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 .
Terminal Disclaimer
The terminal disclaimer filed on 29 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 9,713,701; 9,730,601 and 10,299,693 has been reviewed and is NOT accepted.
The three filed Terminal Disclaimers are disapproved due to improper language within the paragraphs. Please use PTO/AIA /26 and resubmit the TDs. (No new fee required).
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.
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.
As best understood in light of the rejections under 35 U.S.C. 112 above, Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 43 of U.S. Patent No. 9,713,701. Although the claims at issue are not identical, they are not patentably distinct from each other because US 9,713,701 has been found to anticipate each and every element of the present invention, for instance both provide processing circuitry configured to: monitor a plurality of diagnostic parameters (claim 1 and 21) based on at least one signal from at least one sensor (claim 21), wherein the plurality of diagnostic parameters are a plurality of secondary diagnostic parameters (claim 1 and 21), and wherein the processing circuitry is configured to: determine a value for a primary diagnostic parameter representing the intrathoracic impedance (claim 4 and 24) and a plurality of secondary diagnostic parameters including the activity level, heart rate, and the respiration (claims 7-8 and 27-29); determine a plurality of values over time based on the plurality of diagnostic parameters, wherein the plurality of values are indicative of a degree of heart failure of the patient; compare each of the determined values to one or more thresholds (claim 1 and 21); and in response to the comparison of the determined values to the one or more thresholds, and provide the alert (recited in claims 15 and 36) indicating worsening heart failure when the value for the primary parameter is inside a threshold zone and a predetermined number of the secondary diagnostic parameters indicates worsening heart failure (claims 1, 3, 21, 23, 42-43).
As set forth above, the present invention is not viewed to be patentably distinct from US 9,713,701.
As best understood in light of the rejections under 35 U.S.C. 112 above, Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. 9,730,601.
Although the claims at issue are not identical, they are not patentably distinct from each other because US 9,730,601 has been found to anticipate each and every element of the present invention, for instance both provide processing circuitry configured to: monitor a plurality of diagnostic parameters based on at least one signal from at least one sensor (claim 1 and 26), wherein the plurality of diagnostic parameters are a plurality of secondary diagnostic parameters (claim 1 and 26), and wherein the processing circuitry is configured to: determine a value for a primary diagnostic parameter representing the intrathoracic impedance (claim 4) and a plurality of secondary diagnostic parameters including the activity level, heart rate, and the respiration (claims 6-8); determine a plurality of values over time based on the plurality of diagnostic parameters, wherein the plurality of values are indicative of a degree of heart failure of the patient; compare each of the determined values to one or more thresholds (claims 1, 3 and 26); and in response to the comparison of the determined values to the one or more thresholds, and provide the alert (claim 14) indicating worsening heart failure when the value for the primary parameter is inside a threshold zone and a predetermined number of the secondary diagnostic parameters indicates worsening heart failure.
As set forth above, the present invention is not viewed to be patentably distinct from US 9,730,601.
As best understood in light of the rejections under 35 U.S.C. 112 above, Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 10,299,693. Although the claims at issue are not identical, they are not patentably distinct from each other because US 10,299,693 has been found to anticipate each and every element of the present invention, for instance both provide processing circuitry configured to: monitor a plurality of diagnostic parameters based on at least one signal from at least one sensor, wherein the plurality of diagnostic parameters are a plurality of secondary diagnostic parameters, and wherein the processing circuitry is configured to: determine a value for a primary diagnostic parameter representing the intrathoracic impedance and a plurality of secondary diagnostic parameters including the activity level, heart rate, and the respiration; determine a plurality of values over time based on the plurality of diagnostic parameters, wherein the plurality of values are indicative of a degree of heart failure of the patient; compare each of the determined values to one or more thresholds; and in response to the comparison of the determined values to the one or more thresholds, and provide the alert indicating worsening heart failure when the value for the primary parameter is inside a threshold zone and a predetermined number of the secondary diagnostic parameters indicates worsening heart failure .
As set forth above, the present invention is not viewed to be patentably distinct from US 10,299,693.
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 ALYSSA M ALTER whose telephone number is (571)272-4939. The examiner can normally be reached M-F 8am-4pm.
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, David E Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALYSSA M ALTER/Primary Examiner, Art Unit 3796
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