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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The IDS filed 10/24/23 has been considered and placed of record. The initialed copy is attached herewith.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Re claim 1, it is unclear what is big N? In addition, both small n and big N need to be defined (i.e. integers greater than 1).
Re claims 2-11, they are indefinite for depending on objected claims.
Re claim 12, the alternative conjunction “or” coupled with conjunction “and” made the claim unclear.
Re claims 13-17, they are indefinite for depending on objected claims. Appropriate correction is required.
Claim Objections
Claims 1-17 are objected to because of the following informalities: There are many revisions to claims 1-17. Four (4) sets dated 10/24/23. One (1) set dated 4/5/24. And one (1) set dated 8/7/25. The confusion arises as followed: One set dated 10/24/23 appears to amend claims 16-17 which do not appear in any of the other sets filed 10/24/23. The set dated 4/5/24 appears to be the appropriate amended set to claims dated 10/24/23. Applicant filed another amended set on 8/7/25 (latest set). This set of claims seems to amend claims predating the set filed 4/5/24. Applicant is reminded that amendment should be made to the claims with the latest date. Applicant is required to file a “finalized” and correct set of claims.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-10 of U.S. Patent No. 12,623,069. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Re claim 1, the instant claim is similar to patent claim 1. In addition, instant claim 1 adds at least the limitation “at least one sensor.” Official notice is taken of the fact that having a sensor included in a neural stimulator/device to record signals would ensure cellular electrical activity is monitored and correctly measured. Therefore, it would have been obvious to have included sensors into patent claim 1 to properly monitor the living tissue.
Re claim 2, it is similar to patent claim 2.
Re claim 3, patent claim 1 does not claim a sensor as explained above and a variety of sensors. It would have been obvious to have selected any type of sensors since it has been held to be within the general skill of a worker in the art to select a known materiale on the basis of its suitability for the intended use as a matter of obvious design choice.
Re claim 4, it is similar to patent claim 3.
Re claim 5, patent claim 1 does not claim the specific energy source as claimed in instant claim. It would have been obvious to have selected any type of energy source as instantly claimed since it has been held to be within the general skill of a worker in the art to select a known materiale on the basis of its suitability for the intended use as a matter of obvious design choice.
Re claims 6-10, they are similar to patent claims 6-10 respectively.
Re claim 11, it is similar to patent claim 10.
Allowable Subject Matter
Claims 12-17 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication should be directed to the Examiner at the below-listed number. The Examiner can normally be reached on Mon-Thu from 7:00am-5:00pm.
The Examiner’s SPE is Drew Dunn and he can be reached at 571.272.2312. The fax number for the organization where this application is assigned is 571.273.8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800.786.9199 (IN USA OR CANADA) or 571.272.1000.
/EDWARD TSO/Primary Examiner, Art Unit 2859 571.272.2087
Prosecution Insights