (US 2020/0013947)(Attached PTO-892).
The reference of Choi et al. has been discussed above with respect to claims 1 and 5.
Claim 6 differs by reciting that the first electrode is an interdigital electrode.
The reference of Le Rhun discloses that it is known in the art to provide a piezoelectric film with interdigitated electrodes (¶[0087]).
In view of this teaching and in the absence of a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to provide the piezoelectric film of the reference of Choi et al. with interdigitated electrodes for the known and expected result of providing an alternative means recognized in the art for interfacing electrodes with a piezoelectric film.
With respect to claims 7, 23 and 24, while the reference of Choi et al. is silent with respect to the material of the piezoelectric film, the reference of Le Rhun discloses many conventional materials (¶[0079]) that can be employed in the system of the reference of Choi et al. As result, it would have been well within the purview of one having ordinary skill in the art determine the optimum material to employ through routine experimentation while maintaining the efficiency of the system.
Claims 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (KR 20190109066 and corresponding machine translation)(Attached PTO-892).
The reference of Choi et al. has been discussed above with respect to claim 1.
With respect to claim 8, while the reference of Choi et al. is silent with respect to the spacing between the first microelectrode and the piezoelectric membrane, in the absence of a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to determine the optimal spacing through routine experimentation while maintaining the efficiency of the system.
With respect to claims 9 and 11, the reference of Choi et al. discloses employing the array device with a culture vessel (Fig. 3). As a result, in the absence of a showing of unexpected results, it would have been well within the purview of one having ordinary skill in the art to determine the optimal positioning of the stimulation/detection electrodes within the system through routine experimentation while maintaining the efficiency of the detection system.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (KR 20190109066 and corresponding machine translation)(Attached PTO-892) in view of Nguyen et al. (Nature Nanotech.)(Ref. No. 6 IDS dated 4/11/2023).
The reference of Choi et al. has been discussed above with respect to claim 1.
Claim 10 differs by reciting the use of nanoribbons as a piezoelectric film.
The reference of Nguyen et al. discloses that it is known in the art to employ piezoelectric nanoribbons when interfacing with cells (Abstract and Fig. 1).
In view of this teaching and in the absence of a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to employ a nanoribbon structure as a piezoelectric film for the known and expected result of providing an art recognized means for interfacing with cells when monitoring cellular deformations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H BEISNER whose telephone number is (571)272-1269. The examiner can normally be reached on Mon-Fri from 8am to 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL A MARCHESCHI, can be reached at telephone number (571)272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William H. Beisner/
Primary Examiner
Art Unit 1799
WHB
Prosecution Insights