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 A1-B1, claims 1-6, 10-16, 18-19, 22-24 in the reply filed on 10/18/24 is acknowledged. The traversal is on the ground(s) that the circuits of claims 7-9 and 19-21 are not control units according to Paragraph 28 as filed. However, Paragraph 28 does not seem to provide any explanation of the term control unit. Nevertheless, claim 19 is now considered generic and rejoined (see more discussion in 112 below). Applicant additionally traverses 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Claims 7-9, 17, 20-21 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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 10/18/24.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3: It is not clear what are the metes and bounds of having no control unit. Paragraph 18 of the specification describes a control unit functions to perform frequency conversion of the received energy, control output time parameters for the stimulus signal, etc. However, the base claim already includes a signal processing circuit, which also appears to process the received energy from the frequency signal and output the stimulus signal. It is not clear what functionality or structure is intended to be excluded by requiring no control as recited. For examination purposes, the rectifying circuit is not considered a control unit since it is a simple input and output circuit which is not controlled by any control signal, thus claim 19 is rejoined. The protection circuit is considered a control unit since it responds to a control signal (e.g. Hall or reed switch).
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, 10, 18, 19, 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pan (US 2016/0001085).
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Regarding claim 1, 10, 18, 22, 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), and a signal processing circuit configured to receive the frequency 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).
Regarding claim 19, Pan discloses a rectifying circuit configured to receive the frequency signal and rectify the frequency signal to generate a rectified signal (Figure 2: 232)
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) 3, 5, 11-12, 23 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 3, 5, Pan does not disclose having no control unit as recited. However, Kisker teaches it is an obvious modification to locate the control unit separately and possibly externally so as to have no control unit in the stimulation device (Page 53, lines 10-16), in order to reduce implant size. 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 having no control unit as recited, in order to reduce implant size.
Regarding claims 11-12, 23, 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.
Claim(s) 13-16, 24 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 13-16, 24, 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.
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 1-2, 4-6, 10-16, 18-19, 22-24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of copending Application No. 17685725 (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.
Allowable Subject Matter
Claim 6 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.
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/Eugene T Wu/Primary Examiner, Art Unit 3796