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 .
Election/Restrictions
Newly submitted claim 11 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h).
Invention I (claims 1-10) and Invention III (claim 11) are related products. These inventions are distinct because they have a materially different design, mode of operation, function or effect.
In the instant case, the product of invention I can be used in a materially different process of using that product, for instance one that does not require “positioning the secondary coil proximate to metal electrodes of a primary coil of a charging device” (claim 11).
Additionally, the method of invention II could be practiced by a device that does not have “an implantable medical device” (as in claim 1).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits.
Accordingly, claim 11 is withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Response to Arguments
Applicant’s arguments filed 04/03/2026 have been fully considered but are moot in view of new grounds of rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, specifically an abstract idea without significantly more.
Step 1:
Independent claims 1 and 10 recite a medical system. Thus, they are directed to statutory categories of invention.
Step 2A, Prong 1:
Claims 1 and 10 recite the following claim limitations which are directed to mathematical concepts (see MPEP § 2106.04(a)(2), subsection I):
Claim 1: “the charging device (3) being designed to use the metal electrodes (31) to calculate an impedance for each segment (32)” (mathematical relationships, mathematical formulas or equations, and mathematical calculations).
In re claim 10, see in re claim 1 above.
These limitations, under their broadest reasonable interpretation, cover mathematical concepts.
Additionally, claims 1-10 recite limitations directed toward a mental process.
Claim 1 recites: “to use the impedances to check whether the primary coil (30) is aligned for optimum energy transfer to the secondary coil (20).”
This limitation is directed towards judgment and evaluation, and can be done in the human mind to check for alignment.
In re claim 10, see in re claim 1 above.
Therefore, each of the above identified claims recite an abstract idea.
Step 2A, Prong 2:
Claims 1 and 10 recite the following additional elements:
Claim 1: a medical system (1), comprising:
an implantable medical device (2) comprising an energy storage device for supplying electrical energy to the medical device (2) and a secondary coil (20) for transferring electrical energy to the energy storage device;
(b) a charging device (3) designed to charge the energy storage device, the charging device having a primary coil (30) via which electrical energy can be transferred to the energy storage device via the secondary coil (20) of the implantable medical device (2),
wherein the charging device (3) comprises a plurality of metal electrodes (31) which are arranged in front of the primary coil (30) and are each assigned to a segment (32) of a housing surface (33) of the charging device (3).
Claim 10: see in re claim 1 above.
The above recited limitations are interpreted as insignificant extra solution activities. Specifically, the above recited limitations are directed towards pre-solution activity (see MPEP §2106.05(g)) since they’re used to obtain information to detect proper alignment of the primary and secondary coil (i.e. mere data gathering).
There is nothing in the claims which integrates the judicial exception into a practical application.
Further, Examiner asserts that the limitations are not particular and instead provide instructions to apply the exception in a generic way (see factor ‘a’ in MPEP §2106.04(d)(2)). There is nothing in the claim which shows how omitting information integrates the abstract idea into a practical application.
Moreover, there is no evidence of record that would support the assertion that this step is an improvement to a computer or a technological solution to a technological problem.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than insignificant extra solution activity and mere data gathering combined with mathematical concepts. The same analysis applies here in 2B and does not provide an inventive concept.
Therefore, none of the claims 1-10 amounts to significantly more than the abstract idea itself. Accordingly, claims 1-10 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas which use mathematical concepts and mere data gathering as further discussed in the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., MPEP 2106.04(a)(2), and MPEP 2106.05(g).
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US 6,275,737) in view of Fried (US 2021/0121708) in view of Meadows et al. (US 2003/0120323) in view of Stevenson et al. (US 20150116053).
In re claim 1, Mann discloses a medical system (fig. 1: combination of 10 and 60), comprising:
an implantable medical device (60) comprising
an energy storage device (70; Col. 5, line 64 – Col. 6, line 8: external circuitry 10 supplies battery 70 of an implanted device; ) for supplying electrical energy to the medical device (Col. 5, line 64 – Col. 6, line 8) and
a secondary coil (implant coil 65) for transferring electrical energy to the energy storage device (Col. 5, lines 53-57: coil 65 receives modulated signal 75 from external transmission coil 30, which would be used to provide power to the battery 70; Col. 5, line 64 – Col. 6, line 8);
(b) a charging device (10) designed to charge the energy storage device (Col. 6, lines 3-8: external portion 10 charges implantable stimulator 60),
the charging device having a primary coil (external transmission coil 30) via which electrical energy can be transferred to the energy storage device via the secondary coil of the implantable medical device (Col. 5, line 53 - Col. 6, line 8),
a housing surface of the charging device (fig. 7: front surface of 102; Col. 10, lines 5-21: power may be provided through charging head 102),
the charging device being designed
to use circuitry to calculate an impedance (Col. 6, lines 25-37) and
to use the impedance to check whether the primary coil is aligned for optimum energy transfer to the secondary coil (Col. 6, lines 9-33: impedance is used to detect proper alignment; Col. 3, lines 6-9: proper alignment is needed for power to be efficiently transferred).
Mann fails to disclose
wherein the charging device comprises a plurality of metal electrodes which are arranged in front of the primary coil and are each assigned to a segment of a housing surface of the charging device,
*the charging device being designed to use the metal electrodes
to calculate an impedance for each segment and
to use the impedances to check whether the primary coil is aligned for optimum energy transfer to the secondary coil.
Fried teaches providing an improvement to recharging of implantable devices [0007] and teaches a recharge engine (fig. 2: 204) supplying power to an implantable device (202; [0056]), wherein the recharge engine comprises one or more sensors [0056] assigned to a segment of a housing surface of the recharge engine ([0008]: external charging device would comprise a housing surface and the plurality of sensors would correspond to a segment of the housing surface based on their positions [0056]) to detect a reflected impedance of the implantable neurostimulation [0056] to detect a relative presence of the implantable neurostimulation [0056].
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the medical system taught Mann, to provide wherein the charging device comprises a plurality of sensors, assigned to a segment of a housing surface of the charging device, to calculate an impedance for each segment and to use the impedances to detect a relative presence of the implantable neurostimulation, as taught by Fried.
Regarding the limitations,
“wherein the charging device comprises a plurality of…electrodes which are arranged in front of the primary coil…,
the charging device being designed to use the…electrodes to calculate an impedance for each segment…,”
Meadows teaches a spinal cord stimulation system [0003] comprising of an implant portion (fig. 1: 10; [0017, 0145]) comprising a rechargeable battery [0017] that is charged by an external power source [0017], and teaches wherein impedance of electrodes may be measured [0003, 0106] to adjust voltages [0121], maintain better low battery consumption [0121], and measure a fitness of the spinal cord stimulation system [0241].
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the medical system yielded by the proposed combination, to provide wherein the charging device comprises a plurality of electrodes which are arranged in front of the primary coil and the charging device being designed to use the electrodes to calculate an impedance for each segment, as taught by Meadows, because electrodes can also be used to measure impedance, and also to adjust voltages, maintain better low battery consumption, and measure a fitness of the spinal cord stimulation system.
Regarding the limitations directed to the “metal electrodes”, Stevenson teaches an electromagnetic interference (EMI) TANK filter assembly [0003] for use in implantable medical devices [0003], and teaches wherein nickel electrodes are known in the art [0301] as a base metal electrode [0301] due to their relatively low cost [0301].
The proposed combination would yield wherein the impedance measurement of Mann is done with a plurality of metal electrodes that are positioned in front of the primary coil, so the impedances of the electrodes are used to check whether the primary coil is aligned for optimum energy transfer to the secondary coil.
*Regarding the above recited limitations, Examiner asserts that the recited limitations are a recitation of functional language of the claimed invention.
The recitation of functional language must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the functional language, then it meets the claim.
In this case, the the charging device of the proposed combination has all the necessary structures to be designed to use the metal electrodes to calculate an impedance for each segment and
to use the impedances to check whether the primary coil is aligned for optimum energy transfer to the secondary coil; see MPEP § 2114 (I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432).
In re claim 3, the proposed combination yields (all mapping directed to Mann unless otherwise stated) wherein the housing surface is formed by a flat substrate (fig. 7: front surface of 102 is a flat surface) connected to a rest of the charging device (fig. ).
In re claim 4, the proposed combination yields (all mapping directed to Mann unless otherwise stated) wherein the flat substrate is a patch (Col. 5, lines 9-13; Col. , lines 37-43) or a plaster (optional).
In re claim 5, the proposed combination yields (all mapping directed to Mann unless otherwise stated) wherein the energy storing device is a battery (Col. 10, lines 1-4: charging unit 103 includes a rechargeable battery).
In re claim 6, regarding the limitations, “wherein the charging device is configured to induce an alternating current (I) in the metal electrodes and to measure a corresponding alternating voltage (V) induced by this current, wherein the charging device is further configured to calculate complex impedance (Z=V/I) from the alternating current (I) and the corresponding alternating voltage (V)” for at least four segments or for 16 segments of the housing surface”, Examiner asserts that the recited limitations are a recitation of functional language of the claimed invention.
The recitation of functional language must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the functional language, then it meets the claim.
In this case, the medical system of the proposed combination has all the necessary structures directed to the charging device to be configured to induce an alternating current (I) in the metal electrodes and to measure a corresponding alternating voltage (V) induced by this current and provide wherein the charging device is further configured to calculate complex impedance (Z=V/I) from the alternating current (I) and the corresponding alternating voltage (V) (see Mann: Col. 1, lines 51-64: current is provided and a corresponding AC voltage, see above where impedances are calculated); see MPEP § 2114 (I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432).
The proposed combination fails to yield “…calculate complex impedance (Z=V/I) from the alternating current (I) and the corresponding alternating voltage (V)” for at least four segments or for 16 segments of the housing surface”.
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the metal electrodes of the medical system yielded by the proposed combination, to provide four metal electrodes, because it would be a duplication of parts, as shown in re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
The proposed combination would yield wherein the charging device is further configured to calculate complex impedance (Z=V/I) from the alternating current (I) and the corresponding alternating voltage (V)” for at least four segments, since the impedance for each electrode would be calculated and would correspond to their own respective segment of the housing surface.
In re claim 7, regarding the limitation, “wherein on a basis of images which indicate the impedances in the individual segments a presence of conductors and non-conductors is distinguished by the medical system on a basis of the impedances to determine an orientation of the primary and secondary coils with respect to one another”, Examiner asserts that the recited limitations are a recitation of functional language of the claimed invention.
The recitation of functional language must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the functional language, then it meets the claim.
In this case, the medical system of the proposed combination has all the necessary structures directed to the medical system to determine an orientation of the primary and secondary coils with respect to one another based on the indication of the impedances; see MPEP § 2114 (I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432).
In re claim 8, the proposed combination yields (all mapping directed to Mann unless otherwise stated) wherein the charging device is configured to output user feedback for a purpose of aligning the primary coil over the secondary coil (Col. 6, lines 9-28: feedback regarding proper alignment may be provided).
In re claim 9, the proposed combination yields (all mapping directed to Mann unless otherwise stated) wherein the medical system is configured to provide the user feedback via a hand-held remote control (optional) or via warning tones (Col. 6, lines 9-28: audible indicator).
In re claim 10, regarding the limitations, “a medical system, comprising:
an implantable medical device comprising an energy storage device for supplying electrical energy to the medical device and a secondary coil for transferring electrical energy to the energy storage device; and
(b) a charging device designed to charge the energy storage device,
the charging device comprising multiple primary coils in an array,
wherein the medical system is configured to determine an impedance of each primary coil of the multiple primary coils to thereby determine impedance tomography to determine which primary coil is optimal for activation to achieve high power transfer efficiency”,
see in re claim 1 above.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mann (US 6,275,737) in view of Fried (US 2021/0121708) in view of Meadows et al. (US 2003/0120323) in view of Stevenson et al. (US 20150116053) in view of Gillbe (US 2009/0326611).
In re claim 2, the proposed combination fails to yield wherein the charging device comprises at least two metal electrodes
arranged on the housing surface and
configured to contact skin of a patient.
Gillbe teaches providing energy transfer to implantable medical device through electric current [0002], and teaches using surface electrodes [0039] to charge implanted electrodes positioned under skin [0021, 0025].
Gillbe further teaches that the surface electrode should be positioned over or near implanted electrodes [0039] to maximize an efficiency of transfer [0039].
[obvious to try]
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the medical system yielded by the proposed combination, to provide wherein the charging device comprises at least two metal electrodes arranged on the housing surface and configured to contact skin of a patient, as taught by the use of surface electrodes of Gillbe and Gillbe preferring to have the surface electrodes positioned over implanted electrodes, because doing do would maximize an efficiency of transfer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Almudallal et al. (US 2020/0203998) discloses a wireless electric field power transfer system (fig. 3; [0002-0004]) comprising a transmit resonator (300) and a receive resonator (224), wherein the transmit resonator comprises of a primary coil (218) and a plurality of electrodes (216), and wherein the transmit resonator generates an electric field [0067] that is received by the receive resonator [0067].
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUMAISA R BAIG whose telephone number is (571)270-0175. The examiner can normally be reached Mon-Fri: 8am- 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUMAISA RASHID BAIG/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796
Prosecution Insights