DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
2. This action is responsive to the Preliminary Amendment filed 10/30/2024, as well as the “RESPONSE TO RESTRICTION REQUIREMENT” filed 08/26/2026. Claims 1-25 are pending in the application. However, for the reasons noted below (Election/Restrictions), claims 13-24 are withdrawn from consideration. As such, claims 1-12 & 25 have been examined on the merits.
Election/Restrictions
3. Applicant’s election without traverse of Group I (claims 1-12 & 25) in the Reply filed on 08/26/2026 is acknowledged. Claims 13-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Drawings
4. FIGURE 1 should be designated by a legend such as --PRIOR ART-- because only that which is old is illustrated. See MPEP § 608.02(g).
5. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
Claim Rejections - 35 USC § 103
6. 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.
7. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
8. Claims 1-4, 10, & 25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2023/0045240 to Park (“Park”) [of record] in view of U.S. 2016/0331994 to Smith et al. ("Smith").
9. Regarding claim 1, Park teaches an electrode structure for a neural probe that measures bio-logical signals or applies stimulation [e.g., Abstract, ¶’s [0001], , the electrode structure comprising:
a substrate [substrate (110) - ¶’s [0038], [0055]-[0058]; FIG. 1];
electrodes formed on at least one surface of the substrate [plurality of electrode sites (120) - ¶[0038], FIG. 1];
a wiring [interconnector (140) - ¶’s [0039], [0046], [0047]; FIGS. 1-2] formed on the substrate [(110)] and connected to the electrodes [¶’s [0038], [0039], [0046]; FIGS. 1-2];
an insulation layer [overlayer (150) - ¶’s [0053], [0057], [0058]; FIGS. 1-2] configured to cover spaces between the electrodes [electrode sites (120)] on the substrate [(110)] [NOTE: the overlayer (150) includes through holes (openings (151) - ¶[0053]; FIG. 1) to expose the electrodes, meaning that the spaces between the exposed electrodes on the substrate remain covered by overlayer (150)].
HEAT DISSIPATION LAYER
Park does not, however, teach:
a heat dissipation layer disposed on the insulation layer and exposed to an outside.
Smith, in a similar field of endeavor, teaches systems and methods for stimulating neural tissue [e.g., Abstract]. More particularly, and with reference to FIGS. 1A-1B, Smith teaches a neural stimulator (10) for placement on a brain (18) comprising, inter alia, a biocompatible substrate (12) including an optically emissive pixel array (28) having a plurality of dual-mode pixels (32). Each of the dual-mode pixels (32) can be integrated with a transparent cortical surface microelectrode (15) [e.g., ¶[0031]].
Smith further teaches that the dual-mode pixel (32) may be configured to deliver light from an OLED (64) simultaneously with the electrophysiological recording of biopotentials by the neural stimulator (10) from optically stimulated neural tissue [e.g., ¶[0040]].
Smith additionally teaches that the dual mode pixel (32) may include, on an outermost surface opposite to the surface including the OLED (64) and micro-electrodes (34, 37), a heat sink (60) comprising a foil for heat dissipation [see ¶’s [0035], [0038] (“The heat sink 60 may be a foil, for example, that dissipates heat as part of a heat management system”); ¶[0051] (“metal foil layer”); & FIG. 3B].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Park to include a heat dissipation layer on either of the outermost surfaces of the device of Park (i.e., on the bottom surface of the substrate (110) facing outward, and/or on the top surface of overlayer (150) facing outward) in order to provide the benefit/advantage of dissipating heat during treatment, as taught by Smith, in order to avoid unintended thermal injury.
10. Regarding claim 2, the combination of Park and Smith teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Park further teaches wherein the insulation layer [(150)] covers parts of the electrodes [(120)] [NOTE: FIG. 2 of Park (reproduced below) clearly distinguishes between the electrodes (120) (the circular portions and proximally-extending stem portions that are shaded/dark) and the interconnector (140) (not shaded/light); the insulation layer (150) covers the stem parts of the electrodes (120), while the circular portions of the electrodes are exposed through openings (151) as clearly shown in FIG. 1].
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FIG. 2 of PARK
11. Regarding claim 3, the combination of Park and Smith teaches all of the limitations of claim 2 for the reasons set forth in detail (above) in the Office Action.
Park further teaches wherein the insulation layer [(150)] comprises through holes [openings (151) - ¶[0053]; FIG. 1] exposing the electrodes, and an area of the through holes [(151)] is smaller than an area of the corresponding electrodes [explained above in the rejection of claim 2 – again, the circular portions of the electrodes are exposed through the openings (151), while the stem parts of the electrodes are covered – see FIGS. 1,2].
12. Regarding claim 4, the combination of Park and Smith teaches all of the limitations of claim 2 for the reasons set forth in detail (above) in the Office Action.
Park further teaches wherein at least some of the electrodes correspond to the plurality of through holes [clearly seen in FIG. 1; see also ¶[0053]], and a sum of areas of the corresponding through holes is smaller than an area of the electrodes [this logically follows based on the area of the through holes (151) being smaller than an area of the corresponding electrodes – as explained above in the rejection of claims 2 & 3].
13. Regarding claim 10, the combination of Park and Smith teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Park was modified above (in the rejection of claim 1) to include the heat dissipation layer of Smith.
Smith further teaches wherein a material of the heat dissipation layer is electrically conductive [“metal foil layer” – see ¶[0051]], and the heat dissipation layer is disposed apart from the electrodes [Smith, FIG. 3B].
14. Regarding claim 25, the combination of Park and Smith teaches an electrode module for a neural probe, the electrode module comprising:
the electrode structure for a neural probe set forth in claim 1 [see the rejection of claim 1 (above) which is incorporated herein]; and
a main body comprising a circuit part [see Park - broadly, the part comprising contacts (130) (FIG. 1) and interconnector (140) - ¶’s [0038], [0039] (“The interconnector 140 refers to a component consisting of circuits 141 configured to transmit respective electrical signals of the electrode sites 120, circuits 142 configured to transmit respective electrical signals of the contacts 130, and connecting parts with which the circuits are in contact”), [0046]; FIG. 1] connected to the electrodes [(120)] of the electrode structure [¶’s [0038], [0040], [0046]];
wherein the circuit part and the electrode structure are formed on the same substrate [clearly shown in FIG. 1].
15. Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Park and Smith, as applied to claim 1 above, and further in view of U.S. 2019/0076038 to Kim et al. ("Kim").
16. Regarding claims 5-7, the combination of Park and Smith teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
The combination of Park & Smith does not, however, teach:
[claim 5] wherein surfaces of the electrodes each have a depression-protrusion structure;
[claim 6] wherein the surfaces of the electrodes each comprise a depression portion that is lower than the insulation layer; and
[claim 7] wherein the surfaces of the electrodes each comprise a protrusion portion that is higher than the insulation layer.
Kim, in a similar field of endeavor, teaches a neural electrode for measuring a neural signal [e.g., Abstract, ¶’s [0002]-[0003]] comprising a substrate (10), an electrode (20) that includes nanowires (40) having a metal oxide (60) formed thereon, and an insulation layer (30) [see ¶’s [0038]-[0040], & [0047]].
Kim teaches that the benefits/advantages of providing electrode (20) with nanowires (40) include increasing the surface area of the neural electrode (100) such that the impedance of the neural electrode may be less than the impedance of a typical neural electrode, which may result in a reduction in the noise of the neural electrode [e.g., ¶[0061]].
With reference to annotated 9 of Kim (provided below), the electrode (20, 40, 60) has a depression-protrusion structure that includes a series of depression portions [i.e., the spaces/valleys between nanowires (40) at their respective bases where they attach to electrode (20)] and a series of protrusion portions [the distal-most or upper/peak portions of each nanowire (40)].
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Annotated FIG. 9 of Kim
As seen in annotated FIG. 9, the depression portions are lower than a top surface of insulation layer (30), and the protrusion portions are higher than a top surface of insulation layer (30).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Park and Smith such that each electrode (120) of Park be configured similarly to that of Kim (including nanowires (40) having a metal oxide (60) formed thereon) such that surfaces of the electrodes each have a depression-protrusion structure, wherein the surfaces of the electrodes each comprise a depression portion that is lower than the insulation layer, and wherein the surfaces of the electrodes each comprise a protrusion portion that is higher than the insulation layer, since such a modification would provide the benefit/advantage of increasing the surface area of each electrode (120) such that the impedance of each neural electrode may be less than that of a typical neural electrode, which may result in a reduction in the noise of the electrode, as explicitly taught by Kim.
17. Regarding claims 8 & 9, the combination of Park and Smith teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
The combination of Park & Smith does not, however, teach:
[claim 8] wherein the electrodes are higher than the insulation layer; &
[claim 9] wherein surfaces of the electrodes each have a depression-protrusion structure.
Kim, in a similar field of endeavor, teaches a neural electrode for measuring a neural signal [e.g., Abstract, ¶’s [0002]-[0003]] comprising a substrate (10), an electrode (20) that includes nanowires (40) having a metal oxide (60) formed thereon, and an insulation layer (30) [see ¶’s [0038]-[0040], & [0047]].
Kim teaches that the benefits/advantages of providing electrode (20) with nanowires (40) include increasing the surface area of the neural electrode (100) such that the impedance of the neural electrode may be less than the impedance of a typical neural electrode, which may result in a reduction in the noise of the neural electrode [e.g., ¶[0061]].
With reference to annotated 9 of Kim (provided below), the electrode (20, 40, 60) has a depression-protrusion structure that includes a series of depression portions [i.e., the spaces/valleys between nanowires (40) at their respective bases where they attach to electrode (20)] and a series of protrusion portions [the distal-most or upper/peak portions of each nanowire (40)].
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Annotated FIG. 9 of Kim
As seen in annotated FIG. 9, the protrusion portions are higher than a top surface of insulation layer (30).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Park and Smith such that each electrode (120) of Park be configured similarly to that of Kim (including nanowires (40) having a metal oxide (60) formed thereon) such that the electrodes are higher than the insulation layer and wherein surfaces of the electrodes each have a depression-protrusion structure, since such a modification would provide the benefit/advantage of increasing the surface area of each electrode (120) such that the impedance of each neural electrode may be less than that of a typical neural electrode, which may result in a reduction in the noise of the electrode, as explicitly taught by Kim.
18. Claims 11 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Park and Smith, as applied to claim 1 above, and further in view of U.S. 2011/0106231 to Doan et al. ("Doan").
19. Regarding claims 11 & 12, the combination of Park and Smith teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
The combination of Park and Smith does not, however, teach:
[claim 11] wherein a material of the heat dissipation layer is electrically non-conductive; and
[claim 12] wherein parts of the heat dissipation layer come into contact with the electrodes.
Doan, in a similar field of endeavor, teaches that it was well known in the art that a heat spreader could be electrically conductive or electrically non-conductive [e.g., ¶[0040] (“By way of example, the heat spreader 38 may be formed from various materials with good thermal conductive properties that may also be electrically conductive or electrically non-conductive. Sapphire or ceramic materials may be used to form the heat spreader”)].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Park and Smith such that a material of the heat dissipation layer [be] electrically non-conductive, since it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Finally, as modified to be electrically non-conductive, it would have additionally been obvious to then place the electrically non-conductive heat dissipation layer of Park/Smith/Doan on the top/upper surface of the substrate (110) (in contact with the electrode sites (120) and interconnector (140) and contacts (130) of Park) instead of, e.g., on either of the outermost surfaces of the device of Park (i.e., on the bottom surface of the substrate (110) facing outward, and/or on the top surface of overlayer (150) facing outward), since there would be no risk of an electrical short due to the non-conductivity of the heat dissipation layer. Such a modification would amount merely to a rearrangement of parts as an obvious matter of design choice, which is an example of a common practice which the court has held normally requires only ordinary skill in the art, and is hence considered a routine expedient. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Citation of Pertinent Prior Art
20. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2017/0080213 to Wright et al. (“Wright”) teaches a stimulation system (100) that generates electrical pulses for application to tissue of a patient including, e.g., deep brain tissue [¶0022]]. In one embodiment, Wright teaches a paddle structure (340) including an array of electrodes (342) (e.g., a one-dimensional or two-dimensional array) electrically connected to corresponding electrical terminals. Wright additionally teaches that the paddle structure may include a heat spreader [see ¶[0037] (“Optionally, the paddle structure 340 may also include a heat spreader provided thereon to convey thermal energy away from the paddle structure 340”)].
Conclusion
21. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Bradford C. Blaise whose telephone number is (571) 272-5617. The Examiner can normally be reached on Monday - Friday, 8:30 AM - 4:30 PM MST.
Examiner Interviews are available via a variety of formats. See MPEP § 713.01. 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, Joanne M. Rodden, can be reached at telephone number 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADFORD C. BLAISE/Primary Examiner, Art Unit 3794
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