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 Arguments
Regarding claim 6-7, the examiner maintains that these claims are properly withdrawn as directed towards an unelected species. Applicant has not petitioned the matter, therefore the examiner maintains this position.
Regarding the priority claims, applicant separately argues that two applications, specifically 17/236950 filed 4/21/2021 and 16/227289 (equivalent to US 10,478,635) filed 12/20/2018, disclose all of the claimed elements and therefore the effective filing date of the current application should be one of these two dates. The examiner disagrees and will address each application individually below.
Regarding the 17/236950 application, applicant argues that the ‘950 app discloses the claimed control board. For clarity, the claims require “a first control panel coupled to the first housing, the first control panel comprising a first plurality of buttons, wherein the first light therapy device is configured to receive a first user input via the first control panel”. While applicant cites a single sentence of the ‘950 app that recites “In some embodiments, a user may input instructions into the first light device 12a, and the signal will be carried through by the second power cord 20b to the second light device 12b”, and then argues “whatever panel this user input is on would be a control panel”. Even if the examiner agrees with this argument that a control panel is inherently/implicitly disclosed, which the examiner does not, it is abundantly clear that applicant has seemingly ignored the rest of the claim limitations related to the control panel, specifically that the control panel is coupled to the first housing and includes a plurality of buttons. There is no indication in the ‘950 app that there 1. Exists a control panel 2. That this control panel is coupled to the first housing and 3. That this control panel includes a plurality of buttons. Therefore, the claimed control panel is not disclosed by the ‘950 app. It is emphasized that just because the claimed control panel is known or common and is possibly or even probably included in the invention disclosed in the ‘950 application does not mean the written description requirement is met. Specifically, the written description requirements are the same as the anticipatory/102 requirements, as each and every claimed element must be clearly taught by the disclosure of the priority document, i.e. a POSITA reading the priority app must “at once envisage” all of the claimed limitations. The examiner emphasizes that a POSITA would not “at once envisage” the claimed control panel by reading the single sentence in the ‘950 that generally/broadly allows for user input instructions into the light therapy device. Therefore, the ‘950 does not provide sufficient disclosure to be considered a property priority document.
Furthermore, regarding the ‘950 app, applicant argues that a very brief/general disclosure related to cords that send signals from one light device to another such that the light devices are paired provide sufficient disclosure for BOTH a lead and follow mode, where the lead mode requires “wherein when the first light therapy device operates in the follow mode and a second light therapy device operates in the lead mode, the first light therapy device performs operations as instructed by the second light therapy device” and the follow mode requires “and wherein when the first light therapy device operates in the lead mode and the second light therapy device operates in the follow mode, the second light therapy device performs operations as instructed by the first light therapy device”. Applicant argues “the device sending the signal is in a lead mode and the device receiving the signal is in the follow mode. There is simply no other way to interpret this fact”. The examiner disagrees, as there is no indication of both a lead and follow mode for BOTH the first and second light therapy devices, as recited in the claims. Simply put, pairing two devices is not the same as what is current claimed. Therefore, for this additional reason, the examiner contends that the ‘950 app does not provide sufficient detail/explanation related to the lead and follow modes, as explicitly recited in the claims.
Regarding the 16/227289 application, which applicant refers to as US Patent 10,478,635, applicant argues that the apertures are inherent/implicit. Specifically, applicant cites a portion of patented claim 1, which is NOT part of the original specification/disclosure, that recites “the first plurality of lights and located within the first housing”. It is apparently applicant’s position that this edited limitation from patented claim 1 teaches a plurality of light sources located within the first housing. And that because the lights are within a housing, “it would be impossible for the light therapy system to broadcast light unless it had at least one aperture in the housing that allowed the light to pass from the internal light sources to the outside environment”. This is simply not true for multiple reasons. First, as pointed out above, applicant has mischaracterized what is actually recited in the limitation in claim 1 of the patent to try to imply that the claim requires lights located within the housing. When the full limitation is read, it is abundantly clear that the limitation in question refers to the communication module being located within the housing. For context, the full limitation reads “a first communication module communicatively coupled to the first plurality of lights and located within the first housing”. There is absolutely no way a POSITA, or anyone for that matter, reading this limitation would think the “located within the housing” refers to the light sources and not the communication module. Second, this claim is NOT part of the originally filed disclosure, so even if it does somehow refer to the lights being located within the housing, which it clearly doesn’t, this is NOT supported by the originally filed specification. Additionally, the examiner’s position is also fully supported by the entirety of the disclosure, as the originally filed specification only says that the lights “may be mechanically coupled” to the housing, there is simply no indication/details/explanation that the lights are within the housing, not even in the portion cited by applicant of patented claim 1. Third, even if somehow this cited limitation in patented claim 1 provides support for a light source within the housing, which it does not, it is emphasized that an internal light source does not necessary require an aperture, i.e. hole, as a transparent material or window could also transmit light, which is not considered an aperture. Lastly, applicant further argues that the circles shown in the figures are apertures. The examiner disagrees, as these are clearly labeled light sources, and therefore depict the light sources, not apertures. It is also emphasized that while the ‘289 discloses a plurality of light sources (16a and 16b), they are never once disclosed as LEDs. Therefore, the ‘289 additionally fails to teach the claimed plurality of LEDs. Again, just because the claimed LEDs and aperture(s) are known or common and are possibly or even probably included in the invention disclosed in the ‘289 application does not mean the written description requirement is met.
Further regarding the ‘289 application, applicant argues that the sentence “The processes and algorithms may be implemented partially or wholly in application-specific circuitry” and the digital control panel, as shown in Fig. 6B, inherently requires a printed circuit board, as claimed. Specifically, applicant argues “In 2018, printed circuit boards were ubiquitous to all electronic devices and one of skill in the art would read ‘application-specific circuitry’ to mean a ‘printed circuit board.’ The figures show a display and button interface coupled to the housing. Digital displays can only be accomplished through printed circuit boards”. The examiner disagrees. For clarity, the limitation related to a printed circuit board in current claim 1 requires “a first plurality of LEDs electrically coupled to the first printed circuit board assembly”. Therefore, even if the device, as a whole, requires a printed circuit board for the “application-specific circuitry” or the digital display, which the examiner does not contend, as applicant has provided no evidence to support this conclusory opinion, it in no way shape or form requires LEDs electrically coupled to the first printed circuit board assembly, as claimed. It is also emphasized that the ‘289 does not even disclose LEDs as the light sources. Therefore, a POSITA when reading applicant’s originally filed disclosure would not readily understand that applicant possessed the claimed LEDs electrically coupled to a circuit board, as claimed, as the light sources could be any number of light sources that do not necessarily require a printed circuit board. Again, just because a printed circuit board and LEDs are “ubiquitous” does not necessarily mean that the ‘289 possessed/included these elements, as claimed. Therefore, the examiner maintains that the ‘289 does not provide the sufficient disclosure necessary to meet the written description requirements and properly claim priority.
Therefore, the effective filing date of the current application remains 10/1/2021, i.e. the filing date of the current application (17/492174). This means that US 10,478,365 to Nelson which was printed 11/19/2019 qualifies as prior art under 102(a)(1) with no applicable exceptions, as this was printed more than a year before the effective filing date.
Regarding the double patenting rejections, applicant’s arguments have already been previously addressed in the NF mailed 3/20/2025, applicant should review the examiner’s position as it is maintained herein. Applicant’s arguments again focus on the priority of the Patents used in the DP rejections, but as previously explained, whether or not the patents disclose all of the claimed subject matter is immaterial to a double patenting rejection. Even if the examiner agreed that these patents disclose all of the claimed limitations and therefore the current application gets priority back to the patents, which the examiner disagrees with (as clearly explained above), the current claims would still be properly rejected under DP. It is noted that a DP rejection is based solely on the claims of the patents, not the disclosure, therefore, the examiner maintains that the examiner’s analysis of what is missing, what the secondary reference teaches and why it would be obvious to combine these features is proper. Specifically, KSR clearly establishes example rationales, including “combining prior art elements according to known methods to yield predictable results”, as made clear in the previous rejection. If it’s applicant’s position that the claimed pcb, apertures and independent mode are inherent/implicit in the claims of the patented references, then the DP rejection is still completely valid, it would just be an anticipatory rejection, instead of an obviousness rejection requiring a secondary reference. Therefore, the examiner maintains all of the DP rejections.
Regarding the 112a written description rejection, applicant arguments in no way address this rejection which is a completely separate/different rejection from the 112b indefiniteness rejection. It is noted that applicant’s section related to 112 rejections are related solely to the 112b rejections, and never once point out any errors in the 112a written description rejection. Therefore, the written description rejection is maintained.
Regarding the 112b indefiniteness rejections, the examiner maintains that because these wherein statements are not specifically tied to any of the claimed structural elements, and instead are tied generally to the device as a whole, in the current context it’s unclear what is structurally required in order to meet the claim language. For example, is any/all light therapy devices having the previously recited elements, i.e. housing, printed circuit board, LEDs, aperture and control panel, inherently capable of operating in the claimed modes or is specific structure, e.g. a particularly configured controller/processor, required? Because this question remains unanswered, the examiner maintains that in the context of the current claims and application, the functional language recited in the wherein clauses that are not tied to any specific structural elements fails to provide a clear-cut indication of the subject matter embraced by the claim and is thus indefinite.
Regarding the 103 of Nelson and Dye, applicant simply repeats their argument that Nelson does not qualify as prior art because the effective filing date of the current application is 12/20/2018. As discussed in detail above, the examiner disagrees, as the Nelson reference fails to teach the claimed apertures and LEDs electrically mounted to a printed circuit board. Applicant’s arguments in no way address any issues with the rejection itself, only that Nelson isn’t prior art. The examiner maintains that Nelson properly qualifies as prior art under 102(a)(1) with no possible/applicable exceptions. Therefore, the 103 rejection is maintained.
Regarding the 102 rejection to Browne, applicant fails to provide a single argument that addresses the 102/anticipatory rejection of claim 1. While applicant’s arguments related to the DP rejection mention the Browne reference, based on the fact that Browne is used as a secondary reference in the DP rejections, there are no arguments related to the anticipatory/102 rejection of claim 1 using Browne. Simply put, applicant’s arguments related to Browne being used as a secondary reference in the DP rejections are in no way pertinent/relevant to the completely separate 102 rejection using Browne. Therefore, this 102 rejection is maintained.
Regarding the 103 rejection to Browne, applicant argues:
As noted above, the Examiner rejected claims 2-5, 8-18, 24, and 26-28 as being obvious under 35 U.S.C. § 103 over Browne. Claims 2-5, 8-18, 24, and 26-28 all depend from independent claim 1, which, for the reasons expressed in the preceding section, independent 1 is allowable over all alleged prior art cited by the Examiner. Accordingly, Applicant respectfully submits that it is not necessary at this stage to address the Browne reference as applied to claims 2-5, 8-18, 24, and 26-28. Nor is it necessary to address whether or not the Examiner properly “identified a number of rationales to support a conclusion of obviousness which are consistent with the proper 'functional approach' to the determination of obviousness as laid down in Graham [v. John Deere Co., 383 U.S. 1, 148 U.S.P.Q. (BNA) 459 (1966)]," as required by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415 (U.S. 2007), 82 U.S.P.Q.2d 1385, 1395-97 (2007) and MPEP § 2143. As such, Applicant respectfully requests that the Examiner's rejection of claims 2-5, 8-18, 24, and 26-28 be withdrawn.”
However, as pointed out above, applicant never actually addresses the 102/anticipatory rejection of Browne, therefore there are no “reasons expressed in the preceding section” to which the examiner can even respond. Therefore, this 103 rejection to Browne is maintained.
Applicant is reminded that 37 CFR 1.111(b) states:
In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
The examiner has fully considered applicant’s arguments, but for the above reasons finds them unpersuasive, therefore all of the previous rejections have been maintained.
Priority
For clarity, the effective filing date of the current application is 10/1/2021, i.e. the filing date of the current app (17/492174). Specifically, the first time the entire invention (as claimed in claim 1) was fully disclosed/supported is when the current application was filed. See discussion above, in the response to arguments section, related to specific priority applications and why/how they fail to sufficiently disclose the entirety of the claim language. Therefore, the first time the claimed features were ever disclosed/described together, as required by the current claim language, such that a POSITA would recognize that applicant had possession of a single embodiment/device with all of these features was in the current application, i.e. the first time the claimed invention is “at once envisaged” is in the present application. From MPEP 2163 “The Federal Circuit has pointed out that, under United States law, a description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112”. It is noted that due to the current effective filing date of 10/1/21, applicant’s own work (e.g. US 10,478,635) is available as prior art, as it was published more than a year before the effective filing date.
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 1-5, 8-18 and 24-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,478,635 in view of US 2015/0051671 to Browne et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent, specifically claims 5-6 of the patent which teaches a lead, follow and neutral/independent mode, discloses all of the claimed features of the present application, except for the currently claimed printed circuit board and the aperture. Browne discloses a similar light therapy device including a printed circuit board (16) and aperture (26); Fig. 4 (Pars 47-49). It would have been obvious to one ordinary skill in the art to modify the patent with the pcb and aperture of Browne, as these are merely known/common features of similar light therapy devices.
Claims 1-5, 8-18 and 24-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,639,495 in view of US 2015/0051671 to Browne et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent, specifically claim 1 of the patent which teaches a lead and follow mode as well as claims 7-8 which teach a plurality of input buttons, discloses all of the claimed features of the present application, except for the currently claimed independent mode, the printed circuit board and the aperture. Browne discloses a similar light therapy device including a printed circuit board (16) and aperture (26); Fig. 4 (Pars 47-49). Browne further discloses independent mode, i.e. a device that controls itself (at least Pars 0013-14). It would have been obvious to one ordinary skill in the art to modify the patent with the pcb, aperture and independent control of Browne, as these are merely known/common features of similar light therapy devices.
Claims 1-5, 8-18 and 24-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,253,719 in view of US 2015/0051671 to Browne et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent, specifically claims 1-4 which discloses a follow and lead mode, as well as a control panel with a plurality of input buttons, discloses all of the claimed features of the present application, except for the currently claimed independent mode, the printed circuit board and the aperture. Browne discloses a similar light therapy device including a printed circuit board (16) and aperture (26); Fig. 4 (Pars 47-49). Browne further discloses independent mode, i.e. a device that controls itself (at least Pars 0013-14). It would have been obvious to one ordinary skill in the art to modify the patent with the pcb, aperture and independent control of Browne, as these are merely known/common features of similar light therapy devices.
Claims 1-5, 8-18 and 24-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,524,172 in view of US 2015/0051671 to Browne et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent, specifically claims 1 and 5-9 which discloses a follow, lead and neutral/independent mode, as well as a control panel and a plurality of buttons, teaches all of the claimed features of the present application, except for the currently claimed printed circuit board and the aperture. Browne discloses a similar light therapy device including a printed circuit board (16) and aperture (26); Fig. 4 (Pars 47-49). It would have been obvious to one ordinary skill in the art to modify the patent with the pcb and aperture of Browne, as these are merely known/common features of similar light therapy devices.
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 1-5, 8-18 and 24-28 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.
The claimed functional limitations are not sufficiently supported by applicant’s disclosure. As made clear by MPEP 2114 and applicant’s own arguments, “functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function.” While applicant has disclosed a very specific configuration/manner in which the present device operates/performs the claimed functions, this is not considered a representative number of species that represents the entire genus, i.e. any/all ways that the claimed function can be performed, as is required by MPEP 2163.
An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.; MPEP 2163.03V
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 8-18 and 24-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
[Claim 1] This claim recites functional limitations, i.e. wherein clauses, attributed to the light therapy device (as a whole), e.g. “wherein the first light therapy device is arranged and configured to operate in an independent mode, a follow mode, and a lead mode” (similar limitations can be found throughout the rest of claim 1 and claims 4, 6, 8, 11, 17, etc.; this is not an exhaustive list, applicant should check each individual claim). These functional limitations (which are attributed to the device, as a whole, and fail to tie the function to any particular structural element of the device) are indefinite, as it is unclear what is structurally required to meet these claim limitations. For example, it’s unclear if the previously recited structural elements inherently/implicitly perform the function or if additional (unclaimed) elements are necessarily required. MPEP 2173.05 states “the use of functional language in a claim may fail ‘to provide a clear-cut indication of the scope of the subject matter embraced by the claim’ and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear”. See further explanation, above, in the response to arguments section.
For examination purposes, the examiner is interpreting these functional limitations broadly, as consistent with MPEP 2114 which states “functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function.”. Therefore, a device that is “programmable”, i.e. capable of being programmed to achieve the claimed function would read on the broad functional limitations, as claimed. To advance prosecution, the examiner recommends that applicant specifically tie these functions to a processor/computer readable medium, in such a manner that it’s clear that these are computer implemented functional limitations; see MPEP 2114 for more guidance.
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 1-5 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0051671 to Browne et al.
[Claim 1] Browne discloses a light therapy system (Figs. 1-11) comprising:
a first light therapy device (applicator 10 or 100), comprising:
a first housing (at least plates 22 and 24 form the housing; Par 0048);
a first printed circuit board assembly coupled to the first housing (PCB 12 and/or 16; Pars 0047-52);
a first plurality of LEDs (light emitters 60 or 28; Par 0004) electrically coupled to the first printed circuit board assembly (at least Pars 0047-49), wherein the first plurality of LEDs is arranged and configured to emit at least one of red light and near-infrared light through at least one aperture of the first housing (“When powered by suitable electric power, the one or more solid-state light emitters may emit light in the visible and/or infrared spectrum. For example, the light emitters may emit light in the range of 390 nm to 999 nm (for example, in the range of 635 nm to 680 nm, or in the range of 780 nm to 980 nm, or in some other range)” Par 0004); and
a first control panel (light control device 230, Fig. 11) coupled to the first housing (via cables 20), the first control panel comprising a first plurality of buttons, wherein the first light therapy device is configured to receive a first user input via the first control panel (“one or more input units (e.g., buttons, dials, keypad, keyboard, or touchscreen, etc.)” Par 0073)
Regarding the “wherein” clauses, the device of Browne is capable, e.g. programmable, in the claimed manner. Stated differently, Browne discloses all of the necessary structure to be capable of functioning in the claimed manner; see MPEP 2114. See 112b rejections and the response to arguments section, above.
[Claim 2] The examiner contends that three buttons can be “at once envisaged (MPEP 2131.02) when “one or more inputs, e.g. buttons” are disclosed by Browne, especially considering that at least 3 buttons are explicitly shown in Fig. 11. However, if applicant disagrees, then an alternative 103 rejection is provided below.
[Claims 3-5] As made clear by applicant’s own remarks, a button is not tied to any particular processor/software/computer/programming, and therefore is “any button that is capable of functioning in the claimed manner”. The examiner takes the position that any/all buttons are capable of activating/deactivating, controlling a light mode and/or controlling a waveform of a light source. Therefore, Browne discloses the necessary structure (3 input buttons) that are capable of providing the claimed function, e.g. if they are programmed to do so.
[Claim 25] Browne discloses a control panel for at least one of generating, transmitting, recording, processing, storing and reporting electronic signals and/or other information useful for modulation of the light emitter that includes an output display screen. A display screen inherently includes at least one light source, and is therefore interpreted as an indication light. The claimed indication is considered functional language/intended use; any/all indicator lights (e.g. display screens) can indicate any desired parameters, including the parameters claimed. See MPEP 2114.
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 2-5, 8-18, 24 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Browne.
[Claim 2] As discussed above, the examiner contends that “one or more buttons” anticipates 3 buttons, especially when considering Fig. 11. However, if applicant disagrees, the number of buttons is an obvious design choice and it would be obvious to try any number of buttons depending on the desired functionality of the buttons. Additionally or alternatively, this is considered routine optimization of a result effective variable and a POSITA would choose the desired number of buttons based on the design, engineering, functionality, etc. of the device.
[Claims 3-5] See explanation for these claims in the 102 rejection above.
[Claim 8] Browne discloses a second light therapy device (10) with a second housing, a second PCB, a second plurality of LEDs (“one or more applicators”; Par 0073; Fig. 11), but fails to explicitly disclose a second control panel. This is considered an obvious duplication of parts or separation of parts; MPEP 2144.04. Specifically, if it desired for any reason to have separate controllers (one for each light applicator 10) it would be obvious to provide such a duplicate/separate control panel.
[Claims 9-18 and 24] See explanation for claims 2-5, above. Specifically, the number of buttons (4 or 5) is either explicitly taught by Browne or obvious, similar to claim 2. As for the functionality of the buttons, i.e. what happens when they are pressed or held for a certain amount of time (whether alone or together), the examiner contends that any/all buttons are capable of providing these functions, as the claimed functions are in no way tied to a processor, controller or software programming. See MPEP 2114. As shown in Fig. 11, the first and second therapy are communicatively and operatively coupled via at least one cable (20)
[Claim 26] See explanation for claim 25, above.
[Claim 27] As discussed above, in relation to claim 8, an additional controller is considered an obvious duplication of parts. It would be obvious to duplicate the control device (230) as a remote computing device (in addition to the first and second control panels, discussed above), as an obvious duplication of parts to provide the same functionality of the other control panels; see MPEP 2144.04.
[Claim 28] The examiner contends that a “mobile application” has no specific configuration, and the software taught by Browne is considered a mobile application (Par 0018). However, if applicant disagrees, then the examiner takes official notice that “mobile applications” are well-known and commonly used types of controllers for external/remote controllers, e.g. so that a user can control the light on their phone or tablet.
Claims 1-5, 8-18 and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over US 10,478,635 to Nelson in view of US 2016/0175609 to Dye et al.
Nelson clearly anticipates the claim language recited in claims 1-2, 8, 13-16, 25-28, except for failing to explicitly teach apertures and a printed circuit board. See Abstract, Figs. 1-9 and Columns 1-14 of Nelson, especially Figs. 6A-B . However, in the same field of endeavor, Dye discloses a similar light therapy device (Abstract; Fig 2-5) that includes a plurality of LEDs (16) coupled to a printed circuit board (Par 0066) and apertures through which the light is emitted (Par 0063 and claim 15). Therefore, it would have been obvious to one of ordinary skill to modify the device of Nelson to include a printed circuit board and apertures, as taught by Dye, as this is merely combining prior art elements according to known methods to yield predictable results. Specifically, mounting LEDs to a printed circuit board and providing apertures through which the light can be emitted are known structural elements, as taught by Dye, used in similar light therapy devices to effectively provide light therapy to a user.
Regarding claims 3-5, 9-12 and 17-18, as discussed above, the specific number of buttons is either explicitly taught by “a plurality of input buttons” or obvious. Similarly, as discussed above, the functionality of the device when a button is pressed or held for a length of time (either singularly or simultaneously with another button) is functional language (which is not tied to a processor/software programming). Therefore, Nelson discloses all of the necessary structure to be inherently capable of providing the claimed functions; see MPEP 2114.
Conclusion
THIS ACTION IS MADE FINAL. 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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/LYNSEY C Eiseman/ Primary Examiner, Art Unit 3796