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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 24, 2025 has been entered.
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 and 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,911,095. Although the claims at issue are not identical (e.g., the claims of the present invention relate to a non-transitory computer readable media apparatus while the patented claims relate to a corresponding method including a step of obtaining a set of local activation times of electrograms and location coordinates of electrodes of a catheter, that is not necessarily tied to stored instructions on the non-transitory computer readable media), they are not patentably distinct from each other because it would have been obvious to include an instruction in the media for obtaining the set of LATs and electrode location coordinates, as the processor would require some means of instruction to obtain the necessary data. Furthermore, the non-transitory computer readable media of the present invention cannot be used to practice a method distinct from the patented method. It is additionally noted that claim 19 of the present invention corresponded to originally filed claim 17 of the parent application, which was not restricted because it was considered patentably indistinct from the method claims.
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 19 and 21-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the mentally performable actions of generating an activation time function (ATF) using only the obtained LATs of the electrodes; creating a bank of different candidate functions (CFs); expanding the ATF using two or more CFs selected from the bank of CFs; estimating weighting and unknown parameters of the CFs based on the obtained LATs of the electrodes; and determining the expanded ATF as a combination of the selected CFs that matches the LATs.
This judicial exception is not integrated into a practical application because there are no improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a), as the elements function in their usual capacity of storing, collecting and outputting information; there is no application or use of a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo; there is no application of the judicial exception with, or by use of, a particular machine, but only a generic memory device used as a tool to contain the abstract idea, as discussed in MPEP 2106.05(b); there is no transformation or reduction of a particular article to a different state or thing (only data manipulation), as discussed in MPEP 2106.05(c); and there is no application or use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to the particular technological environment of cardiac signal processing, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because receiving EGMs and obtaining a set of local activation times (LATs) of the EGMs and location coordinates of electrodes of a catheter represent insignificant data gathering that would be required in any performance of the abstract idea. The generic non-transitory computer readable media device is insignificant and only nominally related to the invention as a means to embody the abstract idea. The generation of at least one map encompassing features of a cardiac arrhythmia is considered insignificant data outputting necessary to convey the results of the performance of the abstract idea in order to allow a surgeon to conventionally treat the arrhythmia. The applicant discloses that map generation is a common technique used by the medical community (see Background of the Invention). The combination of a storage media device for containing programming instructions, the obtainment of data to provide the program with necessary information to execute the instructions, and the generation of at least one map to indicate the outcome of the execution of the programming is WURC in any computerized cardiac diagnostic system. All computerized diagnostic systems require program storage, data collection and data outputting. The generic and WURC non-transitory computer readable media is simply a tool upon which the abstract idea is embodied. The applicant discloses that the media device may be by way of example a WURC compact disk or the like (p. 17, lines 4-17). It is further noted that the processor and the electrodes of a catheter are only functionally recited (i.e., a non-transitory CRM for use with) and are not additional elements of the invention in the context of §101. Even if one were to consider such features to be additional elements, the use of a generic processor and an electrode catheter to collect EGMs is WURC in the art as they are necessarily required in any application.
Claims 21-38 contain no new additional elements outside of those already discussed above.
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered but they are not persuasive.
The applicant’s response has overcome the rejections under §112. The obviousness-type double patenting rejection stands as indicated above.
Regarding the rejection under §101, the applicant states that the rejection appears to be at odds with the USPTO’s guidance on subject matter eligibility, referencing Examples 1 and 3 in the guidelines as particularly relevant. It is argued that in the aforementioned examples, claim 2 is drawn to non-transitory computer readable media. The applicant then argues that, by analogy, claim 19 of the instant application is also drawn to a non-transitory computer readable media with stored instructions to carry out the method steps recited in claim 1 of the issued parent.
Example 1 (from the 2014 Interim Eligibility Guidance), while relating to a non-transitory computer readable media, was not found to be eligible because it contains a computer readable media (the fact that the invention was directed to a computer readable media was merely used to confirm that the invention was drawn to an article of manufacture and thus a statutory category under Step 1 analysis), but rather because the programming allowed for isolation and eradication of computer viruses and thus was inextricable tied to computer technology. Likewise, Example 3, Claim 2, was considered to be drawn to a statutory category under Step 1 analysis by virtue of the computer readable media. In this example involving digital image processing, use of an improved blue noise mask allowed the computer to use less memory than required for previous masks, resulting in faster computation time without sacrificing the quality of the resulting image –an improvement over prior processes and an improvement in computer technology.
While the use of a computer readable media in the present invention suffices to establish under Step 1 that the invention is drawn to one of the four categories of statutory subject matter, it is not alone sufficient to prove eligibility under §101. The computer readable media merely functions in its usual capacity to store programming information and control processor operation. All uses of the judicial exception would require the collection of EGM and electrode location information and represents insignificant data gathering activity. The generation of the map encompassing a feature of an arrhythmia is insignificant data outputting that merely conveys the output of the mentally performable steps in human perceivable form. As stated above, the generation of maps is an acknowledged common technique used by the medical community in mapping/ablation systems. The generation of a map does not represent any improvement in technology. The inventive concept/improvement clearly lies within the abstract idea itself (i.e., the generating, creating, expanding, estimating and determining steps) and not within the additional elements, contrary to the requirements set forth in MPEP 2106.05, I. for eligibility.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 KENNEDY SCHAETZLE whose telephone number is (571)272-4954. The examiner can normally be reached 2nd Monday of the biweek and W-F.
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, David E. 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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/KENNEDY SCHAETZLE/Primary Examiner, Art Unit 3796
KJS
April 15, 2026
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