`
`' UNITED STA‘t :5 DEPARTMENT OF COMMERCE
`Patent: and Trademark Office
`Address: COMMISSIONER or PATENTS AND TRADEMARKS
`Washington. DC 20231
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`I SERIAL NUMBER
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`08/103.837
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`08/06/93
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`GLINER
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`'
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`B
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`241082000600
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`MORRISON 8.- FOERSTER
`"7553 PAGE MILL ROAD
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`PALO. ALTO, CA
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`94304~1018
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`33M1 fOEili‘B
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`This is a communication from the examiner in charge of your application.
`COMMlSSiONER OF PATENTS AND TRADEMARKS
`
`PER NUMBER
`
`
`pA
`
`
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`3 3 O 5
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`DATE MAILED:
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`OE) / 1 E; / 95
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`[I This application has been examined
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`[I Responsive to communication filed on
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`D This action is made final.
`
`A shortened statutory period for response to this action is set to expire é month(s), 3 0 days from the date of this letter.
`Failure to respond within the period for response will cause the application to become abandoned. 35 U.S.C. 133
`
`Part I THE FOLLOWING ATTACHMENTS) ARE PART OF THIS ACTION:
`
`1. El Notice of References Cited by Examiner. PTO-892.
`3. [3 Notice of Art Cited by Applicant, PTO-1449.
`5. Klnformation on How to Effect Drawing Changes. PTO-1474.
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`2. B/Notice of Draftsman's Patent Drawing Review, PTO-948.
`4. D Notice of informal Patent Application, PT0152.
`6. I:
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`Part II
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`SUMMARY OF ACTION
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`1. E/Clalms
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`I ’- 34
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`Of the above, claims
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`2. I] Claims
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`3. E] Claims
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`4. I] Claims
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`.
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`are pending in the application.
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`are withdrawn from consideration.
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`have been cancelled.
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`are allowed.
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`are rejected.
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`5. E] Claims
`[I
`V
`are objected to.
`5- filafms—_—IL_____ are subject to restriction or election requirement.
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`7. I: This application has been filed with Informal drawings under 37 C.F.R. 1.85 which are acceptable for examination purposes.
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`8. D Formal drawings are required in response to this Office action.
`
`. Under 37 C.F.R. 1.84 these drawings
`9. D The corrected or substitute drawings have been received on
`are E] acceptable; El not acceptable (see explanation or Notice of Draftsman's Patent Drawing Review, PTO-948).
`
`10. I: The proposed additional or substitute sheet(s) of drawings, filed on
`examiner; El disapproved by the examiner (see explanation).
`
`. has (have) been EIapproved by the
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`11. D The proposed drawing correction, tiled
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`, has been El approved;
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`III disapproved (see explanation).
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`12. [I Acknowledgement is made of the claim for priority under 35 U.S.C._119. The certified copy has I] been received [J not been received
`El been filed in parent application, serial no.
`;filed on
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`13. D Since this application apppears to be in condition for allowance except for formal matters, prosecution as to the merits is closed in
`accordance with the practice under Ex parte Quayle, 1935 CD. 11; 453 0.6. 213.
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`14. [I Other
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`megsiéi if 3
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`*EXAMlNER'S ACTION
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`Philips Exhibit 2025
`
`Zoll Lifecor V. Philips
`IPR2013-00606
`
`Page 1 of 3
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`Page 1 of 3
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`Philips Exhibit 2025
`Zoll Lifecor v. Philips
`IPR2013-00606
`
`

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`Serial NUmber: 08/103,837
`Art Unit: 3305
`
`Part III
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`DETAILED ACI‘ION
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`-2—
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`.
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`Election/Restriction
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`This application contains claims directed to the following
`1.
`patentably distinct species of the claimed invention:
`(1)
`the
`species defined by Figures 1 and 2;
`(2)
`the species defined by
`
`Figure 3;
`
`(3)
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`the species defined by Figure 6;
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`(4)
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`the species
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`defined by Figure 9;
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`(5)
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`the species involving fixed duration
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`discharging in a second polarity (6)
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`the species involving
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`discharging in a second polarity as a function of a measured
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`first phase end value, and (7)
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`the species involving discharging
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`in a second polarity as a function of a first discharge duration.
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`Applicant is required under 35 U.S.C.
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`§ 121 to elect a
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`single disclosed species for prosecution on the merits to which
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`the claims shall be restricted if no generic claim is finally
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`held to be allowable.
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`The applicant may select one species for
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`describing the first phase discharge combined with a second
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`species for describing the second phase discharge as long as said
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`combination has been disclosed. Currently, claims 1, 11, 12, 23,
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`30 and 33 appear to be generic.
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`Applicant is advised that a response to this requirement
`must include an identification of the species that is elected
`consonant with this requirement, and a listing of all claims
`readable thereon,
`including any claims subsequently added. An .
`argument that a claim is allowable or that all claims are generic
`is considered nonresponsive unless accompanied by an election.
`
`Upon the allowance of a generic claim, applicant will be
`entitled to consideration of claims to additional speCies which
`are written in dependent fOrm or otherwise include all the
`limitations of an allowed generic claim as provided by 37 C.F.R.
`§ 1.141.
`If claims are added after the election, applicant must
`indicate which are readable upon the elected species. M.P.E.P.
`§ 809.02 (a).
`.
`Should applicant traverse on the ground that the speCies are
`not patentably distinct, applicant should submit eVidence or
`identify such evidence now of record showing the speCies to be
`obvious variants or clearly admit on the record that this is the
`case.
`In either instance, if the examiner finds one of the
`inventions unpatentable over the prior art,
`the evidence or
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`Serial NUmber: 08/103,837
`Art Unit: 3305
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`-3—
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`admission may be used in a rejection under 35 U.S.C.
`other invention.
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`§ 103 of the
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`2. Applicant is reminded that upon the cancellation of claims
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`to a non—elected invention,
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`the inventorship must be amended in
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`compliance with 37 C.F.R. § l.48(b) if one or more of the
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`currently named inventors is no longer an inventor of at least
`
`one claim remaining in the application. Any amendment of
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`inventorship must be accompanied by a diligently—filed petition
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`under 37 C.F.R.
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`§ l.48(b) and by the fee required under 37 C.F.R.
`
`§ l.l7(h) .
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`Any inquiry concerning this-communication or earlier
`3.
`communications from the examiner should be directed to Ken
`Schaetzle whose telephone number is (703) 308—2211.
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`M
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`K.S.
`
`June 13, 1995
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`Page 3 of 3
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`fig
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`WlLLIAM E. KAMM
`PRIMARY EXAM|NER
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`Page 3 of 3
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