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 .
DETAILED ACTION
Election/Restrictions
Claims 37-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/24/25. Applicant argues the restriction is improper under MPEP 803. Applicant’s argument is not persuasive because MPEP 803 does not require the methods to belong to different class to be restricted. MPEP 803 states that one of the reason the methods can be restricted is that they belong in different classes. When the methods are different embodiments then they can be restricted.
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 28-36 and 42-46 are 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. Regarding claims 30-36, claim 30 depend on claim 42. The specification does not disclose an embodiment that “providing noninvasive brain stimulation to the subject and determining the impact on the baseline balance parameters; and then providing a tuned noninvasive brain stimulation and gait and/or balance training based on the impact of the noninvasive brain stimulation on the baseline balance parameters; providing gait and/or balance training to the subject; and determining the impact of the gait and/or balance training on the baseline gait parameters; and then tuning wherein the noninvasive brain stimulation is tuned based on the subject's response to the gait and/or balance training”. It appears they are two different methods/embodiments. Examiner had previously restricted them and applicant amend the claims to put them in the same claim set. Regarding claim 42, limitation “determining the subject’s baseline balance parameters, wherein the balance parameters include at least balance during gait, sitting balance, standing balance, sit to stand balance; providing noninvasive brain stimulation to the subject and determining the impact on the baseline balance parameters; and then providing a tuned noninvasive brain stimulation and gait and/or balance training based on the impact of the noninvasive brain stimulation on the baseline balance parameters” is not in the specification. The publication paragraph [0085] discloses establish a functional baseline in general term. There no disclosure of determining subject baseline balance parameters include at least balance during gait, sitting balance, standing balance, sit to stand balance. Regarding claim 28, there no disclosure of determining subject baseline gait parameters.
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 30-36 are 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 30 is depended on claim 42, but claim 30 is claiming “the baseline gait parameters” which is in claim 28. Claim 30 depend on claim 42 is unclear since it is claiming a limitation in claim 28. Claim 30 should depend on claim 28.
Response to Arguments
Applicant’s arguments with respect to claim(s) 28-36 and 42-46 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/HIEN N NGUYEN/
Primary Examiner
Art Unit 3793