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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by YAKOVLEV et al. (US 2017/0095667) (“YAKOVLEV”).
With respect to claim 1, YAKOVLEV discloses a system comprising: a first transceiver that transmits and receives signals at a first frequency, the first transceiver including a midfield coupler that converts signals from the first transceiver to midfield propagating wave (figure 22, paragraphs 0254 disclose a transmitter transceiver utilizing mid-field energy with energy focusing devices/coupler); and an at least partially implantable biocompatible device comprising a second transceiver, the second transceiver including an E-field based antenna that receives the midfield propagating wave from the midfield coupler (figure 21 discloses implantable device 2010 with a transceiver 2190 and antenna 2110 to receive the mid-filed waves from the transmitter).
With respect to claim 2, YAKOVLEV discloses the system of claim 1, wherein the E-field based antenna is a dipole antenna. Paragraphs 0066, 0070, 0337 discloses that the antennas are dipole antennas.
With respect to claim 11, YAKOVLEV discloses the system of claim 1, wherein the antenna is encapsulated in a dielectric material with a dielectric permittivity between a dielectric permittivity of animal tissue and a dielectric permittivity of a substrate of the midfield coupler on which a midfield plate of the midfield coupler is arranged. Paragraphs 0329-0330 discloses that the implantable devices are provided in a seal package with respective insulating/dielectric sheath, figures 59-61.
Claim Rejections - 35 USC § 103
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.
Claim(s) 12-13, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAKOVLEV et al. (US 2017/0095667) (“YAKOVLEV”) in view of Andresen et al. (US 2016/0190698) (“Andresen”).
With respect to claim 12, YAKOVLEV discloses the system of claim 1; except for, wherein the first transceiver includes a planar plate including two or more slot antennas formed therein, the planar plate including a first side and second side opposing the first side.
Andresen discloses a planar transmitter plate with a transmitter antenna 110 comprising slot antennas, figure 3C, 4 and paragraphs 0029, 0078.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claim invention, to have modify YAKOVLEV and include the slot antenna of Andresen in the device of YALOVLER, for the purpose of using a low profile robust antennas, for example.
With respect to claim 13, YAKOVLEV in view of Andresen disclose the system of claim 12, wherein the first transceiver further includes a material on the second side of the plate, the material either (a) shaped to conform to a surface of tissue or (b) flexible to conform to the surface of the tissue. YAKOELV and Andresen disclose that the transmitter is made to conform to tissue.
With respect to claim 17, YAKOVLEV in view of Andresen disclose the system of claim 13, further comprising an adhesive on a side of the material opposite a side facing the plate. Paragraph 0039 discloses that the external device comprises adhesive layers.
With respect to claims 18-20, YAKOVLEV in view of Andresen disclose the system of one of the claims, wherein the material is shaped to conform to the surface of the tissue, wherein the material includes foam, polymer, silicone, or a combination thereof, wherein the shape of the material is determined based on an image of the surface of the tissue. YAKOELV and Andresen disclose that the transmitter is flexible and made to conform to tissue, and is made of soft biocompatible materials, like silicon, elastomers, paragraph 0119.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 9,583,980. Although the claims at issue are not identical, they are not patentably distinct from each other because.
With respect to claim 1, claim 1 of U.S. Patent No. 9,583,980 discloses all the limitations of claim 1.
With respect to claims 2-11, claims 2-11 of U.S. Patent No. 9,583,980 discloses all the limitations of claims 2-11.
Allowable Subject Matter
Claims 14-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 14 is allowable over the prior art of record, because the prior art of record does not disclose wherein the first transceiver further includes circuitry on the first side of the plate, the circuitry configured to cause the two or more slot antennas to transmit electrical power to an implantable device in the tissue by coherent interference of respective electromagnetic fields that generates a propagating wave in the tissue.
Conclusion
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/CARLOS AMAYA/Primary Examiner, Art Unit 2836