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
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 26 August 2026 is acknowledged.
Claim Objections
Applicant is advised that should claims 1-3 be found allowable, claims 4-6 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1-6 are 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 pre-AIA the applicant regards as the invention.
Regarding claims 1 and 4, it is unclear what is meant by the phrase “and wherein the processor is configured to apply at least one filter program to remove a filter from the EEG recording” at the end of each claim. How can a filter program remove a filter from the EEG recording? How is a filter removed from an EEG recording? As best understood by the Specification, a filter program is used to remove an artifact from the EEG recording. This is how the claim is being interpreted. With further regard to claims 1 and 4, the claims recite that the at least one of the plurality of artifacts to be removed is selected using a user interface on the display, but then recites that a button on a keyboard is used to apply at least one filter. This renders the claims unclear in that the claims fail to clearly recite whether a touchscreen button on a user interface on the display is used, or whether a keyboard button is used. For the purpose of this examination, either filter selection method is being considered to read on the claimed limitation. Claims 2, 3, 5, and 6 are also rejected due to their dependence on either claim 1 or claim 4.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1 and 5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over John et al.’430 (US Pub No. 2008/0249430) in view of Correa et al. (Artifact removal from EEG signals…) further in view of Thiagarajan et al.’709 (US Pub No. 2008/0273709).
Regarding claims 1 and 4, John et al.’430 discloses a method for removing artifacts in an EEG recording, the method comprising: generating an EEG recording from a machine comprising a plurality of electrodes for generating a plurality of EEG signals, at least one amplifier connected to each of the plurality of electrodes by a plurality of wires to amplify each of the plurality of EEG signals, a processor connected to the amplifier to generate an EEG recording from the plurality of EEG signals, and a display connected to the processor for displaying an EEG recording; displaying the EEG recording on the display, the EEG recording comprising a plurality of artifacts wherein the plurality of artifacts comprises at least two of a muscle artifact, an eye movement artifact, an electrical artifact, a heartbeat artifact, a tongue movement artifact, and a chewing artifact (page 5, section [0037]); filtering the EEG recording to remove a first artifact, filtering the EEG recording to remove a second artifact, and filtering the EEG recording to remove a third artifact; and generating a clean EEG recording for viewing from the filtered EEG recording (page 5, sections [0036-0037] and page 6, section [0042]).
John et al.’430 discloses all of the elements of the current invention, as discussed above, except for filtering the plurality of artifacts using a plurality of filters. While John et al.’430 discloses the use of a filtering arrangement 19 (page 5, section [0037]) to perform artifact rejection, it does not provide the details of the filtering arrangement. Correa et al. teaches using a plurality of adaptive filters to remove a plurality of artifacts from an EEG signal (see entire document). It would have been within the skill of the art to have used the filtering arrangement of Correa et al. as the filtering arrangement of John et al.'430 since John et al.’430 requires the use of a filtering arrangement, but fails to provide details of the filtering arrangement, and the filtering arrangement disclosed by Correa et al. is capable of being used to perform the artifact rejection filtering method required by John et al.’430.
John et al.’430 in view of Correa et al. discloses all of the elements of the current invention, as discussed above, except for selecting at least one of the plurality of artifacts to automatically be removed from an EEG recording using a user interface on the display, and pushing/triggering a button on a computer to apply the at least one filter of the plurality of filters. John et al.'430 teaches that a user interface/keyboard may be used in order to allow a user to input setting configurations (page 6, section [0042]). It is Officially noted that keyboards comprise buttons that are pushed/triggered. It would have been within the skill of the art to have used the keyboard user interface of John et al.'430 to have a user select a plurality of artifacts to automatically be removed since John et al.'430 teaches that system settings may be configured by the user, and it is well known in the art to configure artifact rejection methods in a medical device (see for example section [0036] of Duhamel’556 – US Pub No. 2006/0116556 – which teaches that it is well known to allow a user to select criteria for artifact rejection from a physiological signal, and section [0059] of Turnbull et al.’996 – US Pub No. 2013/0109996 – which also teaches that it is well known to allow a user to select criteria for artifact rejection from a physiological signal).
John et al.’430 in view of Correa et al. discloses all of the elements of the current invention, as discussed above, except for selecting a display mode for generating a filtered EEG on the display for viewing. Thiagarajan et al.'709 teaches selecting one of two display modes for presenting a physiological signal, a display mode of a raw physiological signal and a display mode of a filtered physiological signal, in order to facilitate comparison between the two signals (page 7, section [0125]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of John et al.'430 in view of Correa et al. to include selecting a display mode for displaying the filtered EEG recording, as taught by Thiagarajan et al.'709, since it would allow a comparison to be made between the original EEG recording and the filtered EEG recording.
Claims 2 and 5 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709, as applied to claims 1 and 4, further in view of Karlsson et al.'191 (USPN 5,520,191).
John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709 discloses all of the elements of the current invention, as discussed in paragraph 7 above, except for selecting colors for traces and the amount of darkness. Karlsson et al.’191 teaches using curves of different colors (and inherently different amounts of darkness) in order to be able to tell multiple curves apart on a display (col. 11, lines 14-18). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709 to include selecting colors for traces and the amount of darkness, as taught by Karlsson et al.'191, since it would allow a user to tell multiple curves apart on the display. It is noted that John et al.'430 teaches that multiple elements may be displayed and that the components/settings of the system configured to perform the method are capable of being configured by the user (page 6, section [0042]). Therefore, the system of John et al.'430 is capable of receiving input from a user that selects colors for the displayed EEG trace such that the EEG trace is distinguishable from the other displayed data.
Claims 3 and 6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709, as applied to claims 1 and 4, further in view of DiLorenzo’919 (US Pub No. 2007/0161919) further in view of Masmanidis et al.’144 (US Pub No. 2009/0177144).
John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709 discloses all of the elements of the current invention, as discussed in paragraph 7 above, except for the processor being configured to run a spike review program on the EEG recording. DiLorenzo’919 teaches running a spike review program on an EEG recording in order to analyze trends and rates of change of spike frequency data, including average spike frequencies and average amplitudes, for the purpose of predicting future neurological behaviors/conditions (pages 15-16, section [0186]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the method of John et al.'430 in view of Correa et al. further in view of Thiagarajan et al.’709 to include running a spike review program on the EEG recording, as taught by DiLorenzo’919, since it would a allow future neurological behavior/condition of a subject to be predicted.
John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709 further in view of DiLorenzo’919 discloses all of the elements of the current invention, as discussed above, except for the user interface allowing for display each of the plurality of averages. Masmanidis et al.’144 teaches displaying average values related to detected spikes next to their corresponding recording sites (page 2, section [0028]). It would have been within the skill of the art to have modified the method of John et al.’430 in view of Correa et al. further in view of Thiagarajan et al.’709 further in view of DiLorenzo’919 to include displaying each of the plurality of spike averages for each electrode (recording site) on the user interface, as taught by Masmanidis et al.'144, since it would merely be applying a known technique to a known method ready for improvement to yield predictable results (displaying spike averages along with corresponding recording sites).
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 10,517,541. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 of the US Patent are narrower in scope than claims 1-6 of the current invention, encompassing the subject matter recited in the current claims. Any reference meeting the limitations set forth in claims 1-3 of the US Patent would also meet the requirements set forth in claims 1-3 of the current invention.
Claims 1, 2, 4, and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,616,421. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the US Patent is narrower in scope than claims 1, 2, 4 and 5 of the current invention, encompassing the subject matter recited in the current claims. Any reference meeting the limitations set forth in claim 2 of the US Patent would also meet the requirements set forth in claims 1, 2, 4, and 5 of the current invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yarita’600 (US Pub No. 2003/0144600) teaches selecting a display mode for presenting an EEG signal. Levendowski et al.’644 (US Pub No. 2002/0183644) teaches filtering a physiological signal in a cascading manner. Hermannsson’809 (US Pub No. 2008/0045809) teaches using a user interface to allow a user to configure system settings of a medical device (page 4, section [0031]).
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/ETSUB D BERHANU/Primary Examiner, Art Unit 3791
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