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 Amendment
The amendment filed on 1/6/26 is non-compliant. 37 CFR 1.121(c)(2) states in part: “The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.”
In this instance, the applicant has deleted the single numerical character “0” via strike-through, which is not easily perceived, in claims 2, 3, 5-8, and 20. In the future, similar amendments must be made via double brackets.
However, in the interest of compact prosecution, a notice of non-compliance is not being mailed.
Response to Arguments
As to claims 1-33, the applicant argues the claim objections are not valid because no law or rule requires the applicant to use articles such as a and the. The examiner respectfully disagrees. MPEP § 608.01(g) states in part: “An applicant is ordinarily permitted to use his or her own terminology, as long as it can be understood. Necessary grammatical corrections, however, should be required by the examiner, but it must be remembered that an examination is not made for the purpose of securing grammatical perfection.” The examiner maintains that the correction of the claims to include articles is a necessary grammatical correction for claim clarity.
As to the 35 U.S.C. 112 rejections, the applicant’s amendments overcome the previous 35 U.S.C. 112 rejections of claims 1-33.
As to the double patenting rejections, the applicant has requested the rejections be held in abeyance. MPEP § 714.02 states in part: “If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated.” A double patenting rejection is not an objection or requirement as to form and therefore cannot be held in abeyance. While the applicant’s response is thus technically non-responsive, a notice of non-responsiveness is not being sent out in the interest of compact prosecution.
Claim Objections
Claims 1 and 9 are objected to because the phrase “Hub comprising” should be “A hub comprising” for grammatical reasons. Appropriate correction is required.
Claims 2-8 and 10-20 are objected to because the phrase “Hub of claim” should be “The hub of claim” for proper antecedent basis. Appropriate correction is required.
Claim 21 is objected to because the phrase “Medical device comprising” should be “A medical device comprising” for grammatical reasons. Appropriate correction is required.
Claims 22-33 are objected to because the phrase “Medical device of claim” should read “The medical device of claim” for proper antecedent basis. Appropriate correction is required.
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.
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 network interface configured to […]”, “a module having a module processor configured to[…]”, “a processor configured to […]”, and “a failsafe bus configured to […]” in claim 1;
“a network interface configured to […]”, “a module having a module processor configured to[…]”, “a processor configured to […]”, and “an alarm wire bus configured to […]” in claim 9; and
“a network interface configured to […]”, “a module having a module processor configured to[…]”, “a processor configured to […]”, “a failsafe bus configured to […]”, and “an alarm wire bus configured to […]” in claim 21.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,830,617 B2 (hereafter referred to as the “reference patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims of the reference patent with the exception of:
“a module having a module processor” in claims 1 and 9 of the instant application. However, the reference patent shows each module having its own processor in Figure 2. Therefore, this is an obvious variant of the claim language and not patentably distinct. Further, it may be argued what the definition of “having” is and whether or not it requires a module comprising a module processor or merely having access to one. Therefore, the claim language may be seen as not patentably distinct for that reason as well.
Instant Application
Reference Patent
Claim 1
Claim 1
Hub comprising:
A hub, comprising:
a network interface configured to communicate with a medical device;
a network interface component configured to communicate data with a medical device;
a module having a module processor configured to interface with a communications channel;
a first module configured to interface with a first communications channel;
[…]
a processor configured to package the data from the medical device into at least one packet
a processor configured to package into a packet and transmit data from the medical device to said module over the communications channel; and
a processor configured to package the data from the medical device into at least one packet, wherein a packet of the at least one packet includes a header, the processor further configured to operatively communicate with one of the first and second modules to communicate the at least one packet over one of the first and second communications channels;
a failsafe bus configured to signal from said hub to the medical device when a fatal-error fault condition of said hub has occurred.
a failsafe bus configured to signal from the hub to the medical device when a fatal-error fault condition of the hub has occurred
As to claims 2, 4, 10, and 12 of the instant application, the claims are anticipated by claim 2 of the reference patent.
As to claims 3 and 11 of the instant application, the claims are anticipated by claim 1 of the reference patent in light of the discussion of Figure 2 of the reference patent above.
As to claims 5 and 13 of the instant application, the claims are anticipated by claim 3 of the reference patent.
As to claims 6 and 14 of the instant application, the claim is anticipated by claim 4 of the reference patent.
As to claim 7 of the instant application, the claim is anticipated by claim 13 of the reference patent.
As to claim 8 of the instant application, the claim is anticipated by claim 14 of the reference patent.
As to claim 9 of the instant application, the claim is anticipated by claim 1 of the reference patent according to a mapping similar to that given for claim 1 of the instant application above.
As to claim 15 of the instant application, the claim is anticipated by claim 5 of the reference patent.
As to claim 16 of the instant application, the claim is anticipated by claim 6 of the reference patent.
As to claim 17 of the instant application, the claim is anticipated by claim 7 of the reference patent.
As to claim 18 of the instant application, the claim is anticipated by claim 8 of the reference patent.
As to claim 19 of the instant application, the claim is anticipated by claims 9-12 of the reference patent.
Allowable Subject Matter
Claim 20 is 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.
Claims 21-33 are allowed.
Detailed reasons for allowance will be given if and when the application is in condition for allowance.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Whipple whose telephone number is (571)270-1244. The examiner can normally be reached Mondays-Fridays from 9:30 AM to 3:30 PM ET and Saturdays from 10:30 AM to 8:30 PM ET.
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, Joon Hwang can be reached at (571)272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Whipple/
Primary Examiner
Art Unit 2447
2/26/26