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 Amendment
The amendment filed 04/30/2026 has been entered. Claims 1-4, 8-13, 17-24 and 28-30 remain pending in the application.
Response to Arguments
Applicant's arguments, see pages 8 – 11; regarding Gardner in view of Vitale, filed 04/30/2026 have been fully considered but they are not persuasive.
Applicants argues, see page 8 pp 3; regarding claim 1, ‘ Vitale describes the relevant conductive material as being infused within a porous and/or fibrous sensing region […] This disclosure is directed to a composite sensing region formed within an insulating matrix, rather than a discrete intermediate electrode layer in a silicon carbide base and capping layer stack as recited in the pending claims ‘. Examiner respectfully disagrees. Currently what is claimed in claim one with regards to the electrode layer is “the intermediate layer comprising a carbon-based electrode”. There is no mention of a discrete intermediate layer, which is seen as meaning a homogenous layer of carbon-based material not infused into a medium. If applicant wishes to add this limitation amend claim 1 to reflect the argument.
Applicant further argues, see page 8 pp 4; regarding claim 1, ‘ Vitale's MXene disclosure does not, by itself, clearly establish a carbon- based electrode as recited in the claims’. Vitale does not solely rely on MXene but rather as is conceded by the applicant Vitale also discloses graphene-based material. Further, applicant argues ‘ Vitale also lists graphene-based materials, but those teachings are presented in the context of conductive material infused within sensing region 3204 rather than a discrete intermediate electrode layer in the silicon carbide stack.’ The sensing region is disclosed as being in communication with a device to collect a signal, which is seen as an electrode ([Vitale, 0127]). Therefore this argument is unpersuasive.
Applicant further argues, see page 8 pp 5 and page 9 pp 1; regarding claim 1, ‘ Notably, paragraph [0173] applies the number 3208 to both the conductive pillar […] This internal numbering inconsistency in Vitale itself underscores that the reference does not clearly or unambiguously identify any specific structure as a carbon-based electrode in the sense of the claims ‘. Examiner respectfully disagrees. Vitale clearly states that the sensing region infused with carbon based material, Vitale states the sensing region being infused with “MXene flakes or graphene” which is seen as carbon based further Vitale states the sensing region configured to transmit signals to a device which is seen as an electrode ([Vitale, 0126, 0127] Examiner will remove number 3208 and will directly on the figure using arrows.
Applicant further argues, see page 9 pp 2; regarding claim 1, ‘ Accordingly, even under the most favorable reading of Vitale, the structural and material incompatibility between Vitale's polymer-matrix composite architecture and the silicon carbide encapsulated architecture of Gardner's neural probe means that a skilled artisan would not have been motivated to incorporate Vitale's sensing region into Gardner's device with a reasonable expectation of success’ In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Vitale discloses that the use of carbon based material to achieve high electrical conductivity and low impedance ([0049]). Further applicant argues ‘and the cited portions of Vitale do not teach or suggest the claimed intermediate layer comprising a carbon-based electrode.’ Vitale states the sensing region being infused with “MXene flakes or graphene” which is seen as carbon based further Vitale states the sensing region configured to transmit signals to a device which is seen as an electrode ([Vitale, 0126, 0127].
Applicant further argues, see page 9 pp 3 and page 10 pp 1; regarding claim 1, Gardner in view of Vitale does not disclose a neural interface that is substantially free of metal of polymers. Examiner respectfully disagrees. In view of the 112(b) rejection below, substantially which is meant to mean the entire electrode is not made of either metal or polymer. Vitale discloses the sensing region, which is seen as an electrode that is not entirely made of metal of polymer ([0171]). Therefore, claim 1 remains rejected under 35 U.S.C § 103.
Applicant further argues, see page 9 pp 3 and page 10 pp 2; regarding claim 1, There is not motivation to modify Gardner with Vitale. Examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, applicant argues ‘Vitale is directed to a continuous analyte-monitoring biosensor, a device category that serves fundamentally different clinical functions and operates under fundamentally different material and performance requirements than Gardner's implantable neural probe.’ However, Vitale discloses the electrode array used as a neural implant ([Abstract, 0029, 0030, 0098, 0101, 0147, Figure 16a-16e, Figures 17a-17d]). Applicant also argues ‘A skilled artisan working in the neural probe field would not have turned to a continuous analyte biosensor for guidance on electrode material selection’ However, Vitale discloses the electrode array used as a neural implant ([Abstract, 0029, 0030, 0098, 0101, 0147, Figure 16a-16e, Figures 17a-17d]). Further, it would have been obvious to one of ordinary skill in the art, and both Gardner and Vitale being neural implantable electrode arrays, to modify Gardner with the carbon electrode as disclosed by Vitale to achieve high electrical conductivity and low impedance ([Gardner, 0049]). Applicant also argues “The Office Action has not identified any deficiency in Gardner's electrical performance that Vitale's carbon-based electrode would remedy”. However, providing deficiency in the primary reference is not required to establish a 103 rejection. See Graham v. Deere; test for obviousness for prerequisites of 35 U.S.C. 103 rejections: 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.
Applicant further argues, see page 11 pp 1; regarding claim 10, Gardner in view of Vitale do not disclose ‘ the proposed combination does not merely fail to teach the substantially metal and polymer-free brain-contacting limitation’. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., ‘metal and polymer-free brain-contacting limitation’) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). What is recited is ‘ and the material that contacts the brain is substantially free of metal and polymer’. Further, substantially free of metal and polymer , which, in view of the 112(b) rejection below, is seen as not being entirely made of metal or polymer, is disclosed by Vitale ([0171]). Therefore, claim 10 remains rejected under 35 U.S.C. § 103.
Applicant's arguments, see pages 11-14; regarding Gardner in view of Vitale further in view of Melosh, filed 04/30/2026 have been fully considered but they are not persuasive.
Applicant argues, see page 12 pp 1; regarding claim 11, ‘The present disclosure, by contrast, describes depositing photoresist onto the base layer, patterning the photoresist, and pyrolyzing the photoresist to convert it into a pyrolyzed photoresist film that serves as a carbon- based electrode. Accordingly, the applied references do not teach the claimed PPF formation step within the context of the claimed silicon carbide layered probe architecture ‘. Examiner respectfully disagrees. Claim 11 recites ‘wherein the step of forming an intermediate layer on the base layer comprises: depositing a photoresist onto the base layer and patterning the photoresist to a desired shape’. Gardner discloses the depositing of photoresist and patterning the photoresist ([Gardner, 0060]).
Applicant argues, see page 12 pp 2; regarding claim 11, ‘More specifically with respect to Melosh, its disclosure of PPF does not teach forming a PPF layer as the primary structural electrode within a silicon carbide sandwich architecture ‘. Examiner respectfully disagrees. Claim 11 recites ‘and pyrolyzing the photoresist so as to convert the photoresist to a pyrolyzed photoresist film.’ Melosh discloses the pyrolyzing of photoresist of a carbon electrode ([Melosh, 0197]).
Applicant further argues, see page 12 pp 2; regarding claim 11, ‘In the present claims, by contrast, the photoresist is deposited directly onto the silicon carbide base layer, and the resulting PPF constitutes the entirety of the intermediate electrode layer, with no underlying metal electrode present at the brain-contacting region. These are categorically different structural roles for the PPF material. Melosh does not teach or suggest eliminating the supporting metal electrode and relying solely on a PPF layer as the primary carbon-based electrode within a silicon carbide encapsulated architecture ‘. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., with no underlying metal electrode present at the brain-contacting region.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 11 recites ‘and pyrolyzing the photoresist so as to convert the photoresist to a pyrolyzed photoresist film ‘. Melosh discloses the use of pyrolyzing photoresists to create a carbon electrode ([Melosh, 0197]).
Applicant further argues, see page 12 pp 3 and page 13 pp 1-2; regarding claim 11, In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Gardner in view of Vitale disclose a carbon-based electrode ([Garnder, 0010], [Vitale, Figure 29, 0171]) Melosh discloses the pyrolyzed photoresist of a carbon electrode ([Melosh, 0197]). It would be obvious to one of ordinary skill in the art to modify Gardner in view of Vitale with the pyrolyzed photoresist as disclosed by Melosh the motivation being to increase sensitivity ([Melosh, 0197])
Applicant further argues, see page 13 pp 3 and page 14 pp 1; regarding claim 30, In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Gardner in view of Vitale disclose a carbon-based electrode ([Garnder, 0010], [Vitale, Figure 29, 0171]). It would be obvious to one of ordinary skill in the art to modify Gardner with Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049]). Melosh discloses the pyrolyzed photoresist of a carbon electrode ([Melosh, 0197]). It would be obvious to one of ordinary skill in the art to modify Gardner in view of Vitale with the pyrolyzed photoresist as disclosed by Melosh the motivation being to increase sensitivity ([Melosh, 0197]). Therefore, claim 30 remains rejected under 35 U.S.C. § 103.
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 and 10 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.
Regarding claims 1 and 10: The term “substantially” in claims 1 and 10 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In view of the indefinite terminology the composition of metal and polymers that contact the brain in rendered indefinite. For examining purposes ‘substantially free of metal and polymer.’ Is seen as not being entirely made of metal or polymer.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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(s) 1-4, 8-10, 12-13, 17-19, 21-22, 24 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gardner et al. (US 20180368712 A1) herein referred to as “Gardner” in view of Vitale et al. (US 20240090814 A1) herein referred to as “Vitale”.
Regarding claim 1, in view of the 112(b) rejection above, Gardner disclose: An electrode device comprising:
a base layer comprising silicon carbide; ([0010];” the amorphous silicon carbide insulation can include a first amorphous silicon carbide layer”) an intermediate layer located over the base layer, ([0010]; “The thin film metal and the interface pad can lay on the first amorphous silicon carbide layer”)
the intermediate layer comprising an electrode; ([0010];” The thin film metal and the interface pad can lay on the first amorphous silicon carbide layer”, [Figure 13]; 145) and a capping layer located over the base layer and partially surrounding the electrode, the capping layer comprising silicon carbide. ([0010];” the second amorphous silicon carbide layer can cover the thin film metal and some or all of the first amorphous silicon carbide layer. The opening in the amorphous silicon carbide insulation can be through the second amorphous silicon carbide layer to thereby expose the interface pad to the ambient environment. “And [Figure 13]). carbide, wherein, when the electrode device is used as an implantable neural interface (Gardner discloses an implantable neural interface [Abstract]), material that contacts the brain is silicon carbide (Gardner discloses probe, which is in contact with the brain, to contain silicon carbide [0008]) and carbon-based material, and the material that contacts the brain is substantially free of metal and polymer (In view of the 112(b) rejection above wherein ‘substantially free of metal and polymer’ is seen as not being entirely made of metal of polymer, [0030]; Gardner discloses probe (105) that is in contact with the brain that is not entirely made of metal or polymer) Gardner does not disclose: the intermediate layer comprising a carbon-based electrode. material that contacts the brain is carbon-based material
However, Vitale disclose: the intermediate layer comprising a carbon-based electrode ([Figure 29]; 3208 and [0171]; “ As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based) material that contacts the brain is carbon-based material ([0171]; Vitale discloses the sensing region, which is seen as the area that contacts the brain being made of graphene, which is seen as a carbon based material.)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 2, Gardner in view of Vitale disclose: The electrode device of claim 1. Vitale further discloses: wherein the carbon-based electrode comprises graphene, graphene oxide, reduced graphene oxide, carbon nanotubes, or a pyrolyzed- photoresist-film. ([0171]; “FIG. 29 provides a cutaway view of exemplary devices according to the present disclosure. As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.”)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner in view of Vitale with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 3, Gardner in view of Vitale disclose: The electrode device of claim 1, Gardner further discloses: wherein the electrode comprises a pyrolyzed-photoresist-film. ([0060]; “The etching of the second amorphous silicon carbide layer was limited to the interface pads and the electrical contact pads using a layer of photoresist” wherein the electrical contact pads are seen as electrodes) Gardner does not disclose: a carbon-based electrode
However, Vitale disclose: a carbon-based electrode ([Figure 29]; 3208 and [0171]; “ As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner in view of Vitale with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 4, Gardner in view of Vitale disclose: The electrode device of claim 1. Gardner further discloses: wherein the silicon carbide of both the base layer and the capping layer comprises amorphous silicon carbide. ([0010]; “For any such embodiments of the implantable microelectrode body the amorphous silicon carbide insulation can include a first amorphous silicon carbide layer and a second amorphous silicon carbide layer.”)
Regarding claim 8, Gardner in view Vitale disclose: The electrode device of claim 1. Gardner further discloses: wherein the base layer has a thickness in a range of from 0.5 um to 5 um, the capping layer has a thickness in a range of from 0.5 um to 5 um, ([0016]; “ In some such embodiments, each of the first and the second amorphous silicon carbide insulation layers can have a thickness in a range from about 0.1 to about 4 microns”) or the intermediate layer has a thickness in a range of from 0.1 um to 1 um.
Regarding claim 9, Gardner in view of Vitale disclose: 9. (currently amended) The electrode device of claim 1. Gardner further discloses: further comprising a metal contact pad ([0008]; “the interface pad can include titanium nitride, iridium oxide, porous platinum, or poly(ethylenedioxythiophene).”) electrically coupled to the electrode,([0030];” wherein an interface pad (115) is coated with an electrode material (145)” wherein the electrode material is seen as an electrode) the metal contact pad being exposed through an opening in the capping layer.([0010]; “The opening in the amorphous silicon carbide insulation can be through the second amorphous silicon carbide layer to thereby expose the interface pad to the ambient environment”) Gardner does not disclose: a carbon-based electrode.
However, Vitale disclose: a carbon-based electrode ([Figure 29]; 3208 and [0171]; “ As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner in view of Vitale with the carbon-based electrode as further disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 10, Gardner discloses: A method of making an electrode device comprising: depositing a base layer onto an electronic wafer, the base layer comprising silicon carbide; ([0060]; “in a first step, a single crystal wafer of silicon (150) with a diameter of 100 mm, is coated with a thin film of polyimide (155) having a thickness of about 1 micron. The polyimide layer is applied to the wafer by spin coating a polyimide precursor solution onto the wafer and curing the precursor at 350° C. for one hour in a nitrogen atmosphere to form the polymerized polyimide coating. In a second step, a first layer of amorphous silicon carbide (160) having a thickness of about 2 microns is then deposited over the polyimide layer”) forming an intermediate layer on the base layer ([0060]; “In a third step, thin film metal traces (165) are formed on the first amorphous silicon layer” ), the intermediate layer comprising an electrode ([0028]; “wherein the interface pads are in contact with at least one fewer thin film metal traces (110)” and [0030]; “ invention wherein an interface pad (115) is coated with an electrode material (145)”); depositing a metal layer onto electrode traces ([0056]; “ A metal layer suitable for promoting adhesion may be disposed between the electrode material and the interface pad or between the electrode material and the amorphous silicon carbide insulation”), the metal layer comprising a metal contact pad ([0060]; “FIG. 15. The interface pads are an integral part of the thin film metal layer (110)”), the carbon traces being configured to electrically couple the metal contact pad to the carbon- based electrode ([0056]; “ A metal layer suitable… …between the electrode material and the amorphous silicon carbide insulation”); depositing a capping layer onto the intermediate layer, the capping layer comprising silicon carbide;([0060];” In a fourth step, a second layer of amorphous silicon carbide (170) having a thickness of about two microns is deposited over the metal traces “) and forming one or more openings in the capping layer to expose at least a portion of the electrode and at least a portion of the metal contact pad. ([0060]; “In a fifth step, openings (175) are formed in the second amorphous silicon carbide layer to expose the interface pads to the ambient and, on the connect body (120) of FIG. 15, to form openings for electrical contact pads (125) of FIG. 15. The interface pads are an integral part of the thin film metal layer (110)”) wherein, when the electrode device is used as an implantable neural interface (Gardner discloses an implantable neural interface [Abstract]), material that contacts the brain is silicon carbide (Gardner discloses probe, which is in contact with the brain, to contain silicon carbide [0008]) and carbon-based material, and the material that contacts the brain is substantially free of metal and polymer (In view of the 112(b) rejection above wherein ‘substantially free of metal and polymer’ is seen as not being entirely made of metal of polymer, [0030]; Gardner discloses probe (105) that is in contact with the brain that is not entirely made of metal or polymer) Gardner does not disclose: the intermediate layer comprising a carbon-based electrode. material that contacts the brain is carbon-based material
However, Vitale disclose: a carbon-based electrode ([Figure 29]; 3208 and [0171]; “ As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based) material that contacts the brain is carbon-based material ([0171]; Vitale discloses the sensing region, which is seen as the area that contacts the brain being made of graphene, which is seen as a carbon based material.)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 12, Gardner in view of Vitale disclose: The method of claim 10. Gardner further discloses: further comprising a step of releasing the electronic wafer from the base layer by subjecting the electronic wafer to an acid bath or a solvent bath. ([0060]; “In a seventh step, the coated silicon wafers are immersed in deionized water at 87° C. until the implantable microelectrode body (180) releases from the silicon wafer”)
Regarding claim 13, Gardner in view of Vitale: The method of claim 10. Vitale further disclose: wherein the carbon-based electrode comprises graphene, graphene oxide, reduced graphene oxide, or carbon nanotubes. ([Figure 29]; 3208 and [0171]; “As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 17, Gardner in view of Vitale: The method of claim 10. Gardner further disclose: wherein the base layer has a thickness in a range of from 0.5 um to 5 um ([0060]; “In a second step, a first layer of amorphous silicon carbide (160) having a thickness of about 2 microns“ ), the capping layer has a thickness in a range of from 0.5 um to 5 um ([0060]; “In a fourth step, a second layer of amorphous silicon carbide (170) having a thickness of about two microns”), or and the intermediate layer has a thickness in a range of from 0.1 um to 1 um. ([0016]; “ In some such embodiments, the thin metal trace can have a thickness in a range from about 0.1 and about 2 microns”)
Regarding claim 18, Gardner in view of Vitale disclose: 18. (currently amended) The method of claim 10. Gardner further discloses: wherein the silicon carbide of both the base layer and the capping layer comprises amorphous silicon carbide. ([0016]; “each of the first and the second amorphous silicon carbide insulation layers”)
Regarding claim 19, Gardner in view of Vitale disclose: A method of using an implantable neural interface, the method comprising: providing an electrode device comprising: a base layer comprising silicon carbide; ([0060]; “in a first step, a single crystal wafer of silicon (150) with a diameter of 100 mm, is coated with a thin film of polyimide (155) having a thickness of about 1 micron. The polyimide layer is applied to the wafer by spin coating a polyimide precursor solution onto the wafer and curing the precursor at 350° C. for one hour in a nitrogen atmosphere to form the polymerized polyimide coating. In a second step, a first layer of amorphous silicon carbide (160) having a thickness of about 2 microns is then deposited over the polyimide layer”) an intermediate layer located over the base layer, ([0060]; “In a third step, thin film metal traces (165) are formed on the first amorphous silicon layer” ) the intermediate layer comprising an electrode; ([0028]; “wherein the interface pads are in contact with at least one fewer thin film metal traces (110)” and [0030]; “ invention wherein an interface pad (115) is coated with an electrode material (145)”) and a capping layer located over the base layer and partially surrounding the carbon- based electrode, the capping layer comprising silicon carbide; ([0060];” In a fourth step, a second layer of amorphous silicon carbide (170) having a thickness of about two microns is deposited over the metal traces “) electrically coupling the carbon-based electrode to neural tissue of a patient; ([0041]; “The interface pad has the property of being electronically conducting and provides an electrical connection to the neural tissue”) electrically coupling the carbon-based electrode to at least one of recording electronics and stimulating electronics, wherein the recording electronics are configured to electrically record neural signals from the neural tissue and the stimulating electronics are configured to electrically stimulate the neural tissue. ([0061]; “At the connection body, the metal trace is connected to an electrical contact pad (125). In the present Example, electrical contact pads are configured to match with an electrical connector (185) suitable for interfacing with electronic equiument suitable for neural recording and stimulation.”) Gardner does not disclose: a carbon-based electrode.
However, Vitale discloses: a carbon-based electrode. ([Figure 29]; 3208 and [0171]; “As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 21, Gardner in view of Vitale disclose: 21. (currently amended) The method of claim 19. Gardner further discloses: further comprising electrically stimulating the neural tissue using the stimulating electronics. ([0041]; “The device comprises a neural interface probe (105) which is implanted into the neural tissue from which neural electrical activity is recorded or neural activity electrically stimulated”)
Regarding claim 22, Gardner in view of Vitale disclose: The method of claim 19. Vitale further discloses: wherein the carbon-based electrode comprises graphene, graphene oxide, reduced graphene oxide, carbon nanotubes, or a pyrolyzed-photoresist-film. ([Figure 29]; 3208 and [0171]; “As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
Regarding claim 24, Gardner in view of Vitale disclose: The method of claim 19. Gardner further disclose: wherein the silicon carbide of both the base layer and the capping layer comprises amorphous silicon carbide. ([0016]; “each of the first and the second amorphous silicon carbide insulation layers”)
Regarding claim 28, Gardner in view of Vitale disclose: The method of claim 19. Gardner further discloses: wherein the base layer has a thickness in a range of from 0.5 um to 5 um, ([0060]; “In a second step, a first layer of amorphous silicon carbide (160) having a thickness of about 2 microns “) the capping layer has a thickness in a range of from 0.5 um to 5 um, or and the intermediate layer has a thickness in a range of from 0.1 um to 1 um. ([0060]; “In a fourth step, a second layer of amorphous silicon carbide (170) having a thickness of about two microns”)
Claim(s) 11, 23 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gardner in view of Vitale further in view of Melosh et al. (US 20140353172 A1) herein referred to as “Melosh”.
Regarding claim 11, Gardner in view of Vitale disclose: The method of claim 10. Gardner further discloses: wherein the step of forming an intermediate layer on the base layer comprises: depositing a photoresist onto the base layer and patterning the photoresist to a desired shape ([0060]; “The etching of the second amorphous silicon carbide layer was limited to the interface pads and the electrical contact pads using a layer of photoresist patterned by exposure to ultraviolet light through a second photomask” wherein patterned is seen as conforming to desired shape); Gardner does not discloses: and pyrolyzing the photoresist so as to convert the photoresist to a pyrolyzed photoresist film.
However, Melosh discloses: and pyrolyzing the photoresist so as to convert the photoresist to a pyrolyzed photoresist film. ([0197]; “the electrochemical activity of the electrodes may be enhanced, for example by using the Pyrolyzed Photoresist Film method”)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner in view of Vitale with the pyrolyzed photoresist film as disclosed by Melosh the motivation being to increase sensitivity ([0197])
Regarding claim 23, Gardner in view of Vitale disclose: The method of claim 19. Gardner does not disclose: wherein the carbon-based electrode comprises a pyrolyzed-photoresist-film.
However, Melosh discloses: wherein the electrode comprises a pyrolyzed-photoresist-film. ([0197]; “the electrochemical activity of the electrodes may be enhanced, for example by using the Pyrolyzed Photoresist Film method”)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner in view of Vitale with the pyrolyzed photoresist film as disclosed by Melosh the motivation being to increase sensitivity ([0197])
Regarding claim 30, Gardner in view of Vitale disclose: The electrode device of claim 1. Gardner further discloses: further comprising a metal contact pad ([0008]; “the interface pad can include titanium nitride, iridium oxide, porous platinum, or poly(ethylenedioxythiophene).”) electrically coupled to the electrode, ([0030];” wherein an interface pad (115) is coated with an electrode material (145)” wherein the electrode material is seen as an electrode) the metal contact pad being exposed through an opening in the capping layer, ([0010]; “The opening in the amorphous silicon carbide insulation can be through the second amorphous silicon carbide layer to thereby expose the interface pad to the ambient environment”) wherein the silicon carbide of both the base layer and the capping layer comprises amorphous silicon carbide; ([0016]; “each of the first and the second amorphous silicon carbide insulation layers”) and wherein the base layer has a thickness in a range of from 0.5 um to 5 um, ([0060]; “In a second step, a first layer of amorphous silicon carbide (160) having a thickness of about 2 microns“ ) the capping layer has a thickness in a range of from 0.5 um to 5 um, ([0060]; “In a fourth step, a second layer of amorphous silicon carbide (170) having a thickness of about two microns”) and the intermediate layer has a thickness in a range of from 0.1 um to 1 um. ([0016]; “ In some such embodiments, the thin metal trace can have a thickness in a range from about 0.1 and about 2 microns”) Gardner does not disclose: a carbon-based electrode, wherein the carbon-based electrode comprises a pyrolyzed-photoresist-film
However, Vitale discloses: A carbon-based electrode ([Figure 29]; 3208 and [0171]; “As shown in the left panel, device can include a porous and/or fibrous sensing region 3204 that is infused with a conductive material, e.g., MXene material, graphene, and the like.” Wherein graphene and MXene are seen as carbon based)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner with the carbon-based electrode as disclosed by Vitale the motivation being to achieve high electrical conductivity and low interfacial impedance ([0049])
However, Melosh discloses: wherein the electrode comprises a pyrolyzed-photoresist-film ([0197]; “the electrochemical activity of the electrodes may be enhanced, for example by using the Pyrolyzed Photoresist Film method”)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the electrode device as disclosed by Gardner in view of Vitale with the pyrolyzed photoresist film as disclosed by Melosh the motivation being to increase sensitivity ([0197])
Claim(s) 1-4, 8-10, 12-13, 17-19, 21-22, 24 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gardner in view of Vitale further in view of Diaz-Botia et. al. (Diaz-Botia, C. A., Luna, L. E., Neely, R. M., Chamanzar, M., Carraro, C., Carmena, J. M., Sabes, P. N., Maboudian, R., & Maharbiz, M. M. (2017). A silicon carbide array for electrocorticography and peripheral nerve recording. Journal of Neural Engineering, 14(5), 056006. https://doi.org/10.1088/1741-2552/aa7698) herein referred to as “Diaz”.
Regarding claim 29, Gardner in view of Vitale disclose: The method of claim 19. Gardner further discloses: wherein the silicon carbide of the capping layer comprises amorphous silicon carbide. ([0016]; “each of the first and the second amorphous silicon carbide insulation layers”) Gardner does not explicitly discloses: and the silicon carbide of the base layer does not comprise amorphous silicon carbide.
However, Botia discloses: and the silicon carbide of the base layer does not comprise amorphous silicon carbide. ([Materials and Methods]; Diaz discloses a neural probe with a base layer of polycrystalline silicon carbide which is not amorphous silicon carbide.)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the method as disclosed by Gardner in view of Vitale with the non amorphous base layer as disclosed by Diaz the motivation being the resistance to temperature and corrosive environments ([4.3]).
Conclusion
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/CASEY GEORGE CHA/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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