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 without traverse of Species A3-B2, claims 1, 79, 83, 87, 90-95 in the reply filed on 2/4/26 is acknowledged.
Claims 77-78, 80-82, 84-86, 88-89 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/4/26.
Claim Objections
Claims objected to because of the following informalities:
Claim 1, lines 11 and 12: “delivery energy” should be “deliver energy”.
Appropriate correction is required.
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.
Claims 90-95 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 90: Unclear how scope is further limited, since it appears that any structure would comprise at least one substrate.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 90 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 90: Does not further limit the subject matter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 79, 83, 87, 90-91, 93-95 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun (US 2019/0224476).
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Regarding claims 1, 90, Sun discloses the same invention as claimed (Figure 1 shown above for example), including a system for treating a cardiac condition of a patient (abstract), the system comprising: an implantable device for delivering energy to the patient's heart (Paragraph 6); an external patient device configured to wirelessly communicate with the implantable device (Figure 1); and a clinician device for implanting the implantable device in the patient (Figure 11; surgical tool implied by placement of implant within body); wherein the implantable device comprises a first portion configured to be implanted in a first anatomic location and deliver energy from the first location, and a second portion configured to be implanted in a second anatomic location and deliver energy from the second location (Figure 1: multiple locations), and wherein the cardiac condition treated by the system comprises atrial fibrillation (considered an intended use; nevertheless, see Paragraph 73).
Regarding claim 79, Sun discloses at least varying stimulation amplitude as recited (Paragraphs 127-129: e.g. biphasic pulse varies between positive and negative amplitudes).
Regarding claim 83, Sun discloses an epicardial location as recited (Paragraph 68).
Regarding claim 87, Sun discloses synchronous and asynchronous stimulation as recited (Paragraphs 73-77).
Regarding claim 91, Sun discloses at least one dimension in a millimeter range as recited (Paragraph 84).
Regarding claim 93, Sun discloses a multi-layer PCB as recited (Figure 3: at least layers 300, 310).
Regarding claim 94, Sun discloses an antenna as recited (Figure 3: 304).
Regarding claim 95, Sun discloses anchoring elements as recited (Figure 8).
Claim Rejections - 35 USC § 103
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) 92 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 2019/0224476) in view of Marelli (US 2020/0316380).
Regarding claim 92, Sun discloses a PCB (abstract; Figure 3) but does not disclose a copper thickness. However, Marelli teaches that a copper thickness of about 36 micrometers is typical in the art (Paragraph 56). Furthermore, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) and MPEP 2144.05(I). There is no evidence that a copper thickness of 36 micrometers yields any unexpected results or criticality. 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 Sun as taught by Marelli to include a copper thickness of 36 micrometers as recited, since such a thickness is typical in the art and would not have yielded unexpected results or criticality.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rogers (US 2013/0041235) shows a wireless conformal epicardial patch for sensing/stimulation.
Hastings (US 2006/0085039; cited previously) shows an AF system with first and second implantable portions.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Layno can be reached at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eugene T Wu/Primary Examiner, Art Unit 3796
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