DETAILED ACTION
This Office Action is responsive to the Amendment filed 1 May 2026. Claim 25 is
now pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Simon et al. (U.S. Pub. No. 2015/0165226) in view of Becker (U.S. Pub. No. 2010/0298624) and further in view of Ghiron et al. (U.S. Pub. No. 2008/0224808). Regarding claim 25, Simon et al. (hereinafter Simon) teaches a device for treating a living tissue with magnetic fields ([0027]-[0030]), the device comprising:
a coil applicator having a face (Figs. 3A-3D and 5) and a stimulating coil 35 (Figs. 3A-4F) housed therein ([0095]-[0097], [0103]-[0104]), a reflector plate (interface of the housing 30 which is positioned adjacent patient’s skin [0098] and Fig. 6) adjacent to the stimulating coil (Figs. 3A-3D and [0045]-[0049], [0098]), and
a generator 38 configured to drive the stimulating coil (Fig. 5 and [0103],
wherein the device is configured to provide a magnetic field in a range of 0.1T to 3T [0030] at a distance of 20mm or less from the face of the coil applicator [0027]; and
wherein the device is sized to fit within an orbit of a human eye (Figs. 5-7 demonstrate the entire device is of dimensions which could fit in the orbit of a human eye) and is configured to induce a circular electric field ([0075] - circumscribing of regions).
However, Simon fails to disclose explicitly that the reflector plate is ferromagnetic. Becker discloses a device for generating electromagnetic fields to be used in healing, as likewise disclosed by Simon, wherein a reflector plate is adjacent the coil and likewise will be placed adjacent a user, as suggested by Simon, wherein the reflector plate is ferromagnetic ([(0116] and [0117] and Fig. 10A-C of Becker). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct a reflector plate held between a stimulating coil and a user as taught by Simon, of a ferromagnetic material as suggested by Becker, as Simon recognizes the need to focus a magnetic field on a given treatment surface ([0003] and [0078]) and Becker discloses that a ferromagnetic plate wraps the magnetic field around to a given treatment surface, thereby enhancing the field gradient in the tissues being treated [0116].
However, the combination of Simon and Becker fails to disclose that the device further comprises a heat sink. Ghiron et al. (hereinafter Ghiron) teaches a magnetic stimulator for positioning adjacent the tissue of a patient 52 (Figs. 5-6 and [0047]), wherein the device further comprises a heat sink in the event that heating should take place during operation over longer periods of time ([0040]-[0042] and [0004]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a heat skin as suggested by Ghiron, into the device for applying magnetic stimulation as taught by Simon and Becker as Simon recognizes that reduction of heat in the device may be appropriate for longer time periods of use [0020] and Ghiron teaches that overheating may occur ([0004]-[0005]) and incorporating a heat exchange/cooling mechanism in the device would prevent overheating when the device is used for longer periods of time ([0040]-[0042] and [0004]).
Response to Arguments
Applicant’s arguments filed 1 May 2026 with respect to the rejection of claim 25 under 35 U.S.C. 103 citing Simon (‘226) in view of Becker (‘624) and further in view of Ghiron (‘808) have been fully considered and are not persuasive. Applicant contends that “Simon does not disclose, teach, or suggest a device that is dimensioned, configured, or optimized for placement within the orbital cavity. That the Simon device can possibly fit, doesn't mean that it is sized to fit within an orbit of a human eye.” However, this argument is not persuasive. 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., “optimized for placement within the orbital cavity”) 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). The claim recites “wherein the device is sized to fit within an orbit of a human eye” which does not impose any limitation with respect to the orbital cavity, bony structure, or anatomy of the human eye. Applicant further contends that “Simon does not disclose control or design of the electric field” to produce such a circular electric field and additionally, “Simon does not disclose or suggest configuring the device to induce a circular electric field, but merely describes general stimulation regions…The claimed circular electric field is a specific electromagnetic field distribution…” However, this argument is not persuasive. Paragraph [0075] discloses the shaping of the electric field, which is being interpreted here as the device of Simon being configured to induce the particular shape; the shape of which Simon further describes as circumscribing of regions and configuring the direction of the electric field within those regions. And by definition, “circumscribing” is encircling of a region and therefore Simon is believed to read on this limitation. If—as Applicant argues—the claimed circular electric field is “a specific electromagnetic field distribution,” then any limitations necessary to further define the “specific electromagnetic field distribution” of a “circular electric field” (aside from its shape) may help distinguish over the teaching in Simon.
With respect to Becker, Applicant contends that “Becker is directed to a different class of devices and does not address the constraints present in the claimed invention, particularly orbital sizing and compact high-field operation. Becker's ferromagnetic reflector is used in a system that is not constrained by orbital dimensions or high-field, short-distance ophthalmic use. It is non-analogous art and the principle of operation is unrelated to the present invention. Moreover, incorporating Becker's structure into Simon would require substantial redesign, not a simple substitution that can be performed by one of skill in the art”. However, this argument is not persuasive.
In response to applicant's argument that Becker is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Becker is also directed to generating electromagnetic fields to be used in healing (see Abstract) (which would also not constitute “a different class of devices” as argued) and further, that the device/system is compact/portable in order to be used in a patient’s home or vehicle [0021], which would also be compliant with the requirements of effecting short-distance use.
With respect to Ghiron, Applicant contends that “Ghiron's heat sink requires volume and thermal dissipation considerations incompatible with a compact orbital device producing high magnetic fields…” and as such, “[I]ncorporating a heat sink as taught by Ghiron into Simon's device--already required to be sized to fit within the orbit-- would be contrary to the compact dimensional constraints of the claimed invention… [T]hus, Ghiron teaches away from a combination with Simon and Becker” and “[T]he office action provides no explanation as to how such a heat dissipation structure could be implemented without defeating the orbital size limitation of the claimed invention.” However, this argument is not persuasive. First, the claim does not recite or require “a compact orbital device” as argued initially. Further, Ghiron’s teachings would not be considered to be “incompatible” with an orbital device as Ghiron discloses that different nerves may be stimulated, such as cranial nerves [0021]. And since the optic nerve is considered to be a cranial nerve, Ghiron is found to contemplate a device sized treat a human eye. In view of the foregoing, the rejection of claim 25 under 35 U.S.C. 103 citing Simon (‘226) in view of Becker (‘624) and further in view of Ghiron (‘808) has been maintained.
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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/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
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