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 .
Information Disclosure Statement
The information disclosure statement filed June 3, 2025 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered.
The IDS filed on this date is blank.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12317618. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventive concept of a retinal implant with a photosensitive pixel including stimulating electrodes, a substrate and interface layer is taught by the present application and the US patent 12317618.
In regards to claim 1, 123176618 teaches a system (claim 1) comprising: a retinal implant (claim 1, lines 1-2), wherein the retinal implant comprises: a photosensitive pixel structure (claim 1, line 3) comprising: a substrate layer that includes a front surface (claim 1, line 4); a set of stimulating electrodes disposed on the front surface of the substrate layer (claim 1, lines 5-6); and an interface layer provided at least on a part of the front surface of the substrate layer, wherein the interface layer comprises a front facing layer of the retinal implant (claim 1, lines 7-14).
Claims 2-8 are covered by claims 1-13 in patent 12317618.
Claims 11-13, 15, 16 and 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12317618 in view of Fan (US 20120109296).
In regards to claim 11, 123176618 teaches a system (claim 1) comprising: a retinal implant (claim 1, lines 1-2), wherein the retinal implant comprises: a substrate layer includes a front surface (claim 1, line 4); a set of stimulating electrodes disposed on the front surface of the substrate layer (claim 1, lines 5-6); and an interface layer provided at least on a part of the front surface of the substrate layer, wherein incident light is transmitted through the interface layer to the substrate layer (claim 1, lines 7-18), but does not specifically teach a substrate layer comprising a set of photosensitive diodes. Nisch teaches a substrate layer comprising a set of photosensitive diodes (paragraph 46, fig. 1, 3, 5 and 10). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include photodiodes in the substrate of 12317618 similar to Nisch in order to increase sensitivity and fast response time providing for improved light detection in the substrate.
Claims 12-18 are covered by claims 1-13 of US 12317618 and/or Fan (US 20120109296, fig. 1, 3, 5 and 10) or are obvious variants.
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.
Claim(s) 1-6, 8, 11-13, 16 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nisch et al. (US 20060069416).
Re claim 1: Nisch teaches a system (fig. 1, 3 and 4) comprising: a retinal implant (abstract), wherein the retinal implant comprises: a photosensitive pixel structure (fig. 3 and 4, paragraph 51 and 53) comprising: a substrate layer (70/84/82/68/66) that includes a front surface (front surface facing 58); a set of stimulating electrodes (58) disposed on the front surface of the substrate layer (70/84/82/68/66) (see fig. 3); and an interface layer (52/72) provided at least on a part of the front surface of the substrate layer (70/84/82/68/66) (see fig. 3), wherein the interface layer (52/72) comprises a front facing layer of the retinal implant (fig. 3, where tissue 60 is located front part of retinal implant 80).
Re claim 2: Nisch teaches the system, wherein the interface layer (52/72) reduces reflection of incident light from the substrate layer (paragraph 43 and 47).
Re claim 3: Nisch teaches the system, wherein the interface layer (52/72) increases transmission of incident light through the interface layer to the substrate layer (paragraph 43 and 47).
Re claim 4: Nisch teaches the system, wherein the interface layer (52/72) comprises a first material layer and a second material layer at least partially covering the first material layer (52 of 52/72 includes a plurality of layers alternating, paragraph 43, see fig. 3).
Re claim 5: Nisch teaches the system, wherein the first material layer is at least partially sandwiched between the second material layer and the substrate (see fig. 3, the layers are stacked in 52 of 52/72 and therefore one of the layers is sandwiched between the substrate 70/84/82/68/66 and the other layer, paragraph 43).
Re claim 6: Nisch teaches the system, wherein the first material layer comprises an oxide layer (paragraph 43, the layers are different oxide layers).
Re claim 8: Nisch teaches the system, wherein the retinal implant is a subretinal implant (see fig. 1, abstract, the implant is subretinal inside retina 16).
Re claim 11: Nisch teaches a system (fig. 1, 3 and 4) comprising: a retinal implant (abstract, fig. 1), wherein the retinal implant comprises: a substrate layer (70/84/82/68/66) comprising a set of photosensitive diodes (paragraphs 51 and 53), wherein the substrate layer (70/84/82/68/66) includes a front surface (front surface facing 58); a set of stimulating electrodes (58) disposed on the front surface of the substrate layer (70/84/82/68/66) (see fig. 3); and an interface layer (52/72) provided at least on a part of the front surface of the substrate layer (70/84/82/68/66) (see fig. 3), wherein incident light is transmitted through the interface layer (52/72) to the substrate layer (70/84/82/68/66) (see fig. 3).
Re claim 12: Nisch teaches the system, wherein the interface layer (52/72) increases transmission of the incident light such that absorption of the incident light by the substrate layer is increased (paragraph 43 and 47).
Re claim 13: Nisch teaches the system, wherein the interface layer (52/72) comprises an anti-reflective layer (paragraph 43 and 47).
Re claim 16: Nisch teaches the system, wherein the set of photosensitive diodes are arranged in an array (paragraph 51 and 53).
Re claim 18: Nisch teaches the system, wherein the retinal implant is a subretinal implant (see fig. 1, abstract, the implant is subretinal inside retina 16).
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nisch et al. (US 20060069416) in view of Chuang et al. (US 20140252523).
Re claim 7: Nisch teaches the system, wherein the first material layer comprises an oxide layer (paragraph 43, the layers are different oxide layers), but does not specifically teach the wherein the second material layer comprises a ceramic or a ceramic-like material layer. Chuang teaches an interface layer with a first material layer (237) and a second material layer (901), wherein the first material layer (237) includes an oxide layer (paragraph 50, SiON, SiO2, Ta2O5, AI2O2, HfO) and wherein the second material layer (901) comprises a ceramic or a ceramic-like material layer (paragraph 52, SiC, silicon carbide is a ceramic). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a ceramic like material similar to Chuan with the interface layers of Nisch in order to improve transmission of desired wavelength while reducing undesired wavelengths providing for improved light detection in a desired wavelength range.
Claim(s) 9, 10, 14, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nisch et al. (US 20060069416) in view of Chow et al. (US 20020099420).
Re claims 9 and 19: Nisch teaches projects light pulse signals onto the interface (see fig. 1 and 3), but does not specifically teach goggles projecting the light pulse signal. Chow teaches further comprising goggles (232), wherein the goggles (232) project a light pulse signal onto the interface layer (paragraph 66-68, fig. 6 and 7). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use goggle similar to Chow with the light pulse signals of Nisch in order to secure the device to a user for stimulation of the implant device with eye tracking providing for a more user-friendly design.
Re claims 10 and 20: Nisch as modified by Chow teaches the system, wherein the goggles further comprise a camera (Chow, 236), wherein the light pulse signal is determined based on scene content received by the camera (Chow, paragraph 66-68, see fig. 6 and 7).
Re claim 14: Nisch teaches the substrate layer (70/84/82/68/66) comprising the set of photosensitive diodes (paragraphs 51 and 53), but does not specifically teach wherein the substrate layer comprises trenches between photosensitive diodes of the set of photosensitive diodes, wherein the trenches comprises an electrically isolating material. Chow teaches wherein a substrate layer (200) comprises trenches between photosensitive diodes of the set of photosensitive diodes (68/67/66), wherein the trenches comprises an electrically isolating material (paragraph 41, fig. 4). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a trench to isolate photodiodes in Nisch similar to Chow in order to reduce crosstalk between photodiodes providing for higher quality light detection.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nisch et al. (US 20060069416) in view of Velichko (US 20130200251).
Re claim 15: Nisch teaches the substrate layer (70/84/82/68/66) comprising the set of photosensitive diodes (paragraphs 51 and 53), wherein the substrate layer (70/84/82/68/66) includes the front surface (front surface facing 58), but does not specifically teach wherein a material layer is provided at least on a part of a back surface of the substrate, wherein the material layer comprises a reflective layer. Velichko teaches wherein at least one additional material layer (42) is provided at least on a part of a back surface (back surface facing 42 of 30) of a substrate (30), wherein the at least one additional material layer comprises a reflective layer (42) (paragraph 27). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a reflective layer on the back surface of the substrate in Nisch similar to Velichko in order to ensure the light passing through the substrate is reflected back to the photosensitive element providing for more efficient light detection.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nisch et al. (US 20060069416) in view of Fan (US 20120109296).
Re claim 17: Nisch teaches the system, wherein the set of photosensitive diodes are arranged in an array (paragraph 51 and 53), but does not specifically teach wherein the array comprises a hexagonal array, wherein each hexagon of the hexagonal array comprises a pair of photosensitive diodes of the set of photosensitive diodes. Fan teaches wherein an array comprises a hexagonal array, wherein each hexagon of the hexagonal array comprises a group of photosensitive diodes of the set of photosensitive diodes (paragraphs 48 and 51, pixel units with photodiodes). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to a hexagonal array with a hexagon including a group of photodiodes/pixels similar to Fan with the array of Nisch in order to more compactly fill the detection area allowing for more photodiodes in a smaller design. Nisch as modified by Fan does not specifically teach a pair in the hexagon, but without showing criticality one of ordinary skill in the art would have selected a desired number of photodiodes within the hexagon shape in order to increase sensitivity of the device for higher quality light detection.
Conclusion
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/JENNIFER D BENNETT/Examiner, Art Unit 2878
