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 .
Election/Restrictions
Applicant’s election without traverse of Species A, Species 2 and Species X in the reply filed on 12/23/2025 is acknowledged. Claims 3, 4, 13 and 14 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected Species, there being no allowable generic or linking claim.
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 plurality of tabs staggered along two opposite sides of the cover as recited in independent claims 1 and 11 of the current application. The current application has an effective filing date of 12/16/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/23/2025 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 2, 5, 10, 12, 15 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 2 and 12 recite the limitations "the pins” and “the wires”. There is insufficient antecedent basis for these limitations in the claim. The claim previously recited “at least one pin”, which could recite a single pin. However, “the pins” refers back to a plurality of pins, which is never explicitly recited by the claim.
Claims 5 and 15 recite the limitation “the grooves”. There is insufficient antecedent basis for these limitations in the claim. Claims 4 and 14 recite grooves, but those claims are withdrawn and claims 5 and 15 do not depend from those claims.
Claims 10 and 20 recites the limitation “the wires". There is insufficient antecedent basis for this limitation in the claim.
Specification
The disclosure is objected to because of the following informalities: The first paragraph should contain any continuity data recited in the ADS.
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, 2, 5-12 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/982,960 (reference application) in view of Shaker et al. (US 11,547,863, hereinafter Shaker). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate the current claim with the exception of the cover having staggered tabs on the cover that fit into grooves of the electrode enclosure, the tabs removable with upward force. However, Shaker also discloses a defibrillator housing, and thus is analogous art with the copending claims. Shaker shows in figure 10 a plurality of staggered tabs 1005 that fit into corresponding grooves 1010 of the electrode enclosure, the tabs removable with upward force (Col. 9, lines 5-21).
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It would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the tabs and grooves of Shaker in the cover of the copending claims in order to ensure a tight fit of the cover, as taught by Shaker.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 5-12 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/982,953 (reference application) in view of Shaker. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate the current claim with the exception of the cover having staggered tabs on the cover that fit into grooves of the electrode enclosure, the tabs removable with upward force. However, Shaker also discloses a defibrillator housing, and thus is analogous art with the copending claims. Shaker shows in figure 10 a plurality of staggered tabs 1005 that fit into corresponding grooves 1010 of the electrode enclosure, the tabs removable with upward force (Col. 9, lines 5-21).
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It would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the tabs and grooves of Shaker in the cover of the copending claims in order to ensure a tight fit of the cover, as taught by Shaker.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
Examiner thought it necessary to point out how broad claims 1 and 11 actually are. ANY box/housing with two compartments and a cover would read on the claim. The claim does not actually recite positively recite a defibrillator, pads, or circuitry, merely that the housing is configured to do so, or that it can be used to house a defibrillator. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In order to promote compact prosecution, the Examiner attempted to search for defibrillator housings, but the claim is not actually that specific.
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.
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, 5-8, 10, 11, 15, 17-18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shaker.
Regarding claims 1, 5, 11 and 15, 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 wire (figure 4 and annotated figure below).
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Shaker shows in figure 10 a plurality of staggered tabs 1005 that fit into corresponding grooves 1010 of the electrode enclosure, the tabs removable with upward force (Col. 9, lines 5-21).
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Regarding claims 2 and 12, element 130 of Shaker is positioned on the dividing layer to connect the 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).
Regarding claim 6, Shaker includes a peelable tray lid 455 (Col. 8, lines 55-67).
Regarding claims 7, 8, 17 and 18, 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 claims 10 and 20, 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 Rejections - 35 USC § 103
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shaker et al. (US 11,547,863, hereinafter Shaker) in view of Apperson et al. (US 2012/0185006, herein after Apperson).
Regarding claims 2 and 12, Shaker, as described above, discloses the applicant’s basic invention but Shaker is silent as to the exact structure of the plug. Apperson also discloses a defibrillator, and thus is analogous art with Shaker. Apperson utilizes a plug 417 in order to connect the wires of electrodes pads 404/408 to the circuitry of the defibrillator (figure 4). The plug includes at least one pin 419 that extend through the housing (figure 4 and par. 0056) and the plug will be surrounded by 4 “reinforcement” walls of the housing. 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 pins as taught by Apperson as this is a known plug structure in the defibrillator art that would not affect the overall operation or purpose of Shaker.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Shaker 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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Shaker.
Regarding claim 16, 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.
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