DETAILED ACTION
This Office Action is in response to Applicant’s Amendment filed on 09/10/2026.
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 Objection
Following claims are objected to because of the following informalities:
Claims 18, 26 includes acronyms/abbreviations. At least first occurrence of each acronym/abbreviation should be spelled out in full.
Claim 18 “A method of relieving pain in a patient, wherein the method comprises applying electromagnetic stimulation to the patient” needs to be corrected to -- A method of relieving pain in a patient, wherein the method comprises: applying electromagnetic stimulation to the patient -- since claim 18 lines 1-2 preamble applies to all the limitations in the claim body in claim 18 lines 3-7.
Claim 26 “A method of treating pain in a patient which comprises applying transcutaneous magnetic stimulation proximate to an area of the pain wherein the magnetic stimulation is a heterogenous random mixture of magnetic pulses over a frequency range of 30 to 150 Hz and a pulse interval of 33.3 msec to 6.7 msec wherein each frequency and pulse interval have an equal opportunity to be selected in each pulse train, and wherein the patient's pain is caused by shingles” needs to corrected to --A method of treating pain in a patient which comprises: applying transcutaneous magnetic stimulation proximate to an area of the pain, wherein the magnetic stimulation is a heterogenous random mixture of magnetic pulses over a frequency range of 30 to 150 Hz and a pulse interval of 33.3 msec to 6.7 msec, wherein each frequency and pulse interval have an equal opportunity to be selected in each pulse train, and wherein the patient's pain is caused by shingles--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 15 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Phillips et al. (Pub. No.: US 20210146151 A1, hereinafter referred to as “Phillips”).
As per independent Claim 15, Phillips discloses a method of magnetic neuromodulation in a patient (Phillips in at least abstract, [0004], [0006-0010], [0019-0020], [0028], [0037], [0074-0078], [0119], [0147], [0274], [0298-0300], [0303-0308], [0321], [0571], [0631] for example discloses relevant subject-matter. More specifically, Phillips in at least [0006-0007], [0013-0015], [0119], [0274] for example discloses method of magnetic neuromodulation in a patient. See at least Phillips [0006] “methods of treating a subject, comprising determining the intrinsic frequency (f) of the subject within the specified EEG band by: obtaining EEG data of the subject's brain… shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject.”;) which comprises:
a) acquiring an electroencephalogram (EEG), electromyography (EMG) or a spinal cord electric pulse frequency measurement of the patient (Here the “or” encompassing limitation is being interpreted as requiring only one of the elements in the enumerated list. Phillips in at least [0006], [0274] for example discloses acquiring an electroencephalogram (EEG), electromyography (EMG) or a spinal cord electric pulse frequency measurement of the patient. See at least Phillips [0006] “obtaining EEG data of the subject's brain”),
b) comparing the EEG, EMG or a spinal cord electric pulse frequency measurement of (a) with a normative database to determine if the patient needs neuromodulation (Phillips in at least [0006] for example discloses comparing the EEG, EMG or a spinal cord electric pulse frequency measurement of (a) with a normative database/healthy population database to determine if the patient needs neuromodulation. See at least Phillips [0006] “ if the intrinsic frequency from step (a) is higher than the average intrinsic frequency of the healthy population database, shifting down the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency lower than the intrinsic frequency of the subject; and if the intrinsic frequency from step (a) is lower than the average intrinsic frequency of the healthy population database, shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject.”), and
c)if the patient needs neuromodulation, administering magnetic stimulation to the patient, wherein the magnetic stimulation comprises variable pulses based on the EEG, EMG or a spinal cord electric pulse frequency acquired in a) (Here this limitation is being interpreted under MPEP 2111.04(II) which states the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. Consequently, a broad yet reasonable interpretation under MPEP 2111.04(II) does not require this step as the patient may not need neuromodulation based on results from (b). Assuming arguendo, neuromodulation is needed, Phillips in at least [0006] for example discloses administering magnetic stimulation to the patient, wherein the magnetic stimulation comprises variable pulses based on the EEG, EMG or a spinal cord electric pulse frequency acquired in a). See at least Phillips [0006] “performing a Fast Fourier Transformation, X(f), on the EEG data; and achieving a fitted Gaussian curve, A(f), of the EEG data… estimating a first mean frequency, a first standard of deviation, and first gain for the first optimizing loop, shifting the gain, G, up or down slightly from the first gain, determining a new gain resulting in a better fit than that of the first gain, shifting the standard of deviation, d, up or down slightly from the first standard of deviation, determining a new standard of deviation resulting in a better fit than that of the first standard of deviation, shifting the mean frequency, s, up or down slightly from the first mean frequency, determining a new mean frequency resulting in a better fit than that of the first mean frequency, and repeating steps 2), 3), and 4), in which the first gain, the first standard of deviation, and the first mean frequency are replaced with a second gain, a second standard of deviation, and a second mean frequency, respectively, until the three parameters are optimized, comparing the intrinsic frequency from step (a) to an average intrinsic frequency of a healthy population database; if the intrinsic frequency from step (a) is higher than the average intrinsic frequency of the healthy population database, shifting down the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency lower than the intrinsic frequency of the subject; and if the intrinsic frequency from step (a) is lower than the average intrinsic frequency of the healthy population database, shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject”).
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 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 18, 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (Pub. No.: US 20190308029 A1, hereinafter referred to as “Ho”) in view of Phillips.
As per independent Claim 18, Ho discloses a method of relieving pain in a patient (Ho in at least abstract, fig. 1-2, [0002-00007], [0011-0019] for example discloses relevant subject-matter. More specifically, Ho in at least abstract, [0002], [0006] for example discloses method of relieving pain in a patient. See at least [0002] “methods of modulating brain activity with repetitive transcranial magnetic stimulation (rTMS) wherein the rTMS is administered with variable pulse intervals for a time sufficient to modulate said brain activity wherein an improvement in a physiological condition or a clinical condition is achieved”; [0006] “Physiological conditions and medical conditions that can be improved by modulating the brain activity according to the present invention are any conditions where abnormal brain activity contributes to a specific condition. Improvements are seen when the amplitude of the desired or targeted brain wave bands acquire an increase in amplitude or relative power density. Conditions that are treated include but are not limited to … pain… fibromyalgia…Rheumatoid arthritis”), wherein the method comprises
applying electromagnetic stimulation to the patient, wherein the magnetic stimulation comprises variable electromagnetic pulses (Ho in at least fig. 1, abstract, [0002], [0005], [0011-0012], [0014] for example discloses applying variable repetitive transcranial magnetic stimulation (rTMS) to the patient. See at least Ho [0005] “brain activity of a mammal is modulated by subjecting the mammal to repetitive transcranial magnetic stimulation (rTMS) with variable pulse intervals determined by individual EEG characteristics for a time sufficient to modulate said brain activity wherein an improvement in a physiological condition or a clinical condition is achieved”);
wherein the magnetic pulses are in a pattern of white noise (This claim is being interpreted in light of instant application specification as-filed page 5-8. Ho in at least [0005], [0011-0012], [0015] discloses wherein the pattern of noise is white noise, pink noise, violet noise, blue noise, brown noise or red noise. See at least Ho [0005] “brain activity to be modulated can be any one or more desired frequency bandwidth(s) and includes the brain frequency bandwidth of 3-7 Hz, the brain frequency bandwidth of 8-13 Hz, the brain frequency bandwidth of 15-20 Hz, and the brain frequency bandwidth of 35-45 Hz and any sub-bandwidth group within those ranges. If a frequency bandwidth between 8-13 Hz is targeted to treat a patient, the actual bandwidth used to treat that patient can be narrowed within that bandwidth range depending on the variation of patient's EEG oscillation intervals, such as, for example, 105 ms-110 ms, ie a frequency bandwidth between 9.1-9.5 Hz. Success in the modulation is achieved when the targeted frequency bandwidth has an increase in amplitude or relative power density in addition to improvement in symptoms associated with the clinical and physiological conditions being treated.”);
wherein the white noise is a heterogenous mixture of magnetic pulses over a frequency range of 30 to 150 Hz and a pulse interval of 33.3 msec to 6.7 msec (This claim is being interpreted in light of instant application specification as-filed page 5-8. Ho in at least [0005] for example discloses the white noise is a heterogenous mixture of magnetic pulses over a selected frequency range of 35-45 Hz which corresponds with a pulse interval of 28.6 msec to 22.2 msec respectively since frequency and pulse intervals are reciprocals of each other and thus, Ho reads on this limitation as now explicitly, positively and specifically recited by the Applicants. See at least Ho [0005] “brain activity of a mammal is modulated by subjecting the mammal to repetitive transcranial magnetic stimulation (rTMS) with variable pulse intervals determined by individual EEG characteristics for a time sufficient to modulate said brain activity wherein an improvement in a physiological condition or a clinical condition is achieved… wavelet transform algorithm identifies a unique EEG signal pattern for the mammal/patient. The EEG signal pattern is then used to generate a sequence of TTL (transistor-transistor logic) or other triggering pulses to program the rTMS apparatus to provide variable pulse intervals and variable intensities…brain activity to be modulated can be any one or more desired frequency bandwidth(s) and includes …the brain frequency bandwidth of 35-45 Hz and any sub-bandwidth group within those ranges…Success in the modulation is achieved when the targeted frequency bandwidth has an increase in amplitude or relative power density in addition to improvement in symptoms associated with the clinical and physiological conditions being treated.”);
Ho does not explicitly disclose or require wherein the pain is caused by shingles feature.
However Phillips, in an analogous method of relieving pain in a patient via electromagnetic stimulation field of endeavor, discloses method of relieving pain in a patient (Phillips in at least abstract, [0004], [0006-0010], [0019-0020], [0028], [0037], [0074-0078], [0119], [0147], [0274], [0298-0300], [0303-0308], [0321], [0571], [0631] for example discloses relevant subject-matter. More specifically, Phillips in at least [0006-0007], [0013-0015], [0119], [0274] for example discloses method of magnetic neuromodulation in a patient. See at least Phillips [0006] “methods of treating a subject, comprising determining the intrinsic frequency (f) of the subject within the specified EEG band by: obtaining EEG data of the subject's brain… shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject.”;) wherein the method comprises applying electromagnetic stimulation to the patient, wherein the magnetic stimulation comprises variable electromagnetic pulses(Phillips in at least [0006] for example discloses applying electromagnetic stimulation to the patient, wherein the magnetic stimulation comprises variable electromagnetic pulses. See at least Phillips [0006] “performing a Fast Fourier Transformation, X(f), on the EEG data; and achieving a fitted Gaussian curve, A(f), of the EEG data… estimating a first mean frequency, a first standard of deviation, and first gain for the first optimizing loop, shifting the gain, G, up or down slightly from the first gain, determining a new gain resulting in a better fit than that of the first gain, shifting the standard of deviation, d, up or down slightly from the first standard of deviation, determining a new standard of deviation resulting in a better fit than that of the first standard of deviation, shifting the mean frequency, s, up or down slightly from the first mean frequency, determining a new mean frequency resulting in a better fit than that of the first mean frequency, and repeating steps 2), 3), and 4), in which the first gain, the first standard of deviation, and the first mean frequency are replaced with a second gain, a second standard of deviation, and a second mean frequency, respectively, until the three parameters are optimized, comparing the intrinsic frequency from step (a) to an average intrinsic frequency of a healthy population database; if the intrinsic frequency from step (a) is higher than the average intrinsic frequency of the healthy population database, shifting down the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency lower than the intrinsic frequency of the subject; and if the intrinsic frequency from step (a) is lower than the average intrinsic frequency of the healthy population database, shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject”),
wherein the pain is caused by shingles (Phillips in at least [0304], [0330], [0341], [0411], [0418] for example discloses application to pain caused by shingles. See at least Phillips [0304] “pain may also be treated with the devices and methods provided herein. This may include, for nonlimiting example … postherpetic neuralgia (related to shingles)”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of treating pain in a patient as taught by Ho, by extending application to treat pain caused by Shingles, as disclosed by Phillips. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, for the advantage of extending treatment benefits to treat other diseases such as shingles that manifest pain symptoms (Phillips, [0015], [0304], [0330], [0341], [0411], [0418]).
As per independent Claim 26, Ho discloses a method of treating pain in a patient (Ho in at least abstract, fig. 1-2, [0002-00007], [0011-0019] for example discloses relevant subject-matter. More specifically, Ho in at least abstract, [0002], [0006] for example discloses method of relieving pain in a patient. See at least [0002] “methods of modulating brain activity with repetitive transcranial magnetic stimulation (rTMS) wherein the rTMS is administered with variable pulse intervals for a time sufficient to modulate said brain activity wherein an improvement in a physiological condition or a clinical condition is achieved”; [0006] “Physiological conditions and medical conditions that can be improved by modulating the brain activity according to the present invention are any conditions where abnormal brain activity contributes to a specific condition. Improvements are seen when the amplitude of the desired or targeted brain wave bands acquire an increase in amplitude or relative power density. Conditions that are treated include but are not limited to … pain… fibromyalgia…Rheumatoid arthritis”) which comprises
applying transcutaneous magnetic stimulation proximate to an area of the pain (Here, the term “transcutaneous magnetic stimulation” is being broadly yet reasonably interpreted as encompassing magnetic stimulation applied across the depth of the skin which would also encompass rTMS. Ho in at least abstract, [0002], [0005-0006], [0011-0012], [0014] for example discloses comprises applying magnetic stimulation proximate to the area of the pain which is transcutaneous i.e. across the depth of the skin. See at least Ho [0012] “Magnetic coils are placed in close proximity or against a patient's head preferably adjacent to the area of the head where the desired brain frequency wavelengths predominate in the patient's brain… …magnetic coils are positioned adjacent to brain regions that the patient's EEG has identified as having poor coherence, low energy and/or regions that are non-synchronous”)
wherein the magnetic stimulation is a heterogenous random mixture of magnetic pulses over a frequency range of 30 to 150 Hz and a pulse interval of 33.3 msec to 6.7 msec wherein each frequency and pulse interval have an equal opportunity to be selected in each pulse train (This claim is being interpreted in light of instant application specification as-filed page 5-8. Ho in at least [0005], [0007], [0011-0012], [0014] for example discloses the magnetic stimulation is a heterogenous random mixture i.e. dependent on patient’s unique EEG pattern of magnetic pulses over a frequency range of 35-45 Hz which corresponds with a pulse interval of 28.6 msec to 22.2 msec respectively since frequency and pulse intervals are reciprocals of each other and thus, Ho reads on the recited frequencies as now explicitly, positively and specifically recited by the Applicants, wherein each frequency and pulse interval have an equal opportunity to be selected in each pulse train as it is dependent on patient’s own heterogenous EEG pattern. See at least Ho [0005] “brain activity of a mammal is modulated by subjecting the mammal to repetitive transcranial magnetic stimulation (rTMS) with variable pulse intervals determined by individual EEG characteristics for a time sufficient to modulate said brain activity wherein an improvement in a physiological condition or a clinical condition is achieved… wavelet transform algorithm identifies a unique EEG signal pattern for the mammal/patient. The EEG signal pattern is then used to generate a sequence of TTL (transistor-transistor logic) or other triggering pulses to program the rTMS apparatus to provide variable pulse intervals and variable intensities…brain activity to be modulated can be any one or more desired frequency bandwidth(s) and includes …the brain frequency bandwidth of 35-45 Hz and any sub-bandwidth group within those ranges…Success in the modulation is achieved when the targeted frequency bandwidth has an increase in amplitude or relative power density in addition to improvement in symptoms associated with the clinical and physiological conditions being treated.”),
Ho does not explicitly disclose or require wherein the pain is caused by shingles feature.
However Phillips, in an analogous method of treating pain in a patient via magnetic stimulation field of endeavor, discloses method of relieving pain in a patient (Phillips in at least abstract, [0004], [0006-0010], [0019-0020], [0028], [0037], [0074-0078], [0119], [0147], [0274], [0298-0300], [0303-0308], [0321], [0571], [0631] for example discloses relevant subject-matter. More specifically, Phillips in at least [0006-0007], [0013-0015], [0119], [0274] for example discloses method of magnetic neuromodulation in a patient. See at least Phillips [0006] “methods of treating a subject, comprising determining the intrinsic frequency (f) of the subject within the specified EEG band by: obtaining EEG data of the subject's brain… shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject.”;) wherein the method comprises applying electromagnetic stimulation to the patient, wherein the magnetic stimulation comprises variable electromagnetic pulses(Phillips in at least [0006] for example discloses applying electromagnetic stimulation to the patient, wherein the magnetic stimulation comprises variable electromagnetic pulses. See at least Phillips [0006] “performing a Fast Fourier Transformation, X(f), on the EEG data; and achieving a fitted Gaussian curve, A(f), of the EEG data… estimating a first mean frequency, a first standard of deviation, and first gain for the first optimizing loop, shifting the gain, G, up or down slightly from the first gain, determining a new gain resulting in a better fit than that of the first gain, shifting the standard of deviation, d, up or down slightly from the first standard of deviation, determining a new standard of deviation resulting in a better fit than that of the first standard of deviation, shifting the mean frequency, s, up or down slightly from the first mean frequency, determining a new mean frequency resulting in a better fit than that of the first mean frequency, and repeating steps 2), 3), and 4), in which the first gain, the first standard of deviation, and the first mean frequency are replaced with a second gain, a second standard of deviation, and a second mean frequency, respectively, until the three parameters are optimized, comparing the intrinsic frequency from step (a) to an average intrinsic frequency of a healthy population database; if the intrinsic frequency from step (a) is higher than the average intrinsic frequency of the healthy population database, shifting down the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency lower than the intrinsic frequency of the subject; and if the intrinsic frequency from step (a) is lower than the average intrinsic frequency of the healthy population database, shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject”),
wherein the pain is caused by shingles (Phillips in at least [0304], [0330], [0341], [0411], [0418] for example discloses application to pain caused by shingles. See at least Phillips [0304] “pain may also be treated with the devices and methods provided herein. This may include, for nonlimiting example … postherpetic neuralgia (related to shingles)”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of treating pain in a patient as taught by Ho, by extending application to treat pain caused by Shingles, as disclosed by Phillips. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, for the advantage of extending treatment benefits to treat other diseases such as shingles that manifest pain symptoms (Phillips, [0015], [0304], [0330], [0341], [0411], [0418]).
As per dependent Claim 27, the combination of Ho and Phillips as a whole further discloses method wherein the magnetic stimulation has a white noise pattern (This claim is being interpreted in light of instant application specification as-filed page 5-8. Ho in at least [0005], [0011-0012], [0015] discloses wherein the pattern of noise is white noise, pink noise, violet noise, blue noise, brown noise or red noise. See at least Ho [0005] “brain activity to be modulated can be any one or more desired frequency bandwidth(s) and includes the brain frequency bandwidth of 3-7 Hz, the brain frequency bandwidth of 8-13 Hz, the brain frequency bandwidth of 15-20 Hz, and the brain frequency bandwidth of 35-45 Hz and any sub-bandwidth group within those ranges. If a frequency bandwidth between 8-13 Hz is targeted to treat a patient, the actual bandwidth used to treat that patient can be narrowed within that bandwidth range depending on the variation of patient's EEG oscillation intervals, such as, for example, 105 ms-110 ms, ie a frequency bandwidth between 9.1-9.5 Hz. Success in the modulation is achieved when the targeted frequency bandwidth has an increase in amplitude or relative power density in addition to improvement in symptoms associated with the clinical and physiological conditions being treated.” Also see Phillips [0147] “devices comprise a white noise generator”).
Response to Amendment
According to the Amendment, filed 09/10/2026, the status of the claims is as follows
Claims 15, 18, 26-27 are currently amended;
Claims 1-14, 16, 17, 19-25, 28-43 are cancelled.
The Specification/Drawings has been amended in view of the Amendment, filed 09/10/2026. No new matter was introduced.
By the current amendment, as a result, claims 15, 18, 26-27 are now pending in this application and are being examined on the merits as being drawn to elected invention/species.
Response to Arguments
Issues Raised and Arguments/Remarks to Rejections/Objections Not Based On Prior Art presented on Pages 5-6 of Applicant’s Amendment dated 09/10/2026
[A]: The Examiner agrees with the Applicant, and in light of the amendments/arguments, withdraws the following non prior art related objections/rejections raised in Office Action dated 03/10/2026: [1] The objection to Specification/Drawings is withdrawn in view of the amendment and arguments, filed 09/10/2026; [2] The objection to all claims except 18, 26 is withdrawn in view of the amendment and arguments, filed 09/07/2018; [3] The 35 U.S.C. 112(b), rejections to claims as raised in Office Action dated are withdrawn in view of the amendment, filed 09/10/2026; [4] The 35 U.S.C. 112(d), rejections to claims as raised in Office Action dated are withdrawn in view of the amendment, filed 09/10/2026.
[B]: The Examiner disagrees with the Applicant, and in light of the amendments/arguments, maintains the following non prior art related objections/rejections raised in Office Action dated 03/10/2026: [1] The objection to claims 18 and 26 as raised in Office Action dated 03/10/2026 11 [b-c] is maintained in view of the amendment and arguments, filed 09/10/2026 as the arguments were not found persuasive and the amendments did not cure the noted issue. Please see detailed objections enumerated above.
Issues Raised and Arguments/Remarks to Rejections Based On Prior Art presented on Pages 6-9 of Applicant’s Amendment dated 09/10/2026 where Applicant’s’ remarks inter alia that:
35 U.S.C. § 102 Rejection of the Amended Claims 15, 18, 26-27[A] Claims 1-7, 15, and 29-33 have been rejected under 35 U.S.C. §102(a)(2) as being anticipated by Phillips et al. (US 2021/0146151 Al). The Applicants respectfully traverse this rejection to the extent that it might be applied to the claims now presented for examination. With regard to claim 15, the Phillips et al. reference does not disclose or suggest each and every element of the claims as amended herein. Specifically, the Phillips reference does not teach a) acquiring an electroencephalogram (EEG), electromyography (EMG) or a spinal cord electric pulse frequency measurement of the patient, b) comparing the EEG, EMG or a spinal cord electric pulse frequency measurement of (a) with a normative database to determine if the patient needs neuromodulation, and c)if the patient needs neuromodulation, administering magnetic stimulation to the patient, wherein the magnetic stimulation comprises variable pulses based on the EEG, EMG or a spinal cord electric pulse frequency acquired in a). Accordingly, the Applicants respectfully request reconsideration and withdrawal of the rejection under 35 U.S.C. §102(a)(2).
[B] Claims 8-14, 16-21, 26 and 27 have been rejected under 35 U.S.C. §102(a)(1) as being anticipated by Ho (US 2019/0308029 Al). The Applicants respectfully traverse this rejection to the extent that it might be applied to the claims now presented for examination.With regard to claims 18, 26, and 27, the Ho reference does not disclose each and every element of the claims as amended herein. Specifically, the Ho reference does not provide any teaching, suggestion or expectation of success for utilizing the claimed method to treat shingles. Accordingly, the Applicants respectfully request reconsideration and withdrawal of the rejection under 35 U.S.C. §102(a)(1).
[C] In view of the foregoing remarks and the amendments above, the Applicants believe that the currently pending claims are in condition for allowance and respectfully request such action.
Applicants’ arguments [A], [C] with respect to amended claim 15 have been carefully and comprehensively considered but were not found persuasive for the following reasons. First, Phillips discloses step a) acquiring an electroencephalogram (EEG), electromyography (EMG) or a spinal cord electric pulse frequency measurement of the patient. Here the “or” encompassing limitation is being interpreted as requiring only one of the elements in the enumerated list. Phillips in at least [0006], [0274] for example discloses acquiring an electroencephalogram (EEG), electromyography (EMG) or a spinal cord electric pulse frequency measurement of the patient. See at least Phillips [0006] “obtaining EEG data of the subject's brain”. Second, Phillips also discloses step b) comparing the EEG, EMG or a spinal cord electric pulse frequency measurement of (a) with a normative database to determine if the patient needs neuromodulation as evidenced in Phillips in at least [0006] which discloses comparing the EEG, EMG or a spinal cord electric pulse frequency measurement of (a) with a normative database/healthy population database to determine if the patient needs neuromodulation. See at least Phillips [0006] “ if the intrinsic frequency from step (a) is higher than the average intrinsic frequency of the healthy population database, shifting down the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency lower than the intrinsic frequency of the subject; and if the intrinsic frequency from step (a) is lower than the average intrinsic frequency of the healthy population database, shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject.”, and Lastly, Phillips also discloses step c)if the patient needs neuromodulation, administering magnetic stimulation to the patient, wherein the magnetic stimulation comprises variable pulses based on the EEG, EMG or a spinal cord electric pulse frequency acquired in a). Here this limitation is being interpreted under MPEP 2111.04(II) which states the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. Consequently, a broad yet reasonable interpretation under MPEP 2111.04(II) does not require this step as the patient may not need neuromodulation based on results from (b). Assuming arguendo, neuromodulation is needed, Phillips in at least [0006] for example discloses administering magnetic stimulation to the patient, wherein the magnetic stimulation comprises variable pulses based on the EEG, EMG or a spinal cord electric pulse frequency acquired in a). See at least Phillips [0006] “performing a Fast Fourier Transformation, X(f), on the EEG data; and achieving a fitted Gaussian curve, A(f), of the EEG data… estimating a first mean frequency, a first standard of deviation, and first gain for the first optimizing loop, shifting the gain, G, up or down slightly from the first gain, determining a new gain resulting in a better fit than that of the first gain, shifting the standard of deviation, d, up or down slightly from the first standard of deviation, determining a new standard of deviation resulting in a better fit than that of the first standard of deviation, shifting the mean frequency, s, up or down slightly from the first mean frequency, determining a new mean frequency resulting in a better fit than that of the first mean frequency, and repeating steps 2), 3), and 4), in which the first gain, the first standard of deviation, and the first mean frequency are replaced with a second gain, a second standard of deviation, and a second mean frequency, respectively, until the three parameters are optimized, comparing the intrinsic frequency from step (a) to an average intrinsic frequency of a healthy population database; if the intrinsic frequency from step (a) is higher than the average intrinsic frequency of the healthy population database, shifting down the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency lower than the intrinsic frequency of the subject; and if the intrinsic frequency from step (a) is lower than the average intrinsic frequency of the healthy population database, shifting up the intrinsic frequency of the subject by applying a magnetic field close to a head of the subject, wherein said magnetic field has a frequency higher than the intrinsic frequency of the subject”. Thus, Phillips discloses all claim 15 limitations as now explicitly, positively and specifically recited by the Applicants. Please also cross-reference detailed claim 15 interpretations, claim limitation mapping to prior art disclosed features and steps and detailed explanations above.
Applicants’ arguments [B], [C] above with respect to amended independent claim 18 and 26 have been carefully and comprehensively considered and were found persuasive with respect to claims 18 and claim 26. However, Therefore, the rejection with respect to amended independent claim 18 and 26 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the combination of Ho and Phillips as a whole. Applicants’ amendments necessitated the new grounds of rejection under a different interpretation of the previously applied reference. Please also cross-reference detailed claim 18 and 26 interpretations, claim limitation mapping to prior art disclosed features and steps and detailed explanations above.
With respect to Applicant’s arguments [C] above, since claim 15 as now explicitly, positively and specifically recited by the Applicants is still rejectable under 35 U.S.C. §102(a)(2) over Phillips, claim 15 is not allowable at this time. With respect to Applicant’s arguments [C] above, since claim 18, 26-27 as now explicitly, positively and specifically recited by the Applicants are still rejectable under 35 U.S.C 103 as a whole over the combination of applied art, Ho and Phillips, as a whole, claims 18, 26-27 are not allowable at this time. Examiner suggest amending the claims to explicitly, positively and specifically include such features which the Applicant consider are critical, patentably novel, non-obvious and distinguish over prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and/or the claims.
Prior art US 20170296837 A1 to Jin Yi discloses methods and devices that use EEG feedback based repetitive magnetic field stimulation to enhance treating of pain similar to that disclosed. Jin also discloses stimulation combined with rTMS directed at the cortex with a pulse frequency equal to a harmonic of a biological metric, such as heart rate, that falls in an EEG band of the subject, such as the alpha band, the two treatments together allowing for a significant relaxation and control of the person's muscle, thereby reducing the symptoms of spasticity such a pain.
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). Applicants are 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 extension fee 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 date of this final action.
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/SUNITA REDDY/Primary Examiner, Art Unit 3791
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