DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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, 3-20, and 23 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.
In claim 1, line 21, “to deliver electrical pulses” is vague as the pulses have been previously recited in line 11 and it is unclear if the two are the same element or different elements. If the pulses in line 21 are the same as the pulses in line 11, then “to deliver the electrical pulses” should be used in line 21. Similarly, in the last paragraph, line 1, “to generate electrical pulses” is vague. In line 24, “via a set of lead wires” is vague and inferentially including the lead wires. It is suggested to first state the system has the lead wires before they are used to connect the electrodes.
Similarly, claims 16 and 23 have these problems.
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, 3-20 and 23 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 subject matter which was not described in the original disclosure is the use of the first and second electrodes connected via a set of lead wires to the electronics layer, in combination with a conductive layer (i.e. snap, conductive contact pint, conductive zone, etc.) disposed below the nonconductive bottom layer and removably secured to the nonconductive bottom layer by snap connection, where the first and second electrodes and conductive layer/zone deliver the generated electrical pulses, in combination with the other elements or steps in the claim(s).
The claims appear to be mixing different embodiments not disclosed in the original disclosure as usable together, and/or not disclosed as operating together with the method steps, or processor or button functions. The use of a conductive layer (i.e. snap, conductive contact pint, conductive zone, etc.) disposed below the nonconductive bottom layer and removably secured to the nonconductive bottom layer by snap connection for delivering the generated electrical pulses was disclosed in figure 2A and paragraphs 76-85, but that embodiment did not contain or disclose operating together with the use of two electrodes connected by lead wires (e.g. figure 4, etc.) and including electrode pads to also deliver the generated electrical pulses after the button was pressed.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection necessitated by amendment. Note that the argument that the claims are supported by paragraphs 6-188 and figures 1-18 (i.e. the entire disclosure) is not persuasive and does not specifically point out where the claim limitations are taught.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George Robert Evanisko whose telephone number is (571)272-4945. The examiner can normally be reached M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached on 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George R Evanisko/Primary Examiner, Art Unit 3792 4/22/26
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