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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 15, 2026 has been entered. By this amendment, claims 1, 7, and 15 are amended and claims 1 and 3-15 are now pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The disclosure fails to describe the claimed invention in the configuration and manner as claimed. While the disclosure describes a predetection unit at page 2, lines 7-8 as “a predetection unit that activates a connection to the network only whenever an immediate need for real-time assessment or influence has been detected“, at page 2, lines 21-23 as “the predetection unit is additionally influenced with respect to its sensitivity by a remaining energy supply of the medical device”, and at page 9, lines 5-7 as “a predetection unit, which activates the 5G network connection only when there is an immediate need for real-time evaluation or influence”, the disclosure fails to disclose that the predetection unit activates a connection to the network “only whenever a charging operation of capacitors for a therapy operation is imminent and only when sufficient remaining power supply is ensured based on a remaining energy supply of the medical device”. Further, the disclosure fails to describe the step of “activating a connection to the network: only whenever a charging operation of capacitors for a therapy operation is imminent, as detected by means of a predetection unit, and only when sufficient remaining power supply is ensured based on a remaining energy supply of the medical device” as required by claim 15. These disclosures do not describe determining a remaining power supply or determining whether the remaining power supply is sufficient. The disclosure of the predetection unit be “influenced with respect to its sensitivity” by a remaining energy supply of the medical device does not support the claim requiring activation of a connection “only when sufficient remaining power supply is ensured based on a remaining energy supply of the medical device”. Being influenced with respect to its sensitivity is different from not activating a connection. Furthermore, while the disclosure at page 10, lines 6-8 discloses “the power management unit 230 is configured to establish a network connection to a 5G network only whenever a charging operation of the shock capacitors of the ICD therapy device 210 is imminent”, it fails to tie this disclosure to the predetection unit, as required by the claims. There is nothing in the specification that indicates that the predetection unit and the power management unit are the same unit, in fact, claims 13 and 14 indicate that the power management unit is different from the predetection unit. For at least the reasons given above, the claims are considered to include subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 1 and 3-15 are 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.
The term “imminent” in claims 1 and 15 is a relative term which renders the claim indefinite. The term “imminent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims and the disclosure fail to describe the time period for capacitor charging which would be considered “imminent” as claimed. Is imminent immediately without pause or is imminent that the device has decided to charge the capacitors to apply therapy so that the capacitors will be charged when it comes time for the next therapy pulse to occur, thereby merely requiring the charging take place at any point in the future prior to the delivery of the therapy? For the purposes of this communication, imminent is considered immediately without pause.
Allowable Subject Matter
Although no prior art has been applied against the claims in this Office Action, the claims are not considered to include allowable subject matter in view of the rejections under 35 USC 112(a) and 112(b) set forth above. It is unknown how Applicant will overcome the rejections above and, thus, it is not possible to indicate the claims as including allowable subject matter.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 3-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMMIE K MARLEN whose telephone number is (571)272-1986. The examiner can normally be reached Monday through Friday from 8 am until 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached at 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAMMIE K MARLEN/Primary Examiner, Art Unit 3796
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