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 of Species 1A and Species 2C in the reply filed on 2/23/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 application, Application No. 19/223,670, 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 parent application does not disclose a relay as recited in claims 1 and 16. Therefore, all claims have an effective filing date of 8/27/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/24/2025 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the first paragraph should list all parent applications found in the ADS filed on 8/27/2025 and their current status in the first paragraph of the specification.
Appropriate correction is required.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mirowski et al. (US 3,614,955, hereinafter Mirowski).
Mirowski discloses a de-energizable defibrillator. The defibrillator includes an electromechanical component (switch 64) and an energy storage element (+15V) that provides power to the electromechanical component (see figure). Circuitry 50 is configured to generate a defibrillation waveform. A relay 46 is triggerable by the electromechanical component such that the circuitry 50 is isolated from the energy storage element by the relay (see figure).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Mirowski in view of Locke et al. (US 2003/0208237, hereinafter Locke).
Regarding claims 2 and 3, Mirowski, as described above, discloses the applicant’s basic invention, including an electromechanical switch component that, when in an open position, is separated from the energy storage element by a physical gap between contacts (see figure). However, Mirowski is silent as to the switch being a magnetically triggered reed switch. Locke also discloses a defibrillator, and thus is analogous art with Mirowski (see figure 3). Locke discloses that sample switches to act as an on/off power switch can be any electromechanical component, including a magnetically triggered reed relay switch (par. 0040). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to substitute the magnetically triggered reed switch of Locke for the generic switch of Mirowski because Locke teaches them to be functionally equivalent in the defibrillator art for acting as a power switch and the substitution would not affect the overall operation of purpose of Mirowski.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,168,137 in view of Mirowski. The patented claims anticipate the current claims with the exception of using a relay triggerable by the electromechanical component. Mirowski discloses a de-energizable defibrillator and thus is analogous art with the patented claims. The defibrillator includes an electromechanical component (switch 64) and an energy storage element (+15V) that provides power to the electromechanical component (see figure). Circuitry 50 is configured to generate a defibrillation waveform. A relay 46 is triggerable by the electromechanical component such that the circuitry 50 is isolated from the energy storage element by the relay (see figure). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the relay of Mirowski as the electromechanical component of the patented claims in order to isolate the circuitry from the power source.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,257,443 in view of Mirowski. The patented claims anticipate the current claims with the exception of using a relay triggerable by the electromechanical component. Mirowski discloses a de-energizable defibrillator and thus is analogous art with the patented claims. The defibrillator includes an electromechanical component (switch 64) and an energy storage element (+15V) that provides power to the electromechanical component (see figure). Circuitry 50 is configured to generate a defibrillation waveform. A relay 46 is triggerable by the electromechanical component such that the circuitry 50 is isolated from the energy storage element by the relay (see figure). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the relay of Mirowski as the electromechanical component of the patented claims in order to isolate the circuitry from the power source.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,257,444 in view of Mirowski. The patented claims anticipate the current claims with the exception of using a relay triggerable by the electromechanical component. Mirowski discloses a de-energizable defibrillator and thus is analogous art with the patented claims. The defibrillator includes an electromechanical component (switch 64) and an energy storage element (+15V) that provides power to the electromechanical component (see figure). Circuitry 50 is configured to generate a defibrillation waveform. A relay 46 is triggerable by the electromechanical component such that the circuitry 50 is isolated from the energy storage element by the relay (see figure). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the relay of Mirowski as the electromechanical component of the patented claims in order to isolate the circuitry from the power source.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/908,315 in view of Mirowski. The copending claims anticipate the current claims with the exception of using a relay triggerable by the electromechanical component. Mirowski discloses a de-energizable defibrillator and thus is analogous art with the patented claims. The defibrillator includes an electromechanical component (switch 64) and an energy storage element (+15V) that provides power to the electromechanical component (see figure). Circuitry 50 is configured to generate a defibrillation waveform. A relay 46 is triggerable by the electromechanical component such that the circuitry 50 is isolated from the energy storage element by the relay (see figure). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the relay of Mirowski as the electromechanical component of the copending claims in order to isolate the circuitry from the power source.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/908,237 in view of Mirowski. The copending claims anticipate the current claims with the exception of using a relay triggerable by the electromechanical component. Mirowski discloses a de-energizable defibrillator and thus is analogous art with the patented claims. The defibrillator includes an electromechanical component (switch 64) and an energy storage element (+15V) that provides power to the electromechanical component (see figure). Circuitry 50 is configured to generate a defibrillation waveform. A relay 46 is triggerable by the electromechanical component such that the circuitry 50 is isolated from the energy storage element by the relay (see figure). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to include the relay of Mirowski as the electromechanical component of the copending claims in order to isolate the circuitry from the power source.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 16-20 are allowed.
Claims 4-7 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims.
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.
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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