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 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.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-5) in the reply filed on 21 February 2026 is acknowledged.
Status of Claims
Claims 1-14 are pending; claims 6-14 have been withdrawn; and claims 1-5 currently are under consideration for patentability.
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.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kuzum et al. (US 2016/0324435 A1) in view of Park et al. (Electrochemical Evaluations of Fractal Microelectrodes for Energy Efficient Neurostimulation. Sci Rep 8, 4375 (2018)).
Regarding claim 1, Kuzum describes an electronic device ([0014]) comprising a platinum-based electrode ([0041] - [0042]: “the electrode comprises a bi-component conductor comprising a metal layer and a graphene passivation layer…the metal is chosen from platinum…”) having a protective layer ([0043]: “the term “passivation layer” and variations thereof, refers to a layer that prevents corrosion and chemical reactions with the underlying layers and the surrounding environment”) thereon that consists of a single monolayer consisting of graphene ([0041]: “graphene passivation layer”) that reduces platinum corrosion of the electrode ([0044]: “by blocking gases from the metal layer, the graphene can prevent corrosion of the metal”).
Regarding claim 1, Kuzum does not explicitly disclose wherein the protective layer increases impedance of the electrode and wherein the electrode has a Vicsek fractal shape.
Regarding the protective layer increasing the impedance of the electrode, the Examiner respectfully submits both the pending claims and Kuzum disclose platinum-based electrodes having a protective layer consisting of a single monolayer of graphene. Therefore, the claimed electrode and the prior art electrode are identical or substantially identical in structure or composition, and, as such, claimed properties or functions are presumed to be inherent (please see MPEP 2112.01). As a result, the Examiner respectfully submits that Kuzum’s protective layer comprising a single monolayer of graphene has a substantially equivalent level of increasing the impedance of the electrode as the protective layer claimed by Applicants.
Regarding the electrode having a Vicsek fractal shape, Park also describes a platinum electrode for use in neurostimulation (p.9, Electrode Fabrication), including wherein the electrode has a Vicsek fractal shape (figure 1). As Park is also directed towards platinum electrodes and is in a similar field of endeavor, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to use a Vicsek fractal shape similar to that described by Park when using the electronic device described by Kuzum, as doing so advantageously allows the resulting electrode to be “more electrochemically efficient in charge transfer during neurostimulation,” as described by Park (p. 6, Discussion).
Regarding claim 2, Kuzum describes wherein at least an exposed outer surface of the platinum-based electrode is formed entirely of platinum or formed entirely of a platinum-iridium alloy ([0042]: “the metal is chosen from platinum, gold, iridium, tungsten, stainless steel, silver, copper, nickel, and alloys or combinations thereof”).
Regarding claim 3, Kuzum describes wherein the electronic device is a neurostimulation device configured to induce therapeutic neuromodulation of neural circuitry in a subject ([0040]: “the electrodes may be neural electrodes, pacemaker electrodes, deep brain stimulation (DBS electrodes), BMI (brain-machine interface) electrodes, intracranial EEG electrodes, penetrating intracortical electrode arrays…or other implantable electrodes connected to treatment or measurement devices…electrodes may be used for electrophysiological research and clinical functional treatments, including deep brain stimulation (e.g., Parkinson's disease, essential tremor, obsessive compulsive disorder, dystonia, and epilepsy), and stimulation of muscles and peripheral nerves (e.g., chronic pain, gastroparesis, bowel incontinence, overactive bladder, urinary retention, and severe spasticity)”).
Regarding claim 4, Kuzum describes wherein the neurostimulation device is an invasive implantable device ([0039]: “a metal implantable electrode”).
Regarding claim 5, Kuzum describes a method comprising chronically implanting the neurostimulation device of claim 3 in the subject to target subcortical, cortical, spinal, cranial, or peripheral nerve structures, modulate neuronal activity, and to provide a therapeutic effect for a neuropsychiatric disorder ([0040]: “the electrodes may be neural electrodes, pacemaker electrodes, deep brain stimulation (DBS electrodes), BMI (brain-machine interface) electrodes, intracranial EEG electrodes, penetrating intracortical electrode arrays…or other implantable electrodes connected to treatment or measurement devices…electrodes may be used for electrophysiological research and clinical functional treatments, including deep brain stimulation (e.g., Parkinson's disease, essential tremor, obsessive compulsive disorder, dystonia, and epilepsy), and stimulation of muscles and peripheral nerves (e.g., chronic pain, gastroparesis, bowel incontinence, overactive bladder, urinary retention, and severe spasticity)”).
Statement on Communication via Internet
Communications via Internet e-mail are at the discretion of the applicant. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. Where a written authorization is given by the applicant, communications via Internet e-mail, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used. USPTO employees are NOT permitted to initiate communications with applicants via Internet e-mail unless there is a written authorization of record in the patent application by the applicant. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Please refer to MPEP 502.03 for guidance on Communications via Internet.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Ankit D. Tejani, whose telephone number is 571-272-5140. The Examiner may normally be reached on Monday through Friday, 8:30AM through 5:00PM EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the Examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Layno, can be reached by telephone at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (in USA or Canada) or 571-272-1000.
/Ankit D Tejani/
Primary Examiner, Art Unit 3796
Prosecution Insights