CTNF 18/908,451 CTNF 81343 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 and 9-20 of U.S. Patent No. 12,138,462 . Although the claims at issue are not identical, they are not patentably distinct from each other because even though they are not word for word with each other they both teach the same inventive concept . Regarding claim 1, U.S. Patent No.12,138,462 teaches a method for pairing a second external device for communications with an implantable medical device (IMD) using a first external device, wherein the first external device is initially paired for communications with the IMD along a first communication link, the method comprising: (a) receiving at the first external device a first input to pair the second external device for communications with the IMD; (b) in response to the first input, determining in the first external device whether the IMD is able or not able to communicate directly with the second external device; (c) if the IMD is able to communicate directly with the second external device, then the first external device enables pairing of the second external device and the IMD for communications along a second communication link; and (d) if the IMD is not able to communicate directly with the second external device, then the first external device enters a passthrough mode, wherein in the passthrough mode communications received at the first external device from the second external device along a third communication link are passed to the IMD from the first external device along the first communication link (Claim 1). Regarding claim 2, U.S. Patent No.12,138,462 teaches wherein the first external device enables pairing of the second external device and the IMD for communications along the second communication link by transmitting from the first external device to the IMD a first command along the first communication link, wherein the first command causes the IMD to enter a first pairing mode whereby the IMD broadcasts first pairing data to enable the second external device to pair for communications with the IMD along the second communication link (Claim 1). Regarding claim 3, U.S. Patent No.12,138,462 teaches receiving at the first external device from the IMD an acknowledgment to the first command, wherein the first external device disconnects the first communication link in response to receiving the acknowledgment (Claim 2). Regarding claim 4, U.S. Patent No.12,138,462 teaches transmitting from the second external device an operational program for the IMD or an adjustment to an operational program for the IMD along the second communication link (Claim 3). Regarding claim 5, U.S. Patent No.12,138,462 teaches receiving the first pairing data at the second external device from the IMD; and receiving at the second external device a second input, wherein the second input causes the second external device to pair for communications with the IMD along the second communication link (Claim 4). Regarding claim 6, U.S. Patent No.12,138,462 teaches wherein communications along the first and second communication links occurs using a same communication standard (Claim 5). Regarding claim 7, U.S. Patent No.12,138,462 teaches wherein the same communication standard comprises Bluetooth or Bluetooth Low Energy (Claim 6). Regarding claim 8, U.S. Patent No.12,138,462 teaches wherein in the passthrough mode communications received at the first external device from the IMD along the first communication link are passed to the second external device from the first external device along the third communication link (Claim 1). Regarding claim 9, U.S. Patent No.12,138,462 teaches wherein if the IMD is not able to communicate directly with the second external device, then the first external device pairs for communications with the second external device along the third communication link (Claim 1). Regarding claim 10, U.S. Patent No.12,138,462 teaches transmitting from the second external device an operational program for the IMD or an adjustment to an operational program for the IMD along the third and first communication links (Claim 9). Regarding claim 11, U.S. Patent No.12,138,462 teaches wherein the first external device pairs for communications with the second external device along the third communication link by entering a second pairing mode whereby the first external device broadcasts second pairing data to enable the second external device to pair for communications with the first external device along the third communication link (Claim 10). Regarding claim 12, U.S. Patent No.12,138,462 teaches wherein communications along the first and third communication links occurs using respective first and second communication standards (Claim 11). Regarding claim 13, U.S. Patent No.12,138,462 teaches wherein the second communication standard comprises Bluetooth or Bluetooth Low Energy (Claim 12). Regarding claim 14, U.S. Patent No.12,138,462 teaches wherein the first communication standard is carried by magnetic induction along the first communication link (Claim 13). Regarding claim 15, U.S. Patent No.12,138,462 teaches wherein the first external device comprises a first antenna for communicating along the first communication link and a second antenna for communicating along the third communication link (Claim 14). Regarding claim 16, U.S. Patent No.12,138,462 teaches wherein the first antenna comprises a magnetic induction coil antenna, and wherein the second antenna comprises an RF antenna (Claim 15). Regarding claim 17, U.S. Patent No.12,138,462 teaches wherein the IMD comprises an implantable stimulation device (ISD) configured to provide stimulation to a patient, wherein the ISD is enabled to provide the stimulation continually to the patient throughout the method (Claim 17). Regarding claim 18, U.S. Patent No.12,138,462 teaches wherein the first external device comprises a patient remote controller, and wherein the second external device comprises a clinician programmer (Claim 18). Regarding claim 19, U.S. Patent No.12,138,462 teaches a first external device comprising control circuitry configured to (a) receive a first input to pair the second external device for communications with the IMD; (b) in response to the first input, determine whether the IMD is able or not able to communicate directly with the second external device; (c) if the IMD is able to communicate directly with the second external device, then enable pairing of the second external device and the IMD for communications along a second communication link; and (d) if the IMD is not able to communicate directly with the second external device, then enter a passthrough mode, wherein in the passthrough mode communications received at the first external device from the second external device along a third communication link are passed to the IMD from the first external device along the first communication link (Claim 19). Regarding claim 20, U.S. Patent No.12,138,462 teaches a non-transitory computer readable medium comprising instructions configured for execution on a first external device, wherein the instruction when executed are configured to cause the first external device to (a) receive a first input to pair the second external device for communications with the IMD; (b) in response to the first input, determine whether the IMD is able or not able to communicate directly with the second external device; (c) if the IMD is able to communicate directly with the second external device, then enable pairing of the second external device and the IMD for communications along a second communication link; and (d) if the IMD is not able to communicate directly with the second external device, then enter a passthrough mode, wherein in the passthrough mode communications received at the first external device from the second external device along a third communication link are passed to the IMD from the first external device along the first communication link (Claim 20). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW WENDELL whose telephone number is (571)272-0557. The examiner can normally be reached Monday-Friday 8:30AM-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, Wesley Kim can be reached at 571-272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANDREW WENDELL/Primary Examiner, Art Unit 2648 6/13/2026 Application/Control Number: 18/908,451 Page 2 Art Unit: 2648 Application/Control Number: 18/908,451 Page 3 Art Unit: 2648 Application/Control Number: 18/908,451 Page 4 Art Unit: 2648 Application/Control Number: 18/908,451 Page 5 Art Unit: 2648 Application/Control Number: 18/908,451 Page 6 Art Unit: 2648 Application/Control Number: 18/908,451 Page 7 Art Unit: 2648 Application/Control Number: 18/908,451 Page 8 Art Unit: 2648
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