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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/01/2023 is being considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-6 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6 of prior U.S. Patent No. 10,010,257. This is a statutory double patenting rejection. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 10,506,937. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 under examination are anticipated by claims 1 and 3 of the reference patent. Every limitation in claim 1 is recited in the conflicting reference patent claim, and the differences between the claims are highlighted below by bolding all limitations that differ, underlining additional limitations, and italicizing limitations that will be addressed below.
Instant application
U.S. Pat. No. 10,506,937
Claim 1: An electrode connector for establishing electrical connection with a biomedical patient electrode having a stud projecting upward form a top surface thereof, the stud including a radially enlarged base, a neck, and a head, said connector comprising: a connector body having a jaw member pivotally connected to said main body; said connector body and jaw member configurable between an open configuration and a closed configuration; said connector body and said jaw member biased to the closed configuration; said jaw member defining a beveled bottom edge, said beveled bottom edge functioning, upon engagement with the head of an electrode stud, to urge said jaw member toward said open configuration thereby allowing for snap attachment of the connector to the stud; and an electrically conducting member disposed in electrically conducting contact with a portion of the stud upon attachment of said connector to the stud.
Claim 1: An electrode connector comprising:
a connector body, said connector body having a jaw member, said jaw member pivotally connected to said connector body;
said connector body and jaw member configurable between an open configuration and a closed configuration;
said connector body and said jaw member biased with a biasing member to the closed configuration;
said jaw member defining a beveled bottom edge and a lip, said beveled bottom edge functioning, upon engagement with a head of an electrode stud, to urge said jaw member toward said open configuration, said lip positioned to engage said electrode stud at a lower portion of said head; and an electrically conducting member disposed in electrically conducting contact with a portion of the electrode stud upon attachment of said electrode connector to the electrode stud, wherein, upon attachment of said electrode connector to said electrode stud, said lip urges said electrode stud into contact with a bottom surface of said electrically conducting member.
Claim 3: The electrode connector according to claim 1, wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent.
Claim 3: The electrode connector according to claim 1, wherein said connector body, said jaw member, said biasing member and said electrically conducting member are each radiolucent.
As shown in the mapping above, claims 1 and 3 of the reference patent includes all the limitations of claim 1 of the instant application, while also reciting further limitations. Therefore, the reference patent’s claim is narrower in scope and therefore covers all claimed matter in claims 1 and 3 of the instant application.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11,076,791. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 under examination are anticipated by claims 1 and 3 of the reference patent. Every limitation in claim 1 is recited in the conflicting reference patent claim, and the differences between the claims are highlighted below by bolding all limitations that differ, underlining additional limitations, and italicizing limitations that will be addressed below.
Instant application
U.S. Pat. No. 11,076,791
Claim 1: An electrode connector for establishing electrical connection with a biomedical patient electrode having a stud projecting upward form a top surface thereof, the stud including a radially enlarged base, a neck, and a head, said connector comprising: a connector body having a jaw member pivotally connected to said main body; said connector body and jaw member configurable between an open configuration and a closed configuration; said connector body and said jaw member biased to the closed configuration; said jaw member defining a beveled bottom edge, said beveled bottom edge functioning, upon engagement with the head of an electrode stud, to urge said jaw member toward said open configuration thereby allowing for snap attachment of the connector to the stud; and an electrically conducting member disposed in electrically conducting contact with a portion of the stud upon attachment of said connector to the stud.
An electrode connector comprising:
a connector body, said connector body having a jaw member, said jaw member pivotally connected to said connector body;
said connector body and jaw member configurable between an open configuration and a closed configuration;
said connector body and said jaw member biased with a biasing member to the closed configuration;
said jaw member defining a beveled bottom edge, said beveled bottom edge functioning, upon engagement with a head of an electrode stud, to urge said jaw member toward said open configuration, said beveled bottom edge positioned to engage said electrode stud at a lower portion of said head; and an electrically conducting member disposed in electrically conducting contact with a portion of the electrode stud upon attachment of said electrode connector to the electrode stud, wherein, upon attachment of said electrode connector to said electrode stud, said beveled bottom edge urges said electrode stud into contact with a bottom surface of said electrically conducting member.
Claim 3: The electrode connector according to claim 1, wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent.
Claim 3: The electrode connector according to claim 1, wherein said connector body, said jaw member, said biasing member and said electrically conducting member are each radiolucent.
As shown in the mapping above, claims 1 and 3 of the reference patent includes all the limitations of claim 1 of the instant application, while also reciting further limitations. Therefore, the reference patent’s claim is narrower in scope and therefore covers all claimed matter in claims 1 and 3 of the instant application.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11,806,151. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 under examination are anticipated by claims 1 and 3 of the reference patent. Every limitation in claim 1 is recited in the conflicting reference patent claim, and the differences between the claims are highlighted below by bolding all limitations that differ, underlining additional limitations, and italicizing limitations that will be addressed below.
Instant application
U.S. Pat. No. 11,806,151
Claim 1: An electrode connector for establishing electrical connection with a biomedical patient electrode having a stud projecting upward form a top surface thereof, the stud including a radially enlarged base, a neck, and a head, said connector comprising: a connector body having a jaw member pivotally connected to said main body; said connector body and jaw member configurable between an open configuration and a closed configuration; said connector body and said jaw member biased to the closed configuration; said jaw member defining a beveled bottom edge, said beveled bottom edge functioning, upon engagement with the head of an electrode stud, to urge said jaw member toward said open configuration thereby allowing for snap attachment of the connector to the stud; and an electrically conducting member disposed in electrically conducting contact with a portion of the stud upon attachment of said connector to the stud.
Claim 1: An electrode connector comprising:
a connector body, said connector body having a jaw member, said jaw member pivotally connected to said connector body;
said connector body and jaw member configurable between an open configuration and a closed configuration;
said connector body and said jaw member biased with a biasing member to the closed configuration;
said jaw member defining a beveled bottom edge, said beveled bottom edge positioned to engage said stud at a lower portion of said head;
said connector body defining a first opening for receiving and capturing a stud of a patient electrode, said connector body defining an aperture, said aperture in general alignment with said first opening, such that said connector body comprises a line of sight through the electrode connector to a top of said stud; and
an electrically conducting member disposed in electrically conducting contact with a portion of the stud upon attachment of said electrode connector to the stud, wherein, upon attachment of said electrode connector to said stud, said beveled bottom edge urges said stud into contact with a bottom surface of said electrically conducting member.
Claim 3: The electrode connector according to claim 1, wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent.
Claim 3: The electrode connector according to claim 1, wherein said connector body, said jaw member, said biasing member and said electrically conducting member are each radiolucent.
As shown in the mapping above, claims 1 and 3 of the reference patent includes all the limitations of claim 1 of the instant application, while also reciting further limitations. Therefore, the reference patent’s claim is narrower in scope and therefore covers all claimed matter in claims 1 and 3 of the instant application.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4 and 6 is/are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Hobet et al. (U.S. Pat. No. 7,950,971) herein referred to as Hobet.
Regarding claim 1, Hobet discloses an electrode connector for establishing electrical connection with a biomedical patient electrode having a stud projecting upward form a top surface thereof (sensors comprise a head or cap 102 (seen as the stud) and a shaft 104, Figure 1), the stud including a radially enlarged base, a neck, and a head (sensors comprises a head or cap 102, a shaft 104 and base 106, Figure 1, Col. 13, lines 21-26), said connector (connector 200, Figure 2a) comprising: a connector body (connector body 202, Figure 2a) having a jaw member pivotally connected to said main body (finger 204, Figure 2a); said connector body and jaw member configurable between an open configuration and a closed configuration (pivot allows the jaw member 204 to be configurable between an open and a closed configuration. Figure 2a and 2g); said connector body and said jaw member biased to the closed configuration (closed position, Figures 2i and 2j); said jaw member defining a beveled bottom edge, said beveled bottom edge functioning, upon engagement with the head of an electrode stud, to urge said jaw member toward said open configuration thereby allowing for snap attachment of the connector to the stud (the contact edge of the metal contact plate 212 may be beveled, chamfered or angled toward the sensor aperture 211, Col. 18, lines 34-48, Figure 2g and 2h, closed configuration around the stud, Figures 2i and 2j); and an electrically conducting member disposed in electrically conducting contact with a portion of the stud upon attachment of said connector to the stud (metal contact plate 212 is contacted to the sensor by the finger 204 exerting a force in the direction of the body 202, the cap 102a is disposed above the metal contact plate 212 and portions of it are received within the grooved portion 214 of the finger 204, Col. 16, lines 41-47, Figures 2i and 2j).
Regarding claim 2, Hobet discloses the electrode connector according to claim 1, wherein said jaw member further defines a projecting lip disposed above said beveled bottom edge (the metal contact plate 212 disposed under the cap 102a at the shaft 104a of the sensor 100a and grooved 214 finger pushed against the cap 102a toward the body 202, Col. 16, lines 27-40).
Regarding claim 4, Hobet discloses an electrode connector for establishing electrical connection with a biomedical patient electrode having a stud projecting upward form a top surface thereof (sensors comprises a head or cap 102 and a shaft 104, Figure 1), the stud including a radially enlarged base, a neck, and a head (sensors comprises a head or cap 102, a shaft 104 and base 106, Figure 1, Col. 13, lines 21-26), said connector comprising: a connector body (connector body 202, Figure 2a) having a jaw member (finger 204, Figure 2a) pivotally connected to said main body (pivot 210, Figure 2a and 2g); said connector body and jaw member configurable between an open configuration and a closed configuration (pivot allows the jaw member 204 to be configurable between an open and a closed configuration. Figure 2a and 2g); said connector body and said jaw member biased to the closed configuration (closed position, Figures 2i and 2j); said connector body and said jaw member defining an first opening for receiving and capturing the stud of a patient electrode when in the closed configuration (opening as seen in Figures 2g and 2h, and closed configuration as seen in Figures 2i and 2j); an electrically conducting member affixed to said connector body, said member defining a second opening, said second opening in general alignment with said first opening (metal contact plate 212 is contacted to the sensor by the finger 204 exerting a force in the direction of the body 202, the cap 102a is disposed above the metal contact plate 212 and portions of it are received within the grooved portion 214 of the finger 204, Col. 16, lines 41-47, Figures 2i and 2j); said jaw member defining a beveled bottom edge (the contact edge of the metal contact plate 212 may be beveled, chamfered or angled toward the sensor aperture 211, Col. 18, lines 34-48, Figure 2g and 2h), said beveled bottom edge functioning, upon engagement with the head of an electrode stud, to urge said jaw member toward said open configuration thereby allowing for snap attachment of the connector to the stud (metal contact plate 212 is contacted to the sensor by the finger 204 exerting a force in the direction of the body 202, the cap 102a is disposed above the metal contact plate 212 and portions of it are received within the grooved portion 214 of the finger 204, Col. 16, lines 41-47, Figures 2i and 2j).
Regarding claim 6, Hobet discloses the electrode connector according to claim 4, wherein said electrically conducting member defines a bottom surface and an opening, said lip functioning to engage a lower portion of the head of the stud and urge the radially enlarged base of the stud into electrical contact with the bottom surface of said electrically conducting member (the metal contact plate 212 disposed under the cap 102a at the shaft 104a of the sensor 100a and grooved 214 finger pushed against the cap 102a toward the body 202, Col. 16, lines 27-40).
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.
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.
Claim(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hobet in view of Callahan et al. (U.S. PGPub. No. 2013/0023750) herein referred to as Callahan.
Regarding claim 3, Hobet discloses the electrode connector according to claim 1.
However Hobet does not explicitly disclose wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent.
Callahan discloses a radiolucent material (resilient member 1570 may be formed from a radiolucent member, Paragraph [0031]) for manufacturing biasing element (resilient member 1570, Figure 2B, Paragraph [0031), jaw element (engagement member 1536, Figure 2B, Paragraph [0031]), and conducting elements in ECG connectors (Paragraphs [0030-0032]).
It would have been prima facie obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to have modified Hobet to incorporate
the teachings of Callahan by including wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent. The motivation to do so being to allow for the radiolucent ECG system to be used in combination with an imaging system such as MRI scanner, a CT scanner, and a PET scanner (Callahan, Paragraph [0010]).
Regarding claim 5, Hobet discloses the electrode connector according to claim 4.
However Hobet does not explicitly disclose wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent.
Callahan discloses a radiolucent material (resilient member 1570 may be formed from a radiolucent member, Paragraph [0031]) for manufacturing biasing element (resilient member 1570, Figure 2B, Paragraph [0031), jaw element (engagement member 1536, Figure 2B, Paragraph [0031]), and conducting elements in ECG connectors (Paragraphs [0030-0032]).
It would have been prima facie obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to have modified Hobet to incorporate
the teachings of Callahan by including wherein said connector body, said jaw member, and said electrically conducting member are each radiolucent. The motivation to do so being to allow for the radiolucent ECG system to be used in combination with an imaging system such as MRI scanner, a CT scanner, and a PET scanner (Callahan, Paragraph [0010]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dana Stumpfoll whose telephone number is (703)756-4669. The examiner can normally be reached 9-5 pm (CT), M-F.
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, Joanne Rodden can be reached at (303) 297-4276. 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.
/D.S./Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794