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 1-5 and 8-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 10, 12-13, and 15 of U.S. Patent No. 12,200,606. 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. 12,200,606 teaches an implantable medical device, comprising a transceiver, within the IMD, configured to broadcast an advertising data packet; the transceiver is further configured to receive a scan request data packet from an external device; memory, within the IMD, configured to store program instructions and a list of approved external device identifiers; and one or more processors, within the IMD, configured to execute the program instructions to identify an identifier of the external device from the received scan request data packet; apply an advertising filter to determine if the scan request data packet is from an authorized external device based on the ID of the external device and the list of approved external device IDs; based on the determination by the advertising filter, deny transmission of a scan response data packet from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device; and establish a communication session with an authorized external device independent of the scan request data packet (Claim 1).
Regarding claim 2, U.S. Patent No. 12,200,606 teaches wherein the transceiver is further configured to receive a connection request data packet from the authorized external device based on the advertising data packet (Claim 1).
Regarding claim 3, U.S. Patent No. 12,200,606 teaches wherein the one or more processors are further configured to execute the program instruction to establish the communication session with the authorized external device based on the connection request data packet from the authorized external device (Claim 1).
Regarding claim 4, U.S. Patent No. 12,200,606 teaches before receiving the connection request data packet, the one or more processors are configured to receive the scan request data packet and apply the advertising filter to determine whether to deny transmission of the scan response data packet (Claim 1).
Regarding claim 5, U.S. Patent No. 12,200,606 teaches wherein the one or more processors are further configured to execute the program instructions to responsive to receiving a device identification request related to the connection request data packet, transmit a unique identifier related to the IMD to the authorized external device (Claims 1 and 4).
Regarding claim 8, U.S. Patent No. 12,200,606 teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Claim 5).
Regarding claim 9, U.S. Patent No. 12,200,606 teaches wherein the one or more processors includes a communication control processor that operates the transceiver to communicate with the authorized external device using one or more wireless communication protocols (Claim 5).
Regarding claim 10, U.S. Patent No. 12,200,606 teaches wherein the one or more wireless communication protocols include a Bluetooth low energy protocol, and the advertising filter represents a BLE link layer advertising filter (Claim 6).
Regarding claim 11, U.S. Patent No. 12,200,606 teaches wherein the advertising filter does not block connection requests (Claim 1).
Regarding claim 12, U.S. Patent No. 12,200,606 teaches a method, the method comprising broadcasting an advertising data packet, from an implantable medical device, utilizing a communication protocol; receiving a scan request data packet from an external device at a transceiver of the IMD; determining an identifier of the external device from the received scan request data packet; applying an advertising filter to determine if the scan request data packet is from an authorized external device; based on the determination by the advertising filter, denying transmission of a scan response data packet from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device; receiving the advertising data packet including the unique identifier at the authorized external device; and transmitting a connection request data packet from the authorized external device based on the unique identifier of the advertising data packet (Claims 10 and 12).
Regarding claim 13, U.S. Patent No. 12,200,606 teaches wherein the applying includes determining if the scan request data packet is from the authorized external device based on the ID of the external device and an approved device list stored on the IMD, wherein the advertising filter does not block connection requests (Claim 10).
Regarding claim 14, U.S. Patent No. 12,200,606 teaches receiving the connection request data packet at the IMD from the authorized external device; and establishing the communication session between the IMD and authorized external device based on the connection request data packet (Claim 10).
Regarding claim 15, U.S. Patent No. 12,200,606 teaches responsive to receiving the connection request data packet, transmitting a unique identifier related to the IMD from the IMD to the authorized external device (Claim 12).
Regarding claim 16, U.S. Patent No. 12,200,606 teaches wherein applying the advertising filter to determine if the scan request data packet is from an authorized external device based on the device ID and the approved device list includes comparing the device ID to device identifiers of authorized external devices on the approved device list (Claim 10).
Regarding claim 17, U.S. Patent No. 12,200,606 teaches wherein the only identifier on the approved device list is the unique identifier of the IMD (Claim 12).
Regarding claim 18, U.S. Patent No. 12,200,606 teaches wherein a communication control processor operates the transceiver of the IMD to communicate with the authorized external device using one or more wireless communication protocols (Claim 15).
Regarding claim 19, U.S. Patent No. 12,200,606 teaches wherein the one or more wireless communication protocols include a Bluetooth low energy (BLE) protocol, and the advertising filter is applied at a BLE link layer (Claim 15).
Regarding claim 20, U.S. Patent No. 12,200,606 teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Claim 13).
Regarding claim 21, U.S. Patent No. 12,200,606 teaches wherein the advertising filter does not block connection requests (Claim 10).
Regarding claim 22, U.S. Patent No. 12,200,606 teaches receiving a connection request data packet after the scan request data packet is received and after the advertising filter is applied to determine whether to deny transmission of a scan response data packet (Claim 10).
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, and 12-22 of U.S. Patent No. 10,880,826. 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. 10,880,826 teaches an implantable medical device, comprising a transceiver, within the IMD, configured to broadcast an advertising data packet; the transceiver is further configured to receive a scan request data packet from an external device; memory, within the IMD, configured to store program instructions and a list of approved external device identifiers; and one or more processors, within the IMD, configured to execute the program instructions to identify an identifier of the external device from the received scan request data packet; apply an advertising filter to determine if the scan request data packet is from an authorized external device based on the ID of the external device and the list of approved external device IDs; based on the determination by the advertising filter, deny transmission of a scan response data packet from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device; and establish a communication session with an authorized external device independent of the scan request data packet (Claim 1).
Regarding claim 2, U.S. Patent No. 10,880,826 teaches wherein the transceiver is further configured to receive a connection request data packet from the authorized external device based on the advertising data packet (Claim 2).
Regarding claim 3, U.S. Patent No. 10,880,826 teaches wherein the one or more processors are further configured to execute the program instruction to establish the communication session with the authorized external device based on the connection request data packet from the authorized external device (Claims 1-2).
Regarding claim 4, U.S. Patent No. 10,880,826 teaches before receiving the connection request data packet, the one or more processors are configured to receive the scan request data packet and apply the advertising filter to determine whether to deny transmission of the scan response data packet (Claim 8).
Regarding claim 5, U.S. Patent No. 10,880,826 teaches wherein the one or more processors are further configured to execute the program instructions to responsive to receiving a device identification request related to the connection request data packet, transmit a unique identifier related to the IMD to the authorized external device (Claims 1-2).
Regarding claim 6, U.S. Patent No. 10,880,826 teaches wherein the transceiver is configured to receive a connection request data packet from the authorized external device for a pre-determined interval after broadcast of the advertising data packet (Claim 2).
Regarding claim 7, U.S. Patent No. 10,880,826 teaches wherein the predetermined interval is less than ten seconds (Claim 3).
Regarding claim 8, U.S. Patent No. 10,880,826 teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Claim 4).
Regarding claim 9, U.S. Patent No. 10,880,826 teaches wherein the one or more processors includes a communication control processor that operates the transceiver to communicate with the authorized external device using one or more wireless communication protocols (Claim 5).
Regarding claim 10, U.S. Patent No. 10,880,826 teaches wherein the one or more wireless communication protocols include a Bluetooth low energy protocol, and the advertising filter represents a BLE link layer advertising filter (Claim 6).
Regarding claim 11, U.S. Patent No. 10,880,826 teaches wherein the advertising filter does not block connection requests (Claim 1).
Regarding claim 12, U.S. Patent No. 10,880,826 teaches a method, the method comprising broadcasting an advertising data packet, from an implantable medical device (IMD), utilizing a communication protocol; receiving a scan request data packet from an external device at a transceiver of the IMD; determining an identifier (ID) of the external device from the received scan request data packet; applying an advertising filter to determine if the scan request data packet is from an authorized external device; based on the determination by the advertising filter, denying transmission of a scan response data packet from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device; receiving the advertising data packet including the unique identifier at the authorized external device; and transmitting a connection request data packet from the authorized external device based on the unique identifier of the advertising data packet (Claims 12-13).
Regarding claim 13, U.S. Patent No. 10,880,826 teaches wherein the applying includes determining if the scan request data packet is from the authorized external device based on the ID of the external device and an approved device list stored on the IMD, wherein the advertising filter does not block connection requests (Claims 12-13).
Regarding claim 14, U.S. Patent No. 10,880,826 teaches receiving the connection request data packet at the IMD from the authorized external device; and establishing the communication session between the IMD and authorized external device based on the connection request data packet (Claim 14).
Regarding claim 15, U.S. Patent No. 10,880,826 teaches responsive to receiving the connection request data packet, transmitting a unique identifier related to the IMD from the IMD to the authorized external device (Claim 15).
Regarding claim 16, U.S. Patent No. 10,880,826 teaches wherein applying the advertising filter to determine if the scan request data packet is from an authorized external device based on the device ID and the approved device list includes comparing the device ID to device identifiers of authorized external devices on the approved device list (Claim 16).
Regarding claim 17, U.S. Patent No. 10,880,826 teaches wherein the only identifier on the approved device list is the unique identifier of the IMD (Claim 17).
Regarding claim 18, U.S. Patent No. 10,880,826 teaches wherein a communication control processor operates the transceiver of the IMD to communicate with the authorized external device using one or more wireless communication protocols (Claim 18).
Regarding claim 19, U.S. Patent No. 10,880,826 teaches wherein the one or more wireless communication protocols include a Bluetooth low energy protocol, and the advertising filter is applied at a BLE link layer (Claim 19).
Regarding claim 20, U.S. Patent No. 10,880,826 teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Claim 20).
Regarding claim 21, U.S. Patent No. 10,880,826 teaches wherein the advertising filter does not block connection requests (Claim 21).
Regarding claim 22, U.S. Patent No. 10,880,826 teaches receiving a connection request data packet after the scan request data packet is received and after the advertising filter is applied to determine whether to deny transmission of a scan response data packet (Claim 22).
Claims 1-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-8 of U.S. Patent No. 10,582,444. 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. 10,582,444 teaches an implantable medical device, comprising a transceiver, within the IMD, configured to broadcast an advertising data packet; the transceiver is further configured to receive a scan request data packet from an external device; memory, within the IMD, configured to store program instructions and a list of approved external device identifiers; and one or more processors, within the IMD, configured to execute the program instructions to identify an identifier of the external device from the received scan request data packet; apply an advertising filter to determine if the scan request data packet is from an authorized external device based on the ID of the external device and the list of approved external device IDs; based on the determination by the advertising filter, deny transmission of a scan response data packet from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device; and establish a communication session with an authorized external device independent of the scan request data packet (Claim 1).
Regarding claim 2, U.S. Patent No. 10,582,444 teaches wherein the transceiver is further configured to receive a connection request data packet from the authorized external device based on the advertising data packet (Claims 1-2).
Regarding claim 3, U.S. Patent No. 10,582,444 teaches wherein the one or more processors are further configured to execute the program instruction to establish the communication session with the authorized external device based on the connection request data packet from the authorized external device (Claim 2).
Regarding claim 4, U.S. Patent No. 10,582,444 teaches before receiving the connection request data packet, the one or more processors are configured to receive the scan request data packet and apply the advertising filter to determine whether to deny transmission of the scan response data packet (Claim 1).
Regarding claim 5, U.S. Patent No. 10,582,444 teaches wherein the one or more processors are further configured to execute the program instructions to responsive to receiving a device identification request related to the connection request data packet, transmit a unique identifier related to the IMD to the authorized external device (Claim 1).
Regarding claim 6, U.S. Patent No. 10,582,444 teaches wherein the transceiver is configured to receive a connection request data packet from the authorized external device for a pre-determined interval after broadcast of the advertising data packet (Claim 4).
Regarding claim 7, U.S. Patent No. 10,582,444 teaches wherein the predetermined interval is less than ten seconds (Claim 5).
Regarding claim 8, U.S. Patent No. 10,582,444 teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Claim 6).
Regarding claim 9, U.S. Patent No. 10,582,444 teaches wherein the one or more processors includes a communication control processor that operates the transceiver to communicate with the authorized external device using one or more wireless communication protocols (Claim 7).
Regarding claim 10, U.S. Patent No. 10,582,444 teaches wherein the one or more wireless communication protocols include a Bluetooth low energy protocol, and the advertising filter represents a BLE link layer advertising filter (Claim 8).
Regarding claim 11, U.S. Patent No. 10,582,444 teaches wherein the advertising filter does not block connection requests (Claim 1).
Regarding claim 12, U.S. Patent No. 10,582,444 teaches a method, the method comprising broadcasting an advertising data packet, from an implantable medical device (IMD), utilizing a communication protocol; receiving a scan request data packet from an external device at a transceiver of the IMD; determining an identifier (ID) of the external device from the received scan request data packet; applying an advertising filter to determine if the scan request data packet is from an authorized external device; based on the determination by the advertising filter, denying transmission of a scan response data packet from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device; receiving the advertising data packet including the unique identifier at the authorized external device; and transmitting a connection request data packet from the authorized external device based on the unique identifier of the advertising data packet (Claim 1).
Regarding claim 13, U.S. Patent No. 10,582,444 teaches wherein the applying includes determining if the scan request data packet is from the authorized external device based on the ID of the external device and an approved device list stored on the IMD, wherein the advertising filter does not block connection requests (Claims 1).
Regarding claim 14, U.S. Patent No. 10,582,444 teaches receiving the connection request data packet at the IMD from the authorized external device; and establishing the communication session between the IMD and authorized external device based on the connection request data packet (Claim 2).
Regarding claim 15, U.S. Patent No. 10,582,444 teaches responsive to receiving the connection request data packet, transmitting a unique identifier related to the IMD from the IMD to the authorized external device (Claim 1).
Regarding claim 16, U.S. Patent No. 10,582,444 teaches wherein applying the advertising filter to determine if the scan request data packet is from an authorized external device based on the device ID and the approved device list includes comparing the device ID to device identifiers of authorized external devices on the approved device list (Claim 1).
Regarding claim 17, U.S. Patent No. 10,582,444 teaches wherein the only identifier on the approved device list is the unique identifier of the IMD (Claim 1).
Regarding claim 18, U.S. Patent No. 10,582,444 teaches wherein a communication control processor operates the transceiver of the IMD to communicate with the authorized external device using one or more wireless communication protocols (Claim 7).
Regarding claim 19, U.S. Patent No. 10,582,444 teaches wherein the one or more wireless communication protocols include a Bluetooth low energy (BLE) protocol, and the advertising filter is applied at a BLE link layer (Claim 8).
Regarding claim 20, U.S. Patent No. 10,582,444 teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Claim 6).
Regarding claim 21, U.S. Patent No. 10,582,444 teaches wherein the advertising filter does not block connection requests (Claim 1).
Regarding claim 22, U.S. Patent No. 10,582,444 teaches receiving a connection request data packet after the scan request data packet is received and after the advertising filter is applied to determine whether to deny transmission of a scan response data packet (Claim 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Savolainen (US Pat Pub# 2016/0134709, as cited by applicant) in view of Buchheim et al. (US Pat Pub# 2015/0119077, as cited by applicant) and further in view of Schilling et al. (US Pat Pub# 2017/0312530, as cited by applicant).
Regarding claim 1, Savolainen teaches a device, comprising a transceiver 116 (Fig. 1A), within the device, configured to broadcast an advertising data packet (Sections 0121-0123 and 0127-0128, advertising data going into a filter etc.); the transceiver is further configured to receive a data packet from an external device; memory, within the IMD, configured to store program instructions and a list of approved external device identifiers (Sections 0121-0123 and 0127-0128, authorized list); and one or more processors, within the device, configured to execute the program instructions to identify an identifier of the external device (Sections 0121-0123, 0127-0128, and 0142-0145, device IDs and unique identifier etc.); apply an advertising filter to determine if an authorized external device based on the ID of the external device and the list of approved external device IDs (Sections 0121-0123 and 0127-0128, advertising filter to check if the device ID is on the list); based on the determination by the advertising filter, deny transmission of a data from the transceiver when the advertising filter determines that the scan request data packet is from an unauthorized external device (Sections 0121-0123 and 0127-0128, advertising filter to check if the device ID is on the list and based on the list making a connection or denying etc.); and establish a communication session with an authorized external device independent of the data (Sections 0121-0123 and 0127-0128, advertising filter to check if the device ID is on the list and based on the list making a connection or denying etc.). Savolainen fails to teach a scan request data packet and an implantable medical device.
Buchheim teaches receive a scan request data packet from an external device; and to identify an identifier of the external device from the received scan request data packet (Sections 0049-0051, scan request data packet having a device identifier).
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a scan request data packet as taught by Buchheim into Savolainen’s device in order to improve functionality and security.
Savolainen and Buchheim fail to teach an implantable medical device.
Schilling teaches an implantable medical device (Sections 0006, 0010-0012, and 0048-0049, implantable medical device such as a pacemaker, defibrillator, etc.)
Therefore, it would have been obvious at the time of the invention to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate an implantable medical device as taught by Schilling into a scan request data packet as taught by Buchheim into Savolainen’s device in order to improve data security.
Regarding claim 8, Schilling further teaches wherein the IMD is one of a cardiac monitoring device, pacemaker, cardioverter, cardiac rhythm management device, defibrillator, neurostimulator, leadless monitoring device, or leadless pacemaker (Sections 0006, 0010-0012, and 0048-0049, implantable medical device such as a pacemaker, defibrillator, etc.).
Regarding claim 9, Savolainen further teaches wherein the one or more processors includes a communication control processor that operates the transceiver to communicate with the authorized external device using one or more wireless communication protocols (Sections 0076-0082, Bluetooth low energy).
Regarding claim 10, Savolainen further teaches wherein the one or more wireless communication protocols include a Bluetooth low energy protocol, and the advertising filter represents a BLE link layer advertising filter (Sections 0076-0082, Bluetooth low energy).
Regarding claim 11, Savolainen further teaches wherein the advertising filter does not block connection requests (Sections 0121-0123 and 0127-0128, advertising filter to check if the device ID is on the list and based on the list making a connection or denying etc.).
Conclusion
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/ANDREW WENDELL/Primary Examiner, Art Unit 2648 10/5/2026
