DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 February 2026 has been entered.
Response to Arguments
Applicant's arguments filed 16 February 2026 have been fully considered and are partially but are not persuasive.
Applicant argues that the cited prior art fails to disclose a “control unit configured to receive a temperature input related to the charging of the internal energy source, and control the charging of the internal energy source on the basis of the received temperature input.” Wang ‘431, as admitted by Applicant, teaches that temperature can be used to manage the level of charging over time to minimize temperature increases. Wang ‘431 does not do so based on receiving a temperature signal. However, Wang ‘665 teaches the steps of receiving a temperature input and taking action based on that input. Taken together, the references reasonably teach the steps of receiving a temperature input and taking action based on that input (Wang ‘665), wherein the action may be controlling the charging (Wang ‘431).
Applicant does not separately argue the rejections over Charych or Torgerson, so the Examiner is maintaining those rejections.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 240-242, 245-250, and 252-259 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 2004/0147871 to Burnett in view of US 5,702,431 to Wang et al, further in view of US 5,991,665 to Wang et al.
In the specification and figures, Burnett discloses the apparatus substantially as claimed by Applicant. With regard to claims 240, 241, 242, 246-248, 249, 254, Burnett discloses an apparatus for drainage of body fluid comprising a pump 16, an implantable energy source with a storing device in the form of a rechargeable battery, a tube 11 connected to pump 16, wherein the apparatus may be used to pump fluid from ascites in the abdomen to another location, while providing feedback (see FIGS 7, 14, ¶011, 17, 0048, 0041, 0056). Burnett suggests an external energy source and a remote control, but fails to disclose a control unit.
Wang discloses a charging system for an implanted medical device 14 with a battery 13 comprising control circuitry that is configured to manage the level of charging current over time to minimize temperature increases (and resultant tissue damage) while maximizing charging efficiency (see column 3, lines 40-60, column 4, lines 45-53, column 7, lines 40-45). Accordingly, it would have been obvious to a person having ordinary skill in the art at the time of invention to add a current control system as disclosed by Wang ‘431 to the charging system disclosed by Burnett in order to maximize charging and efficiency and avoid harm to the patient, as taught by Wang.
In the specification and figures, the cited prior art suggests the invention substantially as claimed by Applicant (see rejections above). With regard to an implanted temperature sensor, the cited prior art does not disclose a temperature sensor implanted within a patient. Wang ‘431 teaches managing charging current to minimize temperature elevation, but lacks a real-time control loop to vary the current. Wang ‘665 discloses a charging control procedure for an implanted device wherein the temperature sensor 98 is located within the patient (see FIG 9, column 7, lines 50-55). Temperature fluctuations detected by sensor 98 trigger engagement of a fan to reduce temperature (see column 4, lines 1-6). Taken together, it would have been obvious to a person having ordinary skill in the art at the time of invention to use an internal temperature sensor to provide real-time feedback to control current delivery in order to minimize temperature increases, as taught by Wang ‘665.
With regard to claims 245, 246, 252, 253, Wang ‘431 discloses that the energy transforming device comprises a battery 13 connected to a coil 10 that receives inductive current from the coil 9 in the external charging device (see column 7, lines 1-15). Applicant discloses that the disclosed energy transforming device may receive electric current, ultrasonic energy, or light energy interchangeably. As such the apparatus disclosed by Wang suggests the receivers as claimed by Applicant.
With regard to claims 250, 254, Burnett discloses that the implanted apparatus has a wireless energy transmitter that may be used to control the function of the device (see ¶0046, 0065).
With regard to claims 255-259, the Wang ‘431 controller may adjust voltage, current, frequency (pulse), or amplitude to control charging (see columns 7-8, generally).
Claim 244 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 2004/0147871 to Burnett in view of US 5,702,431 to Wang et al, in view of US 5,991,665 to Wang et al, further in view of US 6,798,716 to Charych.
In the specification and figures, the cited prior art teaches the invention substantially as claimed by Applicant (see rejections above). With regard to claim 244, the cited prior art does not disclose the use of ultrasonic energy for charging. However, Charych discloses the use of an ultrasound power unit 12 that generates ultrasound waves 16 that are received by circuit 18 and converted into electric energy for battery charging circuits 20 (see column 4, lines 40-52) as an alternative to induction charging (see column 1, lines 15-23). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 USC 103. See KSR Int’l Co. v. Teleflex, Inc., 127 C. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). In the instant case, the finite number of wireless charging solutions would render it common sense to use the ultrasonic charging apparatus disclosed by Charych in the system suggested by Burnett and Wang.
Claims 240, 242, 243, 245-250, and 252-259 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 2004/0147871 to Burnett in view of US 8,989,869 to Torgerson et al.
In the specification and figures, Burnett discloses the apparatus substantially as claimed by Applicant. With regard to claims 240, 248, 249, 254, Burnett discloses an apparatus for drainage of body fluid comprising a pump 16, an implantable energy source with a storing device in the form of a rechargeable battery, a tube 11 connected to pump 16, wherein the apparatus may be used to pump fluid from ascites in the abdomen to another location (see FIGS 7, 14, ¶011, 0048, 0041, 0056). Burnett suggests an external energy source and a remote control, but fails to disclose a control unit.
Torgerson discloses a charging apparatus and method for an implanted medical device, comprising a battery or internal energy source 315, a control unit 525 with a temperature sensor, wherein the control unit may control the charging of the internal energy source based on data from the temperature sensor (see 7:28-36, claim 5). Accordingly, it would have been obvious to a person having ordinary skill in the art at the time of invention to add a current control system as disclosed by Torgerson to the charging system disclosed by Burnett in order to maximize charging and efficiency and avoid excess temperatures, as taught by Torgerson.
With regard to claims 242, 243, 247, Torgerson discloses that the apparatus may send feedback information via telemetry to an external component wherein the feedback may pertain to the energy being supplied to the power source (see 8:22-40).
With regard to claims 245, 246, 252, 253, Torgerson discloses that the energy transforming device comprises a battery 315 connected to a recharge coil that receives inductive current from a coil in the external charging device (see 3:8-32, 8:3-13). Applicant discloses that the disclosed energy transforming device may receive electric current, ultrasonic energy, or light energy interchangeably. As such the apparatus disclosed by Torgerson suggests the receivers as claimed by Applicant.
With regard to claims 250, 254, Burnett discloses that the implanted apparatus has a wireless energy transmitter that may be used to control the function of the device (see ¶0046, 0065).
With regard to claims 255-259, the Torgerson controller may adjust voltage or current to control charging (see 7:15-17, 37-50).
Claim 244 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 2004/0147871 to Burnett in view of US 8,989,869 to Torgerson et al, further in view of US 6,798,716 to Charych.
In the specification and figures, the cited prior art teaches the invention substantially as claimed by Applicant (see rejections above). With regard to claim 244, the cited prior art does not disclose the use of ultrasonic energy for charging. However, Charych discloses the use of an ultrasound power unit 12 that generates ultrasound waves 16 that are received by circuit 18 and converted into electric energy for battery charging circuits 20 (see column 4, lines 40-52) as an alternative to induction charging (see column 1, lines 15-23). . When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 USC 103. See KSR Int’l Co. v. Teleflex, Inc., 127 C. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). In the instant case, the finite number of wireless charging solutions would render it common sense to use the ultrasonic charging apparatus disclosed by Charych in the system suggested by Burnett and Torgerson.
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 240-245, 248-50, and 252-259 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 17, of U.S. Patent No. 11,253,684 to Forsell. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons: Patented claim 1 sets forth an implantable drainage apparatus comprising a pump, an energy source with storage, a tube, and a control unit. Accordingly, patented claim 1 anticipates instant claim 240.
With regard to claims 241, 242, see patented claims 17 and 2, respectively.
With regard to claims 243-245, 248-250, 252-259, see patented claims 3-5, 6-9, 10-16, respectively
Conclusion
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/LESLIE R DEAK/Primary Examiner, Art Unit 3799 10 March 2026