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 .
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 32 and 24 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. Claim 32 recites that the pickup sites comprise a right arm and legs, and claim 34 recites that the pickup sites comprise a left wrist. However, each of these locations is explicitly disclosed in paragraph [0104] of the specification as *not* being a pickup site, with no suggestion in the disclosure of any embodiments where they are pickup sites. Clarification is needed.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,978,360. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are recited or suggested in the claims of the ‘360 patent, as follows:
Claim 21
Claims of ‘360 patent
A method for determining a patient's physiological response to one or more stimuli over a simulation period, comprising:
Claim 1: A system for simulating a patient's physiological responses to one or more stimuli over a simulation period, wherein the system comprises programmatic instructions stored in a tangible, non-transitory computer readable medium, wherein the programmatic instructions define a plurality of channels, wherein each of the channels is representative of an anatomical site of the patient, and wherein, when executed, the programmatic instructions:
determining a plurality of input stimulus generation sites on the patient;
Claim 1: identify at least one of the plurality of channels as a stimulation site;
determining a plurality of input stimulation pick up sites on the patient;
Claim 1: identify a first subset of the plurality of channels as reference sites;
receiving more than one stimulation input signals from the plurality of input stimulation sites;
Claim 1: generate simulation data indicative of the physiological responses at each channel in the first subset of the plurality of channels based on the one or more simulated stimuli;
producing a subset of stimulation input signals by pruning the received more than one stimulation input signals;
Claim 4: The system of claim 1, wherein each channel in the second subset of the plurality of channels has simulation data indicative of a physiological response that exceeds one or more predefined thresholds.
Claim 5: The system of claim 4, wherein, when executed, the programmatic instructions identify, from the first subset, a third subset of the plurality of channels, wherein each of the channels in the third subset has simulation data indicative of a physiological response that does not exceed one or more predefined thresholds.
Claim 6: The system of claim 5, wherein, when executed, the programmatic instructions do not generate a data stream from each channel in the third subset.
scheduling a processing of the subset of stimulation input signals; and processing the subset of stimulation input signals to generate a response corresponding to each of the plurality of input stimulation pick up sites.
Claim 1: generate data indicative of physiological responses at each channel in the second subset of the plurality of channels by: identifying one or more signals that are expected to affect each channel in the second subset of the plurality of channels at a future time T1; prior to future time T1 and for each channel in the second subset of the plurality of channels, generating data indicative of physiological responses which would result from the one or more signals that are expected to affect said channel at the future time T1; and associating the generated data with a time T2.
With respect to dependent claims 22-40, applicant is advised that it is proper under MPEP 804(II)(B)(2)(a) to use the specification as a guide to learn the meaning of a term in the claim. Further, the scope of the claims is to be determined not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. The portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. In this case, it is proper to consider the specification when considering the meaning and scope of the terms as recited in the claims.
The limitations of claim 22 are suggested by the claims of the ‘360 patent as viewed in light of col. 11, lines 61-63 and col. 20, lines 21-25 of the specification.
The limitations of claim 23 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, lines 13-17 of the specification.
The limitations of claim 24 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, lines 19-23 of the specification.
The limitations of claim 25 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, lines 34-37 of the specification.
The limitations of claims 26-29 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, lines 38-43 of the specification.
The limitations of claim 30 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, lines 34-51 of the specification.
The limitations of claim 31 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, lines 52-61 of the specification.
The limitations of claims 32-35 are suggested by the claims of the ‘360 patent as viewed in light of col. 18, line 61 to col. 19, line 3 of the specification. The limitations in claims 32 and 34 pertaining to the right arms & legs and the left wrist are considered to be obvious variants on the teachings of the ’360 patent as best understood.
The limitations of claim 36 are suggested by the claims of the ‘360 patent as viewed in light of col. 19, lines 8-11 of the specification.
The limitations of claim 37 are suggested by the claims of the ‘360 patent as viewed in light of col. 19, lines 35-38 of the specification.
The limitations of claims 38-40 are suggested by the claims of the ‘360 patent as viewed in light of col. 19, lines 52-59 of the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715