DETAILED ACTION
This Office Action is in response to Applicant’s Amendment filed on 02/20/2026.
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 .
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 in lines 5-7 recites “oscillations in the beat frequencies within a first range relative to a first average slope of frequencies during the first duration” which renders this claim unclear. More specifically, it is unclear as to what is meant by the term “relative” in the limitation “oscillations in the beat frequencies within a first range are relative to a first average slope of frequencies during the first duration” and context used i.e. in what way are the two relative to each other and are related to each other to form the first progression of binaural beat frequencies.
Claim 1 in lines 11-12 recites “oscillations in the beat frequencies within a second range relative to a second average slope of frequencies during the second duration” which renders this claim unclear. More specifically, it is unclear as to what is meant by the term “relative” in the limitation “oscillations in the beat frequencies within a second range relative to a second average slope of frequencies during the second duration” and context used i.e. in what way are the two relative to each other and are related to each other to form the second progression of binaural beat frequencies.
Claim 1 in line 13 recites “wherein the first average slope is different than the second average slope” which renders this claim unclear. More specifically, it is unclear as to how or with respect to which parameter the first average slope is different than the second average slope i.e. frequencies or time or both, is it positive, negative, random and irregular. Additionally, it is unclear as to whether claim 1 line 13 “the first average slope” is the same as, different than or in addition to claim 1 line 6-7 “a first average slope of frequencies during the first duration’ which is time-weighted contrary to claim 1 line 13 “the first average slope”. It is also unclear as to whether claim 1 line 13 “the second average slope” is the same as, different than or in addition to claim 1 line 11-12 “a second average slope of frequencies during the second duration’ which is time-weighted contrary to claim 1 line 13 “the second average slope”.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted step is that the binaural beats are applied irregularly and in varying and unpredictable manner as evidenced in instant specification as-filed [0015] “binaural beats are applied irregularly…. Binaural beats having frequencies that are not consistent or do not change at an easily predictable rate engage the person, prevent the person from becoming acclimatized to the binaural beats, and therefore, have an increased effectiveness over the course of one or more treatments) and which is also disclosed and detailed as an essential step instant specification as-filed abstract “Systems and methods for applying binaural beats to a person are disclosed in a way to prevent the listener from becoming acclimatized to the binaural beats. The system administers varying binaural beat frequencies according to varying progressions of binaural beats from a base binaural beat to a target binaural beat in an irregular manner”, [0041] “Aclimatization to binaural beats can be avoided by varying the frequency of binaural beats to keep an entity receiving the binaural beats engaged (e.g. an animal such as a person). Such binaural beats maintain the ability to entrain the person's brainwaves each time they are administered to the person, from a base frequency associated with a base mental state to a target frequency associated with a target mental state”, [0043] “administered binaural beat frequencies …are applied in an irregular manner to prevent the person from building a resistance to the brainwave training”, [0049] “way the frequencies vary within the respective ranges can be pre-determined, can be random or pseudo random, or can be established as a function of one or more body or ambient conditions”. Consequently, claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps.
Dependent claims 2-14 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 112(b) because the additional recited limitations fail to cure the 35 U.S.C. 112 (b) issue in their respective base claims. Consequently, dependent claims 2-14 are also rejected under 35 U.S.C. 112(b) based in their direct/indirect dependency on their respective base claims.
Claim Rejections - 35 USC § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement for the following reasons:
More specifically, claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. Still more particularly, claim 1 in line 13 contains subject matter “wherein the first average slope is different than the second average slope” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. While the specification is enabling for method of inducing a target mental state in a person using time-weighted averages as disclosed in instant application specification as-filed [0015], [0018-0019], [0046-0048], [0050], the specification is silent with respect to use of simple/arithmetic averages as now currently recited in claim 1 line 13.
Dependent claims 3-14 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 112(a) because the additional recited limitations fail to cure the 35 U.S.C. 112 (b) issue in their respective base claims. Consequently, dependent claims 3-14 are also rejected under 35 U.S.C. 112(a) based in their direct/indirect dependency on their respective base claims.
Claim Interpretation
Claims terms where relevant are being interpreted in light of definitions enumerated in instant application specification as-filed at least para. [0006], [0015-0016], [0030-0038], [0040], [0056], [0076-0077].
The claim term “peak frequency” is being interpreted in light of instant application specification as-filed para. [0057] and [0068].
The term “binaural beat frequencies” are being interpreted in light of instant application specification as-filed para.[0038].
Please note that USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim should not be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted "in view of the specification" without importing limitations from the specification into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.... The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.").
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of U.S. Patent No. 11,090,459 B2 (U.S. Patent Application No. 16/339962, hereinafter referred to as “Holloway”). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims drawn to species and anticipate the more generic or broader scope claims now pending (instant Claims 1-14). That is, the rationale of In re Goodman applies here in that once Applicant has received a patent for a species or a more specific embodiment, Applicant is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent.
More specifically, independent claim 1 under examination is anticipated by claim 1 of Holloway. Similarly, claims 2-14 under examination are anticipated by claims 5-8, 11-19 respectively of Holloway i.e. and an example claim 2 under examination is anticipated by claim 5 of Holloway, claim 6 under examination is anticipated by claim 11 of Holloway.
Response to Amendment
According to the Amendment, filed 02/20/2026, the status of the claims is as follows:
Claims 1 and 13 are currently amended;
Claims 2-12, 14 are as originally filed; and
Claims 15-20 are withdrawn.
The Specification/Drawings has been amended in view of the Amendment, filed 02/20/2026. No new matter was introduced.
By the current amendment, as a result, claims 1-20 are now pending in this application whiles claims 1-14 are being examined on the merits as being drawn to elected invention/species.
Response to Arguments
Issues Raised and Arguments/Remarks to Rejections/Objections Not Based On Prior Art presented on Pages 7-8 of Applicant’s Amendment dated 02/20/2026
[A]: The Examiner agrees with the Applicant, and in light of the amendments/arguments, withdraws the following non prior art related objections/rejections raised in Office Action dated 08/21/2025: [A1] The objection to Specification/Drawings is withdrawn in view of the amendment and arguments, filed 02/20/2026; [A2] The objection to claims is withdrawn in view of the amendment and arguments, filed 02/20/2026; [A3] The 35 U.S.C. 112(b), rejections to claims as raised in Office Action dated 08/21/2025 paras. [9] and [11-12] are withdrawn in view of the amendment, filed 02/20/2026.
[B]: The Examiner disagrees with the Applicant, and in light of the amendments/arguments, maintains the following non prior art related rejections raised in Office Action dated 08/21/2025: [B1] The 35 U.S.C. 112(b), rejections to claims as raised in Office Action dated 08/21/2025 para. [10] is maintained in view of the amendment, filed 02/20/2026 as the amendments/arguments do not cure the noted issue. See detailed rejection above.
Issues Raised and Arguments/Remarks to Rejections Based On Double Patenting on Page 8 of Applicant’s Amendment dated 02/20/2026 where Applicant’s’ remarks inter alia that:
Double Patenting Rejection of claims[A] Terminal Disclaimer : The Office rejected claims 1-14 based on non-statutory double patenting over US 11090459. A terminal disclaimer is being filed concurrently with this response.
[B] Request For Allowance: Claims 1-14 are pending in this application with claims 15-20 withdrawn. Applicant requests allowance of all pending claims. Applicant also requests a rejoinder of claims 15-20 as they share similar inventive features as the allowed claims.
Applicant’s arguments [A-B] above are noted. Examiner directs Applicant’s attention to Terminal Disclaimer review decision dated 03/16/2026 which details reasons for disapproval of Terminal Disclaimer. Consequently, claims 1-14 rejection on the ground of nonstatutory double patenting as being unpatentable over Claims of U.S. Patent No. 11,090,459 B2 (U.S. Patent Application No. 16/339962, hereinafter referred to as “Holloway”) is being maintained.
As currently presented, since claims 1-14 are still rejectable, claims are not allowable at this time.
Conclusion
Applicant’s’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNITA REDDY whose telephone number is (571)270-5151. The examiner can normally be reached on M-Thu 10-4 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHARLES A MARMOR II can be reached on (571)272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNITA REDDY/Primary Examiner, Art Unit 3791
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