DETAILED ACTION
This action is a response to the filing on 4/3/2026. Examiner acknowledges the amendments made to claim 8 and the addition of claims 21-25.
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 have ove4rcome the previous rejections. However, Applicant’s arguments with respect to claim(s) 8-13 have been considered but are moot because the new ground of rejection relies on a different combination of references that addresses the amended claims.
Claim Rejections - 35 USC § 103
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.
Claim(s) 8-13 and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2012/116232 A1 to Greger et al. (hereinafter Greger’232) in view of US 2020/0008299 (Tran et al., hereinafter Tran).
In regards to claim 8 and 25, 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).
Greger ‘232 suggests the presence of a communication circuit and node but does not explicitly disclose the structure of the communication circuit. In a related area, Tran discloses flexible printed electronics (see title and abstract; figures 1, 2, 5A-M; paragraphs 24-352). Tran describes the sensor (16) being connected to a communication circuit (the circuit in the router 3) via a wired or wireless connection (paragraph 40). The node is not explicitly stated; however, Tran discloses that a pre-processor can be placed in the substrate. This pre-processor can be considered as node that receives the raw data for feature extraction (paragraph 25). Tran states that this allows for increased feature detection as well as minimize data transmission size and power consumption. Figures 5A-5M show that the circuits are flexible and can be curved to match surfaces, thus making the substrate comprise a curvature (paragraph 166). Tran states that the circuit configuration allows for the creation of low-cost, high-performance sensors for medical applications with increased feature detection as well as minimized data transmission size and power consumption. Thus, it would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention to modify the device of Greger ‘232 to include a curvature in the silicone substrate in order to match measurement surfaces and allow for low-cost, high-performance sensors for medical applications.
Greger’232 and Tran disclose 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 and Tran 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 and Tran disclose the limitations of claim 8. Greger’232 further shows 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 of Greger ‘232 and Tran 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 and Tran disclose the limitations of claim 8. Greger ‘232 further 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 and Tran disclose the limitations of claim 8. Greger’232 further 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 and Tran disclose the limitations of claim 8. 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 and Tran disclose the limitations of claim 8. 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]).
Regarding claims 21-24, Greger ‘232 and Tran disclose the limitations of claim 8. Tran further states that the substrate can be made into different shapes (paragraphs 27 and 166), with figures 5A-K showing different ways the flexible circuit can be made where there are one or two or more radii of curvature. The limitations of the claims can be considered as changes in shape to match measurement surfaces as noted by Tran (shown in the rejection of claim 8). Changes in shape are not considered inventive outside persuasive evidence that the particular configuration of the claimed shape is significant (MPEP 2144.04).
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.
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/JOSHUA DARYL D LANNU/Examiner, Art Unit 3791
/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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