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 Amendment
The preliminary amendment filed May 30, 2025 has been entered. Claims 1-91 are canceled. Claims 92-111 are new.
Specification
The disclosure is objected to because of the following informalities: para [0001] of the specification should be amended to reflect U.S. Application No. 17/779,006 is now U.S. Patent No. 12,268,865.
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 92-111 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,268,865. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely method claim equivalents to the apparatus claims recited in the patent.
Statement Regarding Prior Art
Ahmed et al. (US 2014/0135858) and Ahmed et al. (US 2013/0035745) disclose a method for electrically modulating tissue, comprising: generating a set of currents with a set of initial polarities; and delivering the set of currents to working electrodes. However Ahmed et al. does not disclose causing at least one indifferent electrode to absorb a bias current which is equal in magnitude and opposite in polarity to a summation of the set of currents as required by claims 92 and 96. Ahmed et al. instead discloses a charging signal that is a constant negative voltage bias applied between an active electrode and at least counterelectrode without details regarding the voltage bias selected to be equal in magnitude and opposite in polarity to a summation of the set of currents.
Lee et al. (US 2011/0137381) disclose applying a reverse bias current 1/59th the amplitude of a DC current pulse to balance the charge delivered by the DC current pulse. This is not equivalent to a bias current which is equal in magnitude and opposite in polarity to a summation of the set of currents delivered to the working electrodes. No indifferent electrode is disclosed.
While commonly assigned US Patent Publications Wu et al. (US 2022/0176130) and Ackermann et al. (US 2022/0088374) claim subject matter that may be considered an obvious adaptation of the instant application, any rejection presented relying on those references under 35 U.S.C. 102(e) would have been overcome by a statement of common ownership.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA S LEE whose telephone number is (571)270-1480. The examiner can normally be reached M-F 8-7pm, flex.
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/ERICA S LEE/Primary Examiner, Art Unit 3796
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