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 .
Claim Rejections - 35 USC § 102
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haemmerich et al. (US Pat. No. 7,367,974 B2).
Regarding claim 1, Haemmerich discloses a system comprising a set of electrodes (14), and a signal generator configured to couple to the set of electrodes during use (48), the signal generator including a routing console (52), a set of electrode channels coupled to the routing console (36), each electrode channel of the set of electrode channels corresponding to an electrode of the set of electrodes, each electrode channel including an electronic switch configured to switch between an ON state and an OFF state (see figure 7), an energy source coupled to the set of electrode channels (50) and a processor coupled to the set of electrode channels and to the routing console (60), the processor configured to selectively define a first sequence of subsets of one or more electrode channels of the set of electrode channels as an anode sequence and to selectively define a second sequence of subsets of one or more electrode channels of the set of electrode channels as a cathode sequence (via the switching shown in figure 8), the routing console configured to selectively couple the set of electrodes during use and including a drive circuit coupled to each electronic switch to control the state of the electronic switch (see col. 6; 7-24 providing for the control and drive of 52 via 60), and the processor, the routing console and the energy source collectively configured to deliver a pulse waveform to the set of electrodes in a time-sequenced fashion by pairing respective electrode channels of the first sequence of electrode channels and second sequence of electrode channels (again, as in col. 6; 7-24).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being by Park et al. (US Pat. No. 8,603,083 B2).
Regarding claim 1, Park discloses a system comprising a set of electrodes (816-819), and a signal generator configured to couple to the set of electrodes during use (800), the signal generator including a routing console (845), a set of electrode channels coupled to the routing console (channels indicated at A/B/C/D in figure 8), each electrode channel of the set of electrode channels corresponding to an electrode of the set of electrodes, each electrode channel including an electronic switch configured to switch between an ON state and an OFF state (see col. 12; 39-47), an energy source coupled to the set of electrode channels (801) and a processor coupled to the set of electrode channels and to the routing console (805), the processor configured to selectively define a first sequence of subsets of one or more electrode channels of the set of electrode channels as an anode sequence and to selectively define a second sequence of subsets of one or more electrode channels of the set of electrode channels as a cathode sequence (via the switching shown in figure 8 and col. 12), the routing console configured to selectively couple the set of electrodes during use and including a drive circuit coupled to each electronic switch to control the state of the electronic switch (see col. 12 describing the electronic switching for each channel), and the processor, the routing console and the energy source collectively configured to deliver a pulse waveform to the set of electrodes in a time-sequenced fashion by pairing respective electrode channels of the first sequence of electrode channels and second sequence of electrode channels (again, as in col. 12 to delivery energy to the selected channels/electrodes).
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13 and 20 of U.S. Patent No. 9,987,081 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because:
It is clear that all the elements of instant claim 1 are to be found in each of patented independent claims 1, 13 and 20. The difference between instant claim 1 and each of patented claims 1, 13 and 20 lies in the fact that each patent claim includes many more elements and is thus much more specific. Thus the invention of each of claims 1, 13 and 20 is, in effect, a “species” of the “generic” invention of instant claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant claim 1 is anticipated by each of claims 1, 13 and 20 of the patent, it is not patentably distinct from each patented claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
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/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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