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 Group I in the reply filed on 2/3/2026 is acknowledged. Claims 11-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected Species, there being no allowable generic or linking claim.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 dependent claims 2-5 of the current application. Claims 2-5 have an effective filing date of 12/16/2024.
The disclosure of the prior-filed application, Application No. 18/156,318 fails 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. The applications fails to disclose a seal secured over the electrode enclosure as recited in independent claim 1 of the current application. Claims 1 and 6-10 have an effective filing date of 10/13/2023.
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 1-10 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 1 recites the limitations "the electrode pads”. There is insufficient antecedent basis for this limitation in the claim. The claim previously recited “one or more pads”, which could recite a single pad, and also does not give antecedent basis to the “electrode pad." Furthermore, the “pads” requires a plurality of pads, which is never explicitly recited by the claim previously. All claims depend from claim 1 and are indefinite based at least on this association.
Claim 4 recites the limitation “the tabs on all sides of the cover”. There is insufficient antecedent basis for this limitation in the claim as tabs were never previously recite don all sides of the cover.
Claim 5 recites the limitation “the tabs out of the grooves". There is insufficient antecedent basis for this limitation in the claim, as the claim depends from claim 1 and not claim 4.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-10 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 requires that the pads are “placed on the patient, by the patient.” This requires the pads to be placed on the body at times, and therefore recites the human body as a structural limitation of the apparatus. The claim can recite the pads are “configured to be placed on the patient.”
Specification
The disclosure is objected to because of the following informalities: The first paragraph should contain any continuity data recited in the ADS filed on 5/30/2025.
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 1-6 and 8-10 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 a seal secured over the electrode enclosure and 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.
Additionally, Shaker discloses that a seal 455 can be provided over the electrode enclosure (Col. 9, lines 5-20). It would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the seal of Shaker over the electrode enclosure of the copending claims in order to ensure a tight fit of the cover, as taught by Shaker.
Regarding claims 9 and 10, the Examiner takes Official Notice that all AEDs operate by recording patient data and initatiating shock treatment based on the recorded data, if needed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 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 a seal secured over the electrode enclosure and 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.
Additionally, Shaker discloses that a seal 455 can be provided over the electrode enclosure (Col. 9, lines 5-20). It would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the seal of Shaker over the electrode enclosure of the copending claims in order to ensure a tight fit of the cover, as taught by Shaker.
Regarding claims 9 and 10, the Examiner takes Official Notice that all AEDs operate by recording patient data and initatiating shock treatment based on the recorded data, if needed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/982,974 (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 a seal secured over the electrode enclosure. However, Shaker also discloses a defibrillator housing, and thus is analogous art with the copending claims. Shaker discloses that a seal 455 can be provided over the electrode enclosure (Col. 9, lines 5-20). It would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the seal of Shaker over the electrode enclosure of the copending claims in order to ensure a tight fit of the cover, as taught by Shaker.
Regarding claims 9 and 10, the Examiner takes Official Notice that all AEDs operate by recording patient data and initatiating shock treatment based on the recorded data, if needed.
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 claim 1 actually is. ANY box/housing with two compartments, a seal 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 hold pads and hold circuitry. 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 1-7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shaker.
Regarding claims 1-5, 9 and 10, 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 discloses that a seal 455 can be provided over the electrode enclosure (Col. 9, lines 5-20). 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 6 and 7, 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 9 and 10, the circuitry 415 initiates recording when the pads are on the patient and initiates shock based on the recorded data, if needed, as that is how all AEDs inherently work.
Claim Rejections - 35 USC § 103
Claim 8 is 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.
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