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 . Claims 1-11 are currently pending, with claims 9-11 being withdrawn via the Election on 12/15/2025 without traverse.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities: there is a lack of a semicolon at the end of clause (a). Appropriate correction is required.
Claim Interpretation
The Applicant is claiming a fan-shaped substate in claims 1 and 6, however the shaping of the substrate (fan-shaped) is considered an intermediate step as it is to be rolled into a cone. So long as a substate is conical in its final shape the limitation is considered met as per MPEP 2114 as a product-by-process limitation. There is no support in the original disclosure for a final product including electrodes on a fan-shaped substrate. It should also be noted that though a 112 second is not formally included, “fan-shaped” is given minimal patentable weight as the shaping of a fan can be almost anything (see any Dyson fan, ceiling fan, etc.). For purposes of prosecution, the fan-shaped substrate limitation of claims 1 and 6 is simply being read as a substrate that includes a dielectric material that should be capable of becoming a conical shape.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kennedy US Publication 2020/0069207 (hereinafter Kennedy).
Regarding claim 1, an electrode array, comprising: a fan-shaped substrate member (110) that includes a dielectric material ([0025]) and that has a triangular portion with a convexly curved base from which a first side and an opposite second side extend to a truncated apex that includes a concavely curved surface (element 110 which is a cone and made of dielectric materials as per [0025]; the fan-shape is addressed above in the claim interpretation section of this action); an elongated lead member that includes the dielectric material and that extends from the base adjacent to a selected one of the first side and the second side, is contiguous with the fan-shaped substrate member (lead 124 includes dielectric material 126 around each of the wires); a plurality of wires that are each embedded in the fan-shaped substrate member and the elongated lead member (wires 124, where the wires are within dielectric material of the ribbon 126 and is within the confines of the cone of 110); and a corresponding plurality of electrodes (122 as per Figure 1), each of which is electrically coupled to a different one of the plurality of wires and each of which includes an exposed surface (122 which connect to wires 124 as per Figure 1).
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 non-obviousness.
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 2-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kennedy in view of Moxon et al. US Patent 6,834,200 (hereinafter Moxon).
Regarding claim 2, Kennedy discloses the use of polyamide as the material choice for the dielectric of 110, they are silent as to using polyimide. Moxon teaches an implantable neural array that includes a dielectric material made of polyimide over another substrate (substrate 2 with polyimide as a dielectric as per column 2 line 59 through column 3 line 3, see also column 5 lines 60-63 which details polyimide insulation around the entire electrode, where electrode in Moxon is the entire device minus where the recording sites/electrodes are to be exposed). Given that it is incredibly well-known to utilize polyimide for implantable insulation of electrodes and wires/traces, it would have been obvious to the skilled artisan before the effective filing date to utilize the polyimide of Moxon in lieu of the polyamide of Kennedy as predictable results would have ensued (better biocompatibility, greater flexibility, and superior electrical/thermal insulation).
Regarding claim 3, Kennedy discloses an insulating cone that defines a cavity therein that opens to an open base and an oppose open vortex (Figure 1 at element 110), which is dielectric in nature however is silent on another dielectric material placed over it. Moxon teaches a substrate member (column 5 lines 60-63, and as mentioned above) that is to be placed across the entire electrode/wire surface (traces 7 over insulating substrate 2) with the layers being in total contact with each other outside where the traces/electrodes are). The fan-shaped aspect was mentioned above. There is no direct mention of the substrate member being conical however, if it is to fully cover the surface that houses the embedded electrodes/traces as Moxon does detail, it would have to be conical to meet the shaping requirements of Kennedy. It would have been obvious to the skilled artisan before the effective filing date to utilize the polyimide of Moxon in lieu of the polyamide of Kennedy as predictable results would have ensued (better biocompatibility, greater flexibility, and superior electrical/thermal insulation).
Regarding claim 4, Kennedy discloses that the insulating cone comprises a glass ([0025] where the cone 110 is made of quartz or glass, the broadness of claim 1 requires a different interpretation of which is the cone and which is the “fan-shaped” dielectric, the dielectric is rendered obvious above via Heller).
Regarding claim 5, Kennedy discloses utilizing a trophic factor placed inside of the cavity defined by the insulating cone ([0025]).
Regarding claim 6, see contents of rejected claims 1, 3-4 above.
Regarding claim 7, see contents of rejected claim 2 above.
Regarding claim 8, see contents of rejected claims 3-5 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian M Antiskay whose telephone number is (571)270-5179. The examiner can normally be reached M-F 10am-6pm EST.
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/BRIAN M ANTISKAY/Examiner, Art Unit 3794
6/JOSEPH A STOKLOSA/ Supervisory Patent Examiner, Art Unit 3794