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 .
Response to Amendment
This office action is responsive to the amendment filed on December 09, 2024, As directed by the amendment:
Claims 1, 11, 27, 30, and 32 are amended, Claim 5, 9, 12-21, 23, 29, and 34-35 are canceled, and Claims 36-37 have been added. Thus, Claims 1-4, 6-8, 10-11, 22, 24-28, 30-33, and 36-37 are pending in the application.
Response to Arguments
Applicant argues on page 11-14 of the remarks that the objection made on drawings should be withdrawn. Applicant response is persuasive and the previous drawing objections has been hereby withdrawn.
Applicant argues on page 14 of the remarks that the objection made on specification should be withdrawn. Applicant’s response is persuasive, previous specification/abstract objections are hereby withdrawn
Applicant argues on page 15 of the remarks that the objection made on claims should be withdrawn. Applicant’s response is persuasive, previous claim objections are hereby withdrawn
Applicant argues on page 15 of the of the remarks that the 112(f)-interpretation made on Claim 1 and 30 should be withdrawn. Applicant’s response is persuasive, previous 112(f) has been withdrawn.
Applicant argues on page 15 of the of the remarks that the 112(a)-rejection made on Claim 5 and 35 should be withdrawn. Applicant has canceled the claim, making the Applicant’s response is persuasive; the previous 112(a) has been withdrawn.
Applicant argues on page 15-16 of the of the remarks that the 112(b)-rejection made on Claims shown be withdrawn. Applicant’s response is persuasive, previous 112(b)-rejections have been withdrawn.
Applicant argues on page 16-17 of the remarks that the 103 rejections should be withdrawn. However, Applicant amended the claim to add new limitation from claim 6 “wherein the stimulating signal is configured to cause a mechanical movement of the patient's skin in at least one dimension, wherein a first end of the at least one stimulator is secured relative to a first fastening tape of the one or more fastening tapes and a second end of the at least one stimulator is secured relative to a second fastening tape of the one or more fastening tapes,” that was not previously considered. Applicant has amended the claims and a new 103 rejection stated below addresses the new limitation of the claim.
Applicant’s arguments with respect to claim(s) dependent from the independent claim have been considered but are not persuasive.
New claims 36-37 have been entered and rejected below.
Double patenting rejection still stands on the merit.
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6-8, 10-11, 22, and 30-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hietanen et al. (US2018/0104087).
Regarding Claim 1, Hietanen discloses:
A fastening tape system (title, Abstract, Figs. 1-7) comprising: one or more fastening tapes (therapy tape(s) 41, 51 or 61, ¶s 0057-0058, 0063, and 0065, Figs. 5-7), each of the one or more fastening tapes (41, 51, 61) comprising: a backing layer (backing layer(s) 42, 52, ¶ 0058) configured to conform to a portion of a patient's body (¶ 0004, lines 1-5; Examiner notes: this limitation is functional), wherein the flexible backing layer (52) defines a top side and a bottom side opposite the top side (¶ 0004, lines 3-5, as best seen in Fig. 6); and an adhesive material (¶ 0032, first two lines) secured relative to the bottom side of the flexible backing layer (42, 52, ¶ 0058), wherein the adhesive material is configured to adhere the backing layer (42, 52, ¶ 0058) against the patient's skin (¶ 0032, lines 2-4); wherein the adhesive material is configured to maintain adherence with the backing layer and the patient's skin (¶ 0032); at least one stimulator (vibration elements 48, ¶ 0059, pressure applicators 58, ¶ 0063) configured to apply a stimulating signal to the patient's skin (¶s 0007, lines 1-3 and 0057), wherein the stimulating signal is configured to cause a mechanical movement of the patient’s skin in at least one dimension (a vibration element/pressure element inherently cause mechanical movement of a patient’s skin in at least one dimension); and wherein a first end of the at least one stimulator (Fig. 5, 6A-6B; either 48, 58) is secured relative to a first fastening tape ( one end of 41) of the one or more fastening tapes and a second end (Fig. 5, 6A-6B; either 48, 58) of the at least one stimulator (Examiner note: a second end of an at least one it could be any second end to any of either stimulator) is secured relative to a second fastening tape ( in this case on the other side of 41 or 51) of the one or more fastening tapes.
Regrading Claim 2, Hietanen discloses the fastening tape system of claim 1, further comprising one or more handles (handles 4, 37, Figs. 1-7) secured relative to the top side of the flexible backing layer (backing layer 2), wherein the one or more handles (4, 37) are secured to the flexible backing layer via one or more fasteners (fasteners line sewn thread, adhesive, magnets, zippers, et cetera, see the full list of fasteners as described in ¶ 0040; also detachable fasteners like connecting portions 36, ¶ 0052; and attached via detachable fastener materials like hook-and-loop material, magnetic material, snaps, et cetera, ¶ 0049).
Regrading Claim 3, Hietanen discloses the fastening tape system of claim 1, wherein the mechanical movement comprises a back and forth movement in one of a horizontal direction and vertical direction along an axis in the one dimension (Examiner notes: when mechanical vibration from vibration element 48 is applied to the skin, the skin will have movement in all directions that inherently includes a back-and-forth movement in a single direction along an axis in one dimension and the horizontal/vertical direction of the back-and-forth movement can be attained with a proper positioning of the stimulator/fastener tape when placed on the skin).
Regrading Claim 4, Hietanen also discloses that wherein the mechanical movement is defined in two dimensions (when a mechanical vibration from vibration element 48 is applied to the skin, the skin will have movement in all directions that inherently includes mechanical movement defined in two dimensions).
Regarding Claim 6, Hietanen further discloses that the stimulating signal is configured to cause a vibration of the patient's skin (vibration element 48 causes a vibration to a patient’s skin, ¶ 0058).
Regrading Claim 7, Hietanen also discloses that the at least one stimulator comprises an electrical stimulator comprising a Transcutaneous Electrical Neuro Stimulator (TENS) (middle of ¶ 0065).
Regrading Claim 8, Hietanen further discloses that the at least one stimulator comprises a pressure applicator (pressure applicators 58, ¶ 0063) configured to cause a continuous pressure downwards (the pressure applicator 58 of the fastening tape is applied on top of the skin and when the pressure applicator 58 is activated at least a pressure force component of the pressure applied by the pressure applicator is inherently continuously applied to the skin beneath/a downward direction relative to pressure applicator 58).
Regrading Claim 10, Hietanen also discloses that the at least one stimulator is fastened to the one or more fastening tapes at one or more fastening points (handles/fastening points 54 and stimulators/pressure applicators 58 are fastened/connected together, ¶ 0064, lines 6 and 7).
Regrading Claim 11, Hietanen wherein one or both of the fastening tape (41, 51, 61) and the at least one stimulator has a curved profile (the flexible therapy tape can be applied to limb body portions, ¶s 0003, last seven lines and 0004; and when circumferentially applied about at least a portion of a limb such as an arm or leg of a patient the applied flexible therapy tape would have a curved profile that follows the curve of the limb).
Regrading Claim 22, Hietanen also discloses that the fastening tape system further comprises a controller configured to generate one or more stimulator signals to selectively activate the at least one stimulator; wherein the controller comprises at least one communication interface configured to receive data transmitted from at least one external computing entity (¶ 0007, lines 5-12).
Regrading Claim 30, Hietanen discloses:
A method for manipulating a flexible material (the skin of a patient is the flexible material, ¶ 0008), the method comprising:
securing a fastening tape system against a surface of the flexible material (¶ 0008), wherein the fastening tape system comprises: one or more fastening tapes, each of the one or more fastening tapes comprising: a backing layer configured to conform to a portion of the surface of the flexible material, wherein the flexible backing layer defines a top side and a bottom side opposite the top side (¶ 0008); an adhesive material secured relative to the bottom side of the flexible backing layer, wherein the adhesive material is configured to adhere the backing layer against the surface of the flexible material (¶ 0008); at least one stimulator (stimulator elements 48, 58, ¶s 0059 and 0063) configured to apply a stimulating signal to a flexible material (¶s 0007, lines 1-3 and 0057), wherein the stimulating signal is configured to cause a mechanical movement of the flexible material (the patient’s skin) in a least one dimension (a vibration element/pressure element inherently cause mechanical movement of a patient’s skin in at least one dimension); dimension, wherein a first end of the at least one stimulator (Fig. 5, 6A-6B; either 48, 58) is secured relative to a first fastening tape ( one end of 41) of the one or more fastening tapes and a second end (Fig. 5, 6A-6B; either 48, 58) of the at least one stimulator (Examiner note: a second end of an at least one it could be any second end to any of either stimulator) is secured relative to a second fastening tape ( in this case on the other side of 41 or 51) of the one or more fastening tapes (the handles 54 can be fastening means by which the stimulators are connected to, ¶ 0064, lines 6 and 7) for securing the at least one stimulator to the one or more fastening tapes (41, 51, 61); and applying a tensile force to the at least one of the fastening means to lift a portion of the backing layer and a secured portion of the surface of the flexible material (explicitly described in ¶ 0008, last three lines).
Regrading Claim 31, Hietanen further discloses that the flexible material is a patient's skin (¶ 0008).
Regrading Claim 32, Hietanen also discloses that the fastening tape system further comprise one or more handles (handles 4, 37, Figs. 1-7) being detachably secured relative to the top side of the flexible backing layer for securing the at least one stimulator to the one or more fastening tapes (handle 37 secured to top side of backing layer via connecting portions 36, ¶ 0049, Figs. 4A-4D, especially Fig. 4D), and wherein the method further comprises the steps for securing one or more handles relative to the top side of the flexible backing layer via one or more detachable fasteners (connecting portions 36 are formed from a variety of detachable fastener materials like hook-and-loop material, magnetic material, snap, et cetera, ¶ 0049).
Regrading Claim 33, Hietanen further discloses that the adhesive material is heat activated (¶ 0009, lines 6 and 7), and wherein securing the tape structure against a surface of the flexible material (¶ 0009, lines 7-9) comprises: placing the adhesive material of the fastening tape system against the patient's skin (¶ 0009, lines 9 and 10); and raising a temperature of the adhesive material based on the patient's body heat to securely adhere the adhesive material to the patient's skin (¶ 0009, lines 10-13).
Claims 1, 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rigaux et al. (US 6324432 B1), hereafter as Rigaux.
Regrading Claim 1, Rigaux discloses a fastening tape system comprising:
one or more fastening tapes (Fig. 1a-1b or 3a-3b; 7), each of the one or more fastening tapes comprising:
a backing layer configured to conform to a portion of a patient's body (Col. 6 lines 30-34), wherein the flexible backing layer defines a top side and a bottom side opposite the top side (Fig. 1a-1b or 3a-3b; shown best in 3a-3b there is a top and bottom layer) and an adhesive material secured relative to the bottom side of the flexible backing layer (Col. 6 lines 30-34), wherein the adhesive material is configured to adhere the backing layer against the patient's skin (Col. 6 lines 30-34);
wherein the adhesive material is configured to maintain adherence with the backing layer and the patient's skin (Examiner notes: this limitation is functional is supposed to maintain some type of stick onto the person skin);
at least one stimulator (Fig. 1a-1b, 2, or 3a-3b; 5, 6) configured to apply a stimulating signal to the patient's skin (this limitation is functional; Col. 5 lines 42-52); wherein the stimulating signal is configured to cause a mechanical movement of the patient's skin in at least one dimension (Examiner notes: pulses), wherein a first end of the at least one stimulator is secured relative to a first fastening tape (shown in Fig. 1b) of the one or more fastening tapes (one of the connectors 6 and the self-adhesive electrodes 7) and a second end of the at least one stimulator is secured relative to a second fastening tape of the one or more fastening tapes (the other one of the connectors 6 and the self-adhesive electrodes).
Regarding Claim 37, Rigaux discloses a fastening tape system comprising:
one or more fastening tapes (Fig. 1a-1b or 3a-3b; 7), each of the one or more fastening tapes comprising:
a backing layer configured to conform to a portion of a patient's body (Col. 6 lines 30-34), wherein the flexible backing layer defines a top side and a bottom side opposite the top side (Fig. 1a-1b or 3a-3b; shown best in 3a-3b there is a top and bottom layer);
and an adhesive material secured relative to the bottom side of the flexible backing layer (Col. 6 lines 30-34), wherein the adhesive material is configured to adhere the backing layer against the patient's skin (Col. 6 lines 30-34);
wherein the adhesive material is configured to maintain adherence with the backing layer and the patient's skin (Examiner notes: this limitation is functional is supposed to maintain some type of stick onto the person skin) ;one or more handles (Fig. 1a, 2, or 3a-3b; 8) secured relative to the top side of the flexible backing layer (Examiner notes; 8 is secured to the top of 7);
one or more stimulators (Fig. 1a-1b, 2, or 3a-3b; 5, 6) configured to apply a stimulating signal to the patient's skin (this limitation is functional; Col. 5 lines 42-52), wherein the stimulating signal is configured to cause a mechanical movement of the patient's skin in at least one dimension (Examiner notes: pulses), wherein at least one stimulator (6) of the one or more stimulators is positioned between a first handle (one of the studs 8) and a second handle (another one of the studs 8) of a fastening tape (one of the electrodes 7) of the one or more fastening tapes, wherein a first end of the at least one stimulator (wire 5 and connector 6) is secured to the first handle (one of the studs 8) and a second end of the at least one stimulator (the other wire and connector 6; Fig. 1b) is secured to the second handle (other stud 8).
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 24, 27-28, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Hietanen, as applied to claim 22 and 1, in view of Foster et al (WO2021/112922A1).
Regrading Claim 24, Hietanen discloses that the system further comprises a controller to generate one or more stimulating signals to selectively activate the at least one stimulator.
Hietanen lacks where the system further includes at least one sensor configured for measurement of at least one property of the skin, wherein the at least one sensor is further configured to transmit measurements results to the controller, and wherein the controller is configured to adjust the one or more stimulator signals based at least in part on the measurements results.
Foster teaches a vibration device for delivering a therapeutic vibration to the body (title, Abstract, Figs. 1-8) that further includes at least one sensor configured for measurement of at least one property of the skin (temperature sensor, claims 7 and 10), wherein the at least one sensor is further configured to transmit measurements results to the controller (¶ 0011), and wherein the controller is configured to adjust the one or more stimulator signals based at least in part on the measurements results (¶ 0011).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify Hietanen’s device to further include at least one sensor configured for measurement of at least one property of the skin, wherein the at least one sensor is further configured to transmit measurements results to the controller, and wherein the controller is configured to adjust the one or more stimulator signals based at least in part on the measurements results, as taught by Foster, to provide information about an attribute of the user’s body that is used to further adjust the operation of the vibrational device to attain a useful therapy result for the patient/user (¶ 0011 of Foster).
Regrading Claim 27, Hietanen discloses the stimulating signal of the stimulator as described above.
Hietanen lacks the wherein at least a portion of the stimulating signal is programmed to be maintained for a predetermined duration for each of one or more intervals wherein the stimulating signal is configured according to one or more of an automated configuration operation and a selective adjustment as a response to a sensor measurement for a certain duration.
Foster teaches a vibration device (title, Abstract, Figs. 1a-8d) for delivering a therapeutic vibration to a body that includes a selective adjustment as a response to a sensor measurement for a predetermined duration for each of one or more (Foster’s vibration device is used in conjunction with a sensor that is adjusted to achieve a predefined state/goal like lower heart rate and lower blood pressure for the user, ¶ 00011) and at least a portion of the stimulating signal is programmed to be maintained for a certain duration for a number of durations (the vibration device can, for example, generate a plurality of vibration pulses, ¶ 0024, and the vibration producing waveform is controlled by a motor controller that executes a sequence of commands (i.e., because of being previously programmed to do so) to make the stimulating signal applied to the user be regular, recurrent, or oscillatory, ¶ 0025).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the stimulating signal of Hietanen to have a selective adjustment in response to a sensor measurement for a predetermined duration wherein at least a portion of the stimulating signal is programmed to be maintained for a certain duration for a number of durations, as taught by Foster, to provide a stimulating signal waveform/output applied to the user which is effective to assist the user to reach a therapeutic goal (¶ 00024 of Foster).
Regrading Claim 28, Hietanen discloses the at least one stimulator configured to apply a stimulating signal to a patient’s skin which is configured to cause mechanical movement of the patient’s skin.
Hietanen lacks having one or more sensor configured for measurement of at least one property of the skin, wherein the one or more sensor includes a temperature sensor.
Foster teaches a vibration device for delivering a therapeutic vibration to the body (title, Abstract, Figs. 1-8) that utilizes a temperature sensor for measuring a temperature of the skin (sensor to measure “skin temperature”, ¶ 0011 and claims 7 and 10).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify Hietanen’s device to have a temperature sensor for measurement of at least one property of the skin, as taught by Foster, to provide information about an attribute of the user’s skin to further adjust the operation of the vibrational device to attain a useful therapy for the patient/user (¶ 0011 of Foster).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Hietanen and Foster et al as applied to Claim 22 above, and further in view of Hwang et al (CN109069853A) (an English Machine translation has been provided for Applicants’ convenience and the citations in the rejection below is taken from this English Machine Translation).
Regarding Claim 25, Hietanen discloses that the system further comprises a controller to generate one or more stimulating signals to selectively activate the at least one stimulator.
Hietanen lacks a system that further comprises at least one sensor configured for measurement of at least one property of the skin, wherein the at least one sensor is further configured to transmit the measurements results to a mobile device, and wherein the controller is configured to adjust the one or more stimulator signals based at least in part on the measurements results.
Foster teaches a vibration device for delivering a therapeutic vibration to the body (title, Abstract, Figs. 1-8) that further includes at least one sensor configured for measurement of at least one property of the skin (temperature sensor, claims 7 and 10), wherein the at least one sensor is further configured to transmit measurements results to the controller (¶ 0011), and wherein the controller is configured to adjust the one or more stimulator signals based at least in part on the measurements results (¶ 0011).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify Hietanen’s device to further include at least one sensor configured for measurement of at least one property of the skin, wherein the at least one sensor is further configured to transmit measurements results to the controller, and wherein the controller is configured to adjust the one or more stimulator signals based at least in part on the measurements results, as taught by Foster, to provide information about an attribute of the user’s body that is used to further adjust the operation of the vibrational device to attain a useful therapy result for the patient/user (¶ 0011 of Foster).
The modified Hietanen, however, does not teach that wherein the at least one sensor is further configured to transmit the measurements results to a mobile device.
Hwang teaches a skin attachment and storage device (title, Abstract, Figs. 1-11) that includes a vibration part (“vibrating part” is associated with attaching part 110, sixth full paragraph on p. 8) and a sensor (bottom paragraph on p. 5 and 3rd full paragraph on p. 6) where the device accumulates data from the sensor that is transmitted to a mobile device (bottom paragraph on p. 9 to the top of p. 10).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the modified Hietanen to have the at least one sensor be configured to transmit the measurements results to a mobile device, as taught by Hwang, to provide the user an easy way to check the measured conditions at the skin site where the skin device is disposed (bottom paragraph on p. 9 to the top of p. 10).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hietanen in view of Paz et al (US2021/0138232).
Regarding Claim 26, Hietanen discloses the stimulator having the stimulating signal as described above.
Hietanen lacks at least a portion of the stimulating signal being programmed to start and stop automatically in accordance with a measurement signal of a strain gauge.
Paz teaches a wearable apparatus (stimulator device 31, title, Abstract, Figs. 3-7) that produces a stimulating signal (generated signal bursts 41 delivered by gated pulse generator 35, Figs. 3 and 4) delivered to the skin of a patient that is programmed to start and stop automatically in accordance with a measurement signal of a strain gauge (generated signal bursts 41 are controlled to activate/deactivate through connection 44 (Fig. 4) in response to data collected by the sensor output of sensor 32 that is analyzed, Abstract, “the device 31 is activated (or deactivated) in the case where the sensor output is produced that is below the minimum threshold or is above a maximum threshold”, bottom portion of ¶ 0328; the sensor 32 can be a strain gauge, ¶ 0305; also many other sensors are described that can be used in contrast to the strain sensor in ¶s 0274-0276).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the at least a portion of the stimulating signal of Hietanen’s device to have a portion of the stimulating signal being programmed to start and stop automatically in accordance with a measurement signal of a strain gauge, as taught by Paz, to provide improved operative control of the stimulating signal to produce an effective therapy treatment for a patient/user.
Claims 36 is rejected under 35 U.S.C. 103 as being unpatentable over Rigaux.
Regarding Claim 36, Rigaux discloses the fastening tape system of claim 1, wherein the at least one stimulator (Fig. 1a-1b, 2, or 3a-3b; 5, 6) comprises a first arm defining the first end (connected to one of the electrode 7), a second arm defining the second end (connected to another one of the electrode 7; best shown in Fig. 1b), and a middle portion (Fig. 1b; 4) between the first arm and the second arm.
Rigaux does not disclose wherein the middle portion is secured to a third fastening tape of the one or more fastening tapes.
However, “the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960): Where the prior art disclosed a two fastening tapes (6, 7; Fig. 1b) wherein stimulation electrodes (7) to be placed on a user's skin on the motor points of the muscles to be stimulated, each electrode (7) being connected to an electric cable (5) connector, the other end of the cable being connected in a removable manner to a signal input and/or output socket of the case for receiving the electric pulses. Although the reference did not disclose a third fastening tape, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.)” MPEP § 2144.04-VI-B. Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add a third fastening tape since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. See MPEP 2144.04 St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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.
Claim 1 of SN17/390507 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,096,817 in view of Rowen (US2014/0243589) and Rigaux.
It is noted that Claim 1 of SN17/390507 is a broader recitation than claim 1 of US11,096,817, however, the elements of Claim 1 of SN17/390507 correspond to claim 1 of US11,096,817 as follows:
Instant Application (SN 17/390507)
U.S. Patent No. 11,096,817
A fastening tape system comprising: one or more fastening tapes, each of the one or more fastening tapes comprising: (see Claim 1, lines 1 and 2)
A formed roll of therapy tape comprising:
(the function of the roll of the therapy tape is for it to be secured to the skin of a patient’s body (col. 1, lines 45 and 46) via an adhesive material (col. 2, lines 9 and 10) which reads on a fastening tape system)
a backing layer configured to conform to a portion of a patient's body, wherein the flexible backing layer defines a top side and a bottom side opposite the top side; (see Claim 1, lines 3-5)
a continuous, elongated flexible backing layer having a top side and a bottom side opposite the top side; (see claim 1, lines 2 and 3)
an adhesive material secured relative to the bottom side of the flexible backing layer, wherein the adhesive material is configured to adhere the backing layer against the patient's skin; wherein the adhesive material is configured to maintain adherence with the backing layer and the patient's skin; (see Claim 1, lines 6-10)
a continuous adhesive layer comprising a first adhesive material secured to the bottom side of the elongated flexible backing layer and covering an entirety of the bottom side of the elongated flexible backing layer; (see claim 1, lines 4-7)
wherein the first adhesive material is configured to maintain adherence with the flexible backing layer and a patient’s skin (see claim 1, lines 34-36)
US11,096,817 does not recite/disclose that the tape further comprises at least one stimulator configured to apply a stimulating signal to the patient's skin, wherein the stimulating signal is configured to cause a mechanical movement of the patient's skin in at least one dimension.
Rowen, however, teaches a vibratory apparatus (apparatus 10 that contains patch 11, title, Abstract, ¶ 0015, Figs. 1-4) that includes at least one stimulator (vibratory element 14, ¶ 0015, Fig. 1) applied to the skin of a patient and configured to apply a stimulating signal to the patient's skin (Abstract and ¶ 0015), wherein the stimulating signal is configured to cause a mechanical movement of the patient's skin in at least one dimension (vibratory element 14 generates stimulation through mechanical vibratory motion, ¶ 0002, and when a mechanical vibration is applied to the skin via vibratory element 14, the skin will have mechanical movement in all directions that inherently includes mechanical movement defined in at least one dimension).
Therefore, it would be obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the therapy tape as recited in claim 1 of US11,096,817 to include the at least one stimulator configured to apply a stimulating signal to the patient's skin, wherein the stimulating signal is configured to cause a mechanical movement of the patient's skin in at least one dimension, as taught by Rowen, to provide an effective vibratory sensation for therapeutic or pleasurable purposes for the patient (Abstract of Rowen).
Modified ‘817 does not specifically disclose wherein a first end of the at least one stimulator is secured relative to a first fastening tape of the one or more fastening tapes and a second end of the at least one stimulator is secured relative to a second fastening tape of the one or more fastening tapes.
However, Rigaux teaches wherein a first end of the at least one stimulator is secured relative to a first fastening tape (shown in Fig. 1b) of the one or more fastening tapes (one of the connectors 6 and the self-adhesive electrodes 7) and a second end of the at least one stimulator is secured relative to a second fastening tape of the one or more fastening tapes (the other one of the connectors 6 and the self-adhesive electrodes).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the where the stimulators and fastening tapes are in ‘817 to include wherein a first end of the at least one stimulator is secured relative to a first fastening tape of the one or more fastening tapes and a second end of the at least one stimulator is secured relative to a second fastening tape of the one or more fastening tapes as taught by Rigaux for the purpose of knowing the fatigue of the stimulated muscles in order to know the state of the muscles being exercised and also to be able to take advantage of this measurement in order to adjust the stimulation parameters automatically.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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MAAP A. ELLABIB
Examiner
Art Unit 3785
/M.A.E./Examiner, Art Unit 3785 /KENDRA D CARTER/Supervisory Patent Examiner, Art Unit 3785
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