DETAILED ACTION
This action is a response to the filing on 2/13/2026. Examiner acknowledges the amendments made to claims 1, 5, 7, 8, 13, 15, and 20 and the cancellation of claim 12.
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
Applicant’s amendments have overcome the previously applied art for claims 1 and 7.
Applicant’s arguments, see pages 7-9, filed 2/13/2026, with respect to claim 8 have been fully considered and are persuasive. The prior art rejection of claim 8 has been withdrawn.
Applicant’s amendments do not overcome the double patenting rejection as the claim 8 is still disclosed by claims 1 and 4 of U.S. Patent No.11,547,848.
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.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No.11,547,848. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 4 of U.S. Patent No.11,547,848 discloses a species that anticipates the current genus claims.
Mapping of the claims are as follows:
Claim 8 is disclosed by claims 1 and 4 of U.S. Patent No.11,547,848.
The present application and U.S. Patent No.11,547,848 both recite the same steps. The main difference between the present claims and U.S. Patent No.11,547,848 is that claim 1 of U.S. Patent No.11,547,848 further defines the components of the PEMF applicator system that is used to implement the method, thus making it a species of the present genus claim. Note that including any of the dependent claims, with the exception of claim 9, would obviate the rejection as the limitations of claim 9 are disclosed by claim 1 of US 11,547,848.
Allowable Subject Matter
Claims 1-7 are allowed.
Claims 9-11 and 13-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claims 1 and 7, the prior art of record does not teach or suggest a device, as claimed by Applicant, with the combination of components that includes
a feedback sensor configured to measure field strength of the high-power PEMF signal emitted by the coil circuit, wherein the controller is further configured to generate the high-power pulsed signal based, at least in part, on the measured field strength,
Claims 2-6 are dependent on allowed matter from claim 1 and are allowed.
In regards to claim 8, the prior art of record does not teach or suggest a method with the combination of steps, as claimed by Applicant, that includes
receiving a feedback signal in a feedback sensor associated with the high-power PEMF signal emitted by the applicator, wherein the feedback signal is based on a detected field strength of the emitted high-power PEMF signal; and
adjusting the emitted high-power PEMF signal based on the therapy field feedback signal.
Claims 9-11 and 13-20 are dependent on allowed matter from claim 8 and would be allowable once the double patenting rejections are overcome.
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 JOSHUA DARYL DEANON LANNU whose telephone number is (571)270-1986. The examiner can normally be reached Monday-Thursday 8 AM - 5 PM, Friday 8 AM -12 PM.
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/JOSHUA DARYL D LANNU/Examiner, Art Unit 3791
/CARRIE R DORNA/Primary Examiner, Art Unit 3791