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 amendments and associated arguments filed 11/26/2025 have been fully considered but they are not persuasive. Applicant argued that the patented claims of 11,794,026 do not disclose a defibrillator with a “cable management system for the leads.” The Examiner respectfully disagrees. No specific structure or details of the cable management system is recited in the claims. The applicant’s original specification defines the BRI of the cable management system in par. 0087 and 0091 as a system “used to store the lead(s)…inside of the housing.” Therefore, any system that stores leads inside the housing of the defibrillator reads on the claims. Claim 11 of 11,794,026 recites “a housing within which are contained…a pair of dermal electrodes connected as outputs…via one or more leads.” Therefore, the claim recites a system that stores leads inside the housing of the defibrillator. The rejection is still considered proper.
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 1-13, 15-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,794,026 in view of Shaker et al. (US 11,794,025, hereinafter Shaker).
Regarding claims 1-3, 5-8, 10, 15-16 and 20, patented claims 11 and 12 recite all of the limitations of current claims 1-3, 6-8, 10 and 15 with the exception of the pair of electrodes having a similar size profile as the housing, the pair of electrodes being stored on top of one another on a surface of the housing, the pair of electrodes being separate and removable from the housing and connected via leads to the charging circuit, and the housing having a user interface with an on switch to trigger the charging circuit, a warning status indicator/display, and a speaker. Attention is directed to the secondary reference of Shaker, which discloses an easy use external defibrillator, and thus is analogous art with the patented claims. Shaker discloses in figure 13 that a pair of defibrillation electrodes 410 and 405 are stored on top of each other on a surface of the housing, such that the electrodes are shown having a similar size profile as the housing and the pair of electrodes are separate and removable from the housing while connected via leads to the charging circuit, as seen in figures 11 and 13. Furthermore, Shaker shows a user interface with an on switch 705, a warning status indicator on the exterior of the housing as seen in figure 7, and a speaker 1415 (Col. 12, lines 22-25 and Col. 15, lines 53-60). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the patented claims to include the pair of electrodes having a similar size profile as the housing, the pair of electrodes being stored on top of one another on a surface of the housing, the pair of electrodes being separate and removable from the housing while connected to the charging circuit via leads, and the housing having a user interface, as taught by Shaker, in order to make the electrodes easily accessible for deployment as well as easily disposable and replaceable (Col. 10, lines 20-30 of Shaker for motivation) and to allow a user to operate the defibrillator.
With regards the housing “sized to fit within a shirt pocket or a hip pocket” entirely depends on the size of the pocket, which is undefined in the claims and in the original specification. A pocket can be any size, including a size large enough to fit any housing of an AED. As such, this is an intended use of the housing, such that the housing of the patented defibrillator is sized to fit within a shirt or hip pocket that is larger than the housing of the AED.
The applicant’s original specification defines the BRI of the cable management system in par. 0087 and 0091 as a system “used to store the lead(s)…inside of the housing.” Therefore, any system that stores leads inside the housing of the defibrillator reads on the claims. Claim 11 recites “a housing within which are contained…a pair of dermal electrodes connected as outputs…via one or more leads.”
Regarding claim 4, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s effective filing date that the defibrillator should use a green indicator when ready-to-shock, as green universally means “go.”
Regarding claims 11 and 12, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s effective filing date that the defibrillator should be of a size and weight that proved most useful and convenient to a user, such that it has been held that the overall size and dimensions of an invention are an obvious design choice (see MPEP 2144.04).
Regarding claims 9, 13, 17 and 18, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s effective filing date that the defibrillator should continue to shock the patient as many times as needed to effectively treat the patient, as that is the point of a defibrillator.
Allowable Subject Matter
Claims 1-13, 15-18 and 20 would be allowable if a Terminal Disclaimer were filed to overcome the double patenting rejection set forth in this Office action.
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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