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 .
Election/Restrictions
Applicant's election with traverse of Species A2-B2-C1, claims 1, 2, 4-6, 9-12, 15-26, 29-31 in the reply filed on 10/15/24 is acknowledged. The traversal is on the ground(s) that there is no undue burden, and that all generic claims are allowable. This is not found persuasive because undue burden was established in the previous restriction requirement, and allowability had not been determined.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3, 7-8, 13-14, 27-28 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/15/24.
Claim Objections
Claims objected to because of the following informalities:
Claims 1, 23: Should say the rectifying circuit generates a “rectified” signal.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 2, 4, 16, 23, 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pan (US 2016/0001085).
PNG
media_image1.png
463
725
media_image1.png
Greyscale
Regarding claim 1, 16, 23, 29, Pan discloses the same invention as claimed (Figure 2 shown above for example), including an electrical stimulation device (Paragraph 30) comprising a signal receiving circuit configured to receive and output a frequency signal (Figure 2: e.g. receiving coil 231), a rectifying circuit configured to receive the frequency signal and rectify the frequency signal to generate a rectified signal (Figure 2: 232), and a signal processing circuit configured to receive the rectifying signal to generate an electrical stimulation signal (Figure 2: 21, 26; Paragraph 48).
Regarding claim 2, Pan discloses an electrode as recited (Figure 2: S6; Paragraph 48).
Regarding claim 4, Pan discloses the stimulation device does not have a battery (Figure 2).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan (US 2016/0001085) in view of Lu (US 2012/0035687).
Regarding claim 5, Pan does not explicitly disclose a counter or PWM circuit. However, Lu teaches a PWM circuit is commonly used to generate a stimulus signal (Paragraph 61). Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Pan as taught by Lu to include a PWM as recited, to generate the stimulus signal.
Claim(s) 6, 9, 19-22, 24, 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan (US 2016/0001085) in view of Chang (US 2017/0113047).
Regarding claims 6, 9, 24, Pan does not disclose a sine signal. However, Chang teaches a signal converting circuit to generate a sine wave electrical stimulation signal as recited (Paragraph 58), in order to customize the stimulation signal as desired. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Pan as taught by Chang to include a signal converting circuit as recited, in order to customize the stimulation signal as desired.
Regarding claims 19-22, 31, Pan does not disclose the electrical stimulation parameters as recited. However, Chang teaches it is common to select a frequency of 480-520 kHz (Paragraph 61) and voltage between -25 to 25 V (Paragraph 58) and current between 0 to 60 mA (Paragraph 64), in order to deliver an appropriate stimulus signal. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Pan as taught by Chang to include the stimulation parameters as recited, in order to deliver an appropriate stimulus signal.
Claim(s) 11, 12, 15, 17-18, 25-26, 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pan (US 2016/0001085) in view of Kisker (WO 2012/013360; cited in IDS 4/25/23).
Regarding claims 11-12, 25-26, Pan does not disclose a protection circuit as recited. However, Kisker teaches a protection circuit including a reed switch as recited (e.g. Figure 1: 13, 14; Page 29, line 5), in order to appropriately generate stimulus signals. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Pan as taught by Kisker to include a protection circuit as recited, in order to appropriately generate stimulus signals.
Regarding claim 15, Pan discloses an electrode as recited (Figure 2: S6; Paragraph 48).
Regarding claims 17-18, 30, Pan does not disclose the frequency as recited. However, Kisker teaches it is common to select a frequency such as 13.56 MHz (Page 64, line 8), in order to couple internal and external coils. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Pan as taught by Kisker to include a frequency as recited, in order to couple internal and external coils.
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 and 23 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of copending Application No. 17687186 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2, 4-6, 9-12, 15-22, 24-26, 29-31 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18, 20-24 of copending Application No. 17687186 (reference application) in view of Pan (US 2016/0001085). The copending claims recite substantially the same subject matter except for the rectifying circuit. However, Pan teaches it is common to include a rectifying circuit (Figure 2: 232), in order to convert the received coil energy to stimulation energy. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify the copending application as taught by Pan to include a rectifying circuit as recited, in order to convert the received coil energy to stimulation energy.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 10 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and a terminal disclaimer is filed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pan (US 2016/0096023) shows energy transmission to an implanted device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eugene T Wu whose telephone number is (571)270-5053. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. 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, Carl Layno can be reached on 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Eugene T Wu/Primary Examiner, Art Unit 3796