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 .
Election/Restrictions
After further review, the restriction requirement is withdrawn.
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.
Claim 16 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 16: Scope of claim is unclear, since parent claim 1 requires the electrode to be a defibrillation electrode, but claim 16 appears to broaden the function to other possibilities.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16: Fails to include all limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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, 2, 9-17, 19-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferrari (US 5,571,165).
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Regarding claims 1, 16, Ferrari discloses the same invention as claimed (Figures 1 and 2 shown above for example), including a radio transmissive electrode for providing electrotherapeutic defibrillation to a patient (abstract), the electrode comprising: a backing pad (Figure 2: 33/34); a conductive layer disposed upon the backing pad (Figure 2: 21; sheet electrode member 21 does contact backing pad despite intervening structures 27, 27’, 35a, 36a, etc); a bonding layer disposed upon the conductive layer (Figure 2: lower bonding layer 27 as shown); and a leadwire comprising a stripped end length (Figure 2: 35a, 36a), at least a portion of the stripped end length being disposed upon the bonding layer, such that the bonding layer is interposed between the conductive layer and the stripped end length (Figure 2: bonding layer 27 is between conductive layer 21 and stripped end length 35a).
Regarding claim 2, Ferrari discloses a second bonding layer as recited (Figure 2: 27’).
Regarding claim 9, 19-22, Ferrari discloses adhesives as recited (Col. 4, lines 32-36).
Regarding claim 10, Ferrari discloses conforming around the leadwire as recited (Figure 1; Col. 4, lines 17-67).
Regarding claims 11-13, Ferrari discloses the leadwire includes a conductive carbon element (Col. 5, lines 55-67) and plurality of stripped extensions as recited (Figure 1).
Regarding claims 14-15, Ferrari discloses the electrode may be either radiolucent or radiotransparent as recited (Col. 2, lines 29-40).
Regarding claim 17, Ferrari discloses Ag/AgCl as recited (Col. 3, line 2).
Regarding claim 23, Ferrari discloses a thickness as recited (Col. 4, lines 17-67).
Regarding claim 24-26, Ferrari discloses the bonding layer is a conductive, double-sided adhesive that is radiotransmissive and mechanically rigid as recited (Col. 4, lines 17-67).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrari (US 5,571,165) in view of Wroblewski (US 2024/0366134).
Regarding claim 18, Ferrari does not explicitly disclose the details of the Ag/AgCl composition. However, Wroblewski teaches providing more than 50% of Ag and less AgCl as recited (Paragraph 45), in order to optimize conductivity versus costs. In addition, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and MPEP 2144.05(II)(A). In this instance, the prior art shows the general conditions of selecting Ag/AgCl to make a radiotransmissive electrode, and using a particular ratio of Ag/AgCl would have amounted to discovering an optimum or workable range by routine experimentation. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Ferrari as taught by Wroblewski to include the details of the Ag/AgCl composition as recited, in order to optimize conductivity versus costs, and since using a particular ratio of Ag/AgCl would have amounted to discovering an optimum or workable range by routine experimentation.
Allowable Subject Matter
Claims 3-8 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jones (US 2012/0253162) shows an electrode with a wire directly affixed to a conductive layer and with one bonding layer.
Gadsby (US 2003/0074042) shows a backing pad, wire, and conductive layer towards the patient side relative to the wire.
Hyatt (US 2014/0073896) shows an electrode with an energy blocking layer and conductive layer towards the patient side relative to the wire.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eugene T Wu whose telephone number is (571)270-5053. The examiner can normally be reached M-F 8am-5pm.
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, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eugene T Wu/Primary Examiner, Art Unit 3796
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