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 .
Notice of Amendment
In response to the amendment filed on 4/26/2024, cancelled claims 1-20 and new claims 21-40 are acknowledged. Claims 21-40 are currently pending.
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 contact assessment module” in claim 36.
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.
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.
Claims 21-22 and 27-28 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-8 of U.S. Patent No. 11,931,095 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claim is fully anticipated by the reference patent. That is, the present claim is generic to a species or sub-genus claimed in the reference patent, i.e., the entire scope of the reference claim falls within the scope of the present claim 21.
In particular, claim 21 recites the limitation “measuring an impedance value of the first electrode generated in response to a drive signal to the first electrode”, which is substantially identical to the limitation “measuring an impedance value of the first electrode generated in response to a drive signal to the first electrode” in reference claim 1, the limitation “assigning a baseline impedance value to the first electrode based on impedance values measured in a predetermined time interval”, which is substantially identical to the limitation “assigning a baseline impedance value to the first electrode based on impedance values measured in a predetermined time interval” in reference claim 1, the limitation “determining a confidence state of the baseline impedance value for the first electrode”, which is substantially identical to the limitation “determining a confidence value associated with the baseline impedance value” in reference claim 1, and the limitation “utilizing the baseline impedance value in determining contact status of the first electrode when the confidence state meets a threshold”, which is substantially identical to the limitation “utilizing the baseline impedance value in determining contact status of the first electrode when the confidence value is at or above a predetermined threshold value” in reference claim 1.
Then, claim 21 recites the limitation “selectively modifying the confidence state associated with the baseline impedance value of the first electrode based on additional impedance data collected after the predetermined time interval”, which is broader in scope and fully anticipated by the limitation “wherein determining a confidence value associated with the baseline impedance value includes incrementally increasing the confidence value based on a measured impedance value that exceeds the assigned baseline impedance value by more than a predetermined amount” in reference claim 1.
Dependent claim 22 is fully anticipated by the subject matter recited in reference claims 2-3.
Dependent claim 27 is fully anticipated by the subject matter recited in reference claims 7-8.
Dependent claim 28 is fully anticipated by the subject matter recited in reference claim 4.
Allowable Subject Matter
Claims 29-40 are allowed.
Claims 23-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record includes:
Mosesov et al. (US Publication No. 2019/0183378 A1)
Osadchy et al. (US Patent No. 10,398,348 B2)
Palti et al. (US Publication No. 2022/0192604 A1)
Condie et al. (US Patent No. 10/182,742 B2)
Gliner et al. (US Publication No. 2019/0282117 A1).
The claims in this application have been allowed because the prior art of record fails to disclose, either singly or in combination, the claimed invention, including, among other features, assigning a baseline impedance value to the first electrode based on a minimum impedance value measured for the first electrode in a predetermined time interval; selectively modifying a confidence state of the baseline impedance value of the first electrode based on at least one of: measured impedance values for the first electrode after the predetermined time interval and measured impedance values for one or more of the other electrodes; and utilizing the baseline impedance value to determine contact status of the first electrode if the confidence state meets a threshold. In particular, Mosesov describes methods for assigning baseline impedance values based on a minimum impedance value measured for the first electrode and utilizing the baseline impedance value to determine contact status but does not describe anything related to a confidence state of the baseline impedance value, selectively modifying a confidence state, or using the confidence state in the determination of contact status. On the other hand, Osadchy, Palti, and Condie, all describe different variations of determining variable confidence states associated with contact status determinations (e.g. no contact, previously ablated tissue, contact, excessive contact), and Gliner describes determining a confidence level for tissue contact determination based on a deviation of measured impedances relative to a baseline impedance. However, none of these references determine a confidence state of the baseline impedance value, modify the confidence state based on additional impedance data, and only determine contact status using the baseline impedance value when the confidence state meets a threshold.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN B HENSON whose telephone number is (571)270-5340. The examiner can normally be reached M-F 7 AM ET - 5 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert (Tse) Chen can be reached at (571) 272-3672. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN B HENSON/Primary Examiner, Art Unit 3791
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