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 .
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on 05/26/2026 is acknowledged.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/26/2026.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shapero et al. (01-2018, Parylene oil encapsulated low drift implantable pressure sensors).
Regarding claims 1 and 3-7, Shapero discloses parylene-oil-encapsulated pressure sensor comprising first parylene C coating deposited via CVD in 20 to 100,000 cSt of silicone oil, i.e. composition matter comprising a film of liquid silicone oil and parylene in the oil, (page 47, right col and page 48).
Regarding the claimed limitation of parylene dendrites extending through the oil from one surface to an opposing surface, it is noted that given that Shapero discloses the parylene C is deposited via CVD method, the same method as disclosed in the present specification, it is clear that parylene C of Shapero would inherently have the same properties including the dendrite extending though the oil from one surface of the film to an opposing surface.
Regarding the thickness of the oil film, Shapero is silent regarding oil thickness. Since the instant specification is silent to unexpected results, the specific thickness of oil is not considered to confer patentability to the claims. As the stress of parylene and thermal history is a variable that can be modified, among others, by adjusting the thickness of oil, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the oil in the pressure sensor to obtain the desired stress of parylene and thermal history (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the 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 223).
The recitation in the claims that the composition of matter is “for hydrophobic coatings” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Shapero discloses composition of matter as presently claimed, it is clear that the composition of matter of Shapero would be capable of performing the intended use, i.e. hydrophobic coatings, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 2, Shapero discloses the composition of matter of claim 1 wherein given that Shapero discloses the silicone oil with the same viscosity as presently claimed, it is clear that the silicone oil of Shapero would inherently have the same property as claimed in present claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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