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 1 in the reply filed on 9/15/2025 is acknowledged. The traversal is on the ground(s) that there is no search burden. This is not found persuasive because it is entirely irrelevant. This is a 371 application. There is no search burden requirement for Unity of Invention.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/11/2023 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 1-5, 7, 10-12 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DiUbaldi et al. (US 8,751,003, hereinafter DiUbaldi).
Regarding claims 1-3, 5, 11-12, and 18, DiUbaldi discloses an implantable medical device as seen in figure 13a. The device includes a first patch 1300 for electrical stimulation and/or sensing of soft tissue (Col. 11, lines 7-49). Figure 13a shows a felt material having a multitude of non-conducting (i.e., insulated) fibers/wires/strands 1302 that are entangled with each other and is suitable to be felted with fibers of the soft tissue (e.g., tissue ingrowth) (Col. 11, lines 7-49). The first patch further includes electrically conductive metal fibers/wires/strands 1301 that are entangled with the multitude of fibers 1302 and can stimulate and/or sense soft tissue (Col. 11, lines 7-49). The entangled fibers form a feltable metallic wool.
Regarding claim 4, the fibers are coated (Col. 10, line 61-Col. 11, line 6) such that the coating must be conductive in order for the fibers to also remain conductive, as disclosed.
Regarding claim 7, figure 13a shows the fibers felted together, therefore, they have a yield strength higher than a maximum stress during felting.
Regarding claim 10, the undefined “attachment area” is considered to be only the conductive fibers 1301. Therefore, the fibers make up 100% of the attachment area as defined by the Examiner.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over DiUbaldi.
DiUbaldi is silent as to the impedance of the patch, although it inherently must have one. Upon reviewing the applicant’s original specification, there is no disclosed criticality for having an impedance between 10 and 20,000 Ohms. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s filing date to have the patch of DiUbaldi have an impedance between 10 and 20,000 Ohms, as the applicant does not disclose the impedance to be of any particular importance.
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