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 .
Claim Interpretation
Independent claim 8 recites a silicone substrate having a “plurality of open spacings” between a first and second electrode array. This language regarding a “plurality of open spacings” is considered to comprise in its scope arrangements such as those shown in Figs. 2 or 6, i.e. arrangements wherein there are multiple spacings between any two neighboring parallel sensor arrays/tines, such that there must be some manner of interconnect or cross-member spanning between the tines to define two separate openings as shown. The claim language is not considered to read on e.g. Applicant’s Fig. 1, wherein the tines merely run parallel and have a single opening therebetween while being connected to each other only at a common base. That there are a general plurality (n-1) of openings between a plurality (n) of adjacent tines does not satisfy the claim language as presented.
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.
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 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/116232 A1 to Greger et al. (hereinafter Greger’232).
Regarding claim 8 Greger’232 discloses a neural sensor (e.g., abstract describing “systems…for decoding neural signals…compris[ing] a receiver configured to receive a neural signal from each of a plurality of electrodes”; Fig. 9A) comprising: a first one-dimensional array of sensors (e.g., Fig. 9A, the electrode protuberances 502 extending along any one parallel “finger” of the base plane 504, seen as a one-dimensional array as indicated by the illustrated wiring running in only one direction), a second one-dimensional array of sensors (e.g., any other of the electrically connected electrode protuberances extending in parallel along any other “finger” of the grid), a silicone substrate supporting the first array and the second array (e.g., paragraphs [0135], [0137]; base plane 504), the silicone substrate having a thickness of no greater than 0.8 mm (e.g., paragraphs [0134] and [0137] describe thicknesses of less than 0.500 mm and “micro-thickness” to meet the claim limitation) and having a plurality of open spacings between the first array and the second array (e.g., Fig. 9A clearly shows three spacings between any two parallel arrays comprising four electrodes each with cross-members of the base plane 504 spanning between the tines to define the separate openings); and a communication circuit, the communication circuit tethered to a node, the node electrically connected to the first array or the second array or both (e.g., paragraphs [0072], [0085]).
Greger’232 discloses the invention substantially as claimed, but does not expressly disclose wherein at least one sensor in each of the first and second arrays has a mass of 98 mg. However, Greger’232 does disclose ranges of both diameter and thickness of the electrodes, which based on common electrode materials such as titanium and gold having average densities around 20 g/cm3 would give rise to a range of masses from less than 1 mg to approximately 841.9 mg (e.g., paragraphs [0129], [0134]). It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system as taught by Greger’232 with any individual electrode (sensor) having a mass of 98 mg, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art [In re Aller, 105 USPQ 233] and/or since it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ (Please see MPEP 2144.05).
Regarding claim 9, Greger’232 discloses wherein sensors of the first array are circular and are spaced apart from each other at least by their average circumference (e.g., Fig. 9A; paragraphs [0135] and [0137] describing the electrodes having a frustro-conical or round shape; regarding spacing, see Fig. 9A and paragraphs [0129], [0132], [0134]). Even if such were not anticipated, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system as taught by Greger’232 with such a range of spacing, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art [In re Aller, 105 USPQ 233] and/or since it has been held that a prima facie case of obviousness exists where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) .
Regarding claim 10, Greger’232 discloses wherein the first array and the second array are positioned on tines of a triton and wherein the spacing between the first array and the second array is at least 2.0 mm (e.g., Fig. 9; paragraph [0132] describes the inter-electrode spacing being 0.05 to 5 mm, ideally 2 mm to 3mm).
Regarding claim 11, Greger’232 discloses wherein the node is coupled to a transceiver, the transceiver configured to provide contemporaneous reporting of neural signals received from the sensors when external stimulation is provided between sensors of the first one- dimensional array and the second one-dimensional array (e.g., paragraph [0022] – “near real-time” without lag; paragraphs [0072], [0073], [0085], [0086]).
Regarding claim 12, Greger’232 discloses 8 wherein the first one-dimensional array and the second one-dimensional array are parallel to each other (e.g., as shown in Fig. 9A).
Regarding claim 13, Greger’232 discloses wherein the transceiver is configured with an antenna and the transceiver is configured to wirelessly communicate with a system monitor (paragraphs [0072], [0073], [0085], [0086]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER A FLORY whose telephone number is (571)270-5305. The examiner can normally be reached Monday, Tuesday, and Thursday, 8:30am-4:30pm (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached at (571) 270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER A FLORY/Primary Examiner, Art Unit 3792
19 December 2025