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 .
Response to Arguments
Applicant's arguments filed 5/14/2026 regarding the 112(f) interpretations have been fully considered but they are not persuasive. Applicant argues that “monitoring apparatus…capable of implementing” and “storage unit configured to store a monitoring accessory” are not recitations of “means for.” The fact they do not recite the exact phrase “means for” is not convincing. MPEP 2181 I.A. explicitly states that “apparatus” and “unit” are considered non-structural generic placeholders. As further required by MPEP 2181 I.A., the terms “serve as a generic placeholder and thus [do] not limit the scope of the claim to any specific manner or structure for performing the claimed function.” A monitoring apparatus could be software. It could be electrodes. It could be a thermocouple. It could be a strain gauge. It could be an accelerometer. It could be a barometer. It could be ANY disparate structure that is for monitoring anything. A storage unit could be a steel box. It could be a plastic bag. It could be a hollow bowl. It could be ANY disparate structure that can hold an accessory. A “monitoring apparatus” and “storage unit” do not connote any specific and distinct structure other than its ability to perform the claimed functional language. The applicant couldn’t even define the structure in the arguments, stating on page 12 that “the term “monitoring apparatus is a device for monitoring; the term “storage unit” is a unit for storing components.” Again, MPEP 2181 I.A. explicitly states that “apparatus” and “unit” (and “device”) are considered non-structural generic placeholders These are quintessential and legally defined invocations of 35 USC 112(f). The 35 USC 112(f) interpretations are still considered proper.
Applicant's arguments filed regarding the 103 rejections have been fully considered but they are not persuasive. Regarding the combination of Palmer and Freeman, the applicant argues that the pockets do not have any structural relationship to Freeman’s patient monitor. This is simply not true. The figures of Freeman show the pockets 111 attached to the patient monitor 109. Par. 0140 of Freeman explicitly states that the carrying case 110 (which includes pockets 111) are “mechanically attached” to the patient monitor. Par. 0140 also discloses that the pockets are configured to store “electrodes” (such that an electrode is inherently a sensor for ECG, par. 0119). Clearly, if the pockets are mechanically attached, they are inherently configured to be detached as well. This could be done by merely ripping the pockets off of the carrying case, as the claims do not require the storage member to be detached and then reattachable after detachment. However, Freeman also discloses that a mechanical attachment can occur using rails 190 that allows for reversible attachment and detachment to the monitor (par. 0199).
Applicant further argues that there is no teaching of the storage unit being attached to a monitoring apparatus when the monitoring apparatus is connected to the assembly structure of the host. The Examiner respectfully disagrees. Palmer is relied upon for teaching a defibrillator host to a monitoring apparatus. Freeman teaches that a storage member can be attached to a patient monitor. Freeman also teaches that the patient monitor can be a defibrillator (par. 0114). Therefore, Freeman teaches attaching a storage member to a monitor/defibrillator. When the storage member of Freeman is attached to the defibrillator and monitor of Palmer, the claim is met. Alternatively, if the storage member of Freeman were attached to the monitor of Palmer, it would also be attached to the host defibrillator since the defibrillator and the monitor of Palmer are attached to each other.
The rejections in view of Palmer and Freeman are still considered proper.
Regarding the combination of Freeman and Saper, figure 2 of Saper shows the monitor 12 attached to the host defibrillator 14 with electrode holders attached to both. Therefore, Saper discloses a storage member that are configured to store electrodes, such that all electrodes are sensors for ECG. The claims merely require that the storage unit is configured to store a sensor of ECG. The storage unit of Saper is configured to do so.
The rejections in view of Palmer and Saper are still considered proper.
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). The figures of Freeman show the storage member 111 attached to the patient monitor 109. Par. 0140 of Freeman explicitly states that the carrying case 110 (which includes pockets 111) are “mechanically attached” to the patient monitor. Par. 0140 also discloses that the pockets are configured to store “electrodes” (such that an electrode is inherently a sensor for ECG, par. 0119). Clearly, if the pockets are mechanically attached, they are inherently configured to be detached as well. This could be done by merely ripping the pockets off of the carrying case, as the claims do not require the storage member to be detached and then reattachable after detachment. However, Freeman also discloses that a mechanical attachment can occur using rails 190 that allows for reversible attachment and detachment to the monitor (par. 0199).
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), such that an electrode is a sensor for ECG:
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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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796
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