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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,329,963 in view of Dalton et al. (US 2004/0257884). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1 and 7, claim 1 of ‘963 recites substantially similar limitations, except that claim 1 of ‘963 does not recite how the conductive traces are formed. Dalton teaches substituting wires for chemical vapor deposited wires (¶ 52) in an implantable medical device (¶ 12). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to substitute wires deposited by chemical vapor deposition for the wires in the claimed invention of ‘963 because Dalton teaches these are functionally equivalent and there is an expectation of success in using the wires of Dalton in the claimed medical device of ‘963.
Regarding instant claims 2-6, claims 2-6 of ‘963 recites all of the same claimed limitations, respectively.
Regarding instant claim 8, claim 7 of ‘963 recites the same limitation.
Regarding instant claims 9-11, claims 8-10 of ‘963 recite all of the same claimed limitations, respectively.
Regarding instant claim 12, claim 11 of ‘963 recites all of the claimed limitations.
Regarding instant claims 13-16, claims 12-15 of ’963 recite all of the same claimed limitations, respectively.
Regarding instant claim 17, claim 16 of ‘963 recites substantially similar limitations, except that claim 1 of ‘963 does not recite how the conductive traces are formed. Dalton teaches substituting wires for chemical vapor deposited wires (¶ 52) in an implantable medical device (¶ 12). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to substitute wires deposited by chemical vapor deposition for the wires in the claimed invention of ‘963 because Dalton teaches these are functionally equivalent and there is an expectation of success in using the wires of Dalton in the claimed medical device of ‘963.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 17 are rejected under 35 U.S.C. 103 as unpatentable over Voit et al. (US 2019/0336771) in view of Dalton et al. (US 2004/0257884).
Regarding claims 1 and 17, Voit discloses an implant device for spinal stimulation (¶ 4). Included as part of the device (see Fig. 1A) is a pair of electrode stimulation pads 112 and 113 (¶ 38), which correspond to the claimed first and second set of electrodes. The pads are formed on an implantation paddle 105, corresponding to the claimed third supporting structure. Each of the electrode pads is connected by way of leads 116 and 117 to wire leads 124 and 125, which form part of a connection segment 107 in parallel (¶ 39). The connection segment corresponds to the claimed cable; the pair of wire leads correspond to the claimed first and second set of conductive traces. The connection segment is surrounded by an insulator layer comprising a non conducting polymer (¶ 54), which corresponds to the claimed first and second supporting structure formed of a dielectric material. Finally, the end of the wire leads connects to connectors, corresponding to the claimed connector, to interface with a voltage source (¶ 58), which corresponds to the claimed electronics module of claim 20. Since the wire leads must be electrically connected to a voltage source in order to function, the ‘connector’ generally corresponds to the claimed fourth supporting structure and the contacts with the voltage source correspond to the claimed first and second sets of contacts or bond pads.
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Voit does not expressly teach the wire leads are deposited via one of the listed methods. Dalton teaches substituting wires for chemical vapor deposited wires (¶ 52) in an implantable medical device (¶ 12). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to substitute wires deposited by chemical vapor deposition for the wires in Voit because Dalton teaches these are functionally equivalent and there is an expectation of success in using the wires of Dalton in the medical device of Voit.
Claims 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over Voit et al. (US 2019/0336771) in view of Dalton et al. (US 2004/0257884), as applied to claim 1, further in view of Greenberg et al. (US 2015/0157862).
The limitations of claim 1 have been addressed above.
Regarding claims 2-3, modified Voit does not expressly disclose the claimed arrangement of electrodes. Greenberg teaches an implantable device for neurological stimulation (¶ 138). Fig. 26 of Greenberg illustrates a possible arrangement of electrodes in a honeycomb pattern with alternating rows having n electrodes and n-1 electrodes. It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use a known arrangement of electrodes for neurological stimulation, as taught by Greenberg, in the device of modified Voit.
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Regarding claim 4, Greenberg teaches a possible embodiment where the arrays and associated traces run in the same direction and are connected to the central array on the same side (see Fig. 63 below). Fig. 26 above shows the row of electrodes at the end of the arrays has n-2 electrodes.
Regarding claim 5, Voit does not expressly disclose forming the implantation paddle into a cylindrical shape. Greenberg teaches an implantable device for neurological stimulation (¶ 138). The electrode array for the device is curved depending on the application including a constant curve in one dimension (¶ 237), which is interpreted to refer to a cylindrical curve. It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to make a curved implantation paddle because such a shape may be necessary for a specific purpose in the implantation device, as taught by Greenberg.
Regarding claim 6, Voit does not expressly teach the conductive traces are made of the claimed materials. Greenberg teaches an implantable device for neurological stimulation (¶ 138). The conductive traces of this device may comprise a metal such as platinum, gold, and titanium (¶¶ 174-176). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to use materials known to be effective as conductors in implantation devices for neurological stimulation, as disclosed by Greenberg.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Voit et al. (US 2019/0336771) in view of Dalton et al. (US 2004/0257884), as applied to claim 1, further in view of John et al. (US 2019/0038438).
Regarding claims 12-13, the limitations of claim 1 have been addressed above. Modified Voit does not expressly disclose the first and second supporting structures comprise helical portions running in parallel within each other. John discloses an implantable device for stimulation the spine (¶ 116). The wires in the cable of the device are wrapped in a helical tube (¶ 132) with a sleeve covering the wires (¶ 129), which corresponds to the claimed housing. It would have been obvious at the effective time of filing for the claimed invention or one of ordinary skill in the art to modify the cable of modified Voit to have a helical winding because such an arrangement is well known and customary in the art, as taught by John.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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