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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/26/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/9/2026 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s amendments and arguments filed 8/26/2026 with respect to the previous 103 rejections have been fully considered and are persuasive. The 103 rejections have been withdrawn.
Applicant presented no arguments against the double patenting rejections. New rejections are found below based on the amendments to the claims.
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 1-3 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/982,960 in view of Picardo et al. (US 6,662,056, hereinafter Picardo) and further in view of Stevenson et al. (US 5,333,095, hereinafter Stevenson). The copending claims disclose all limitations of current claims 1-3 with the exception of the plug being welded and that the plug is positioned adjacent to the pads in the electrode enclosure with a wire that is connected to each pad.
With regard to the missing weld feature, Stevenson also discloses a defibrillator, and thus is analogous art with the copending claims (see abstract). Stevenson utilizes a plug 26 in order to connect the lead wire 16 of an electrode to the circuitry of the defibrillator (Col. 5, lines 9-26). The plug includes at least one pin 12 that extends through the housing 22 as shown in figures 2-4. The housing acts as a dividing layer, and the plug 26 is welded to the housing (Col. 6, lines 9-29). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the plug of the copending claims to be welded to the dividing layer as taught by Stevenson as Stevenson discloses that welding beneficially creates a hermetic seal to protect the circuitry.
With regard to the structure of the plug, Picardo also discloses a defibrillator, and thus is analogous art with the copending claims (see abstract). Picardo discloses a plug as seen in figures 1-4 positioned adjacent to the pads in the electrode enclosure with a wire that is connected to each pad (Col. 4, lines 25-47). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the plug of the copending claims to be positioned adjacent to the pads in the electrode enclosure with a wire that is connected to each pad as Picardo shows this to be a known arrangement for a plug in the defibrillator art and its use would not affect the overall operation or purpose of the plug disclosed in the copending claims.
Regarding claim 10, the use of a spool to organize wires is notoriously old and well known in the art. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include a spool around which the wires can be easily and efficiently stored.
This is a provisional nonstatutory double patenting rejection.
Claims 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/982,960 in view of Picardo and Stevenson and further in view of Shaker et al. (US 11,547,863, hereinafter Shaker).
As described above, the copending claims, as modified, disclose the limitations with the exceptions addressed below.
Regarding claim 5, Shaker includes a peelable tray lid 455 (Col. 8, lines 55-67). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the electrode enclosure of the copending claims to include a peelable tray lid in order to protect the electrodes prior to their first use and presence of the tray lid would not affect the overall operation or purpose of the electrodes disclosed in the copending claims.
Regarding claim 6, Shaker discloses that the peelable tray lid has a solid tab 805, but is silent as to having multiple tabs. However, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI. B.). In this case having multiple tabs would not produce a new and unexpected result and would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date.
Regarding claims 7 and 8, a release liner 335 is affixed to a side in between of each pad and can contact skin of a patient, if so desired by a user. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the pads of the copending claims to include a release liner in order to protect the pads prior to their first use and presence of the liner would not affect the overall operation or purpose of the pads disclosed in the copending claims.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/982,960 in view of Picardo and Stevenson and further in view of Edwards et al. (US 2006/0178865, hereinafter Edwards).
The copending claims, as modified above, discloses the applicant’s basic invention with the exception of including lights within the electrode enclosure and a status marker. Edwards discloses a defibrillator, and thus is analogous art with the copending claims. Edwards discloses the electrode enclosure can have LEDs within the circuit enclosure below the electrode enclosure that shine through a status marker of the human body on the surface of the electrode enclosure (figure 6 and par. 0041). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the copending claims to include lights within the electrode enclosure and a status marker as taught by Edwards in order to ensure proper operation of the device by a user.
Claims 1-4 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of copending Application No. 18/982,974 in view of Picardo et al. (US 6,662,056, hereinafter Picardo) and further in view of Stevenson et al. (US 5,333,095, hereinafter Stevenson). The copending claims disclose all limitations of current claims 1-3 with the exception of the plug being welded and that the plug is positioned adjacent to the pads in the electrode enclosure with a wire that is connected to each pad.
With regard to the missing weld feature, Stevenson also discloses a defibrillator, and thus is analogous art with the copending claims (see abstract). Stevenson utilizes a plug 26 in order to connect the lead wire 16 of an electrode to the circuitry of the defibrillator (Col. 5, lines 9-26). The plug includes at least one pin 12 that extends through the housing 22 as shown in figures 2-4. The housing acts as a dividing layer, and the plug 26 is welded to the housing (Col. 6, lines 9-29). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the plug of the copending claims to be welded to the dividing layer as taught by Stevenson as Stevenson discloses that welding beneficially creates a hermetic seal to protect the circuitry.
With regard to the structure of the plug, Picardo also discloses a defibrillator, and thus is analogous art with the copending claims (see abstract). Picardo discloses a plug as seen in figures 1-4 positioned adjacent to the pads in the electrode enclosure with a wire that is connected to each pad (Col. 4, lines 25-47). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the plug of the copending claims to be positioned adjacent to the pads in the electrode enclosure with a wire that is connected to each pad as Picardo shows this to be a known arrangement for a plug in the defibrillator art and its use would not affect the overall operation or purpose of the plug disclosed in the copending claims.
Regarding claim 10, the use of a spool to organize wires is notoriously old and well known in the art. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include a spool around which the wires can be easily and efficiently stored.
This is a provisional nonstatutory double patenting rejection.
Claims 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of copending Application No. 18/982,974 in view of Picardo and Stevenson and further in view of Shaker et al. (US 11,547,863, hereinafter Shaker).
As described above, the copending claims, as modified, disclose the limitations with the exceptions addressed below.
Regarding claim 5, Shaker includes a peelable tray lid 455 (Col. 8, lines 55-67). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the electrode enclosure of the copending claims to include a peelable tray lid in order to protect the electrodes prior to their first use and presence of the tray lid would not affect the overall operation or purpose of the electrodes disclosed in the copending claims.
Regarding claim 6, Shaker discloses that the peelable tray lid has a solid tab 805, but is silent as to having multiple tabs. However, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI. B.). In this case having multiple tabs would not produce a new and unexpected result and would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date.
Regarding claims 7 and 8, a release liner 335 is affixed to a side in between of each pad and can contact skin of a patient, if so desired by a user. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the pads of the copending claims to include a release liner in order to protect the pads prior to their first use and presence of the liner would not affect the overall operation or purpose of the pads disclosed in the copending claims.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of copending Application No. 18/982,974 in view of Picardo and Stevenson and further in view of Edwards et al. (US 2006/0178865, hereinafter Edwards).
The copending claims, as modified above, discloses the applicant’s basic invention with the exception of including lights within the electrode enclosure and a status marker. Edwards discloses a defibrillator, and thus is analogous art with the copending claims. Edwards discloses the electrode enclosure can have LEDs within the circuit enclosure below the electrode enclosure that shine through a status marker of the human body on the surface of the electrode enclosure (figure 6 and par. 0041). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the copending claims to include lights within the electrode enclosure and a status marker as taught by Edwards in order to ensure proper operation of the device by a user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric D Bertram whose telephone number is (571)272-3446. The examiner can normally be reached Monday-Friday 8am-6pm Central Time.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796
