DETAILED ACTION
Response to Amendment
This action is in response to the amendment after non-final filed 9 June 2026. Claims 1-8 are pending, wherein claim 8 is new.
Response to Arguments
Applicant’s arguments filed with respect to the rejections of claims 1-4 and 7 as being anticipated under 35 USC 102(a) in view of Kim et al. (US Patent no. 7,337,005) have been fully considered and are persuasive. Kim et al. is directed to simulation of the whole dorsal root ganglion which has been determined to be different from stimulation of the portion of the dorsal root ganglion in a manner that affects the condition while not substantially stimulating the other portions of the same dorsal root ganglion. Therefore this rejection, and rejections built upon it has been withdrawn.
Double Patenting
The non-statutory double patenting rejection raised in the previous Action under US Patent nos. 11,890,472, 10,105,541, 9,744,360, 9,409,021, and 9,056,197 has been carefully reviewed in light of Applicant’s claim amendments.
The recitation of “the same dorsal root ganglion” does not patentably distinguish the present invention from the methods contained in the patent’s above. The previously issued claims recites “a portion of a dorsal root ganglion” followed by “other portions of the dorsal root ganglion” wherein the definite article “the” refers to the previously recited dorsal root ganglion and therefore already requires the “other portions” to be of the same dorsal root ganglion containing the recited portion. Accordingly, the addition of the word “same” merely expressly states a relationship already required by the issued claims of the above patents and does not render the presently claimed subject matter distinct.
The non-statutory double patenting rejection is therefore maintained and requires submission of a terminal disclaimer.
Allowable Subject Matter
Claims 1-8 would be allowable should the requirements of the double patenting rejection set forth above be satisfied.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/BRIAN T GEDEON/Primary Examiner, Art Unit 3796 22 August 2026
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