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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention lacks patentable utility and the disclosed invention is inoperative and therefore lacks utility.
With respect to the patentable utility, the device claimed in claims 1-8 does not have a credible asserted utility. As per claim 1, the device is claimed to treat a paralysis caused by a stroke. Said device is claimed as a “bioenergy generator” that creates “biophotons” that are used to treat said paralysis. However, as per the presented claims and specification, it is unclear how an application of a bioenergy will treat a paralysis. While assertions to a treatment of paralysis is made in the specification, as per paragraphs [0098] and [0138], a specific function performed by the biophotons is not claimed. A location on a patient body to which the biophotons are applied to and the function of a biophoton when in contact with a patient body is not present. As such, it is unclear how a biophoton would treat a paralysis caused by a stroke.
From here, the invention is viewed as being inoperative, thereby lacking a utility. While assertions to a treatment are present, there is no such teaching as to how a treatment occurs and what function biophotons perform to treat a paralysis. Additionally, as per published information from the applicant (see https://www.teslabiohealing.com/pages/disclaimer) it is stated that products featuring Tesla BioHealing Technology “are not intended to diagnose, treat, mitigate, or cure any diseases,” and that the advertised products are “not a substitute for medical advice, diagnosis, or treatment.” With the device recited in claims 1-8 is using the same underlying technology and teachings of the published documentation cited above, and as claim 1 states that “the biophotons treat the stroke paralysis in the patient” (as per claim 1 lines 3-4), the device of claims 1-8 is inoperative as teachings suggest that the device cannot treat a medical condition as alleged by the claims. Additionally, as per the claims, the device is viewed as being inoperative as, while a generation of biophotons is present, a step of converting a natural stone, piece of natural sand, and pieces of metal or steel to a biophoton is not present in the claims. As a means to derive a biophoton is not present in the claims, the device is also viewed as inoperable from a biophoton standpoint as well as with respect to a treatment of a device.
Claims 3-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claim(s) recite(s) a generation of a bioenergy from "a natural stone, pieces of natural sand, and pieces of a metal of pieces of a steel" as claimed in claim 3. This judicial exception is not integrated into a practical application because the claim recites no elements or processes between the inclusion of a natural stone, sand, and. As such, the biophotons as they are presented in the claims are a product of nature. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to the function of a generator and the presence of a "natural stone, pieces of a natural sand, and pieces of a metal or pieces of steel," a conversion of a natural element to a biophoton is not present. As such, the claimed function performed by the natural stone, natural sand, metal and/or steel is considered to be a natural phenomenon, with the biophoton considered to be a product of nature as no process is present to claim that a biophoton is not a naturally occurring particle.
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 1-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. As per independent claims 1-8, it is unclear how the bioenergy generator is operated by a user, how the bioenergy generator will generate a biophoton with natural stone, natural sand, and pieces of metal or steel, and how the bioenergy is applied to a user to specifically treat stroke paralysis.
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 1-8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: a means for the bioenergy generator to create a bioenergy and a means for a bioenergy energy to emit an energy toward a patient for a treatment..
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. The term “cubic meters” in claim 1 is used by the claim to mean a distance as per claim 1, where the bioenergy generator is placed within 2 cubic meters of a patient while the accepted meaning is a unit of volume. The term is indefinite because the specification does not clearly redefine the term. It is unclear how a bioenergy generator can be within 2 cubic meters of a patient when a cubic meter is used to describe a volume (where 1 cubic meter is 1000 liters).
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 (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 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(s) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whale (US Pub No.: 2003/0181949).
Regarding claim 1, Whale (US Pub No.: 2003/0181949) discloses a method of treating a stroke paralysis in a patient (treating of atrophy in [0015] with a relation to stroke in [0082]), the method comprising: placing a bioenergy generator within 2 cubic meters from the patient (for a stroke treatment in [0156], the device is placed 1-5 cm away from the spleen), wherein the bioenergy generator produces biophotons and wherein the biophotons treat the stroke paralysis in the patient (generation of energy applied to the body to treat stroke paralysis in [0156]).
Regarding claim 2, Whale (US Pub No.: 2003/0181949) discloses the method of claim 1, wherein the treating comprises restoring mobility (treatment of paralysis and muscle coordination in [0156]).
Regarding claim 3, Whale (US Pub No.: 2003/0181949) discloses the method of claim 1, wherein the bioenergy generator comprises pieces of a natural stone, pieces of a natural sand, and pieces of a metal or pieces of a steel (copper coil for use in a bioenergy generator in [0053], natural stones in [0018]-[0027]).
Regarding claim 4, Whale (US Pub No.: 2003/0181949) discloses the method of claim 3, wherein the pieces of the natural stone comprise a natural stone selected from the group consisting of: a diamond, an amethyst, a tourmaline, a jadestone, and obsidian (natural stones detailed in [0018]-[0027]).
Regarding claim 5, Whale (US Pub No.: 2003/0181949) discloses the method of claim 3, wherein the pieces of the metal comprise a metal selected from the group consisting of: an iron, a copper, a zinc, an aluminum, a calcium, a magnesium, a silver, and a gold (copper in [0053]).
Regarding claim 7, Whale (US Pub No.: 2003/0181949) discloses the method of claim 1, wherein the method comprises treatment for at least 6 days (as the duration of the treatment is weekly in [0137], the treatment can extend for 6 or more nonconcurrent days).
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(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whale (US Pub No.: 2003/0181949) in view of Westphal (US Pub No.: 2018/0116976).
Regarding claim 6, Whale discloses the method of claim 1, However, Whale does not teach wherein the treatment of the stroke paralysis is measured by an SF-36 questionnaire.
Instead, Westphal (US Pub No.: 2018/0116976) teaches wherein the treatment of the stroke paralysis is measured by an SF-36 questionnaire (evaluation of a stroke in [0036] with a SF-36 survey evaluation in [0037]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the SF-36 study of Westphal into Whale for the purpose of providing an evaluation means for a stroke (as per [0036]-[0037]) with SF-36 Surveys being known in the art to be used to evaluate the health of a patient.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whale (US Pub No.: 2003/0181949) in view of Loupis (US Patent No.: 10,881,736).
Regarding claim 8, Whale teaches the method of claim 1. However, Whale does not teach wherein the bioenergy generator comprises a water.
Instead, Loupis (US Patent No.: 10,881,736) teaches wherein the bioenergy generator comprises a water (in column 5 lines 45-52). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the use of water presented in Loupis into the bioenergy generator of Whale for the purpose of providing an alternative biophotonic composition (as per the abstract and column 5 lines 45-52 of Loupis) where the water, disclosed as an oxygen-releasing agent in column 5 lines 45-52, is used to deliver a specific therapeutic effect as disclosed in column 17 lines 45-61.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Loupis (US Pub No.: 2021/0177969) discloses a biophotonic composition and kit in the abstract with a structure of a generator in figure 4. Liu (US Pub No.: 2023/0392172) disclosed for a bioenergy generator in the abstract with natural stone disclosed in the same abstract.
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/AREN PATEL/Examiner, Art Unit 3774
/YASHITA SHARMA/Primary Patent Examiner, Art Unit 3774