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 .
Amendment
This action is in response to the Amendment filed on 1/12/2026.
Claims 1-3, 7, 8 and 10 are pending.
Response to Arguments
Applicant's arguments with respect to claims1-3,7,8 and 10 have been considered but are moot in view of the new grounds of rejection as necessitated by the amendments.
Claim Rejections - 35 U.S.C. & 103 - Wei, U.S. Patent Application Publication No. US2013/0110194A1 ("Wei") in view of Timm et al., U.S. Patent No. 3,646,940 ("Timm") in further view of Lane et al., U.S. Application Publication No. 2011/0054567 ("Lane").
Independent claim 1 is now further amended to recite:
"wherein the optimizing includes at least one of:
altering the phase of at least one of the at least two simultaneous waveforms,
changing the frequency of at least one of the at least two simultaneous waveforms, and optimizing the charge balance time of at least one of the at least two simultaneous waveforms."
Lane was provided to teach that it was well known to optimize a higher priority waveform in two simultaneous waveforms by shifting the pulses so that there is no overlap between the pulses of the two waveforms and thus delaying a pulse of at least one of the two waveforms. Applicant’s arguments respect to Lane’s teachings and in view of the amendments have been considered and are persuasive. Therefore the rejection has been withdrawn.
Upon further search and consideration and upon review of the newly amended claims, the claims have now been rejected as discussed in the current office action.
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 1-3, 7,8 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 12, 16,17 of U.S. Patent Number U.S. 11007368. Although the claims at issue are not identical, they are not patentably distinct from each other because the they are both directed to providing optimized neurostimulation and recite limitations that are similar as shown bin the table below. Further dependent claims 2, 3, and 10 recite limitations that correspond to the dependent claims (7,12 and 2 respectively) of U.S. Patent Number U.S. 11007368
Additionally dependent claims 7 and 8 of the current application that recite that the biocompatible material is flexible and the electrode array applies the two simultaneous waveforms to the patient’s spinal cord are obvious in view of Wei’s (U.S. Patent Application Publication No. US 2013/0110194A1 – previously cited) teachings.
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALLIKA DIPAYAN FAIRCHILD whose telephone number is (571)270-7043. The examiner can normally be reached Monday- Friday 8 am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BENJAMIN KLEIN can be reached at 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MALLIKA D FAIRCHILD/Primary Examiner, Art Unit 3792