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 .
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) ***See the attached machine translation of this document***.
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.
Conclusion
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