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 .
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 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,102,818 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because US 12,102,818 B2 has been found to anticipate each and every element of the present invention, for instance both provide:
18/892941 (claim 1)
US 12,102,818 B1 (claim 1)
A transcutaneous stimulation system comprising:
A transcutaneous stimulation system comprising:
a stimulation module having at least one electrical stimulus generator for transmitting electrical signals through a plurality of electrical generator channels;
a stimulation module having at least one electrical stimulus generator for transmitting electrical-signals through a plurality of electrical generator channels;
a control module electrically coupled to said at least one electrical stimulus generator
a control module electrically coupled to said at least one electrical stimulus generator
for activating or deactivating each of said electrical generator channels in accordance with a predetermined stimulation protocol having a set of at least two stimulation montages with a weighting value defined for each of a set of activated pads;
for activating or deactivating each of said electrical generator channels in accordance with a predetermined stimulation protocol having a set of at least two stimulation montages with a weighting value defined for each of a set of activated pads,
a wearable stimulation matrix defining a plurality of pairs of electrical stimulation pads
a wearable stimulation matrix defining a plurality of pairs of electrical stimulation pads
which are adapted be positioned in a releasably fixed and predefined arrangement on an external surface of a user’s skin to provide improved transcutaneous stimulation of a nerve target in a limb of the user,
activated transcutaneously which are adapted to be positioned in a releasably fixed and predefined arrangement on an external surface of a user's skin,
each of said pairs of electrical stimulation pads having a cathodic pad and an anodic pad electrically coupled to a respective cathodic and anodic electrical generator channel,
each of said pairs of electrical stimulation pads having a cathodic pad and an anodic pad electrically coupled to a respective cathodic and anodic electrical generator channel,
each of said electrical stimulation pads being in (1) an active state when a respective electrical generator channel is activated, and (2) an inactive state when a respective electrical generator channel is deactivated;
each of said electrical stimulation pads being in (1) an active state having a weighting value when a respective electrical generator channel is activated, and (2) an inactive state when a respective electrical generator channel is deactivated;
a first stimulation montage defined for the pads of the stimulation matrix where each of said electrical stimulation pads is in said active state with a selected first weighting value set in accordance with said predetermined stimulation protocol or is in said inactive state;
a first stimulation montage defined for the pads of the stimulation matrix where each of said electrical stimulation pads is in said active state with a first weighting value in accordance with said predetermined stimulation protocol or said inactive state;
at least a second stimulation montage defined for the pads of the stimulation matrix where at least one of said electrical stimulation pads is in an inactive state or in an active state that has a second weighting value that is different than the first weighting value when said at least one stimulation pad of said electrical stimulation pads is in said active state with the first weighting value in said first stimulation montage;
at least a second stimulation montage defined for the pads of the stimulation matrix where at least one of said electrical stimulation pads is in an inactive state or an active state that has a second weighting value that is different than the first weighting value when said at least one stimulation pad is in said active state with the first weighting value in said first stimulation montage;
and, a user interface device for permitting user input that is used to cause transitioning of said stimulation matrix from said first stimulation montage to said at least second stimulation montage in accordance with a defined set of montages defined by said predetermined stimulation protocol during a transcutaneous stimulation treatment of the user.
and, a user interface device for permitting user input that is used to cause transitioning said stimulation matrix from said first stimulation montage to said at least second stimulation montage in accordance with a defined set of montages defined by said predetermined stimulation protocol during a treatment of the user.
As set forth above, the present invention is not viewed to be patentably distinct from US 12,102,818 B2.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA M ALTER whose telephone number is (571)272-4939. The examiner can normally be reached M-F 8am-4pm.
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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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/ALYSSA M ALTER/Primary Examiner, Art Unit 3796
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