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 .
Information Disclosure Statement
The information disclosure statement filed 12/04/2025 contains a reference to Wahlstrand et al. (US 2005/0222656 A1), which was included in the PTO-892 mailed on 09/03/2025. This duplicate listing has been lined through.
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.
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Claims 1-6, 9-18 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9-11 of U.S. Patent No. 12,232,875. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims correspond as laid out in the table below.
Instant Application
Patent 12,232,875
1. A neurological electrode system for use in magnetic resonance environments, comprising:
1. A neurological electrode system, comprising: a magnetic resonance environment with a radio frequency (RF) field;
an electrode comprising conductive material for acquiring electrical impulses for neurological monitoring;
an electrode for neurological monitoring;
a connector configured to connect to an amplifier;
a connector configured to connect to an amplifier;
a cable, having a first end and a second end, the first end in electrical connection to the electrode, the second end in electrical connection with the connector;
a cable, having a first end and a second end, the first end in electrical connection to the electrode, the second end in electrical connection to the connector;
and one or more inline filter modules configured in series along the cable, the one or more inline filter modules comprising one or more inductors in a series, the one or more inline filter modules configured to limit heat generation observed at the electrode to skin interface from a radio frequency (RF) field of an MRI machine based on the one or more inductors of the one or more inline filter modules.
and an inline filter module configured along the cable, the inline filter module comprising one or more inductors and one or more resistors in series, wherein total resistance of the one or more resistors is below 1 ohm, wherein the inductors and resistors are configured in the inline filter module to reduce radio frequency power in the electrode system and the inline filter module limits heat generation in the electrode.
2. The system of claim 1, further comprising the cable having a length of up to 3,000 millimeters.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to find the workable ranges. In re Aller, 105 USPQ 233
3. The system of claim 1, wherein the one or more inline filter modules configured to limit the heat generation from the RF field at the electrode to skin interface to a maximum of 70 centigrade over ambient temperature during a 15-minute application of the RF field.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to find the workable ranges. In re Aller, 105 USPQ 233
4. The system of claim 1, wherein the RF field has either a 1.5 Tesla magnetic flux density or a 3.0 Tesla magnetic flux density.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to find the workable ranges. In re Aller, 105 USPQ 233
5. The system of claim 1, wherein the neurological monitoring comprises intraoperative neurological monitoring (IONM).
“1. A neurological electrode system… comprising… an electrode for neurological monitoring;”
6. The system of claim 1, wherein the electrode comprises a subdermal needle electrode, or a hydrogel electrode, or a metal plate electrode, or a suction electrode, or a flexible electrode.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to try one of the listed electrodes as “an electrode for neurological monitoring”
9. The system of claim 1, wherein each of the one or more inductors in series possess similar rated inductance.
9. The system of claim 1, further comprising having more than one inductor in the one or more inductors, each of the inductors possessing the same inductance as the other inductors.
10. The system of claim 1 wherein the one or more inductors having a total inductance between 1 and 2 microhenries.
10. The system of claim 1, further comprising the one or more inductors having a total inductance between 1 and 2 microhenries.
11. The system of claim 1, wherein the one or more inductors have a total inductance between 1370 and 1800 nanohenries.
11. The system of claim 1, further comprising the one or more inductors having a total inductance between 1370 and 1800 nanohenries.
12. The system of claim 1, wherein at least one of the one or more inline filter modules is located between 1 mm to 75 mm from the electrode, and at least a second one of the one or more inline filter modules is located within 500 mm of the electrode.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to find the workable ranges. In re Aller, 105 USPQ 233
Claims 13-18 and 21
The operation of the apparatus of claims 1 and 9-11 as match above would require all limitations of the method steps.
Claims 7 and 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,232,875 in view of Stevenson et al (U.S. 8,195,295), hereinafter referred to as Stevenson. U.S. Patent No. 12,232,875 claims “the one or more inductors spaced a small distance apart and the cable itself is the one or more resistors” however does not claim the one or more inductors each being a chip inductor.
Stevenson teaches the one or more inductors each being a chip inductor (Column 38 line 46-26).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the teaching of Stevenson with U.S. Patent No. 12,232,875 so as to enable easy manufacture.
With reference to claim 19, the operation of the system of claim 7 would require all method steps of claim 19.
Claims 8 and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,232,875 in view of Gaudiano Del Bosque et al. (US 2020/0351474 A1), hereinafter referred to as Gaudiano Del Bosque. U.S. Patent 12,232,875 does not claim a polymeric housing. Gaudiano Del Bosque teaches each of the one or more inline filter modules having a polymeric housing (¶0036). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the teaching of Gaudiano Del Bosque with U.S. Patent No. 12,232,875 so as to protect the circuit and prevent damage (Gaudiano Del Bosque ¶0036).
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
Applicant argues “Referring initially to the claims of the '875 patent, claim 1 is directed to a neurological electrode system comprising "an inline filter module configured along the cable, the inline filter module comprising one or more inductors and one or more resistors in series, wherein total resistance of the one or more resistors is below 1 ohm, wherein the inductors and resistors are configured in the inline filter module to reduce radio frequency power in the electrode system and the inline filter module limits heat generation in the electrode." As will be appreciated, the '875 patent requires both one or more inductors and one or more resistors to be configured to reduce RF power in the system based on the inline filter module configured with both inductors and resistors. In contrast, the present claims are directed to a neurological electrode system that incorporates an inline filter module comprising "one or more inductors in series... configured to limit heat generation observed at the electrode to skin interface...based on the one or more inductors of the one or more inline filter modules." Accordingly, the inventive concept, and the claims, of the present application do not incorporate or require any resistors, and the limiting of the heat generation is accomplished based on the configuration of inductors only, and the inline filter modules they are incorporated into. As such, the attenuating feature of the present claims is a different concept than that which is claimed in the '875 patent, and it would not be obvious to modify the teaching or claims of the '875 patent to arrive at the presently claimed technology. While both are directed towards neurological electrode systems, they have clearly different configurations and would be understood to be patently distinct based on those configurations.”
While the examiner agrees that ‘875 patent s requires both one or more inductors and one or more resistors, there is no language in the claim that restricts the instant application to only inductors. This removal of a limitation from the instant application as compared with the ‘875 patent broadens the scope of the claim and does not narrow it. As such, the claims of the instant application are broader and thus fully met by the ‘875 patent as explained above.
Applicant’s arguments, see pages 7-14, filed 12/03/2025, with respect to the rejections under 35 USC § 102 and 103 have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 GREGORY H CURRAN whose telephone number is (571)270-7505. The examiner can normally be reached Monday-Friday, 8am-5pm, EST.
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/GREGORY H CURRAN/Primary Examiner, Art Unit 2852