DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 January 2026 has been entered.
EXAMINER’S AMENDMENT
An interview was conducted and proposed an Examiner’s amendment to the claims in a condition for allowance, but did not result in an authorization.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 11, 12 and 17 of U.S. Patent No. 9,865,533. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations are similar and have the same scope.
Though, the instant application recites “the internal contact is hermetically sealed to the inner surface of the non-conductive substrate surrounding the via”, this limitation does not differentiate the recited limitation in the conflicting claims of patent 9,865,533. Claim 1 of the instant application recites “external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via… the internal contact is hermetically sealed to the inner surface of the non-conductive substrate surrounding the via”. However, the conflicting patent recites in claim 2, “the internal contact is attached to the inner surface of the non-conductive substrate by a laser bond that surrounds the via.” and claim 1, “the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via.” As recited in conflicting patent, if an external contact hermetically seals the via by a laser bond, one of ordinary skill in the art would have known that, a laser bond hermetically seals an internal contact surrounding the via. Further, it is known that an implantable medical device comprises hermetic sealing. Therefore, unless otherwise defined, it is obvious that a laser bond hermetically seals to the inner surface of the non-conductive substrate surrounding the via.
See, the limitations of both sets of claims are listed with the conflicting portions have been underlined.
18/619,746
US 9,865,533
1. A feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate; a conductive material disposed in the via; an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via, and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via;
an internal contact disposed over the via on the inner surface of the non-conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is hermetically sealed to the inner surface of the non- conductive substrate surrounding the via; and
1. A feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate; a conductive material disposed in the via; and an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via, and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via.
2. The assembly of claim 1, wherein the feedthrough further comprises an internal contact disposed over the via on the inner surface of the non-conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is attached to the inner surface of the non-conductive substrate by a laser bond that surrounds the via.
an electronic device formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough.
11. The assembly of claim 1, further comprising an electronic device disposed on the inner surface of the non-conductive substrate, wherein the electronic device is electrically coupled to the conductive material in the via of the feedthrough, and wherein the electronic device is attached to the non-conductive substrate by a bond.
2. The assembly of claim 1, wherein the electronic device comprises an integrated circuit.
12. The assembly of claim 11, wherein the electronic device comprises an integrated circuit.
3. The assembly of claim 1, wherein the electronic device comprises a capacitor.
17. The assembly of claim 1, wherein the feedthrough further comprises a filtering capacitor electrically coupled to the via on the inner surface of the non-conductive substrate, wherein the filtering capacitor comprises a dielectric member interposed between two conductive layers.
Claims 9, 10 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 and 19 of U.S. Patent No. 9,968,794. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations are similar and have the same scope.
See, the limitations of both sets of claims are listed with the conflicting portions have been underlined.
18/619,746
US 9,968,794
9. An implantable medical device system, comprising: a housing; electronics disposed within the housing; a feedthrough assembly attached to a sidewall of the housing and electrically coupled to the electronics, the feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate; a conductive material disposed in the via; and an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via, and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via; and
an internal contact disposed over the via on the inner surface of the non- conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is hermetically sealed to the inner surface of the non-conductive substrate surrounding the via; and
an electronic device formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough.
10. The implantable medical device system of claim 9, further comprising a connector header disposed on the housing of the implantable medical device, the connector header comprising a housing that surrounds the feedthrough assembly, wherein the connector header further comprises a receptacle adapted to receive a proximal portion of a lead and electrically couple a contact of the lead to the external contact of the feedthrough assembly.
1. An implantable medical device system, comprising: a housing; electronics disposed within the housing; feedthrough assembly attached to a sidewall of the housing and electrically coupled to the electronics, the feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface of the non-conductive substrate; a conductive material disposed in the via; and an external contact disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via, and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via; and
a connector header disposed on the housing of the implantable medical device, the connector header comprising a housing that surrounds the feedthrough assembly, wherein the connector header further comprises a receptacle adapted to receive a proximal portion of a lead and electrically couple a contact of the lead to the external contact of the feedthrough assembly.
5. The system of claim 1, wherein the feedthrough further comprises an internal contact disposed over the via on the inner surface of the non-conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, wherein the internal contact is electrically coupled to the electronics.
13. The implantable medical device system of claim 9, wherein the electronic device comprises a capacitor.
19. The system of claim 1, wherein the feedthrough further comprises a filtering capacitor electrically coupled to the via on the inner surface of the non-conductive substrate, wherein the filtering capacitor comprises a dielectric member interposed between two conductive layers.
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.
Claim(s) 1-4, 8-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer (US 20130060312).
Regarding claim 1, Iyer teaches, a feedthrough assembly (feedthrough 18, see Abstract) comprising a non-conductive substrate (feedthrough substrate 34, see Fig. 4A below) and a feedthrough (feedthrough 18), the feedthrough comprising:
a via (via 44) from an outer surface to an inner surface of the non-conductive substrate (see the via 44);
[AltContent: textbox (via)][AltContent: arrow][AltContent: textbox (electronic device)][AltContent: ][AltContent: textbox (internal contact)][AltContent: ][AltContent: textbox (external contact)][AltContent: ]
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Annotated Fig. 4A, Iyer.
a conductive material (conductive vias 44, Fig. 4A, para. [0035]) disposed in the via;
an external contact (conductive pads 28) disposed over the via on the outer surface of the non-conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via (each of conductive vias 44 is electrically and physically coupled to a respective one of externally-facing feedthrough conductive pads 28 and a respective one of internally-facing feedthrough conductive pads 46, para. [0035]), and wherein the external contact is hermetically sealed to the outer surface of the non- conductive substrate by a laser bond surrounding the via (conductive vias 44 and/or pads 28, 46…, so that the conductive paste and HTCC material bond together and form hermetic seal, para. [0048]), wherein the laser bond comprises a bond line (hermetic seal 26 comprises a braze joint… formed using laser brazing, para. [0034]).;
an internal contact (conductive pads 46) disposed over the via on the inner surface of the non-conductive substrate (see Fig. 4A), wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is hermetically sealed to the inner surface of the non- conductive substrate surrounding the via (each of conductive vias 44 is electrically and physically coupled to a respective one of externally-facing feedthrough conductive pads 28 and a respective one of internally-facing feedthrough conductive pads 46, para. [0035], the hermetic seal is formed by cofiring the materials that form feedthrough substrate 34 and electrically conductive vias 44 so that the material that forms vias 44 bonds with the material that forms feedthrough substrate 34, para. [0041]); and
an electronic device (capacitive filters 64) formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough (see Fig. 4A).
Though, Iyer does not explicitly teach “a bond line”, from the teachings of Iyer para. [0041], “electrically conductive vias 44 may comprise a conductive material,…a hermetic seal is formed at the interface between each of electrically conductive vias 44 and feedthrough substrate 34. The hermetic seal may be formed by…forming a braze joint between the material that forms via 44 and the material that forms feedthrough substrate 34” and in para. [0034], “a braze joint…formed using laser brazing”, one of ordinary skill in the art would have known that the braze joint is identical to the recited bond line, unless otherwise defined. Therefore, in view of the teachings of Iyer, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the feedthrough assembly of Iyer replace the braze joint with a bond line so that it enables forming a hermetic seal by cofiring the materials that form feedthrough substrate 34 and electrically conductive vias 44 and hence the material that forms vias 44 bonds with the via material of the feedthrough substrate 34 as Iyer disclosed in para. [0041].
Regarding claim 2, Iyer teaches the recited limitations with respect to claim 1. Iyer further teaches, the assembly of claim 1, wherein the electronic device comprises an integrated circuit (IMD…may include integrated circuits, para. [0122]).
Regarding claim 3, Iyer teaches the recited limitations with respect to claim 1. Iyer further teaches, the assembly of claim 1, wherein the electronic device comprises a capacitor (capacitive filters 64, Fig. 4A).
Regarding claim 4, Iyer teaches the recited limitations with respect to claim 3. Iyer further teaches, the assembly of claim 3, wherein the capacitor comprises a first conductor (active electrodes 66, Fig. 4B below), a second conductor (ground electrodes 68, Fig. 4B), and an insulator (capacitive filter substrate 50, electrical insulator, para. [0052]) disposed between the first conductor and the second conductor (see Figs. 4A and 4B).
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Annotated Fig. 4B, Iyer.
Regarding claim 8, Iyer teaches the recited limitations with respect to claim 1. Iyer further teaches, the assembly of claim 1, wherein the electronic device is formed over the via of the feedthrough (see the capacitive filters 64 and the vias 44 in Figs. 4A and 4B).
Regarding claim 9, Iyer teaches, an implantable medical device system (IMD, para. [0024]), comprising:
a housing (hermetically sealed housing of the IMD, para. [0024]);
electronics (capacitive filters 64, Fig. 4A) disposed within the housing;
a feedthrough (feedthrough 18, Abstract) assembly attached to a sidewall of the housing and electrically coupled to the electronics (feedthrough assembly includes capacitive filter array 20, para. [0049]), the feedthrough assembly comprising a non-conductive substrate (feedthrough substrate 34) and a feedthrough (feedthrough 18), the feedthrough comprising:
a via (vias 44) from an outer surface to an inner surface of the non-conductive substrate (see Fig. 4A);
a conductive material disposed in the via (conductive vias 44, Fig. 4A, para. [0035]);
an external contact (conductive pads 28) disposed over the via on the outer surface of the non- conductive substrate, wherein the external contact is electrically coupled to the conductive material disposed in the via (each of conductive vias 44 is electrically and physically coupled to a respective one of externally-facing feedthrough conductive pads 28 and a respective one of internally-facing feedthrough conductive pads 46, para. [0035]), and wherein the external contact is hermetically sealed to the outer surface of the non-conductive substrate by a laser bond surrounding the via (conductive vias 44 and/or pads 28, 46…, so that the conductive paste and HTCC material bond together and form hermetic seal, para. [0048]), wherein the laser bond comprises a bond line (hermetic seal 26 comprises a braze joint… formed using laser brazing, para. [0034]); and
an internal contact (conductive pads 46) disposed over the via on the inner surface of the non- conductive substrate, wherein the internal contact is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is hermetically sealed to the inner surface of the non-conductive substrate surrounding the via (each of conductive vias 44 is electrically and physically coupled to a respective one of externally-facing feedthrough conductive pads 28 and a respective one of internally-facing feedthrough conductive pads 46, para. [0035], the hermetic seal is formed by cofiring the materials that form feedthrough substrate 34 and electrically conductive vias 44 so that the material that forms vias 44 bonds with the material that forms feedthrough substrate 34, para. [0041]); and
an electronic device (capacitive filters 64) formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough (see Figs. 4A and 4B).
Though, Iyer does not explicitly teach “a bond line”, from the teachings of Iyer para. [0041], “electrically conductive vias 44 may comprise a conductive material, such as a metal or alloy, that substantially fills a passageway that extends through feedthrough substrate 34. In one example, a hermetic seal is formed at the interface between each of electrically conductive vias 44 and feedthrough substrate 34. The hermetic seal may be formed by many methods, such as by forming a braze joint between the material that forms via 44 and the material that forms feedthrough substrate 34” one of ordinary skill in the art would have known that the braze joint is identical to the recited bond line, unless otherwise defined. Therefore, in view of the teachings of Iyer, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the feedthrough assembly of Iyer replace the braze joint with a bond line so that it enables forming a hermetic seal by cofiring the materials that form feedthrough substrate 34 and electrically conductive vias 44 and hence the material that forms vias 44 bonds with the material that forms feedthrough substrate 34 as Iyer disclosed in para. [0041].
Regarding claim 10, Iyer teaches the recited limitations with respect to claim 9. Iyer further teaches, the implantable medical device system of claim 9, further comprising a connector header disposed on the housing of the implantable medical device, the connector header comprising a housing that surrounds the feedthrough assembly, wherein the connector header further comprises a receptacle adapted to receive a proximal portion of a lead and electrically couple a contact of the lead to the external contact of the feedthrough assembly (IMD, the electrical conductors may be electrically coupled to a conductive pathway through a feedthrough to allow a lead conductor to be electrically coupled to circuitry contained within the hermetically sealed housing of the IMD, para. [0024], in which it is obvious that the medical device system of Iyer comprises connector header and receptacle that couples the feedthrough assembly. If applicant disagrees, see Fig. 15, Iyer (US 20130127567)).
Regarding claim 11, Iyer teaches the recited limitations with respect to claim 9. Iyer further teaches, the implantable medical device system of claim 9, wherein the housing of the implantable medical device is hermetically sealed to the non-conductive substrate of the feedthrough assembly by a laser bond between the housing and the non-conductive substrate (feedthrough 18 may be mounted to ferrule 16 within ferrule opening 30 using a hermetic seal 26 formed between feedthrough 18 and ferrule 16…, hermetic seal 26 comprises a braze joint between feedthrough 18 and ferrule 16 e.g., formed using laser brazing, para. [0034]).
Regarding claim 12, Iyer teaches the recited limitations with respect to claim 9. Iyer further teaches, the implantable medical device system of claim 9, wherein the electronic device comprises an integrated circuit (integrated circuits, para. [0122]).
Regarding claim 13, Iyer teaches the recited limitations with respect to claim 9. Iyer further teaches, the implantable medical device system of claim 9, wherein the electronic device comprises a capacitor (capacitor filter 64).
Regarding claim 14, Iyer teaches the recited limitations with respect to claim 9. Iyer further teaches, the implantable medical device system of claim 13, wherein the capacitor comprises a first conductor (active electrodes 66, see Fig. 4B above), a second conductor (ground electrodes 68, Fig. 4B), and an insulator disposed between the first conductor and the second conductor (capacitive filter substrate 50, electrical insulator, para. [0052]).
Regarding claim 18, Iyer teaches the recited limitations with respect to claim 9. Iyer further teaches, the implantable medical device system of claim 9, wherein the electronic device is formed over the via of the feedthrough (see the capacitive filters 64 and the vias 44 in Figs. 4A and 4B).
Allowable Subject Matter
Claims 21-22 are allowed. Claims 5 and 15 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, and to overcome the nonstatutory double patenting rejection set forth in this Office action. Claims 6-7 and 16-17 would be allowable by virtue of its dependency.
The following is an examiner’s statement of reasons for indicating allowable subject matter:
Claims 5 and 15 would be allowable for disclosing a feedthrough assembly comprising a non-conductive substrate and a feedthrough, wherein the first conductor is deposited or laminated onto the inner surface of the non-conductive substrate.
Claim 21 would be allowable for disclosing a feedthrough assembly comprising a non-conductive substrate and a feedthrough, an electronic device formed on the inner surface of the non-conductive substrate and electrically coupled to the conductive material in the via of the feedthrough, the electronic device comprising a capacitor that comprises: a first conductor; a second conductor; and an insulator disposed between the first conductor and the second conductor, wherein the first conductor is deposited or laminated onto the inner surface of the non- conductive substrate.
Though, prior art of record Iyer teaches a feedthrough assembly 10 in Fig. 4A, including an electronic device comprising a capacitor filter array 64 having a first conductor 66, a second conductor 68, and an insulator 50 disposed between the first conductor and the second conductor, Iyer fails to teach the first conductor is deposited or laminated onto the inner surface of the non-conductive substrate.
Therefore, claims 5, 15 and 21 would be allowable. Claims 6-7, 16-17 and 22 would be allowable by virtue of its dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Prior art Lim (US 8391983) teaches a feedthrough assembly comprising a non-conductive substrate and a feedthrough, the feedthrough comprising: a via from an outer surface to an inner surface; a conductive material disposed in the via; an external contact disposed over the via, and the external contact is hermetically sealed to the outer surface of the non-conductive substrate; an internal contact disposed over the via on the inner surface of the non-conductive substrate, and is electrically coupled to the conductive material disposed in the via, and wherein the internal contact is hermetically sealed to the inner surface of the non-conductive substrate surrounding the via; and an electronic device electrically coupled to the conductive material in the via of the feedthrough.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE K. ABRAHAM whose telephone number is (571)270-1087. The examiner can normally be reached Monday-Friday 8:30-4:30 EST.
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, THOMAS J. HONG can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE K ABRAHAM/Examiner, Art Unit 3729
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