DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. Claims 23-42 are currently pending.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/e-Terminal-disclaimer.
Claims 23-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 11-17, 19-20 of U.S. Patent No. 12,226,213. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘213 teaches the same elements including the electrode assembly for contacting skin, and a process (performed by a control unit) that includes sending a first signal to the electrode assembly to dispense a first amount of an electrically conductive gel onto a conductive layer in response to a determination that shock treatment is to be delivered, and a second signal with a second amount of gel is to be administered I the same way by a second set of dispensers of gel subsequent the first. Claims 31 and 40 are obvious in light of ‘213 as the only difference is the second signal is sent from the same processor to the same set of dispensers via a second conductor instead of sharing just the one. The additional conductor would not have produced unexpected results to the skilled artisan before the effective filing date and as such would have been considered a simple duplication of parts (see MPEP 2144.04-IV-B). The other dependent claims include near identical subject matter to the claims listed above.
Claims 23-25 and 27 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-6, 8, 10, and 16 of U.S. Patent No. 8,406,842 in view of Heilman et al. US Patent 4,928,690 (hereinafter Heilman). ‘842 teaches the same base components and details that the electrode assembly includes a gel dispensing via activation signals at two different times distinct from each other, however is silent on this being in response to cardiac therapy is to be delivered to the patient (though it is the ultimate goal of the device as per 16). Heilman details that the electrodes sense the heart for various arrythmias and upon determining such an event, will shock the patient, but further includes that there is an automatic dispensing of gel to improve impedance between the skin and the electrodes once defibrillation shock is determined to be needed (column 4 line 58 through column 5 line 11). Therefore, it would have been obvious to the skilled artisan before the effective filing date to dispense the gel as taught by Heilman with the device of ‘842 for the same predictable results and advantages. It should be noted that a generic conductor (wire or trace) is also required as part of claim 28 in order for any of the activation signals to be sent to/from the processor/generator/computer, or at a minimum a wireless signal (transmitter/antenna) which also meets the language would be required in order to function.
Claims 23-25, 27, and 34 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 8-10 of U.S. Patent No. 9,037,271 in view of Heilman (from above). ‘271 teaches the same base components and details that the electrode assembly includes a gel dispensing via activation signals at two different times distinct from each other, however is silent on this being in response to cardiac therapy is to be delivered to the patient (though it is the ultimate goal of the device as per 16). Heilman details that the electrodes sense the heart for various arrythmias and upon determining such an event, will shock the patient, but further includes that there is an automatic dispensing of gel to improve impedance between the skin and the electrodes once defibrillation shock is determined to be needed (column 4 line 58 through column 5 line 11). Therefore, it would have been obvious to the skilled artisan before the effective filing date to dispense the gel as taught by Heilman with the device of ‘271 for the same predictable results and advantages.
Claims 23-25, 27-28 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-2, 4, 8, 10-11 of U.S. Patent No. 9,987,481 in view of Heilman (from above). ‘481 teaches the same base components and details that the electrode assembly includes a gel dispensing via activation signals at two different times distinct from each other, however is silent on this being in response to cardiac therapy is to be delivered to the patient (though it is the ultimate goal of the device as per 16). Heilman details that the electrodes sense the heart for various arrythmias and upon determining such an event, will shock the patient, but further includes that there is an automatic dispensing of gel to improve impedance between the skin and the electrodes once defibrillation shock is determined to be needed (column 4 line 58 through column 5 line 11). Heilman additionally details the use of additional sensors (respiratory sensor 94) and ECG (22). Therefore, it would have been obvious to the skilled artisan before the effective filing date to dispense the gel as taught by Heilman with the device of ‘481 for the same predictable results and advantages.
Claims 23-26, 28-29, and 32-33 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-4, 20-22, 25 of U.S. Patent No. 11,439,335 in view of Heilman (as mentioned above). ‘335 teaches the same base components and details that the electrode assembly includes a gel dispensing via activation signals at two different times distinct from each other, however is silent on this being in response to cardiac shock treatment is to be delivered to the patient (though it is the ultimate goal of the device as per 16). Heilman details that the electrodes sense the heart for various arrythmias and upon determining such an event, will shock the patient, but further includes that there is an automatic dispensing of gel to improve impedance between the skin and the electrodes once defibrillation shock is determined to be needed (column 4 line 58 through column 5 line 11). Therefore, it would have been obvious to the skilled artisan before the effective filing date to dispense the gel as taught by Heilman with the device of ‘335 for the same predictable results and advantages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian M Antiskay whose telephone number is (571)270-5179. The examiner can normally be reached M-F 10am-6pm EST.
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/BRIAN M ANTISKAY/Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
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