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 1-3, 6-14 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-12 and 14-18 of U.S. Patent No. 12,144,580. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4, 6-12 and 14-18 of U.S. Patent No. 12,144,580 recite similar claimed subject matters as specified in claims 1-3, 6-14 and 17-20 of the instant application, with various wordings.
Allowable Subject Matter
Claims 1-3, 6-14 and 17-20 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to the claimed subject matters is Wang (11,065,457). Wang discloses a system, comprising: an external device 2; and a medical device1, wherein the medical device 1 is a cardiac pacemaker which inherently comprises a sensing circuit configured to collect sensed physiological data, configured to communicate with the external device (See fig. 1) wherein the medical device comprises a communication circuitry having a first power state (i.e. dormant state) and a second power state (i.e. awake state), wherein the communication circuitry is configured to transition from the first power state to the second power state at an interval, wherein the second power state uses more power than the first power state; wherein, when the communication circuitry is in the second power state, the communication circuitry is configured (i.e. executing a first instruction subset) to transmit advertising notices according to an advertising notice schedule (See fig. 6), wherein, when a request is received from the external device 2, the medical device 1 is configured (i.e. executing a second instruction subset) to establish a bi-directional communication link with the external device 2, and wherein, after a predetermined delay that no connection has been established with the external device 2, the medical device 2 transitions to the first power state (See figs. 1, 6-7 and col. 9 line 39 to col. 10 line 55). However, none of cited prior arts of record, alone or in combination, discloses that the communication circuitry configured to implement an instruction set to transmit an advertising notice, scan for a request and establish a communications link, wherein: a) the medical device is configured to operate in a first power state, in which the communication circuitry is configured to execute a first instruction subset, from the instruction set, associated with transmitting the advertising notice and searching for the request; and b) responsive to the communication circuitry receiving the request, the medical device is configured to transition from the first power state to a higher second power state in which the communication circuitry is configured to execute a second instruction subset, from the instruction set, that the communication circuitry does not perform while in the first power state, as specified in claims 1 and 12.
Claims 4-5 and 15-16 would be allowable if rewritten to overcome the nonstatutory double patenting rejection, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See PTO-892 for a listing of cited prior arts of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TUAN A TRAN whose telephone number is (571)272-7858. The examiner can normally be reached Mon-Fri: 7:30 AM - 5:00 PM.
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/TUAN A TRAN/Primary Examiner, Art Unit 2648
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