DETAILED ACTION
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 § 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.
Claim 21 is 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. Claim 21 has been amended to recited “A method of increasing one or more of FGF1 or blood glucose in a subject …. Wherein FGF21 or blood glucose is increased” however the specification does not support the method where blood glucose is increase, rather that blood glucose uptake is increased thereby reducing blood glucose. See Applicant’s specification at paras. [0002], [0010], [0060], [0062], [0064], [0071] and original claim 22.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 , 14-16, 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keisari US 2004/0158288. Kesari teaches the treatment of tumor cells by applying electric fields to tumor tissue using fields that have frequencies and field strengths within Applicant’s parameter ranges, compare Applicant’s claims14-16 with paragraph 24 of Keisari. The method is used for treating people having diabetes and tumors. Since Keisari uses the same stimulation parameters and tissue type apparently doesn’t seem to matter, the result is that Keisari inherently increases FGF21 in the patient’s body. For claim 20, Keisari does not apply a magnetic field.
Claim Rejections - 35 USC § 103
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) 3-10, 17-19, 23, 31, 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over claims 3-4, 10, 33 recites the patient is tumor free or not diagnosed with a tumor, but the method could be used as a preventive follow up treatment during tumor remission. Prophylactic care to prevent tumor return would be obvious. Claims 5-7,9 and 20 all depend upon the location of the tumor or where it is not. It is obvious to treat the tumor whatever kind of tissue using the Keisari et al method. Claims 8, 18-19 and 31 require that the diabetic patient take their medications for diabetes, which is obvious. Claims 17 uses a field strength just outside of the Keisari recited range which would be obvious to try, since patients very is there require stimulation parameters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK W. BOCKELMAN whose telephone number is (571)272-4941. The examiner can normally be reached Monday -Friday 8:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Kish can be reached at 571-272-5554. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK W. BOCKELMAN/Primary Examiner, Art Unit 3792
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