DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1 and 4-10 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 recites that the porous material “is in electrical interaction with patient’s tissue,” inferentially including “patient’s tissue” as part of the apparatus claim, which is ineligible subject matter. It is respectfully suggested to recite a porous material “configured to be in electrical interaction with patient’s tissue” (or the like), and such language would obviate this rejection.
The remaining claims are rejected by virtue of their dependency.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bakker et al. (US 2024/0359003, hereinafter “Bakker”).
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
In regards to claim 1, Bakker discloses a neural interface device comprising
an electrically conductive material for transmitting electrical signals (Fig. 4, element 12; par. 0104),
a porous material in electrical contact with the electrically conductive material (Fig. 4, element 10; par. 0096, “nanoporous reduced Graphene Oxide (rGO)”), and
a securing material for securing the porous material on the electrically conductive material (Fig. 4, elements 16 and 14; par. 0106, “electrically insulating layer”, par. 0101, “Polyimide or Liquid Crystal Polymer”),
wherein the securing material comprises a protecting portion which is in physical contact with an edge region of the porous material (Fig. 4),
wherein the porous material comprises a graphene material, the graphene material being reduced graphene oxide (rGO) (par. 0096), and an active surface of the porous material is in electrical interaction with patient's tissue (Fig. 2).
In regards to claim 4, the securing material comprises a polymer selected from polyimide, parylene, polydimethylsiloxane, and SU8 (par. 0101, “Polyimide”; par. 0068, “parylene layer or a polyimide layer”).
In regards to claim 5, the protecting portion protrudes further from the electrically conductive material than the edge region (Fig. 4; extending further vertically than the edge of layer 10).
In regards to claim 6, the protecting portion comprises a covering portion which covers the edge region (Fig. 4; the interface of element 16 to 10 covers the edge of element 10).
In regards to claim 7, at least part of the porous material is arranged between different securing material areas (Fig. 4; between the left and right areas of element 16 and/or between element 16 securing a portion of the top of element 10 and element 14 securing the bottom).
In regards to claim 8, the securing material at each of the different securing material areas comprises covering portions covering opposite edge regions of the porous material (Fig. 4; between the opposite left and right areas of element 16 and/or between element 16 securing a portion of the top of element 10 opposite to element 14 securing the bottom).
In regards to claim 9, the securing material surrounds the porous material on the electrically conductive material (Fig. 4; element 16 surrounds element 10 and element 10 is in electrically conductive material 12).
In regards to claim 10, the edge region of the porous material is covered all around by the covering portion (Fig. 4; par. 0020, “said electrically insulating layer covers the second layer and surrounds (e.g., in a “clamping” fashion) the first layer having the higher electrochemical potential window, while leaving said first layer exposed”).
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.
Claims 1 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kuzum et al. (US 2016/0324435, hereinafter “Kuzum”) in view of Garrido Ariza et al. (US 2022/0144644, hereinafter “Garrido Ariza”).
In regards to claim 1, Kuzum discloses a neural interface device (par. 0040) comprising
an electrically conductive material for transmitting electrical signals (Fig. 5, element 510; par. 0072),
a material in electrical contact with the electrically conductive material (Fig. 5, element 520; par. 0072, “graphene passivation layer”), and
a securing material for securing the porous material on the electrically conductive material (Fig. 5, element 530; “electrically insulating layer”),
wherein the securing material comprises a protecting portion which is in physical contact with an edge region of the porous material (Fig. 5), and
an active surface of the material is in electrical interaction with patient's tissue (par. 0043).
Kuzum does not disclose that the material is a porous reduced graphene oxide (rGO). However, Garrido Ariza in the same field of endeavor of implantable electrodes teaches providing a passivation layer with a porous reduced graphene oxide (rGO) layer (par. 0013) to provide the predictable results of a layer that is capable of providing high charge injection properties in an efficient and consistent manner for the duration of its functional lifetime (par. 0013). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kuzum by providing a passivation layer with a porous reduced graphene oxide (rGO) layer to provide the predictable results of a layer that is capable of providing high charge injection properties in an efficient and consistent manner for the duration of its functional lifetime.
In regards to claim 4, Kuzum discloses the essential features of the claimed invention but does not expressly disclose that the securing material comprises a polymer selected from polyimide, parylene, polydimethylsiloxane, and SU8. However, Garrido Ariza in the same field of endeavor of implantable electrodes teaches providing a securing/encapsulation material comprising polyimide, parylene, or SU8 (par. 0154) to provide the predictable results of a material that is a high contrast, epoxy based photoresist designed for micromachining and other microelectronic applications (par. 0154). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kuzum by providing a securing/encapsulation material comprising polyimide, parylene, or SU8 to provide the predictable results of a material that is a high contrast, epoxy based photoresist designed for micromachining and other microelectronic applications.
In regards to claim 5, the protecting portion protrudes further from the electrically conductive material than the edge region (Fig. 5; extending further vertically than the edge of layer 510).
In regards to claim 6, the protecting portion comprises a covering portion which covers the edge region (Fig. 5; the interface of element 530 covers the edge of element 520).
In regards to claim 7, at least part of the porous material is arranged between different securing material areas (Fig. 5; between the left and right areas of element 520; par. 0072, “encapsulates”).
In regards to claim 8, the securing material at each of the different securing material areas comprises covering portions covering opposite edge regions of the porous material (Fig. 5; between the opposite left and right areas of element 520; par. 0072, “encapsulates”).
In regards to claim 9, the securing material surrounds the porous material on the electrically conductive material (Fig. 5; par. 0072, “encapsulates”).
In regards to claim 10, the edge region of the porous material is covered all around by the covering portion (Fig. 5; par. 0072, “encapsulates”).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 4-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Suwalski et al. (US 2023/0218220) is another example of an edge-protected electrode with a graphene passivation layer.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL W KAHELIN whose telephone number is (571)272-8688. The examiner can normally be reached M-F, 8-5.
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, Benjamin Klein can be reached at (571)270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL W KAHELIN/ Primary Examiner, Art Unit 3792
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