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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12168126. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is broader and overlaps the subject matter of U.S. Patent No. US 12168126. Following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. The claims are not patentably distinct from each other because the claims of U.S. Patent No. US 12168126 are obvious over the claims of the instant application as shown in the table below. Further dependent claims 2-11, 14-20 of the current application recite limitations that are similar to the dependent claims (2-15 and 18-20) of U.S. Patent No. US 12168126U.S. 9990470
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200
400
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While no prior art rejection has been applied, the claims are not indicated as allowable due to the double patenting rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bierbrauer et al (U.S. Patent Application Publication Number: US 2017/0245771A1, hereinafter “Bierbauer”) teaches a flexible scaffold (e.g. 10 Figs.1,2, [0019]) defining a planar body formed by one or more layers, wherein the flexible scaffold includes a depth electrode port (i.e. holes e.g. 30 Figs 1,2) defined through the planar body of the flexible scaffold and depth electrodes (e.g. 200 Fig.2) that are inserted through the holes.
Osa et al (U.S. Patent Number: US 8774891 B1, hereinafter “Osa”) teaches a flexible scaffold (i.e. base body structure e.g. 21 Figs.1,2, claim 1) defining a planar body formed by one or more layers, wherein the flexible scaffold includes a depth electrode port (i.e. thru-holes e.g. 17 Figs 1,2) defined through the planar body of the flexible scaffold and depth electrodes (e.g. 70 Fig.17) that are inserted through the holes.
The prior art fails to teach the depth electrode port having one or more port contacts and a depth electrode having one or more terminal contacts and one or more interfacing contacts establishing electrical communication between the one or more terminal contacts and the one or more port contacts when the depth electrode is positioned within the depth electrode port and a waveform generator in electrical communication with the one or more port contacts and operable to apply a stimulating voltage to a target tissue area through the one or more port contacts in communication with the one or more terminal contacts and wherein removal of the depth electrode from the depth electrode port electrically decouples the one or more terminal contacts from the waveform generator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALLIKA DIPAYAN FAIRCHILD whose telephone number is (571)270-7043. The examiner can normally be reached Monday- Friday 8 am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BENJAMIN KLEIN can be reached at 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MALLIKA D FAIRCHILD/Primary Examiner, Art Unit 3792
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