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 .
Response to Arguments
Applicant’s amendments and arguments filed 3/27/2026 with respect to the objection to the specification and the 112(b) rejections have been fully considered and are persuasive. The objection to the specification and the 112(b) rejections have been withdrawn.
Applicant’s amendments and arguments filed 3/27/2026 with respect to the outstanding 103 rejection(s) of claims have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, as necessitated by applicant’s amendments, a new ground(s) of rejection is made in view of US 5,333,095.
Additionally, the Examiner takes exception with the Applicant’s characterization of the Shaker reference on page 10 of the arguments. The applicant argues that Shaker does NOT disclose a plug, but instead discloses using a single wire. While Shaker discloses this as a PREFERRED embodiment, Shaker clearly discloses the alternative use of a plug in Col. 6, lines 47-56 and Col. 7, lines 31-59 (“when an electrical plug is not present” implies there is an embodiment when an electrical plug is present).
The applicant made no attempt to argue against the Double Patenting rejections. The rejections have been reconsidered as necessitated by applicant’s amendments and a new DP rejection has been made below.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 18/156,318 and Application No. 18/486,992, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Neither application discloses a plug as recited in claim 1 of the current application. The current application has an effective filing date of 12/16/2024.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shaker et al. (US 11,547,863, hereinafter Shaker) in view of Stevenson et al. (US 5,333,095, herein after Stevenson).
Regarding claims 1-4, Shaker discloses a defibrillator housing as seen in figures 4 and 5. Four walls are affixed to a bottom surface and a dividing layer is affixed to the four walls to create a circuit enclosure configured to hold circuitry 415, and to create, along with removable cover 465, an electrode enclosure configured to hold electrode pad 410 and its associated lead wire (figure 4 and annotated figure below).
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Element 130 of Shaker is positioned on the dividing layer to connect the lead wire of the electrode pad to the circuitry, and may be in the form of a plug (Col. 5, lines 56-63, Col. 6, lines 47-56 and Col. 7, lines 31-59). However, Shaker is silent as to the exact structure of the plug. Stevenson also discloses a defibrillator, and thus is analogous art with Shaker (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 and the plug will be surrounded by “reinforcement” walls of the housing, 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 Shaker to include a pin and to be welded to the dividing layer as taught by Stevenson as this is a known plug structure in the defibrillator art that would not affect the overall operation or purpose of Shaker, and Stevenson discloses that welding beneficially creates a hermetic seal to protect the circuitry.
Regarding claim 5, Shaker includes a peelable tray lid 455 (Col. 8, lines 55-67).
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.
Regarding claim 10, Shaker discloses that the wire is spooled within the electrode enclosure (figure 2). While Shaker is silent as to there being a spool, 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Shaker in view of Stevenson and further in view of Edwards et al. (US 2006/0178865, hereinafter Edwards).
Shaker, 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 Shaker. 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 Shaker 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.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/982,974 (reference application) in view of Stevenson. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim anticipates the current claim with the exception of the plug being welded to the dividing layer. 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/982,960 (reference application). in view of Stevenson. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claim anticipates the current claim with the exception of the plug being welded to the dividing layer. 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796
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