DETAILED ACTION
This action is pursuant to the claims filed on 08/20/2024. Claims 1-3, 11, 14-15, 21-25, 41-44, 62-64, 67-69 are pending. Claims 21-25, 41-44, 62-64, 67-69 are withdrawn as being directed to a nonelected invention. A first action on the merits of claims 1-3, 11, 14-15 is as follows.
Election/Restrictions
Claims 21-25, 41-44, 62-64, 67-69 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/24/2026.
Applicant's election with traverse of claims 1-3, 11, 14, 15 in the reply filed on 07/24/2026 is acknowledged. The traversal is on the ground(s) that a search and examination of all claims would not present undue burden on the examiner. This is not found persuasive because the shared technical feature does not make a contribution over the art. Applicant’s statement regarding the lack of undue burden on the examiner is merely conclusory and not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/24/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 13 is/are objected to because of the following informalities:
Claim 13 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim must refer to a preceding claim. See MPEP § 608.01(n). In the instant case, the claim refers to claims “1 through 13” the majority of which are canceled (4-10 and 12-13). Claim 13 will be interpreted as “The device of any one of claims 1 through 3, or 11”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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) 1-3, 11, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ham (U.S. PGPub No. 2020/0292482).
Regarding claim 1, Ham teaches A device for performing an electrical assessment in a biological environment, comprising: a substrate having an exposed surface comprised of a plurality of holes (Fig 3C and 6A-H, nanowire array layer defines substrate having exposed surface to neuronal network; Fig 6A-H disclose alternate embodiment of nanowire array having a plurality of holes; [0109] discloses nanowire array can be configured as array of cavity electrodes as described in Figs 6A-H), at least some of the holes being defined by recessed surfaces coated with a conductive material in electrical contact with electrodes (Fig 6A-H [0110]; metal pad 604 with well coated with metal 608 on recessed surfaces define “holes” (i.e. recessed electrodes)), the electrodes each being in electrical contact with the conductive material of at least one of the holes ([0110] conductive material of recess defines a part of the electrodes such that they are in electrical communication with one another); and circuitry controllable to apply one or more stimulus signals to the conductive material of each hole by applying the one or more stimulus signals to the electrode in electrical contact with the hole ([0118] “The electrodes may be used to stimulate the cells”; Fig 8A stimulator 110).
Regarding claim 2, Ham teaches wherein the exposed surface is configured to be exposed to the biological environment (see Fig 3C exposed surface of substrate is exposed to neuronal network).
Regarding claim 3, Ham teaches wherein, for each hole of the at least some of the holes, the conductive material defines an interior that is configured to be exposed to the biological environment (Fig 6H, interior of cavity defined by conductive material is exposed to biological environment (neuronal network) via the holes of each electrode).
Regarding claim 11, Ham teaches wherein one or more holes of the at least some of the holes are in electrical contact with a same electrode (Fig 6H [0110] conductive material of recess defines a part of the electrodes such that they are in electrical communication with one another as claimed).
Regarding claim 15, Ham teaches wherein each hole of at least some of the holes is disposed in a well structure comprised of a wall surrounding the hole such that the wall surrounds at least one hole of the at least some of the holes (Fig 6C metal layer 608 coating inner walls of well [0110]), the wall having a height extending above the exposed surface, the height of the wall corresponding to a depth of the well (height of walls extends above exposed surface 604 and defines depth of well).
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.
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ham in view of Baldwin (U.S. PGPub No. 2024/0269465).
Regarding claim 14, in view of the rejection of claim 1 above, Ham teaches wherein:the holes are circular holes ([0109] shape of chamber may be spherical or cylindrical (i.e., circular hole cross-sections)).
Ham fails to teach the holes include first holes having a first diameter and second holes having a second diameter different from the first diameter.
In related prior art, Baldwin teaches a similar device wherein electrodes may have first diameters and second diameters different from the first diameter (see Fig 2). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified some of the holes defining electrodes of Ham in view of Baldwin to incorporate the holes as circular with some holes having second diameters different from other holes having a first diameter to arrive at claim 14. Doing so would be obvious to one of ordinary skill in the art as the use of electrodes of multiple sizes is well-known in the art to yield predictable results therein (Baldwin [0055]; Ham [0109] disclosing use of any suitable shape). Furthermore, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In the instant case, the combination would not perform differently having all of the holes being uniformly formed with the first diameter rather than having at least two holes having a second diameter different from the first.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam Z Minchella whose telephone number is (571)272-8644. The examiner can normally be reached M-Fri 7-3 EST.
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/ADAM Z MINCHELLA/Primary Examiner, Art Unit 3794
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