DETAILED ACTION
Claims 1-20 are pending before the Office of review.
In the response filed February 16, 2026:
Claims 3 and 8 were amended.
No new matter is present.
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
Claims 5, 10 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 16, 2026.
Applicant’s election without traverse of Species A1, B1 and C1 (Claims 1-3, 6-8, 11 and 14-20) in the reply filed on February 16, 2026 is acknowledged.
Claim Objections
Claim 18 is objected to because of the following informalities: Claim 18 appears to have a typographical error in line 2 “… at are at an angle…” and should read “… and are at an angle…”. Appropriate correction is required.
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, 2, 6, 12, 14-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over SUN et al (WO 2008/097518) in view of THOMPSON (U.S. Patent 6,690,959).
With regards to claim 1, Sun discloses a method comprising applying an etchant-resistant chemical to a surface of a sheet of conductive material in a pattern that includes a plurality of teeth, wherein each of the teeth face a first direction; and etching the patterned sheet of conductive material so as to define an electrode the plurality of teeth are situated on and extend outward from a distal edge of the electrode (Paragraphs [0038]-[0042]).
Sun does not explicitly disclose a plurality of flexible electrode extensions and a plurality of teeth on the flexible electrode extensions.
Thompson discloses a method of forming skin mount electrode comprising forming a plated electrode 16 including a plurality of knives 17 and a plurality of spikes 18 on the plurality of knives wherein the protruding knives 17 of spikes 18 ensure stable epidermal penetration of the spikes 18 in the presence of body motion, underlying muscle movement and irregular skin or body topography (Col. 5 lines 61- Col. 6 line 49). As such Sun as modified by Thompson render obvious plurality of flexible electrode extensions and a plurality of teeth on the flexible electrode extensions, wherein each of the teeth face a first direction; and etching the patterned sheet of conductive material so as to define an electrode so that the plurality of flexible electrode extensions and the plurality of teeth on the flexible electrode extensions are situated on and extend outward from a distal edge of the electrode (Thompson Col. 5 lines 61- Col. 6 line 49 discloses a plurality of knives and spikes Sun Paragraphs [0038]-[0042] discloses etching a patterned conductive material to form the structure of the electrode including the teeth).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the method of Sun to include the plurality of flexible electrode extensions and a plurality of teeth on the flexible electrode extensions as rendered obvious by Thompson because the reference of Thompson teaches that the protruding knives 17 of spikes 18 ensure stable epidermal penetration of the spikes 18 in the presence of body motion, underlying muscle movement and irregular skin or body topography (Col. 6 lines 40- line 49) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired plurality of flexible electrode extensions and a plurality of teeth using the protruding knives and spikes as rendered obvious by Thompson. MPEP 2143D
With regards to claim 2, the modified teachings of Sun renders obvious wherein the patterned sheet of conductive material is etched so that a proximal edge of the electrode is planar. (Sun Paragraphs [0040]-[0043] Figures 8A-8B).
With regards to claim 6, the modified teachings of Sun renders obvious forming the etched and patterned conductive material into a cylindrical section about an axis such that a surface of the proximal edge is perpendicular to the axis . (Sun Paragraphs [0040]-[0043] Figures 1, 8A-8B discloses forming the etch pattern in a metal sheet which is shape of the proximal rim of the open electrode cylinder including the electrode teeth).
With regards to claim 12, the modified teachings of Sun renders obvious wherein electrode extensions are arc-shaped and define and surround respective apertures. (Thompson Col. 5 line 62- Col. 6 line 49 Figure 2B).
With regards to claim 14, the modified teachings of Sun renders obvious wherein the flexible electrode extensions face outward from the distal edge and along the distal edge at an angle of between 0 and 10 degrees with respect to the distal edge. (Thompson Col. 5 line 62- Col. 6 line 49 Figure 2B).
With regards to claim 15, the modified teachings of Sun renders obvious wherein each of the plurality of flexible electrode extensions includes a respective arcuate distal surface having a plurality of teeth. (Thompson Col. 5 line 62- Col. 6 line 49 Figure 2B).
With regards to claims 16, the modified teachings of Sun renders obvious wherein the etching the patterned sheet of conductive defines a plurality of electrodes having flexible electrode extensions and respective pluralities of teeth on the flexible electrode extensions. (Sun Paragraphs [0038]-[0042] discloses etching a patterned conductive material to form the structure of the electrode including the teeth Thompson Col. 5 line 62- Col. 6 line 49 Figure 2B Thompson Col. 5 line 62- Col. 6 line 49 Figure 2B discloses a plurality of electrode with respective teeth (knives)).
With regards to claim 17, the modified teachings of Sun renders obvious securing the cylindrical section to a disk substrate at the proximal edge. (Sun paragraph [0040])
With regards to claim 19, the modified teachings of Sun renders obvious wherein the teeth have a depth of 0.0005-0.05incles (Sun Claim 3) which renders obvious the teeth are less than 1.0 mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
Allowable Subject Matter
Claims 3-4, 7-9, 11, 18 and 20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The Examiner has rejected the subject atter of independent claim 1 under Sun in view of Thompson. However the cited prior art fails tot each or render obvious wherein the flexible electrode extensions are boot shaped portions of the sheet of conductive material that face a second direction (claim 3); wherein first direction is a first azimuthal direction with respect to the axis with the etched and patterned conductive material formed into the cylindrical section (claim 7); wherein each of the flexible electrode extensions defines a first open-ended gap and a second open-end gap facing opposite directions (claim 11) and wherein the teeth are between 30 pm and 50 pm high at are at an angle of between 2 degrees and 5 degrees with respect to the disk substrate (claim 18). A further search of the prior art has failed to produce analogous art which teaches or renders obvious Applicant’s claimed limitations. Claims 4, 8-9 and 20 are allowable based on their dependency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713
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