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 .
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on 11/10/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/23/2025 was filed is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 spool, as in independent claims 1 and 11. Therefore, the effective filing date of all of the claims is 12/16/2024.
Specification
The disclosure is objected to because of the following informalities: The first paragraph of the specification should include the relevant continuity data found in the ADS filed on 12/16/2024, including Application No. 18/156,318 and Application No. 18/486,992.
Appropriate correction is required.
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 1-4 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 19 of copending Application No. 18/982,953 in view of Shaker et al. (US 11,911,627, hereinafter Shaker). Regarding claims 1, 3, 11 and 13, claims 10 and 19 of the copending application disclose all limitations of current claims but is silent as to the spool of the defibrillator specifically having two center pieces through which the wires are secured, wherein the wires are wound around the center pieces and are unwound when the pads are removed from the electrode enclosure. Shaker also discloses a defibrillator and this is analogous art with the copending claims. Shaker discloses a spool 1010 with two halves/center pieces as shown in figure 10. The spool is located within electrode enclosure 325 as seen in figure 12. The spool includes two center pieces positioned opposite each other to which the pair of wires 1105 are secured and wound around, such that the wires are unwound when then pads are removed from the electrode enclosure (see figure 11 and Col. 8, lines 5-22). Therefore it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the spool of the patented claims to have the structure shown in Shaker as Shaker discloses a spool structure that would not change the overall functionality or purpose of the spool recited by the patented claims.
Regarding claim 2 and 12, the spool is able to be moved within the electrode enclosure, if so desired by a user, (e.g., in order to unspool the wire).
Regarding claims 4 and 14, the Examiner considers the shape of the center pieces to act as a strain relief, as claimed.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 20 of copending Application No. 18/982,960 in view of Shaker. Regarding claims 1, 3, 11 and 13, claims 10 and 20 of the copending application disclose all limitations of current claims but is silent as to the spool of the defibrillator specifically having two center pieces through which the wires are secured, wherein the wires are wound around the center pieces and are unwound when the pads are removed from the electrode enclosure. Shaker also discloses a defibrillator and this is analogous art with the copending claims. Shaker discloses a spool 1010 with two halves/center pieces as shown in figure 10. The spool is located within electrode enclosure 325 as seen in figure 12. The spool includes two center pieces positioned opposite each other to which the pair of wires 1105 are secured and wound around, such that the wires are unwound when then pads are removed from the electrode enclosure (see figure 11 and Col. 8, lines 5-22). Therefore it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the spool of the patented claims to have the structure shown in Shaker as Shaker discloses a spool structure that would not change the overall functionality or purpose of the spool recited by the patented claims.
Regarding claim 2 and 12, the spool is able to be moved within the electrode enclosure, if so desired by a user, (e.g., in order to unspool the wire).
Regarding claims 4 and 14, the Examiner considers the shape of the center pieces to act as a strain relief, as claimed.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 20 of copending Application No. 18/982,974 in view of Shaker. Regarding claims 1, 3, 11 and 13, claims 10 and 20 of the copending application disclose all limitations of current claims but is silent as to the spool of the defibrillator specifically having two center pieces through which the wires are secured, wherein the wires are wound around the center pieces and are unwound when the pads are removed from the electrode enclosure. Shaker also discloses a defibrillator and this is analogous art with the copending claims. Shaker discloses a spool 1010 with two halves/center pieces as shown in figure 10. The spool is located within electrode enclosure 325 as seen in figure 12. The spool includes two center pieces positioned opposite each other to which the pair of wires 1105 are secured and wound around, such that the wires are unwound when then pads are removed from the electrode enclosure (see figure 11 and Col. 8, lines 5-22). Therefore it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the spool of the patented claims to have the structure shown in Shaker as Shaker discloses a spool structure that would not change the overall functionality or purpose of the spool recited by the patented claims.
Regarding claim 2 and 12, the spool is able to be moved within the electrode enclosure, if so desired by a user, (e.g., in order to unspool the wire).
Regarding claims 4 and 14, the Examiner considers the shape of the center pieces to act as a strain relief, as claimed.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 10 and 20 recite the limitation "the protective liners" in each claim. There is insufficient antecedent basis for this limitation in the claim, as they do not depend from claims 8, 9, 18 or 19, which are the only claims to previously recite protective liners.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shaker.
Regarding claims 1, 3, 11 and 13, Shaker discloses a defibrillator as seen in figures 3 and 4. A circuit enclosure 320 with four walls affixed to a bottom surface is configured to hold circuitry, as seen in figure 14 (Col. 4, lines 40-42). A dividing wall as seen in figure 16 is also attached to the 4 walls to help create an electrode enclosure 325 configured to hold a pair of electrode pads, wherein access to the circuitry is restricted by the bottom layer and the dividing layer enclosing the circuitry (figures 4, 15, 16, Col. 5, lines 43-51). A wire 1105 is connected to each electrode pad (Col. 7, line 66-Col. 8, line 22). Shaker discloses a spool 1010 with two halves as shown in figure 10. The spool is located within electrode enclosure 325 as seen in figure 12. The spool includes two halves/center pieces positioned opposite each other to form a passage to which the pair of wires 1105 are secured and wound around, such that the wires are unwound when then pads are removed from the electrode enclosure (see figure 11 and Col. 8, lines 5-22).
Regarding claim 2 and 12, the spool is able to be moved within the electrode enclosure, if so desired by a user, (e.g., in order to unspool the wire).
Regarding claims 4 and 14, the Examiner considers the shape of the center pieces to act as a strain relief, as claimed.
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 5, 6, 8-9, 15, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shaker in view of Shaker et al. (US 11,547,863).
Regarding claims 5, 8-9, 15, and 18-19, Shaker discloses the applicant’s basic invention, as described above. However Shaker is silent as to including a peelable tray lid with a solid tab, as well as a protective liner between the pads stacked within the enclosure. Shaker et al discloses a defibrillator, and thus is analogous art with Shaker. 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 wire (figure 4 and annotated figure below). Shaker includes a peelable tray lid 455 with a solid tab 805 (Col. 8, lines 55-67). A release liner 335 is shown as larger than each electrode pad in figure 4 and 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 Shaker to including a peelable tray lid with a solid tab, as well as a protective liner between the pads stacked within the enclosure, as taught by Shaker et al. in order to properly seal and protect the electrode pads during storage and to prevent the electrodes from sticking together when stacked on top of each other (Col. 5, lines 25-36 and Col. 8, lines 55-61 of Shaker et al. for motivation).
Regarding claims 6 and 16, Shaker as modified above 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.
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shaker in view of Edwards et al. (US 2006/017/8865, hereinafter Edwards)
Shaker, as describedabove, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
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