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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,344,729. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are merely broader than the claims of the ‘729 patent as shown below.
Current Application (19/005,549)
USPN 11,344,729 (App. 17/523,725)
1. A neurostimulation system comprising: an implantable device for suppressing pain by applying neural stimulation, the implantable device comprising:
1. A neurostimulation system comprising: an implantable device for suppressing pain by applying a neural stimulus, the implantable device comprising:
a plurality of electrodes including at least one stimulus electrode and at least one sense electrode;
a stimulus source configured to provide stimuli to be delivered to a tissue in the dorsal column of a patient, each stimulus defined by a stimulus intensity parameter;
a stimulus source configured to provide stimuli to be delivered from the at least one stimulus electrode to a tissue in the dorsal column of a patient, each stimulus defined by a stimulus intensity parameter;
measurement circuitry for measuring a neural response evoked in response to the stimulus;
measurement circuitry for measuring a neural response sensed at the at least one sense electrode and evoked in response to a stimulus;
and a control unit configured to: control the stimulus source to provide a stimulus in accordance with the stimulus intensity parameter;
and a control unit configured to: control the stimulus source to provide the neural stimulus in accordance with a stimulus intensity parameter;
measure via the measurement circuitry a neural response evoked by the stimulus;
measure via the measurement circuitry a neural response evoked by the stimulus;
determine from the measured evoked neural response a feedback variable;
determine from the measured evoked neural response a feedback variable;
and complete a feedback control loop by applying an adjustment to the stimulus intensity parameter based on the feedback variable,
and complete a feedback control loop by applying a proportional adjustment to the stimulus intensity parameter, wherein the proportional adjustment is in proportion to an error between the feedback variable and a target intensity,
and a processor configured to: measure a characteristic of the patient; and determine a gain of the feedback control loop based on the measured patient characteristic and a predetermined value of a corner frequency of the feedback control loop
and a processor configured to set a gain for the control unit to use to determine the proportional adjustment based on a characteristic of a neural response growth curve, wherein the neural response growth curve is a relation of a neural response intensity to the stimulus intensity parameter, wherein the control unit is configured to determine the proportional adjustment by multiplying the error by the gain.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/806432 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct as shown below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
App. 18/806,432
Current Application (App. 19/005,549)
1. A neurostimulation system comprising: an implantable device for suppressing pain by applying neural stimulation, the implantable device comprising:
1. A neurostimulation system comprising: an implantable device for suppressing pain by applying neural stimulation, the implantable device comprising:
a stimulus source configured to provide stimuli to be delivered to a tissue in the dorsal column of a patient, each stimulus defined by a stimulus intensity parameter;
a stimulus source configured to provide stimuli to be delivered to a tissue in the dorsal column of a patient, each stimulus defined by a stimulus intensity parameter;
measurement circuitry for measuring a neural response evoked in response to the stimulus;
measurement circuitry for measuring a neural response evoked in response to a stimulus;
and a control unit configured to: control the stimulus source to provide a stimulus in accordance with the stimulus intensity parameter;
and a control unit configured to: control the stimulus source to provide a stimulus in accordance with a stimulus intensity parameter;
measure via the measurement circuitry a neural response evoked by the stimulus;
measure via the measurement circuitry a neural response evoked by the stimulus;
determine from the measured evoked neural response a feedback variable;
determine from the measured evoked neural response a feedback variable;
and complete a feedback control loop by applying an adjustment to the stimulus intensity parameter based on the feedback variable,
and complete a feedback control loop by applying an adjustment to the stimulus intensity parameter based on the feedback variable,
and a processor configured to set a speed of the feedback control loop based on a characteristic of the measured evoked neural response.
and a processor configured to: measure a characteristic of the patient; and determine a gain of the feedback control loop based on the measured patient characteristic and a predetermined value of a corner frequency of the feedback control loop.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda K Hulbert whose telephone number is (571)270-1912. The examiner can normally be reached Monday - Friday 9:00-5:00.
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, Unsu Jung can be reached at 571-272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Amanda K Hulbert/Primary Examiner, Art Unit 3792
Prosecution Insights