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 6/24/2026 with respect to the objection to the Specification and the 102 and 103 rejections using Owen as the primary reference have been fully considered and are persuasive. Therefore, the objection and rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Foeller et al.
Terminal Disclaimer
The Terminal Disclaimer (TD) filed on 7/6/2026 has been reviewed by the USPTO Paralegals, and it has been found to be improper (see the TD review decision in the file wrapper dated 7/7/2026). Specifically, the person who signed the TD is not the applicant, patentee or an attorney or agent of record. The Power of Attorney filed on 4/7/26 was not accepted by the Office (see the “N572” letter mailed on 4/15/2026). The double patenting 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 19-28 and 31-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,260,237. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the current claims as they include all the limitations of the current claims, as well as additional limitations.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Foeller et al. (US 2011/0106190, hereinafter Foeller) in view of Owen et al. (US 2003/0055460, hereinafter Owen).
Regarding claims 19-20, Foeller discloses a defibrillator configured to be attached to a patient, as seen in figure 5. The defibrillator includes a first defibrillation node X and a second defibrillation node Y that are each attached to an electrode that is attached to the patient (although electrodes are not explicitly shown in figure 5, this is implicitly required as an electrode is merely any conductor that can deliver electrical energy to the patient, and would ne required for the defibrillator to function as intended). A high voltage capacitor CHT (i.e., charge storage device) has a first terminal attached to a first switch E and a second terminal attached to ground (see figure 5). A diverting resistor RS is coupled between the first terminal of the charge storage device and a discharge circuit (i.e., the H-Bridge connected to node Z). The switch E is also coupled between the first terminal of the charge storage device and the first defibrillation node X in order to switch on and off to coupe and decouple the first terminal and the first defibrillation node (see figure 5 and par. 0058).
While the defibrillator of Foeller would require some sort of housing, Foeller is silent as to the housing, and Foeller is also silent as to the high voltage charge storage device being configured to store at least 50 Joules of energy. Attention is directed to Owen, which also discloses a defibrillator, and thus is analogous art with Foeller. Specifically, Owen discloses a wearable cardioverter defibrillator (WCD) system for an ambulatory patient, the WCD having a first defibrillation electrode and a second defibrillation electrode (par. 0030) with a support structure configured to be worn by an ambulatory patient so as to maintain the first and the second defibrillation electrodes on a body of the ambulatory patient (par. 0069). Owen discloses a small, lightweight housing 40 having a first defibrillation node and a second defibrillation node, in which the first defibrillation electrode and the second defibrillation electrode are configured to be coupled to the housing so as to make electrical contact with the first defibrillation node and the second defibrillation node (par. 0067, 0068, 0118 and Fig 2). The WCD includes a charge storage device (i.e., capacitors 69) within the housing and configured to store charge amounting to at least 50 Joule of energy, the charge storage device having a first terminal and a second terminal (par. 0119 and claim 31). Owen discloses a discharge circuit within the housing and including a high-voltage switch coupled between the first terminal of the charge storage device and the first defibrillation node, the high- voltage switch configured to switch on and to switch off so as to respectively couple and uncouple the first terminal and the first defibrillation node (see claims 3 and 4, par. 0134 and 0140 and figures 14A-14C). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date that the defibrillator of Foeller should include a small, lightweight housing for connecting to electrodes, as taught by Owen, in order to make the device portable (par. 0119-0120 for motivation).
Furthermore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date that the high voltage capacitor of Foeller should have a specific energy storage of at least 50 Joules as taught by Owen to be an amount known in the defibrillator art to effectively defibrillate a heart. Additionally, it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). The applicant provides no criticality for the claimed value, and par. 0048 of the original specification makes clear that there are additional values that would be equally successful, and that 50 Joules is a mere example.
Claims 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over Foeller and Owen in view of Badelt et al. (US 2011/0245888, hereinafter Badelt).
Regarding claims 21 and 23-24, Foeller as modified, discloses the claimed invention except for a detector configured to detect a current leaked through the diverting resistance, and to output a detection signal responsive to the detected leaked current. Badelt also discloses a defibrillator and thus is analogous art with Foeller. Badelt teaches that it is known to use a detector configured to detect a current leaked through the diverting resistance, and to output a detection signal responsive to the detected leaked current [see par. 0075 and 0077 (i.e., current sensor circuit 431 includes a resistive load provided in series with a positive or negative node of the switch network, which forms a current sensing resistor and also includes an amplifier 434, such that a comparator is equivalent to a very high gain amplifier with balanced inputs. A relatively low voltage potential/drop is formed across the resistive load 432 when leakage current flows in line 429) and par. 0017 (e.g. vibratory warning signal and audible warning signal upon detecting that the leakage measurement exceeds the leakage threshold to determine if there is excess leakage that could prove dangerous to the patient)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Foeller with a detector configured to detect a current leaked through the diverting resistance, and to output a detection signal responsive to the detected leaked current, as taught by Badelt, since such a modification would provide the predictable results of determining if there is excess leakage that could prove dangerous to the patient.
Regarding claim 22, Foeller discloses in which the diverting resistance includes a resistor (fig. 5).
Regarding claim 25, Foeller discloses the claimed invention except for in which the detector further includes an analog-to-digital converter. Badelt teaches that it is known to use a detector that includes an analog-to-digital converter as set forth in Fig. 5 and par. 0083 (e.g. sensing circuitry 534 includes an A/D converter) and [0079] (e.g. circuit indicates an alternative embodiment of leakage detection system 500) to produce a digital signal for later processing). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as taught by Foeller such that the detector further includes an analog-to-digital converter as taught by Badelt, since such a modification would provide the predictable results of producing a digital signal for later processing.
Regarding claim 26, Foeller discloses the claimed invention except for a memory; and a processor coupled to the detector and configured to record in the memory an event responsive to the detection signal. Badelt teaches that it is known to use a memory; and a processor coupled to the detector and configured to record in the memory an event responsive to the detection signal as set forth in par. 0041 (e.g. device includes a microcontroller with a microprocessor and RAM or ROM memory) and [0096] (e.g. the device logs into memory any leakage measurements and the state of various components within the device) to log the leakage and determine if remedial action in warranted). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as taught by Foeller with a memory and a processor coupled to the detector and configured to record in the memory an event responsive to the detection signal as taught by Badelt, since such a modification would provide the predictable results of logging the leakage for review and determining if remedial action is warranted.
Regarding claim 27, Foeller discloses the claimed invention except for a user interface configured to emit a human-perceptible indication responsive to the detection signal. Badelt teaches that it is known to use a user interface configured to emit a human-perceptible indication responsive to the detection signal as set forth in par. 0017 (e.g. the controller is configured to issue at least one of a vibratory warning signal and an audible warning signal upon detecting that the leakage measurement exceeds the leakage threshold) so that a patient or operator may be alerted to a condition requiring medical attention). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as taught by Foeller with a user interface configured to emit a human-perceptible indication responsive to the detection signal as taught by Badelt, since such a modification would provide the predictable results of alerting a patient or operator to a condition requiring medical attention.
Regarding claim 28, Foeller discloses a communication module CTRL configured to transmit a message responsive to a detection signal (par. 0060)
Claims 19, 20, 31, 32 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Lopin et al. (US 6,096,063, hereinafter Lopin) in view of Owen.
Regarding claims 19, 20 and 31, Lopin discloses a defibrillator configured to be attached to a patient, as seen in figure 2. The defibrillator includes a first defibrillation node 26 and a second defibrillation node 28 that are each attached to an electrode 21 or 23 that is attached to the patient. A capacitor 20 (i.e., charge storage device) has a first terminal attached to a high voltage switch 30 and a second terminal (see figure 2). The capacitor can store charge greater than 50 Joules (Col. 8, line 39-Col. 9, line 14). A diverting resistor 52, 54, 56 is coupled between the second terminal of the charge storage device and a discharge circuit (i.e., the H-Bridge 48). The switch 30 is also coupled between the first terminal of the charge storage device and the first defibrillation node 26 in order to switch on and off to couple and decouple the first terminal and the first defibrillation node (see figure 2 and Col. 4, lines 40-65). The H-bridge is coupled between the first and second terminal of the charge storage device, and includes high voltage switch 30, as seen in figure 2. An H-bridge switch 32 is joined with the high voltage switch at an intermediate node between them as seen in figure 2. The diverting resistor 52, 54, 56 is coupled between the second terminal of the charge storage device and the intermediate node, as seen in figure 2.
While the defibrillator of Lopin would require some sort of housing, Lopin is silent as to the housing. Attention is directed to Owen, which also discloses a defibrillator, and thus is analogous art with Foeller. Specifically, Owen discloses a wearable cardioverter defibrillator (WCD) system for an ambulatory patient, the WCD having a first defibrillation electrode and a second defibrillation electrode (par. 0030) with a support structure configured to be worn by an ambulatory patient so as to maintain the first and the second defibrillation electrodes on a body of the ambulatory patient (par. 0069). Owen discloses a small, lightweight housing 40 having a first defibrillation node and a second defibrillation node, in which the first defibrillation electrode and the second defibrillation electrode are configured to be coupled to the housing so as to make electrical contact with the first defibrillation node and the second defibrillation node (par. 0067, 0068, 0118 and Fig 2). The WCD includes a charge storage device (i.e., capacitors 69) within the housing and configured to store charge amounting to at least 50 Joule of energy, the charge storage device having a first terminal and a second terminal (par. 0119 and claim 31). Owen discloses a discharge circuit within the housing and including a high-voltage switch coupled between the first terminal of the charge storage device and the first defibrillation node, the high- voltage switch configured to switch on and to switch off so as to respectively couple and uncouple the first terminal and the first defibrillation node (see claims 3 and 4, par. 0134 and 0140 and figures 14A-14C). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date that the defibrillator of Foeller should include a small, lightweight housing for connecting to electrodes, as taught by Owen, in order to make the device portable (par. 0119-0120 for motivation).
Regarding claims 32 and 35, Lopin teaches that it is known to use a main switch coupled between the first terminal and the H-bridge circuit as set forth in Fig. 2 (e.g. relay switch 17) to allow current to pass through to the patient.
Regarding claim 34, Lopin teaches that it is known to use in which the intermediate node “coincides” with the first defibrillation node as set forth in Fig. 2 (e.g. electrodes 21 or 23, each connected to nodes within H-bridge circuit 48, based on whether switches are opened or not).
Claims 33 and 36 are rejected under 35 U.S.C. 103 as being unpatentable Lopin and Owen and further in view of Badelt.
Regarding claims 33 and 36, Lopin, as modified, discloses the claimed invention except for a detector configured to detect a current leaked through the diverting resistance, and to output a detection signal responsive to the detected leaked current. Badelt teaches that it is known to use a detector configured to detect a current leaked through the diverting resistance, and to output a detection signal responsive to the detected leaked current as set forth in par. 0075 and 0017 to determine if the leakage measurement satisfies the leakage threshold. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as taught by the modified Lopin, with a detector configured to detect a current leaked through the diverting resistance, and to output a detection signal responsive to the detected leaked current as taught by Badelt, since such a modification would provide the predictable results of determining if the leakage measurement satisfies the leakage threshold to ensure the safety of the patient.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892, particularly US 2021/0302486, which discloses detecting leakage current from capacitors.
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.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796
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