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 .
Claim Objections
Claim 27 is objected to because of the following informalities: claim 27 is dependent on itself. Appropriate correction is required. For claim examination and interpretation purposes, claim 27 presumed to be dependent on claim 26.
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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.
(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.
Claim(s) 16, 17, 21 and 23 – 28 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by He et al. (CN 111 982 988 A; hereinafter “He”).
Regarding claim 16, He teaches a microelectrode array device (Abstract; figure 1; paragraph 24) comprising:
a well for containing a liquid medium (implicit teaching of He when detecting electrochemical signals from nerve cells as disclosed therein using the microelectrode array; paragraph 77);
an optically transparent substrate (quartz glass insulating substrate 1; paragraph 37; figure 2(a));
a microelectrode array (microelectrode array 2; paragraphs 37, 38 and 41; figure 1) comprising:
multiple electrode pads (contacts 5; figure 1), each comprising a conductive film having a thickness between 5 nm and 1,000 nm (the thickness of leads and contacts are between 150 nm – 400 nm; paragraph 16), the conductive film comprising one or both of a carbon nanotube network and graphene (the surface of the microelectrode array 2 is modified with graphene (rGO) for detecting electrochemical dopamine signals released by the nerve cells; figure 3(h));
at least one counter electrode (four groups of microelectrodes in the array comprise a reference electrode located around the insulating substrate, working electrode including a pair of counter electrodes);
electrically conductive traces connecting the electrode pads with a voltage source and connecting the at least one counter electrode with the voltage source such that a potential difference can be provided between the electrode pads and the counter electrode (Example 1).
PNG
media_image1.png
276
604
media_image1.png
Greyscale
Regarding claim 17, He teaches the device of claim 16, wherein the optically transparent substrate is made of glass (quartz glass insulating substrate 1; paragraph 37; figure 2(a)).
Regarding claim 21, He teaches the device of claim 16, wherein the conductive film is deposited using photolithography, plasma chemical vapor deposition and sputtering (paragraphs 17, 47, 49, 51, 52 and 54).
Regarding claim 23, He teaches the device of claim 16, wherein the electrically conductive traces are formed of the same material as the multiple electrode pads (paragraphs 11 – 13, 17 and 39).
Regarding claim 24, He teaches the device of claim 16, wherein the multiple electrode pads are arranged in a grid or repeating pattern (microelectrode array 2; paragraphs 9, 14, 41 and 50; figure 1).
Regarding claim 25, He teaches the device of claim 24, wherein the microelectrode array device further comprises contact pads, positioned on the optically transparent substrate adjacent to the grid of multiple electrode pads, wherein one contact pad exists for each electrode pad; and wherein the electrically conductive traces connect each pair of electrode pad and contact pad (microelectrode array 2; paragraphs 9, 11 – 14, 17 and 35; figure 1).
Regarding claim 26 and 27, He teaches the device of claim 16, wherein the multiple electrode pads are further coated with cellular growth promoters comprising collagen (the microelectrode array is coated with rat tail collagen; paragraph 79).
Regarding claim 28, He teaches the device of claim 16, wherein the conductive film is deposited using chemical vapor deposition (CVD) (paragraph 54), which implicitly includes aerosol chemical vapor deposition (CVD) dry deposited by press-transfer.
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 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.
Claim(s) 18 – 20, 29 – 31 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (CN 111 982 988 A; hereinafter “He”) in view of Kuzum et al. (WO 2015/153958 A1; hereinafter “Kuzum”).
Regarding claim 18, He does not specifically teach the device of claim 16, wherein each electrode pad comprises a surface area of between 1 µm² and 1,000 µm².
Regarding claim 19, He does not specifically teach the device of claim 16, wherein each electrode pad comprises a surface area of between 1 mm² and 100 mm².
Regarding claim 30, He does not specifically teach the device of claim 16, wherein each electrode pad comprises a surface area of between 1 mm² and 10 mm².
Regarding claim 31, He does not specifically teach the device of claim 16, wherein each electrode pad comprises a surface area of between 10 µm² and 100 µm².
However, Kuzum teach a related microelectrode array having an electrode of similar dimensions (a 50 × 50 µm2 single graphene electrode; page 3, lines 9 – 15; figure 3(a)). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide an electrode pad having the recited similar dimensions.
Regarding claim 20, He does not specifically teach the device of claim 16, wherein each electrode pad has an optical transmittance within the wavelength spectrum 250 nm to 900 nm of at least 70%.
Regarding claim 29, He does not specifically teach the device of claim 16, wherein each electrode pad has an optical transmittance within the wavelength spectrum 250 nm to 900 nm of at least 90%.
Regarding claim 33, He does not specifically teach the device of claim 16, wherein each electrode pad has an optical transmittance within the wavelength spectrum 250 nm to 3,000 nm of at least 70%.
However, Kuzum teach a related microelectrode array comprising an electrode pad having the pertinent recited optical transmittance properties (page 7, lines 19 – 22; page 8, lines 1 – 9). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide an electrode pad having the recited optical transmittance properties.
Claim(s) 22 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (CN 111 982 988 A; hereinafter “He”) in view of Vafaiee Mohaddeseh et al. (“Carbon Nanotube modified Microelectrode Array for Neural Interface”, Frontiers in Bioengineering and Biotechnology, Vol. 8, 13 January 2021 (Cite No. NPL2 on page 1 of the IDS filed 1/17/2025 by Applicant); hereinafter “Mohaddeseh”).
Regarding claim 22, He does not specifically teach the device of claim 16, wherein the conductive film comprises a carbon nanotube network film with a thickness of between 10 nm and 400 nm.
Regarding claim 32, He does not specifically teach the device of claim 16, wherein the conductive film comprises a carbon nanotube network film with a thickness of between 30 nm and 200 nm.
However, Mohaddeseh teaches a carbon nanotube modified microelectrode array comprising a carbon nanotube network film with a thickness of 100 nm on a glass substrate (figure 1; pages 2 and 3, Materials and Methods, Device Fabrication section). Carbon nanotubes were used to increase the conductivity of, and thereby detection sensitivity of, the electrode, and to also improve adhesion of cells to the electrode surface (page 3, left column, sole paragraph). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide a conductive film comprising a carbon nanotube network film with a thickness within the specified range.
Claim(s) 34 – 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over He et al. (CN 111 982 988 A; hereinafter “He”) in view of Kuzum et al. (WO 2015/153958 A1; hereinafter “Kuzum”).
Regarding claim 34, He teaches a microelectrode array device (Abstract; figure 1; paragraph 24) comprising:
a well for containing a liquid medium (implicit teaching of He when detecting electrochemical signals from nerve cells as disclosed therein using the microelectrode array; paragraph 77);
an optically transparent substrate (quartz glass insulating substrate 1; paragraph 37; figure 2(a));
a microelectrode array (microelectrode array 2; paragraphs 37, 38 and 41; figure 1) comprising:
multiple electrode pads (contacts 5; figure 1), each comprising a conductive film having a thickness between 5 nm and 1,000 nm (the thickness of leads and contacts are between 150 nm – 400 nm; paragraph 16), the conductive film comprising one or both of a carbon nanotube network and graphene (the surface of the microelectrode array 2 is modified with graphene (rGO) for detecting electrochemical dopamine signals released by the nerve cells; figure 3(h));
at least one counter electrode (four groups of microelectrodes in the array comprise a reference electrode located around the insulating substrate, working electrode including a pair of counter electrodes);
electrically conductive traces connecting the electrode pads with a voltage source and connecting the at least one counter electrode with the voltage source such that a potential difference can be provided between the electrode pads and the counter electrode (Example 1).
depositing cells or tissue on the microelectrode array within the well (implicit teaching of He when detecting electrochemical signals from nerve cells as disclosed therein using the microelectrode array; paragraph 77); and
measuring one or both of the voltage and current from each of the electrode pads (paragraphs 83 – 87).
He does not specifically teach the step of imaging the cells or tissue using one or both of an optical and fluorescence microscope.
Kuzum teaches the combined use of optically transparent microelectrode array with optical imaging for a method for simultaneously optical imaging and electrical sensing of a sample (page 2, lines 1 – 5; optical microscope (page 8, lines 25 – 30); page 20, lines 2 – 16; claims 13 and 16). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 82 USPQ2d 1385 (2007) has affirmed that the threshold requirement for a prima facie case of obviousness is “demonstrating that each element was, independently, known in the prior art.” Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the use of the microelectrode array taught by He and optical imaging for sample studies. Examiner submits that these arguments are in line with the Supreme Court unanimous opinion, KSR International v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007), in which the Court stated that “[a] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 1731.
Regarding claim 35, Kuzum teaches wherein the measuring and imaging are performed simultaneously (claim 13; page 11, lines 31 – 37).
Regarding claim 36, Kuzum teaches including a further step of introducing a biochemical reagent to the well during the measuring (e.g., calcium imaging and voltage sensitive dye imaging; page 8, lines 14 – 37).
Regarding claim 37, Kuzum teaches wherein the biochemical reagent includes one or more of the following: a neurotransmitter, a pharmacological agent, and a cell signal mediator (e.g., calcium imaging; page 8, lines 14 – 37; or an active pharmaceutical ingredient; page 9, lines 23 – 29).
Regarding claim 38, He teaches including a further step of stimulating the cells or tissue by providing a voltage difference between the electrode pads and the at least one counter electrode (paragraphs 83 – 87).
Regarding claim 39, Kuzum teaches wherein the imaging includes fluorescent imaging of fluorescently labeled cells or tissues (e.g., page 19, lines 23 – 36).
Regarding claim 40, He teaches wherein measuring includes performing one or more of the following measurements of the electrode pads: chronoamperometric (paragraph 86), voltametric and impedimetric.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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, Lyle Alexander can be reached at (571) 272-1254. 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 (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
Prosecution Insights