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 11/27/2025 with respect to the previous 101 rejections, 112(a) rejections, the 112(b) rejections and the drawing objection have been fully considered and are persuasive. Therefore, the rejections and objection have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made below, necessitate by applicant’s amendments changing the scope of the claims.
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.
Claims 1-4 and 7-13 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Franks (US 2003/0012390) in view of Haronian et al. (US 5,856,722, hereinafter Haronian) and further in view of Fried et al. (US 2016/04184596, hereinafter Fried).
Regarding claims 1, 3, 12, 15, 17 and 20-21, as seen in figure 1, Franks discloses an implantable cochlear implant including a transducer 1 having a plurality of beams 4 attached to multiple bases with a piezoelectric piece 4a bonded to each of the beams (i.e., a MEMS system) (par. 0017, 0018, 0021, 0044, 0046 and figure 7). Each beam has a different predetermined natural frequency between 200Hz-10kHz (abstract, par. 0020, 0034) such that each beam vibrates in response to an incoming acoustic wave 12 and the piezoelectric material converts the motion to an electrical signal that can be used to directly stimulate an auditory nerve via electrodes attached to the nerve (par. 0043-0049). Electronics including a passive capacitor and resistor as seen in figure 8 as well as an active amplifier for amplifying signals (i.e., power-conditioning) from the beams and a rechargeable battery (par. 0023, 0046). However, Franks is silent as to the beams specifically being cantilever beams.
Attention is directed to the reference of Haronian, which discloses an acoustic MEMS device (and thus is analogous art with Franks) that uses cantilever beams, each having a different predetermined natural frequency between 200Hz and 10kHz, to convert acoustic waves into electrical signals with piezoelectric material on a fixed end (Fig. 2 and 3, Col. 8, lines 1-20, Col. 9, lines 1-24). Therefore it would have been obvious to one of ordinary skill in the art at the time of the applicant’s invention to substitute the cantilevered beams of Haronian for the beams of Franks as they both function in the same manner for the same purpose and the substitution of one known structure for another that does not affect the operation of the device would have resulted in the predictable result of producing electrical signals from acoustic signals based on different natural frequencies of the beams.
Franks is further silent as to also including a wireless power transmission interface circuit with an RF coil to communicate with an external coil in addition to the energy harvesting system. Attention is directed to Fried, which also discloses an implantable stimulation device, and thus is analogous art with Franks. Fried discloses that the implantable device can include an energy harvesting system as well as an RF antenna, both systems capable of providing power to the system (par. 0027, 0035). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify Franks to also include an RF antenna to communicate with an external coil in addition to the energy harvesting system, as taught by Fried as being equivalent;y functional and redundant power systems from an implantable device.
Regarding claims 2, 4, 7 and 13, as seen in figures 2 and 3 of Haronian, the rectangular beams number less than 30 and have different lengths, such that the Examiner considers the rectangular end portion making the lengths different to be a “tip mass:”
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Regarding claims 8 and 19, Franks is implanted, and thus has a biocompatible coating.
Regarding claims 9-11, 16 and 18, the system of Franks is sized and shaped to be implanted in the middle ear, the inner ear, between an ossicle leg and an umbo and/or between an ossicle leg and the stapes, if so desired by a user. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Franks discloses that each voltage output from each beam corresponds to a particular frequency of the incoming acoustic waves (Figure 3 of Franks).
Allowable Subject Matter
Claims 5, 6 and 14 are allowed.
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 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