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 .
Election/Restrictions
Applicant’s election without traverse of the invention Group I, encompassing claims 1-10, in the reply filed on 12/18/2025 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/18/2025.
Claim Rejections - 35 USC § 112
Claim 1 is 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. Claim 1 recites ‘an array of electrodes capable of delivering tumor treating fields’ in line 3. The structure and/or features of the recited electrodes capable of delivering tumor treating fields cannot be determined from the claim language or the specification. Thus, this limitation renders 1-10 indefinite.
Appropriate correction is required.
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.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12/599,765 (hereinafter “reference Pat. 765”) in view of Wasserman et al., Pub. No. US 2024/0100321 (hereinafter “Wasserman”).
Regarding Claim 1 of the instant application, claim 1 of “reference Pat. 765” discloses A transducer apparatus for delivering tumor treating fields to a subject's body, the transducer apparatus comprising:
an array of electrodes, the array configured to be positioned over the subject's body with a face of the array facing the subject's body, the array comprising electrode elements positioned in existing electrode positions arranged around a centroid of the array; and
at least one void space in the array capable of enclosing an areal footprint equivalent to at least 40% of an areal footprint of at least one existing electrode position, and superimposable on at least 40% of at least one existing electrode position by rotation of the array around the centroid, However, reference Pat. 765 does not teach a hydrocolloid material disposed in the at least one void space as claimed.
Wasserman discloses an apparatus for providing tumor -treating fields comprising an electrode layer having a plurality of electrode elements, the electrode layer having at least one filler structure having a first filler portion positioned between the first and second electrodes (see the abstract). In par [0031] Wasserman further teaches ([“When the filler structure is or comprises a hydrocolloid layer, the hydrocolloid layer can serve as a topical medication. The hydrocolloid layer can be a gel or it can include any suitable material or materials that can thicken when contacting a wound (e.g., based on absorbing liquid or secretions from damaged or wounded skin”]). Therefore, it would have been obvious to one of ordinary skill in the art the time applicant’s invention was filed to modify the reference patent in view of Wasserman’s teachings to apply/dispose hydrocolloid material in at least one void space as a topical medication. A filler structure comprising a hydrocolloid material can serve as topical medication capable of soothing, healing, and providing relief for inflammation, of the patient’s body.
Regarding claim 2 of the instant application, claim 2 of the reference Pat. 765 recites The transducer apparatus of claim 1, wherein the at least one void space in the array is capable of enclosing an areal footprint equivalent to at least 95% of an areal footprint of at least one existing electrode position, and superimposable on at least 95% of at least one existing electrode position by rotation of the array around the centroid.
Regarding claim 3 of the instant application, claim 3 of the reference Pat. 765 recites The transducer apparatus of claim 1, wherein a sum total of the areal footprints for every void space in the array is approximately 50% of a sum total of the areal footprints for every void space and every existing electrode position of the array.
Regarding claim 4 of the instant application, claim 4 of the reference Pat. 765 recites The transducer apparatus of claim 1, wherein a sum total of the areal footprints for every void space in the array is equivalent to at least 20% of a sum total of the areal footprints for every void space and every existing electrode position of the array.
Allowable Subject Matter
Claims 5-10 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.
THIS ACTION IS MADE FINAL. 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 AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
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