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 A in the reply filed on 11/24/2025 is acknowledged.
Applicant's election with traverse of Species A in the reply filed on 11/24/2025 is acknowledged. The traversal is on the ground(s) that Species 1, 4, 5 and 7 are not mutually exclusive. This is not found persuasive because the embodiment of Species 1 being described in the Restriction is the embodiment that includes ONLY a first storage member, which the Examiner thought to be clear since, as the applicant argues, this is the only interpretation that results in mutually exclusive species.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/15/24 and 5/23/25 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a monitoring apparatus…capable of implementing a monitoring function” in claim 1, wherein the apparatus has the structure described in par. 0025 of the PGPUB of the current application, and equivalents thereof; and
”a first storage member configured to store a monitoring accessory” in claim 1, wherein the member has the structure described in par. 0185 of the PGPUB of the current application, and equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 4, 11-13, 19, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer et al. (US 6,591,135, hereinafter Palmer) in view of Freeman et al. (US 2020/0305805, hereinafter Freeman).
Regarding claims 1, 3, 4, 11-13, 19, 20 and 22, Palmer discloses a device 10 for defibrillation and monitoring, as seen in figure 1. As seen in figure 3, the device includes a host 14 comprising a host housing with an internal accommodating chamber containing a host control unit 56, a high-voltage capacitor 27, a charging circuit 86 and a discharging circuit 25 (Col. 5, lines 1-6), and a host information transmission unit 30 for unidirectional and/or bidirectional information transmission (Col. 3, lines 20-52). A host display unit 52 configured to display defibrillation information is arranged at a front side of the housing (Col. 2, lines 25-28 and figure 1). A monitoring apparatus 12 is arranged at an upper/rear side of the host display unit 52 (as seen in figure 1, whether something is “upper” or “rear” being relative) the monitoring apparatus including a control unit 72 a display as seen in figure 1 and a transmission unit 30 (figure 3). The monitoring apparatus 12 is capable of implementing a monitoring function regardless of whether it is attached to assembly structure 31 of the host housing (Col. 2, lines 10-20).
Palmer is silent as to including a first storage member with multiple separated sub-storage members for storing monitoring accessories connected/affixed to the monitoring apparatus. Attention is directed to the Freeman reference, which also discloses a defibrillator and monitoring apparatus 109 for defibrillation and monitoring and thus is analogous art with Palmer (par. 0117-0118). The monitoring apparatus 109 is attached to a first storage member 110/111 with a plurality of sub-storage members 140, the first storage member attached to left and right sides of the monitoring apparatus so that it is coplanar with the monitoring apparatus and configured to store a monitoring accessory 116 (par. 0124-0127, 0180, Fig. 1A-1K). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify Palmer to include a first storage member for storing monitoring accessories as Freeman teaches this allows for extending and enhancing the capabilities of the monitoring apparatus (par. 0007).
Claims 1, 2, 7, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer et al. (US 6,591,135, hereinafter Palmer) in view of Saper et al. (US 3,865,101, hereinafter Saper).
Regarding claim 1, Palmer discloses a device 10 for defibrillation and monitoring, as seen in figure 1. As seen in figure 3, the device includes a host 14 comprising a host housing with an internal accommodating chamber containing a host control unit 56, a high-voltage capacitor 27, a charging circuit 86 and a discharging circuit 25 (Col. 5, lines 1-6), and a host information transmission unit 30 for unidirectional and/or bidirectional information transmission (Col. 3, lines 20-52). A host display unit 52 configured to display defibrillation information is arranged at a front side of the housing (Col. 2, lines 25-28 and figure 1). A monitoring apparatus 12 is arranged at an upper/rear side of the host display unit 52 (as seen in figure 1, whether something is “upper” or “rear” being relative) the monitoring apparatus including a control unit 72 a display as seen in figure 1 and a transmission unit 30 (figure 3). The monitoring apparatus 12 is capable of implementing a monitoring function regardless of whether it is attached to assembly structure 31 of the host housing (Col. 2, lines 10-20).
Palmer discloses monitoring accessories/electrodes 20/22 but is silent as to including a first storage member for storing the monitoring accessories connected/affixed to the monitoring apparatus. Attention is directed to the Saper reference, which also discloses a defibrillator and monitoring apparatus for defibrillation and monitoring and thus is analogous art with Palmer (figures 1 and 2). The monitoring apparatus is attached to a first storage member with a plurality of sub-storage members each capable of holding an accessory/electrode (see arrow below):
PNG
media_image1.png
270
374
media_image1.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify Palmer to include a first storage member for storing monitoring accessories as Saper shows this to be a common feature in the art that would not affect the overall function or purpose of Palmer.
Regarding claims 2, 7, 8 and 10, Palmer is silent as to the host housing defining an assembly area with a support surface for extension module, the monitoring apparatus stored on the support surface in the assembly area. Saper discloses that a monitoring apparatus 12 can be stored on a support surface in an assembly area 16 of the host housing 14 so that an information transmission unit 34 can contact a side surface (see figures 1 and 2 and Col. 2, lines 10-34). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify Palmer to store the monitoring apparatus on a support surface in an assembly area 16 of the host housing 14 so that an information transmission unit 34 can contact a side surface as shown by Saper, as this appears to be a mere design choice that would not affect the overall function or purpose of Palmer and maintains the ability of the monitoring apparatus and the host housing to operate when attached or when separated, as required by Palmer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric D Bertram whose telephone number is (571)272-3446. The examiner can normally be reached Monday-Friday 8am-6pm Central Time.
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, Jennifer McDonald can be reached at 571-270-3061. 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.
/Eric D. Bertram/Primary Examiner, Art Unit 3796