DETAILED ACTION
Applicant’s response, filed December 4, 2025, is fully acknowledged by the Examiner. Currently, claims 1-7 are pending. The following is a complete response to the December 4, 2025 communication.
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 .
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.
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.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Stone et al. (US Pat. Pub. 2008/0188912 A1) further in view of Li et al. (CN104479456A) ***the machine translation appears in the NPL document with date September 4, 2025 in the application file wrapper***.
Regarding claim 1, Stone provides for an intracorporeal member (see figures 2 and 3), comprising: an elongate body having a distal end side (balloon catheter 12), and an electrode disposed on the distal end side (one of electrodes 38), wherein at least the distal end side is to be inserted into a body (12/14/20 are capable of being inserted into the body), the electrode includes a first layer and a second layer arranged in a thickness direction of the electrode (see [0068] with the first layer of photocurable ink; the second layer being the conductive material coating the electrode pad), at least a part of the second layer being located at a position farther away from the elongate body than the first layer (given that the second layer is external to the first layer, the second layer would be further radially away from the longitudinal axis of the elongate body), and the second layer contains gold as a main component (see [0068] providing for the use of gold as the conductive material).
Stone fails to specifically provide that the first layer contains silver, gold, and carbon as main components, and contains carbon in a largest amount among silver, gold, and carbon. Li discloses an exemplary manner of providing for a printable conductive ink as that of Stone wherein the ink includes silver, gold, and carbon as main components (see the disclosure throughout of the ink being either “gold-embedding-silver-graphite alkene aqueous ink” or “ a composite of graphene and gold-embedding-silver oxide nano particle”. Li further provides that the ink contains carbon in a largest amount among silver, gold, and carbon (see at least claim 1 that provides for the mass ratio of the gold-coated silver nanoparticles to graphene or graphene oxides to be less than or equal to 100).
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the conductive ink as in Li as the ink in Stone that forms the printed conductive first layer. Li further contemplates that such a first layer construction provides for an exemplary mounting location for coating with a second layer of gold (as already contemplated in Stone as noted above) with the combination resulting in a conductive electrode that maintains a desired conductivity, improved the electrode stability and resists oxidation.
Regarding claim 2, Stone provides that the elongate body is a shaft having a tubular shape and having flexibility, and the intracorporeal member is a catheter (the entirety of 12 is a catheter and includes a tubular shape as the elongate body for catheter body 14).
Regarding claim 3, Stone provides for a balloon disposed on a distal end side of the shaft (balloon 20), the balloon being inflatable by a fluid supplied from a proximal end side of the shaft (via inflation lumen 24), wherein the electrode is disposed on a surface of the balloon (electrode 34 is on the surface of 20).
Regarding claim 4, Stone provides that the first layer is in contact with the surface of the balloon, and the second layer is located on an outer surface of the electrode (via the first layer per [0068] of Stone being printed on the balloon 20 and the second layer being placed on the electrode pad of the first layer).
Regarding claim 5, Stone provides that the second layer has a lower content of at least one of silver and carbon than the first layer (given that the second layer is formed from gold, such would have a lower content of silver and carbon than the first layer).
Regarding claim 6, Stone provides that an end portion of the first layer is covered with the second layer (via the end portion at the electrode pad per [0068] is coated with the second layer).
Regarding claim 7, Stone provides for an electrode (electrode 34 formed as in [0068]) for an intracorporeal member including an elongate body having a distal end side, at least the distal end side being configured to be inserted into a body, the electrode being disposed on the distal end side. The Examiner notes that the preceding limitations are presented in the preamble of the claim after the transitional term of “for”. See MPEP 2111.02 discussing the effects of claim limitations appearing in the preamble. In the instant case, the Examiner is of the position that the recited limitations in the preamble have a minor effect on the overall scope of the claim in that the claimed electrode. Thus, the Examiner is of the position that an electrode 34 of Stone is capable of being used with the claimed structure appearing after the transitional term. For the sake of completeness, the Examiner notes that Stone does indeed provide for each of the claimed structural/functional features in the preamble as set forth in the rejection of claim 1 above.
Stone further provides that the electrode comprises a first layer and a second layer arranged in a thickness direction of the electrode (see [0068] with the first layer of photocurable ink; the second layer being the conductive material coating the electrode pad), a at least a part of the second layer being located at a position farther away from the elongate body than the first layer (given that the second layer is external to the first layer, the second layer would be further radially away from the longitudinal axis of the elongate body), and the second layer contains gold as a main component (see [0068] providing for the use of gold as the conductive material).
Stone fails to specifically provide that the first layer contains silver, gold, and carbon as main components, and contains carbon in a largest amount among silver, gold, and carbon. Li discloses an exemplary manner of providing for a printable conductive ink as that of Stone wherein the ink includes silver, gold, and carbon as main components (see the disclosure throughout of the ink being either “gold-embedding-silver-graphite alkene aqueous ink” or “ a composite of graphene and gold-embedding-silver oxide nano particle”. Li further provides that the ink contains carbon in a largest amount among silver, gold, and carbon (see at least claim 1 that provides for the mass ratio of the gold-coated silver nanoparticles to graphene or graphene oxides to be less than or equal to 100).
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the conductive ink as in Li as the ink in Stone that forms the printed conductive first layer. Li further contemplates that such a first layer construction provides for an exemplary mounting location for coating with a second layer of gold (as already contemplated in Stone as noted above) with the combination resulting in a conductive electrode that maintains a desired conductivity, improved the electrode stability and resists oxidation.
Response to Arguments
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive.
Applicant argues with respect to the rejection of claim 1 under 35 U.S.C. 103 as unpatentable over the combination of Stone in view of Li on pages 2-3 of the Remarks filed December 4, 2025.
Therein, Applicant sets forth that Li provides for “graphene-based aqueous ink containing gold-coated silver particles” that is utilized to obtain “a transparent pattern electrode” and further contends that “it is meaningless to impart transparency to the photocurable ink underneath” such that “skilled persons would not have been reasonably motivated to employ the graphene-based aqueous ink of Li in Stone in place of photocurable ink”. Applicant further argues that “assuming arguendo that the graphene-based aqueous ink of Li is employed in Stone in place of photocurable ink, skilled persons would have avoided coating the transparent electrode formed by the ink with Ni/Au” as in Stone.
These arguments are not persuasive.
As a preliminary matter, the Examiner notes that it is well established that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, the Examiner is of the position that the secondary teaching of Li would readily be appreciated by one of ordinary skill in the art for providing a known alternative manner of manufacturing an electrically conductive layer on a desired substrate. Stone, itself contemplates the for the use of printing of a conductive material on the balloon surface in [0068] with Li further providing a similar manner of such printing. The mere fact that the material is Li is transparent would not, in the Examiner’s opinion, render the combination as nonobvious as alleged by Applicant. The material in Li is suitable for forming the conductive patterns contemplated in Stone regardless of whether or not the material of Li is transparent. Further, Li contemplates the ability to provide the conductive patterning on a variety of materials that would overlap materials known in the construction of balloons in the electrosurgical art including polyethylene terephthalate, polyethylene, polyvinyl chloride and polyurethane.
The Examiner is further of the position that Applicant’s attempt to narrowly construe the view of what materials one of ordinary skill would appreciate as obvious to use in place of the material of Stone to only be those that are opaque to some degree fails to consider the totality of the teaching of each of Stone and Li. To reiterate, Stone is already contemplating printed conductive materials on its balloon surface in paragraph [0068] and Li provides for known alternative materials that can be printed on similar substrates for achieving a conductive layer. Accordingly, the Examiner notes that the disclosure of Li would be analogous to both the instant invention as well as to the disclosure of Stone in that each is in the field forming conductive electrodes on a desired substrate. Further both the disclosure of Stone and Li would be particularly pertinent to the particular problem with which the inventor was concerned in the providing of depositing conductive materials on a substrate.
As such, the Examiner cannot find Applicant’s argument that there is no reasonable motivation to employ a graphene-based aqueous ink as in Li in place of the photocurable ink as persuasive when Li is particularly concerned with an alternative manner of generating a conductive pattern in the art, when the manner of forming the conductive pattern in Li does not teach away or other render the prior art combination unsatisfactory for its intended purposed, and when Li highlights advantages utilizing such aqueous-based inks over the prior art including simple preparation process, easy operation and a controllable product.
Applicant further argues on pages 2-3 that “Li fails to explicitly teach ‘the first layer contains … contains carbon in a largest amount among silver, gold, and carbon’.” The Examiner fails to find this argument as persuasive. The Examiner is of the position that the disclosure of “graphene” would be readily appreciated as formed from carbon as required by the claim and with cited claim 1 in Li providing for the mass ratio of the gold-coated silver nanoparticles to graphene being less than or equal to 100 supporting a ratio where the carbon-based graphene is in greater amounts than any of silver or gold. Accordingly, the Examiner cannot find Applicant’s allegation as persuasive in view of the reasoning above.
Therefore, it is for at least the reasoning set forth in the rejections and remarks above that the Examiner maintains that the rejection of claims 1-7 under 35 U.S.C. 103 as unpatentable over the combination of Stone in view of Li remains tenable.
Conclusion
THIS ACTION IS MADE FINAL. 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 RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
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/Ronald Hupczey, Jr./ Primary Examiner, Art Unit 3794
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