DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
The present Office action is responsive to the Remarks and Amendments filed on 10-08-2025. As directed, claims 21-24, 27, and 41 have been amended, claims 1-20 were previously cancelled, claims 28-40 have been withdrawn from consideration, and new claim 42 has been added. Thus, claims 21-27 and 41-42 are currently pending examination.
Response to Amendment
Applicant has amended the drawings to add illustration of the battery, the unbalanced weight, and the motor shaft, and has additionally eliminated the terms “measuring mechanism” and “resistance measuring mechanism” from the claims to obviate previously held drawing objections. The previously held drawing objections are hereby withdrawn.
Applicant has amended the abstract to avoid use of legal phrases such as “means” and “said”. The previously held objection to the specification for the content of the abstract is hereby withdrawn.
Applicant has amended the claims to avoid use of the terms “vibrating agitation mechanism”, “measuring mechanism”, and “resistance measuring mechanism” which each lacked antecedent basis in the originally filed disclosure. The previously held specification objection is hereby withdrawn.
Applicant has amended each of claims 24, 27, and 41 to address minor informalities. The previously held claim objections are hereby withdrawn.
Applicant has amended each of claims 23-24, 27, and 41 to eliminate recitation of the terms “measuring mechanism” and “resistance measuring mechanism”, in order to address and obviate rejection under 35 USC 112(a) for lack of possession and failure to comply with the written description requirement. The previously held rejections under 35 USC 112(a) are hereby withdrawn.
Applicant has amended each of claims 23-24, 27, and 41 to eliminate recitation of the terms “measuring mechanism” and “resistance measuring mechanism”, in order to address and obviate rejection under 35 USC 112(b), as the claimed terms invoke 35 USC 112(f), but the specification fails to provide the structures, materials, or acts for performing the claimed functions. The previously held rejections under 35 USC 112(b) are hereby withdrawn.
Response to Arguments
Applicant's arguments filed 10-08-2025 have been fully considered but they are not persuasive.
First, Applicant argues, see Remarks as filed page 14, that the Amirana disclosure is directed towards a vibrating pill to induce peristalsis, whereas the present invention treats the human subject. At present, the claims merely recite a vibrating GI capsule. Notably, the claims are apparatus claims, and as such, even if a particular treatment modality for the human subject were claimed, the Amirana device not only a) arguably treats the human subject by inducing peristalsis, such a treatment would also be read as intended use of the claimed capsule, as method claims were not elected. Additionally, Applicant has made no showing in this argument that the Amirana device is demonstrably different from that which is claimed, making this argument unpersuasive.
Next, Applicant argues that Examiner’s previous reliance on the deactivated and activated modes of the Amirana device, and Amirana’s disclosure at paragraph 17 related to remote control by a patient or medical professional, fails to meet the newly amended limitations of claim 21 that require a non-zero magnitude of vibrations in the first mode, and automatic switching between modes.
However, at paragraph 17, lines 1-8, Amirana also makes mention of increasing and decreasing the stimulation of the vibrating capsule. As such, it can reasonably be understood that the second mode could coincide with an increase from a non-zero first mode vibration, as opposed to the first and second modes specifically being deactivation and activation. Thus, in the foregoing, this interpretation of Amirana will be adopted.
Second, claim 13, lines 1-6 of Amirana explicitly refer to sensor-based feedback control of the motor mechanism. It is noted that paragraph 17’s referral to remote control appears to be only one mechanism of control, given that claim 13 outlines the feedback control for altering the vibration output. Thus, this citation of Amirana will be relied on below to capture the newly amended language.
At page 16, Applicant additionally argues that the “paucity of disclosure in Amirana” has been previously discussed in Declaration evidence provided in each of 15/359,731 and 14/732,733, and concludes that Amirana is not an enabling disclosure for treatment of constipation or any other GI condition.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., treatment of constipation or other GI condition) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant finally argues that Reed fails to remedy the alleged deficiencies of Amirana. However, as the alleged deficiencies of Amirana have been addressed, and Amirana is understood to reasonably convey to the skilled artisan possession of the additionally claimed elements of newly amended claim 21, Applicant’s argument is moot.
Lastly, the claims will still incur rejection under the grounds of nonstatutory double patenting below, as these rejections will not be held in abeyance until timely filing of a Terminal Disclaimer against US Patent Nos. 9,078,799 and 9,532,923.
Specification
The disclosure is objected to because of the following informalities:
At page 7, line 6 of the specification, reference numeral “102” used to describe the motor should be replaced with “106”.
Appropriate correction is required.
Specification
The amendment filed 10-08-2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “The mechanical load applied onto the motor is concomitantly measured by the activation mechanism 112 along this cyclic motion”. The italicized portion of the specification constitutes new matter, as the originally filed specification failed to provide supporting evidence that the activation mechanism was responsible for or capable of measuring the mechanical load.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 27 and 42 are objected to because of the following informalities:
At claim 27, line 2, it is suggested that “vibrating agitation mechanism” be replaced with “agitation mechanism” for consistency with claim 21, line 4.
At claim 42, line 2, it is suggested that “the motor current” be replaced with “a motor current” as the term has not yet been introduced.
At claim 42, line 2, it is suggested that “the temperature profile” be replaced with “a temperature profile” as the term has not yet been introduced.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Such claim limitation(s) is/are:
The “agitation means” in claim 1, which is interpreted relative to claim 22 and the specification at page 6, lines 17-20 (see agitation means) to be an unbalanced weight attached to a motor shaft and functional equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
The “activation mechanism” in claims 23-24 and 41-42, which is being interpreted relative to the instant specification at page 4, lines 29-32, and page 6, lines 29-32 to include electrical circuitry capable of switching modes/activation of the GIC.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 23 and 41-42 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. The claim(s) contains subject matter 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.
Claim 23 recites “said activation mechanism adapted to measure mechanical load applied onto said motor”, and claim 42 recites “wherein said activation mechanism is adapted to measure the load applied to said motor by measuring the motor current and/or the temperature profile of the motor” each of which constitute new matter. First, claim 42 is a newly added claim, and support for the subject matter thereof is derived only from an amendment to the specification provided on 10-08-2025. Aside from the amendment filed after the first action on the merits, the originally filed specification fails to provide evidence that the activation mechanism is configured for or capable of measuring the motor current or the temperature profile, as the originally filed specification lacked any description of a structure capable of making the claimed and disclosed measurements. Further, it is only by the same amendment that the claim 23 includes written description support for measuring mechanical load of the motor via the activation mechanism. Similarly, aside from this amendment, the originally filed specification lacked any connection between the claimed measurement and the activation mechanism. Rather, in the previous claim set, Applicant had relied on a “measurement mechanism” for achieving the measurement, which was objected to as lacking antecedent basis in the original specification, and also resulted in rejections under each of 112(a) and 112(b) for lack of written description support of such a structure, as well as an indefiniteness rejection because the term “measuring mechanism” invoked 112(f) without any corresponding structure, material, or acts for performing the function of measuring.
Thus, Applicant has, in the current response, added new matter to the specification for supporting newly amended language in claims 23 and 42, without having had proper written description support for this subject matter in the originally filed specification. Thus, the subject matter of claims 23 and 42 lacks proper written description support, and it is once again unclear that Applicant had possession of the presently claimed invention of claims 23 and 42. The new matter in the claims should be eliminated in order to overcome this rejection.
Claims 41-42 are rejected by virtue of their dependence on claim 23.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 21-22 and 26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Amirana (US 2007/0238940) in view of Reed (US 2006/0276729).
Regarding claim 21, Amirana discloses a gastrointestinal capsule (GIC) (10) (paragraph 17, lines 1-8; Fig. 1) comprising:
a housing (3) (paragraph 18, lines 1-4; Fig. 1);
a battery (5) disposed in said housing (3) (paragraph 17, lines 12-15; Fig. 1);
agitation means (7) disposed within said housing (3) and powered by said battery (5) (paragraph 17, lines 5-15; Fig. 1), said agitation means (7) having a first mode of operation and a second mode of operation, and adapted such that, in said second mode of operation, said housing (3) exerts vibrations on an environment surrounding said capsule (10), a magnitude of said vibrations during said second mode exceeding a magnitude of vibrations effected during said first mode of operation (paragraph 17, lines 1-8, see each of “deactivated”, “activated”, “increased”, “decreased”, “initiate”, and “terminate” where the first mode is reasonably interpreted to be any one of a deactivated, decreased, or terminated function, and the second mode is reasonably interpreted to be any one of an activated, increased, or initiated mode which has the opposite function of the first mode selection),
wherein said magnitude of vibrations effected during said first mode of operation is greater than zero (paragraph 17, lines 1-8, see “increased”, and “decreased”, where when the second mode is coincident with an “increased” output, the first mode is reasonably interpreted to be the previous lower, non-zero operating mode), and wherein said agitation means (7) is adapted to be automatically switched between the first mode of operation and the second mode of operation (paragraph 17, lines 1-8; claim 13, lines 1-6, where the sensors embedded within the capsule can automatically “alter or terminate mechanical stimulation” via electrical signal).
While Amirana discloses that the agitation means (7) could be vibrating elements known in the art, Amirana fails to explicitly disclose agitation means which include an unbalanced weight attached to a motor shaft of an electric motor, as required in light of the claim interpretation under 35 USC 112(f) above.
However, Reed teaches agitation means (22) designed to produce vibration at the user’s stomach (paragraph 66, lines 1-5; paragraph 68, lines 1-8; Fig. 2), wherein the agitation means (22) include an unbalanced weight attached to a motor shaft of an electric motor to cause vibration (paragraph 64, lines 1-5; paragraph 73, lines 1-8).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made that the agitation means of Amirana could have been modified to include an unbalanced weight attached to a motor shaft of an electric motor, as taught by Reed, as a known motor structure for producing vibration.
Regarding claim 22, Amirana in view of Reed disclose the GIC of claim 21, as discussed above.
Modified Amirana further discloses wherein said agitation means (7 of Amirana modified to include an unbalanced weight attached to a motor shaft of an electric motor, as taught by Reed) include an unbalanced weight attached to a motor shaft of an electric motor powered by said battery (Amirana: 5) (Amirana: paragraph 17, lines 5-15 where the agitation means 7 is battery powered; Reed: paragraph 64, lines 1-5 for the DC motor, and eccentric weight connected by motor shaft).
Regarding claim 26, Amirana in view of Reed disclose the GIC of claim 22, as discussed above.
Modified Amirana further discloses wherein in said second mode of operation, said motor (see paragraph 64 of Reed for the agitation means including the DC motor as modified) is rotated at a predefined power which is significantly higher than a second predefined power in which the motor is rotated in said first mode of operation (Amirana: paragraph 17, lines 3-9 and 14-15, where the vibrating element, containing a rotatable DC motor as modified, is powered by a battery, and the second mode is interpreted to include an increase of mechanical action relative to the first mode, it is understood that more power would be required to enact increased mechanical action/stimulation).
Claims 23-24, 27, and 41-42 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Amirana (US 2007/0238940) in view of Reed (US 2006/0276729), as applied to claim 22 above and as best understood in light of the 112 rejections above, in further view of Teranishi (US 5,063,911).
Regarding claim 23, Amirana in view of Reed disclose the GIC of claim 22, as discussed above.
Modified Amirana fails to disclose an activation mechanism functionally associated with said motor, said activation mechanism adapted to measure mechanical load applied onto said motor during operation thereof.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes an activation mechanism functionally associated with said motor, said activation mechanism adapted to measure mechanical load applied onto said motor during operation thereof in order to maintain functionality of the motor when load is applied, where the activation mechanism is supplied to effect changes to the motor upon determination of an excess load (Col. 10, lines 5-42, where when an “excess load” is applied to the motor, the circuitry described, to include a resistor, a light receiving element, a light emission element, a variable resistor, phase control circuit, rectifier circuit etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the rectifier circuit, the phase control circuit, the resistor, light receiving element, the light emitting element, and the variable resistor are interpreted as making up the activation mechanism per Col. 10, lines 11-16, since the activation of the motor is changed via this mechanism).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Amirana to include the circuitry of Teranishi such as at least a rectifier circuit, a phase control circuit, a resistor, a light receiving element, a light emitting element, and a variable resistor interpreted as making up the activation mechanism, to provide an activation mechanism to the capsule capable of measuring and responding to mechanical load applied onto said motor of said vibrating agitation mechanism during operation thereof in order to maintain and change functionality of the motor when load is applied as needed.
Regarding claim 24, Amirana in view of Reed disclose the GIC of claim 22, as discussed above.
Modified Amirana fails to disclose an activation mechanism functionally associated with said motor, wherein said activation mechanism comprises a servo mechanism adapted to automatically switch said motor from said first mode of operation to said second mode of operation when a load applied to said motor exceeds a first predefined threshold.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes an activation mechanism functionally associated with said motor, wherein said activation mechanism comprises a servo mechanism adapted automatically switch said motor from said first operative mode to said second operative mode when a load applied to said motor exceeds a first predefined threshold in order to maintain and change functionality of the motor when load is applied (Col. 10, lines 5-58, where when an “excess load” is applied to the motor, the circuitry described, to include a resistor, a light receiving element, a light emission element, a variable resistor, phase control circuit, rectifier circuit etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the rectifier circuit, the phase control circuit, the resistor, light receiving element, the light emitting element, and the variable resistor are interpreted as making up the activation mechanism per Col. 10, lines 11-16, since the activation of the motor is changed via this mechanism, and further, per Col. 10, lines 45-51, the servo mechanism is interpreted as the switch S in connection with the rectifier circuit; see “excessive load” for the claimed threshold, and note that the change in voltage input and torque is interpreted as the mode switch; Fig. 13).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Amirana to include the circuitry of Teranishi such as at least at least a rectifier circuit, a phase control circuit, a resistor, a light receiving element, a light emitting element, and a variable resistor interpreted as making up the activation mechanism, and a switch connected to the circuitry and interpreted as the servo mechanism, to the capsule for measuring mechanical load applied onto said motor during operation thereof, and switch said motor from said first mode of operation to said second mode of operation when a load applied to said motor exceeds a first predefined threshold, in order to maintain and change functionality of the motor when excess load is applied to it.
Regarding claim 27, Amirana in view of Reed and Teranishi disclose the GIC of claim 24, as discussed above.
Modified Amirana fails to explicitly disclose said servo mechanism is further configured to automatically switch said agitation means from said second mode of operation to said first mode of operation when said load applied to said motor decreases below a second predefined threshold, said second predefined threshold being lower than said first predefined threshold.
However, given that Teranishi teaches the vibrating massage machine (abstract, lines 1-15) which includes a servo mechanism (switch S) functionally associated with said motor, said servo mechanism (switch S) adapted to automatically switch said agitation means from said first operative mode to said second operative mode when a load applied to said motor exceeds a first predefined threshold in order to maintain and change functionality of the motor when load is applied (Col. 10, lines 5-58, where when an “excess load” is applied to the motor, the circuitry describes, to include a resistor, a light receiving element, a light emission element, a variable resistor, etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the light receiving element in tandem with the light emission element is interpreted as the measuring mechanism per Col. 10, lines 8-12, see “excessive load” for the claimed threshold, and note that the change in voltage input and torque is interpreted as the mode switch), and given that this automatic switch in motor input voltage and torque occurs as a result of the cited resistance measuring mechanism in tandem with the additional circuit components, the skilled artisan would recognize that removal of the “excessive load” would have the opposite effect on Teranishi’s circuitry, such that upon removal of the excessive load, the light emission element and light receiving element no longer indicate an excess load, and thus the effect of the excessive load on the circuitry (described at Col. 10, lines 5-42) would reasonably be reversed.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made that the device of modified Amirana, by virtue of Teranishi’s disclosure, is structurally capable of utilizing said servo mechanism to automatically switch said agitation measn to said first operative mode when said load applied to said motor decreases below a second predefined threshold, said second predefined threshold being lower than said first predefined threshold (i.e. when the excessive load of Teranishi is removed) by reversing the operation of the necessary circuitry described by Teranishi when the load is reduced below the “excessive” level.
Regarding claim 41, Amirana in view of Reed and Teranishi disclose the GIC of claim 23, as discussed above.
Modified Amirana fails to disclose wherein said activation mechanism comprises a servo mechanism adapted to automatically switch said motor from said first mode of operation to said second mode of operation when a load applied to said motor exceeds a first predefined threshold.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes an activation mechanism functionally associated with said motor, wherein said activation mechanism comprises a servo mechanism adapted automatically switch said motor from said first operative mode to said second operative mode when a load applied to said motor exceeds a first predefined threshold in order to maintain and change functionality of the motor when load is applied (Col. 10, lines 5-58, where when an “excess load” is applied to the motor, the circuitry described, to include a resistor, a light receiving element, a light emission element, a variable resistor, phase control circuit, rectifier circuit etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the rectifier circuit, the phase control circuit, the resistor, light receiving element, the light emitting element, and the variable resistor are interpreted as making up the activation mechanism per Col. 10, lines 11-16, since the activation of the motor is changed via this mechanism, and further, per Col. 10, lines 45-51, the servo mechanism is interpreted as the switch S in connection with the rectifier circuit; see “excessive load” for the claimed threshold, and note that the change in voltage input and torque is interpreted as the mode switch; Fig. 13).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Amirana to include the circuitry of Teranishi such as at least at least a rectifier circuit, a phase control circuit, a resistor, a light receiving element, a light emitting element, and a variable resistor interpreted as making up the activation mechanism, and a switch connected to the circuitry and interpreted as the servo mechanism, to the capsule for measuring mechanical load applied onto said motor during operation thereof, and switch said motor from said first mode of operation to said second mode of operation when a load applied to said motor exceeds a first predefined threshold, in order to maintain and change functionality of the motor when excess load is applied to it.
Regarding claim 42, Amirana in view of Reed and Teranishi disclose the GIC of claim 23, as discussed above.
Presently modified Amirana fails to disclose wherein said activation means is adapted to measure the load applied to said motor by measuring the motor current and/or the temperature profile of the motor.
However, Teranishi further teaches wherein said activation means is adapted to measure the load applied to said motor by measuring the motor current and/or the temperature profile of the motor (Col. 10, lines 5-58, where the rectifier circuit, the phase control circuit, the resistor, light receiving element, the light emitting element, and the variable resistor are interpreted as making up the activation mechanism per Col. 10, lines 11-16, since the activation of the motor is changed via this mechanism; and per Col. 10, lines 30-43, in order to measure the excessive load, a large “armature current” occurs and is detected, resulting in irradiation of light from the light emitting element, further resulting in conductivity of the light receiving element when light is detected, to increase motor voltage and torque).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided the capability of the activation mechanism measuring the load applied to the motor by measuring/detecting the motor current, as taught by Teranishi, as a known method of determining excessive load applied to a motor, as the excess load results in increased armature current in the motor circuitry.
Claim 25 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Amirana (US 2007/0238940) in view of Reed (US 2006/0276729), as applied to claim 21 above, in further view of Teranishi (US 5,063,911).
Regarding claim 25, Amirana in view of Reed disclose the GIC of claim 22, as discussed above.
Modified Amirana fails to disclose wherein said first mode of operation is a sensing mode.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes a sensing mode achieved by a measuring mechanism functionally associated with said motor, said measuring mechanism adapted to measure mechanical load applied onto said motor during operation thereof in order to maintain functionality of the motor when load is applied (Col. 10, lines 5-42, where when an “excess load” is applied to the motor, the circuitry describes, to include a resistor, a light receiving element, a light emission element, a variable resistor, etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the light receiving element is interpreted as the measuring mechanism per Col. 10, lines 8-12).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Amirana to include the circuitry of Teranishi such as at least a resistor, a light receiving element, a light emission element, and a variable resistor, to provide a sensing mode carried out by a measuring mechanism and additional necessary components to the capsule for measuring mechanical load applied onto said motor during operation thereof in order to maintain and change functionality of the motor when load is applied.
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 21-22 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 9,078,799 to Shohat, hereinafter referred to as Shohat ‘799, in view of Amirana (US 2007/0238940).
Regarding claim 21, Shohat ‘799 discloses a gastrointestinal capsule (GIC) (claim 1, line 1), comprising:
a housing (claim 1, lines 3-5, where the housing is interpreted as the outer portion of the capsule, specifically given that the vibrating agitation mechanism is described as “housed” within the capsule, it is understood that the capsule is formed in such a way that the interior components are contained within the capsule, and in some way sheltered from an external environment);
a battery (claim 1, line 3);
an agitation means disposed within said capsule and powered by said battery (claim 1, lines 3-5, see “vibrating agitation mechanism”), said agitation means having a first mode of operation and a second mode of operation, and adapted such that, in said second mode of operation, said capsule exerts vibrations on an environment surrounding said capsule, a magnitude of said vibrations during said second mode exceeding a magnitude of vibrations effected during said first mode of operation (claim 1, lines 3-8 and claim 3, lines 1-8, where the sensing mode is the first mode, and the agitation mode is the second mode).
Shohat ‘799 fails to explicitly disclose wherein said magnitude of vibrations effected during said first mode of operation is greater than zero, and wherein said agitation means are adapted to be automatically switched between the first mode of operation and the second mode of operation.
However, Amirana teaches a gastrointestinal capsule (GIC) (10) (paragraph 17, lines 1-8; Fig. 1) wherein:
said magnitude of vibrations effected during said first mode of operation is greater than zero (paragraph 17, lines 1-8, see “increased”, and “decreased”, where when the second mode is coincident with an “increased” output, the first mode is reasonably interpreted to be the previous lower, non-zero operating mode), and wherein said agitation means (7) is adapted to be automatically switched between the first mode of operation and the second mode of operation, so that sensor data can advantageously be used to control the output of the agitation means as needed (paragraph 17, lines 1-8; claim 13, lines 1-6, where the sensors embedded within the capsule can automatically “alter or terminate mechanical stimulation” via electrical signal).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the capabilities of the agitation means such that said magnitude of vibrations effected during said first mode of operation is greater than zero, and wherein said agitation means are adapted to be automatically switched between the first mode of operation and the second mode of operation, as taught by Amirana, in order to use sensor data to control the output of the agitation means as needed.
Claims 22 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 9,078,799 to Shohat, hereinafter referred to as Shohat ‘799, in view of Amirana (US 2007/0238940), as applied to claim 22 above, in further view of Reed (US2006/0276729).
Regarding claim 22, Shohat ‘799 in view of Amirana disclose the GIC of claim 21, as discussed above.
Shohat ‘799 fails to disclose a vibrating agitation mechanism which includes an unbalanced weight attached to a motor shaft of an electric motor.
However, Reed teaches a vibrating agitation mechanism (22) designed to produce vibration at the user’s stomach (paragraph 66, lines 1-5; paragraph 68, lines 1-8; Fig. 2), wherein the vibrating agitation mechanism (22) includes an unbalanced weight attached to a motor shaft of an electric motor to cause vibration (paragraph 64, lines 1-5; paragraph 73, lines 1-8).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made that the vibrating mechanism of Shohat ‘799 could have been modified to include an unbalanced weight attached to a motor shaft of an electric motor, as taught by Reed, as a known motor structure for producing vibration.
Regarding claim 26, Shohat ‘799 in view of Amirana and Reed disclose the GIC of claim 22, as discussed above.
Modified Shohat ‘799 further discloses wherein in said second mode of operation, said motor is rotated at a predefined power which is significantly higher than a second predefined power in which the motor is rotated in said first mode of operation (Shohat ‘799: claim 3, lines 1-7, note that the modified vibrating agitation mechanism includes a DC motor of Reed that is powered to enact vibration).
Claims 23-25, 27, and 41-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 9,078,799 to Shohat, hereinafter referred to as Shohat ‘799, in view of Amirana (US 2007/0238940) and Reed (US 2006/0276729), as applied to claim 22 above, in further view of Teranishi (US 5,063,911).
Regarding claim 23, Shohat ‘799 in view of Amirana and Reed disclose the GIC of claim 22, as discussed above.
Modified Shohat ‘799 fails to disclose an activation mechanism functionally associated with said motor, said activation mechanism adapted to measure mechanical load applied onto said motor during operation thereof.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes an activation mechanism functionally associated with said motor, said activation mechanism adapted to measure mechanical load applied onto said motor during operation thereof in order to maintain functionality of the motor when load is applied, where the activation mechanism is supplied to effect changes to the motor upon determination of an excess load (Col. 10, lines 5-42, where when an “excess load” is applied to the motor, the circuitry described, to include a resistor, a light receiving element, a light emission element, a variable resistor, phase control circuit, rectifier circuit etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the rectifier circuit, the phase control circuit, the resistor, light receiving element, the light emitting element, and the variable resistor are interpreted as making up the activation mechanism per Col. 10, lines 11-16, since the activation of the motor is changed via this mechanism).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Shohat ‘799 to include the circuitry of Teranishi such as at least a rectifier circuit, a phase control circuit, a resistor, a light receiving element, a light emitting element, and a variable resistor interpreted as making up the activation mechanism, to provide an activation mechanism to the capsule capable of measuring and responding to mechanical load applied onto said motor of said vibrating agitation mechanism during operation thereof in order to maintain and change functionality of the motor when load is applied as needed.
Regarding claim 24, Shohat ‘799 in view of Amirana and Reed disclose the GIC of claim 22, as discussed above.
Modified Shohat ‘799 fails to disclose an activation mechanism functionally associated with said vmotor, wherein said activation mechanism comprises a servo mechanism adapted to automatically switch said vibrating agitation mechanism from said first operative mode to said second operative mode when a load applied to said motor exceeds a first predefined threshold.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes an activation mechanism functionally associated with said motor, wherein said activation mechanism comprises a servo mechanism adapted automatically switch said motor from said first operative mode to said second operative mode when a load applied to said motor exceeds a first predefined threshold in order to maintain and change functionality of the motor when load is applied (Col. 10, lines 5-58, where when an “excess load” is applied to the motor, the circuitry described, to include a resistor, a light receiving element, a light emission element, a variable resistor, phase control circuit, rectifier circuit etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the rectifier circuit, the phase control circuit, the resistor, light receiving element, the light emitting element, and the variable resistor are interpreted as making up the activation mechanism per Col. 10, lines 11-16, since the activation of the motor is changed via this mechanism, and further, per Col. 10, lines 45-51, the servo mechanism is interpreted as the switch S in connection with the rectifier circuit; see “excessive load” for the claimed threshold, and note that the change in voltage input and torque is interpreted as the mode switch; Fig. 13).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Shohat ‘799 to include the circuitry of Teranishi such as at least at least a rectifier circuit, a phase control circuit, a resistor, a light receiving element, a light emitting element, and a variable resistor interpreted as making up the activation mechanism, and a switch connected to the circuitry and interpreted as the servo mechanism, to the capsule for measuring mechanical load applied onto said motor during operation thereof, and switch said motor from said first mode of operation to said second mode of operation when a load applied to said motor exceeds a first predefined threshold, in order to maintain and change functionality of the motor when excess load is applied to it.
Regarding claim 25, Shohat ‘799 in view of Amirana and Reed disclose the GIC of claim 22, as discussed above.
Modified Shohat ‘799 fails to disclose wherein said first mode of operation is a sensing mode.
However, Teranishi teaches a vibrating massage machine (abstract, lines 1-15) which includes a sensing mode achieved by a measuring mechanism functionally associated with said motor, said measuring mechanism adapted to measure mechanical load applied onto said motor during operation thereof in order to maintain functionality of the motor when load is applied (Col. 10, lines 5-42, where when an “excess load” is applied to the motor, the circuitry describes, to include a resistor, a light receiving element, a light emission element, a variable resistor, etc., the excess/larger load is sensed and the circuitry carries out operations to increase input voltage to the motor to increase a torque to overcome the excess load, where the light receiving element is interpreted as the measuring mechanism per Col. 10, lines 8-12).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the control circuitry of modified Shohat ‘799 to include the circuitry of Teranishi such