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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 5/15/25; 3/19/25; 10/24/24 has/have been acknowledged and is/are being considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities: the first paragraph of the specification should be updated to indicate the present status of the priority application.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 8, 12-14 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isaacson et al. (U.S. Pub. 2016/0346534 hereinafter “Isaacson”).
Regarding claims 1 and 12, Isaacson discloses a method and non-transitory computer readable medium comprising: at a device comprising one or more processors (e.g. 40), stimulation circuitry (e.g. 44) and sensing circuity (e.g. 46): driving (e.g. 100) a first stimulation signal (e.g. ¶6; it is noted that the claims do not require simultaneous stimulation) on a first electrode (e.g. 24) and a second stimulation signal (e.g. ¶6; it is noted that the claims do not require simultaneous stimulation) on a second electrode (e.g. 26), different from the first electrode (e.g. ¶6; stimulate one or more of first and second electrode separately); measuring (e.g. 70) one or more signals in response to the first stimulation signal and the second stimulation signal (e.g. ¶79; determine impedance); and in accordance with the one or more signals measured in response to the first stimulation signal and the second stimulation signal meeting one or more criteria, measuring or continuing measuring a physiological signal using the first electrode and the second electrode (e.g. 80; monitor physiological activity if impedance is below threshold).
Regarding claims 2 and 13, Isaacson further discloses in accordance with the one or more signals measured in response to the first stimulation signal and the second stimulation signal failing to meet the one or more criteria, forgoing or ceasing measuring the physiological signal (e.g. 80; above threshold, signals not sensed).
Regarding claims 3 and 14, Isaacson further discloses the one or more signals measured in response to the first stimulation signal and the second stimulation signal comprise one or more first signals measured by a first sensing circuit coupled to the first electrode and one or more second signals measured by a second sensing circuit coupled to the second electrode (e.g. 70; ¶79; impedance determined via response to stimulation); and wherein the one or more criteria includes a first criterion that is satisfied when the one or more first signals measured in response to the first stimulation signal have an amplitude less than a threshold voltage and a second criterion that is satisfied when the one or more second signals measured in response to the second stimulation signal have an amplitude less than the threshold voltage (e.g. 80; ¶79; look at impedance criteria to determine sensing).
Regarding claims 5 and 16, Isaacson further discloses wherein measuring the physiological signal comprises: filtering one or more signals measured by sensing circuitry to remove the one or more signals measured in response to the first stimulation signal and the second stimulation signal from the one or more signals (e.g. ¶52).
Regarding claim 8, Isaacson further discloses wherein the first stimulation signal and the second stimulation signal are driven at least partially concurrently with measuring the physiological signal (e.g. Abstract; concurrent stimulation and sensing).
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 1-9 and 12-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6-10 of U.S. Patent No. 12,042,301. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘301 patent are obvious variants of the current claims. See below for reasoning.
Claims 1 and 12 of the current claim set are obvious variants of claim 1 of the ‘301 patent. Claim 1 of the ‘301 includes the exact device that the method of claim 1 and medium of claim 12 are comprised of. Both including the driving of stimulation signal to two separate electrodes, sensing/measuring signals in response to the stimulation and measuring a physiological signal if the sensed/measured response meet a criteria.
Claims 2 and 13 of the current claim set have substantially duplicate language to claim 2 of the ‘301 patent.
Claims 3 and 14 of the current claim set have substantially duplicate language to claim 4 of the ‘301 patent.
Claims 4 and 15 of the current claim set are taught by claims 6-8 of the ‘301 patent. Specifically concurrent stimulation, first and second frequencies and phases that are separated by 180 degrees.
Claims 5 and 16 of the current claim set have substantially duplicate language to claim 10 of the ‘301 patent.
Claims 6 and 17 of the current claim set have substantially duplicate language to claim 6 of the ‘301 patent.
Claims 7 and 18 of the current claim set have substantially duplicate language to claim 7 of the ‘301 patent.
Claim 8 of the current claim set have substantially duplicate language to claim 8 of the ‘301 patent.
Claim 9 of the current claim set have substantially duplicate language to claim 9 of the ‘301 patent.
Allowable Subject Matter
Claims 10-11 and 19-20 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REX R HOLMES whose telephone number is (571)272-8827. The examiner can normally be reached Monday-Thursday 7:00AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at (571) 270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REX R HOLMES/Primary Examiner, Art Unit 3796
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