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
Claim 2 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/09/2026.
Applicant's election with traverse of Claim 1, 3-20 in the reply filed on 07/09/2026 is acknowledged. The traversal is on the ground(s) that different classification is not enough reason to restrict claims and USPTO examines application of various types. This is not found persuasive because the non elected invention requires method steps (etching) that are not required in the elected invention.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/30/2025 is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: {105,107} in Fig. 1A. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
NOT AN OBJECTION
Is “114” pointing at the right location in Fig. 1A when compared to Fig. 1B
Is the region above “118” in Fig. 4-7 to 4-9 “124”?
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “INTEGRATED ELECTRODE AND a-SiC-PI RIBBON CABLE STRUCTURE”.
Claim Objections
Claims 9 and 18 are objected to because of the following informalities:
“the conductive material … the group” in Claim 9 should be “a conductive material … a group”
“the central longitudinal (x) axis” in Claim 18 should be “a central longitudinal (x) axis”
Appropriate correction is required.
Allowable Subject Matter
Claims 14-17 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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(s) 1, 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (US2020/0303236).
Regarding Claim 1. Li teaches, in Fig. 3D, an electrode comprising: an electrode body comprising a length down a central axis, wherein the electrode body comprises a flexible, stretchable ribbon cable portion (76) comprising at least one trace comprising a conductive material ([0113]), at least one stiff and penetrable electrode shank site portion (42) comprising at least one trace comprising a conductive material, and a transition portion (72) between the ribbon cable portion and the at least one stiff and penetrable electrode shank site portion.
Regarding Claim 3. Li teaches the electrode of claim 1, wherein the electrode body comprises a substrate (implicit).
Claim(s) 1, 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wellman (Neural Interface Design).
Regarding Claim 1. Wellman teaches, in Fig.7, an electrode comprising: an electrode body comprising a length down a central axis, wherein the electrode body comprises a flexible, stretchable ribbon cable portion (wire bundle) comprising at least one trace comprising a conductive material (implicit), at least one stiff and penetrable electrode shank site portion (inset area) comprising at least one trace comprising a conductive material (implicit), and a transition portion (platform) between the ribbon cable portion and the at least one stiff and penetrable electrode shank site portion.
Regarding Claim 3. Wellman teaches the electrode of claim 1, wherein the electrode body comprises a substrate (implicit).
Regarding Claim 4. Wellman teaches the electrode of claim 3, wherein the substrate comprises a first polymer layer [implicit, ( page 15 column 1- last 4 lines; page 15 column 2 last paragraph) (page 5 column 2 section 2.2, page 6 column 2 first paragraph, second paragraph) gives usual material choices that would be used] .
Regarding Claim 5. Wellman teaches the electrode of claim 4, wherein the first polymer layer comprises polyimide [implicit, (page 15 column 1- last 4 lines; page 15 column 2 last paragraph) (page 5 column 2 section 2.2, page 6 column 2 first paragraph, second paragraph) gives usual material choices that would be used].
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.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim(s) 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wellman in view of Chen (Development Retinal Implant).
Regarding Claim 6. Wellman teaches the electrode of claim 3, but does not teach the electrode body comprises a first ceramic layer deposited upon the substrate.
Chen teaches, in Fig. 8, the electrode body comprises a first ceramic layer (SiC) deposited upon the substrate (base polyimide).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode as disclosed by Li with the electrode body as disclosed by Chen in order to provide a water vapor barrier (page 4 column 2).
Regarding Claim 7. Wellman and Chen teaches the electrode of claim 6, wherein the first ceramic layer comprises a silicon carbide (Chen, see Fig. 8).
Regarding Claim 8. Wellman and Chen teaches the electrode of claim 6, wherein the electrode body comprises a conductive material layer deposited upon the first ceramic layer (Chen, Fig. 8- around SiC).
Regarding Claim 9. Wellman and Chen teaches the electrode of claim 8, wherein the conductive material layer comprises the conductive material selected from the group comprising at least one of copper, silver, gold and aluminum (Chen, Fig. 8- gold).
Regarding Claim 10. Wellman and Chen teaches the electrode of claim 8, wherein the electrode body comprises a second ceramic layer deposited upon the conductive material layer (Chen, Fig. 8- top SiC layer).
Regarding Claim 11. Wellman and Chen teaches the electrode of claim 10, wherein the second ceramic layer comprises a silicon carbide (Chen, see Fig. 8).
Regarding Claim 12. Wellman and Chen teaches the electrode of claim 10, wherein the electrode body comprises a second polymer layer deposited upon the second ceramic layer (Chen, see Fig. 8).
Regarding Claim 13. Li and Chen teaches the electrode of claim 12, wherein the second polymer layer comprises polyimide (Chen, see Fig. 8).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Case Law.
Regarding Claim 18. Li teaches the electrode of claim 1, wherein the ribbon cable portion is stretchable to at least 150% of its length down the central longitudinal (x) axis, such as at least 170%, such as at least 190%, such as at least 200%, such as at least 210%, or such as at least 220% of its length down the central axis (since the substrate material is polyimide which is highlighted or taught in Li , therefore the stretchable limitation (a material property) would be taught by Li – see MPEP 2112.01II)(in order to prevent any breaking of the ribbon cable during use in the body).
Regarding Claim 19. Li teaches the electrode of claim 18, wherein the ribbon cable portion maintains an electrical connection along its length when stretched (Li discloses that the use of PI is known in the art for neural interface and does not indicate any problem with PI with regards to stretching thus the ribbon cable portion would maintains an electrical connection when stretched).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is presented in the Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUHAMMED AZAM whose telephone number is (571)270-0593. The examiner can normally be reached Mon-Fri 11:00am-5:00pm.
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, TIMOTHY DOLE can be reached at (571) 272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MA/Examiner, Art Unit 2847
/Timothy J. Dole/Supervisory Patent Examiner, Art Unit 2847
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