Ex Parte Zhou et al

Patent Trial and Appeal Board

Jul 9, 2018

11924763 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/924,763 10/26/2007
28284 7590 07/11/2018
SECOND SIGHT MEDICAL PRODUCTS, INC.
12744 SAN FERNANDO ROAD
Suite 400
SYLMAR, CA 91342
Dao Min Zhou
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
S410-DIV1 1823
EXAMINER
WITTENBERG, STEFANIE S
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
07/11/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SCOTTD@2-SIGHT.COM
MMARSH@2-SIGHT.COM
revans@2-SIGHT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAO MIN ZHOU, JERRY OK,
NEIL HAMIL TON TALBOT, BRIAN V. MECH,
JAMES SINGLETON, and ROBERT J. GREENBERG
Appeal2017-008342
Application 11/924,763
Technology Center 1700
Before TERRY J. OWENS, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for manufacturing an electrode.
Claim 1 is illustrative:
1. A method of manufacturing an electrode with increased
stability, comprising:
a) providing a polymer base layer;
b) depositing a metal layer on the polymer base layer, the
metal layer forming a single electrode base;
Appeal2017-008342
Application 11/924,763
Hung
c) applying polymer top layer covering the edges of the
single electrode base;
d) applying photoresist layer on the single electrode base;
e) patterning the photoresist layer providing a plurality of
openings through the photoresist layer to the single electrode
base;
f) electroplating the openings with metal forming a
plurality of protrusions on the single electrode base;
g) removing the photoresist layer leaving a plurality of
spaces between the plurality of protrusions on the single
electrode base; and
h) filling the plurality of spaces with a polymer cover
layer, wherein the plurality of protrusions extend beyond the
polymer cover layer;
wherein the plurality of protrusions separated by the
polymer cover layer are electrically connected with the single
electrode base extending under the polymer cover layer and
forming part of the single electrode having an increase in
electrode polymer cover layer edge length of the single electrode
as compared with an electrode of the same size without the
polymer cover layer in the spaces.
The References
US 2003/0195601 Al Oct. 16, 2003
M. Maghribi et al., Stretchable Micro-Electrode Array, 2nd Ann. Int'l
IEEE-EMBS Special Conf. on Microtech. in Med. & Biol. 80-83 (2002)
(hereinafter Maghribi).
Gu-Han Kwon et al., Fabrication and Evaluation of the Flexible and
Implantable Soft Micro Electrode for Retinal Prosthesis, Proc. 2006 Int'l
Conf. on Microtech. in Med. & Biol. 188-90 (2006) (hereinafter Kwon).
The Rejections
Claims 1-8 stand rejected under 35 U.S.C. § 103 over Hung in view
of Maghribi or Kwon.
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OPINION
We reverse the rejections. We need address only the independent
claims (1 and 3).
Claim 1 requires a single electrode with a base (Fig. 3A, thin film 5)
having thereon metal protrusions (Fig. 3D, electroplated metal 9) separated
by a polymer cover layer (Fig. 3F, polymer 11) such that the single electrode
has an increase in electrode polymer cover layer ( 11) edge length ( around
the protrusions (9)) as compared with the single electrode without the
polymer cover layer (11) in the spaces (Fig. 3E, spaces 10) between the
protrusions (9) (Fig. 3F) (Spec. 6:25-29; 8:8-15).
Claim 3 requires a single electrode having metal protrusions (Fig. 5C,
electroplated metal 9) separated by a polymer top layer (Fig. 5B, polymer 6)
such that the single electrode has an increase in electrode polymer top
layer (6) edge length (around the protrusions (9)) as compared with the
single electrode without the polymer top layer ( 6) in the spaces between the
protrusions (9) (Fig. 5C) (Spec. 6:25-29; 8:23-26).
Hung makes an electrode by sequentially depositing on a lower
polyimide film (52) (which corresponds to the Appellants' polymer base
layer) a titanium/platinum layer (54, 56) (which corresponds to the
Appellants' single electrode base) and an upper polyimide layer (60) (which
corresponds to the Appellants' top polymer layer), applying to the upper
polyimide layer (60) a photoresist layer (64) and patterning it to provide
openings through the upper polyimide layer ( 60) to the titanium/platinum
layer (54, 56), electroplating the openings with platinum or gold micro
posts (66) (which correspond to the Appellants' protrusions), removing the
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Application 11/924,763
photoresist layer ( 64 ), and advantageously plating the micro posts ( 66) with
a gold/platinum layer (68) (i1i116-18; Fig 2).
Regarding claim 1, Hung does not disclose a layer corresponding to
the Appellants' polymer cover layer ( 11 ). Unlike the Appellants'
protrusions (9) having a polymer cover layer (11) edge length (Fig. 3F),
Hung's plated micro posts (68) each appears to be surrounded by an unfilled
gap (Fig. 2).
With respect to claim 3, Hung does not form the micro posts ( 66) by
filling openings in the upper polyimide film ( 60) such that the micro
posts ( 66) have a polyimide film edge length but, rather, removes that upper
polyimide film ( 60) to form an opening above most of the titanium/platinum
layer (54, 56), forms a photoresist (64) pattern in that opening, forms the
micro posts ( 66) using that photoresist ( 64) pattern, and then removes the
photoresist ( 64) such that the micro posts ( 66) are surrounded by a gap
(i-fi-f 17, 18; Fig. 2).
Maghribi makes a flexible micro-electrode array by patterning thick
photoresist features on a wafer precoated with a metal seed layer, spinning a
poly( dimethylsiloxane) (PDMS) film onto the metal seed layer, stripping the
photoresist to pattern the PDMS film with vias through to the underlying
metal seed layer, electroplating platinum through the PDMS vias to form an
electrical stimulator micro-electrode array, depositing metal traces onto the
PDMS to form an electrical interface to the micro-electrode array, and
selectively encapsulating the micro-electrode array and the metal traces with
a second PDMS layer for electrical passivation (Fig. 2). Maghribi teaches
that PDMS is an inert biocompatible elastomeric material having low water
permeability and high oxygen permeability, and that the conformal nature of
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Application 11/924,763
PDMS is critical for ensuring uniform contact with the curved surface of a
retina (p. 80, right. col. third full para.).
Kwon makes a flexible micro-electrode array by depositing a titanium
layer and then a gold layer onto a PDMS substrate, spinning photoresist onto
the gold layer, developing the photoresist to expose an electrode array
pattern, etching the titanium and gold outside the electrode array pattern, and
removing the remnant photoresist (Fig. 1; p. 189, left col., first full para.).
The PDMS "is soft, elastic, biocompatible and has good water and gas
permeability" (p. 188, left col.). When the PDMS based flexible
micro-electrode array is applied to a retina, "[ t ]he conformal nature of
PDMS is critical for ensuring uniform contact with the curved surface of the
retina" (p. 189, right col., first full para.).
Regarding the rejection of claims 1 and 3 over Hung in view of
Maghribi, the Examiner concludes (Ans. 5---6):
It would have been obvious to produce the method of Hung
with the polymeric material of Maghribi for providing an
electrode for neural or retinal applications with increased
flexibility, biocompatibility, and low water permeability. The
scope of Hung and Maghribi overlap in the field of retinal
electrodes. Both cited references are directed towards the
microfabrication of electrodes for use in retinal applications.
Regarding the electrode polymer cover edge length, the
combination of Hung and Maghribi would result in an increase
in the electrode polymer cover edge length, as compared to an
electrode of the same size without the polymer in the spaces,
since the polymer between the metal protrusions creates
additional edges by contacting the electrode ( e.g. metal
protrusions). Regarding the phrase "compared with an
electrode of the same size without the polymer in the spaces"
the edge length would increase given the increase in edge
length area that is formed between the electrical stimulators and
polymer material of Maghribi. Regarding the phrase
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"electrically connected and common" (instant claim 3), the
plurality of posts 66 of Hung are connected separately to the
metal layer 56 therefore in an electrical environment (i.e.
applying electricity to the metal posts or metal layer) the
plurality of protrusions are "electrically connected and
common" to form a single electrode or single electrode base.
With respect to the rejection of claims 1 and 3 over Hung in view of
Kwon, the Examiner concludes (Ans. 8-9):
At the time of the invention, it would have been obvious
to a person of ordinary skill in the art to produce a method of
forming an electrode wherein polymer is formed between a
plurality of spaces between a plurality of metal protrusions, as
Kwon teaches the method of forming a flexible micro electrode
with a PDMS layer between the electrodeposited metal for
fabricating a conformable electrode for ensuring uniform
contact with a curved surface of the retina and producing an
electrode with good biocompatibility. It would therefore have
been obvious to modify the method of Hung by disposing
polymeric material between the metal protrusions to achieve the
conformability and uniform contact of Kwon. Regarding the
phrase "compared with an electrode of the same size without
the polymer in the spaces" the edge length would increase given
the increase in edge length area that is formed between the gold
plated material and polymer material of Kwon.
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner's finding that "the combination of Hung and Maghribi
would result in an increase in the electrode polymer cover edge length, as
compared to an electrode of the same size without the polymer in the spaces,
since the polymer between the metal protrusions creates additional edges by
contacting the electrode (e.g. metal protrusions)" (Ans. 5---6) does not
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establish that those references would have provided one of ordinary skill in
the art with an apparent reason to make that combination. Also, the
Examiner's findings that "the scope of Hung and Maghribi overlap in the
field of retinal electrodes" ( Ans. 5) and "[b ]oth cited references are directed
towards the microfabrication of electrodes for use in retinal applications"
(id.), and the Examiner's conclusions that "it would have been obvious to
produce the method of Hung with the polymeric material of Maghribi for
providing an electrode for neural or retinal applications with increased
flexibility, biocompatibility, and low water permeability" (Ans. 5), "it would
have been obvious to a person of ordinary skill in the art to produce a
method of forming an electrode wherein polymer is formed between a
plurality of spaces between a plurality of metal protrusions, as Kwon teaches
the method of forming a flexible micro electrode with a PDMS layer
between the electrodeposited metal for fabricating a conformable electrode
for ensuring uniform contact with a curved surface of the retina and
producing an electrode with good biocompatibility" (Ans. 8-9), and "[i]t
would therefore have been obvious to modify the method of Hung by
disposing polymeric material between the metal protrusions to achieve the
conformability and uniform contact of Kwon" (Ans. 9), do not establish that
Hung and either Maghribi or Kwon would have provided one of ordinary
skill in the art with an apparent reason to combine their disclosures in a way
that achieves the increased electrode polymer cover layer edge length
required by the Appellants' claim 1 or the increased polymer top layer edge
length required by the Appellants' claim 3.
Thus, the record indicates that the Examiner's rejections are based
upon impermissible hindsight in view of the Appellants' disclosure. See In
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re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art"). Accordingly, we reverse the rejections.
DECISION
The rejections of claims 1-8 under 35 U.S.C. § 103 over Hung in
view of Maghribi and over Hung in view of Kwon are reversed.
The Examiner's decision is reversed.
REVERSED
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