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 .
Priority
This application is a continuation of US Application no. 17/507,225, now US Patent no. 12,083,352 filed 21 October 2021, which claims the benefit of domestic priority from US Provisional Application no. 63/127,459, filed 18 December 2020.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,083,352. Although the claims at issue are not identical, they are not patentably distinct from each other because the present invention is an obvious method of use of the defibrillator assembly of the ‘352 patent. The method of the present invention recites steps that comprise the same functions and modes of operation as claimed in the ‘352 patent. The overlap in of these functions and modes of operation is exhibited below.
Claim 1 of the ‘352 patent:
A defibrillator assembly comprising:
a defibrillator having a first operating mode for delivering a high energy output to a patient and a second operating mode for monitoring the patient; a first battery unit operably coupled to the defibrillator;
a second battery unit operably coupled to the defibrillator;
a battery charge monitor configured to determine a remaining charge of the first battery unit and the second battery unit; and
a controller having a processor, the controller configured to:
cause the defibrillator to use only one of the first battery unit and the second battery unit during the second operating mode,
cause the defibrillator to use both the first battery unit and the second battery unit during the first operating mode, and
cause the first battery unit and the second battery unit to provide power to the defibrillator proportional to their respective remaining charge during the first operating mode.
Claim 1 of the present invention:
A method comprising:
determining, by a controller of a defibrillator,
a remaining charge of a first battery unit and a second battery unit of the defibrillator, wherein the defibrillator is configured to operate in a first operating mode for delivering a high energy output to a patient and a second operating mode for monitoring the patient;
causing, by the controller, the defibrillator to use only one of the first battery unit and the second battery unit during the second operating mode; and
causing, by the controller, the defibrillator to use both the first battery unit and the second battery unit during the first operating mode such that the first battery unit and the second battery unit provide power to the defibrillator proportional to their respective remaining charge during the first operating mode.
The present invention incorporates the first battery unit and second battery unit in the defibrillator and operates by causing, by the controller, the defibrillator to use only one of the first battery unit and the second battery unit during the second operating mode and causing the defibrillator to use both the first battery unit and the second battery unit during the first operating mode such that the first battery unit and the second battery unit provide power to the defibrillator proportional to their respective remaining charge during the first operating mode. Both inventions share the inventive concept of providing power to the defibrillator proportional to their respective remaining charge during the first operating mode. Therefore, the inventions are not mutually exclusive and thus not patentable distinct.
Similar overlap is also demonstrated over claims 9 and 13 of the ‘352 patent over present claim 11.
Allowable Subject Matter
Claims 1-20 would be allowable should Applicant’s reply either comply with or specifically traverse the requirements of the double patenting rejection set forth above.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to teach, among other things, the concept of providing power to the defibrillator proportional to their respective remaining charge during the first operating mode.
Vaisnys et al. (US Patent no. 6,577,102) is considered the closest relevant prior art. Vaisnys et al. describes a medical device system with a first battery unit 410 and a second battery unit 420, wherein the defibrillator uses only one of the first battery unit and the second battery unit during the second operating mode wherein the first battery unit 410 is used in a main operating mode, and the second battery unit 420 is used in an alternate mode (col 3 lines 5-42). However, the reference does not teach or suggest causing, by the controller, the defibrillator to use both the first battery unit and the second battery unit during the first operating mode such that the first battery unit and the second battery unit provide power to the defibrillator proportional to their respective remaining charge during the first operating mode.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN T GEDEON whose telephone number is (571)272-3447. The examiner can normally be reached M-F 8:00 am to 5:30 PM ET.
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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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/BRIAN T GEDEON/Primary Examiner, Art Unit 3796 24 June 2026
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