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 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.
Claim 3 is rejected under 35 U.S.C. 112(b) 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation of 30-50% Ir, and the claim also recites preferred ranges of 30-45% Ir and 35-45% Ir which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-4 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al. (US 2022/0175320) in view of Petrossians et al. (Non-Patent Literature) and claim 5 is further rejected in view of Dittmer et al. (US 2018/0339149).
Considering claim 1, Shah teaches thin-film lead assemblies for neural interfaces (abstract) used in stimulation and other treatments (Paragraph 3). The device comprises a supporting structure and one or more electrodes comprising one or more conductive traces (Paragraph 6) (i.e. an electrical conductor). The conductive trace may comprise one or more layers of conductive materials of Pt/Ir alloys (Paragraph 8) or conductive polymers of PEDOT, etc. (Paragraph 9). However, Shah does not teach the claimed iridium content.
In a related field of endeavor, Petrossians teaches a Pt-Ir alloy for microelectrodes for neural stimulation applications (abstract). The alloy is an electrodeposition of Pt-Ir (D269, last paragraph) and has a desirable iridium content of about 42 at.% (D270, last paragraph) and using atomic weight of 192.2 g/mol for Ir and 195.08 g/mol for Pt, this corresponds to a weight ratio of Ir being about 41.6%. The Pt-Ir film has significantly reduced electrochemical impedance (D276, ‘Conclusions’).
As both Shah and Petrossians teach neuro electrodes they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of the PEDOT and metal layers of the Pt-Ir alloy taught by Shah with the composition taught by Petrossians as this is known to display significantly reduced electrochemical impedance and one would have had a reasonable expectation of success. Further, the composition taught by modified Shah overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 2-3, Petrossians teaches an iridium content of about 42 at.% (D270, last paragraph) corresponding to a weight ratio of Ir being about 41.6%. See MPEP 2144.05.
Considering claim 4, Petrossians teaches where the Pt-Ir alloy is formed by electrodeposition (D269, last paragraph) (i.e. galvanically).
Considering claim 5, Shah teaches Pt-Ir alloys, but does not teach the claimed roughness.
In a related field of endeavor, Dittmer teaches multi-contact electrodes (abstract) for neurostimulation (Paragraph 3). The electrode comprises a coating of iridium, platinum, etc. (Paragraph 27) with a surface roughness Ra of at least 0.5 µm (Paragraph 28). The physical properties of the coating are taught be predetermined (Paragraph 27) and the achieved surface roughness is taught to be desirable for electrodes (Paragraph 23).
As Shah, Petrossians, and Dittmer teach electrodes for neurostimulation they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the teachings of Shah and Petrossians with the roughness taught by Dittmer as this is known to be a desired roughness for electrodes and one would have had a reasonable expectation of success. Further, the Ra roughness range taught by modified Shah overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 6-7, Shah teaches where the thickness of the traces may be 0.05 µm (i.e. 50 nm) to 100 µm (Paragraph 71) and Petrossians teaches where the Pt-Ir film is grown at a thickness rate of 16.5 nm/min indicating a known thickness can be predictably deposited (D272 continuing paragraph). See MPEP 2144.05.
Considering claim 8, Shah teaches where the substrate may be any metallic material (Paragraph 69) and discloses metals of Au and Pt (Paragraph 70).
Considering claim 9, Shah teaches where the trace layers may comprise PEDOT, etc. (Paragraph 9).
Considering claim 10, Shah teaches providing the substrate (Paragraph 83) and where the traces and wiring layers may be formed by electroplating, etc. (Paragraph 84).
Considering claim 11, Shah teaches a method of electroplating (Paragraph 84) and Petrossians teaches where the Pt-Ir alloy is formed by electrodeposition (D269, last paragraph) (i.e. galvanically).
Considering claim 12, Shah teaches where the traces and wiring layers may be formed by electroplating (e.g. electrochemical), etc. (Paragraph 84).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Seymour et al. (US 2013/0030275), Troetzschel et al. (US 2017/0182310), and Rapoport et al. (US 2020/0289012) teach similar electrical conductors as that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/ Primary Examiner, Art Unit 1784