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 Interpretation
Claims 1-6 contain a large amount of recitations directed to 1) intended use, 2) functional limitation, or 3) language directed to the manner in which an apparatus is intended to be employed which does not always provide the claimed inventions with enough positively recited further limitations to distinguish them over prior art.
It should be noted a recitation of intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. However, if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Additionally, it is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, i.e., a functional limitation, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963). Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such prior art reference, regardless of whether the prior art reference explicitly discusses such capacity for performing the recited function. In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). In addition, where there is reason to believe that such functional limitation may be an inherent characteristic of the prior art reference, Applicant is required to prove that the subject matter shown in the prior art reference does not possess the characteristic relied upon. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986); In re Ludtke, 441 F.2d at 664, 169 USPQ at 566 (CCPA 1971).
And finally, a recitation with respect to the manner in which an apparatus is intended to be employed does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Yanush, 477 F.2d 958, 177 USPQ 705 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 168 USPQ 530 (CCPA 1971); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963); Ex parte Masham, 2 USPQ2d 1647 (BdPatApp & Inter 1987).
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 1-20 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea (a judicial exception) carried out by a generic machine that does not amount to significantly more than the judicial exception.
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)(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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by West (U.S. Patent Application Publication 2024/0149061).
Regarding claim 1, West discloses a system comprising:
a laser treatment device (“an apparatus” comprising: “at least one cold laser emitter,” see [0008]).
The remained of the claim language in claim 1 is a recitation of 1) intended use, 2) functional limitation, or 3) language directed to the manner in which an apparatus is intended to be employed and has therefore been treated accordingly.
Regarding claims 2-6, West discloses the claimed invention since the recitations of claims 2-6 fall into the category of recitations of 1) intended use, 2) functional limitation, or 3) language directed to the manner in which an apparatus is intended to be employed and has therefore been treated accordingly.
Regarding claim 7, West discloses a method of using laser to treat pain comprising:
providing a laser treatment system having a laser (“an apparatus” comprising: “at least one cold laser emitter,” see [0008]),
in order to carry out the method the system also comprises:
a memory (see [0008], and [0043]),
a processing unit (see [0008], [0009], and [0029] for example), and
software (see [0043], and [0053] for example).
The method steps carried out comprise:
accessing a datastore describing patients' identifying information (e.g., 1) “the patient's historical data,” [0068], 2) “treatment recipient's location,” and “treatment recipient's tiredness, pain, and inflammation, etc.” [0111] ), patients' previously reported areas of affliction ([0102] for example), patients' previously reported pain levels for the areas ([0102] for example), and previous treatments administered to the patients (see [0069], );
locating in the datastore records (“database,” see [0111], also see [0068]-[0069], [0102], [0111] for example) for a first patient, the first patient presently seeking treatment by the device;
determining a treatment regimen for the first patient based on input presently entered by the patient and based on content of the records (see [0059],[0063], and [0069]); and
activating treatment apparatus and administering the determined treatment regimen (see 508 in figure 5, and “shine” in [0046]).
Regarding claim 8, West discloses the claimed invention (see [0058] and figure 3E and recall the use of current and past information (e.g., [0101]-[0102]).
Regarding claim 9, West discloses the claimed invention (see [0101], [0102] and figures 3E-5 for example)
Regarding claim 10, West discloses the claimed invention (see [0032],[0045], [0053], [0111], and [0128] for example).
Regarding claim 11, West discloses the claimed invention (see figures 3F-3H for example).
Regarding claim 12, West discloses the claimed invention (see [0058][0060], [0063] and figures 3F-3H for example).
Regarding claim 13, West discloses the claimed invention (see [0054]-[0055] and figures 3A-3B for example).
Regarding claim 14, West discloses a method of using laser to treat pain comprising:
providing a laser treatment system having a laser (“an apparatus” comprising: “at least one cold laser emitter,” see [0008]),
in order to carry out the method the system also comprises:
a memory (see [0008], and [0043]),
a processing unit (see [0008], [0009], and [0029] for example), and
software (see [0043], and [0053] for example).
The method steps carried out comprise:
accessing a database describing patients (“database,” see [0111], also see [0068]-[0069], [0102], [0111] for example) previously having received treatment from the device (see “multiple users” in [0064], also see figures 3A-4);
determining from at least the database that a first patient presently requesting treatment from the device is a previous patient with records (see [0101]-[0102] and figures 3A-3B, and 4) stored in the database;
determining a treatment regimen for the first patient based on patient inputs and based on contents of the records (see [0080]-[0081] figures 3A-5); and
the device activating treatment apparatus and administering the determined treatment regimen (see 508 in figure 5, and “shine” in [0046]).
Regarding claim 15, West discloses the claimed invention (see [0053]-[0055] and figures 3A-5 for example).
Regarding claim 16, West discloses the claimed invention (see [0058] and figure 3E and recall the use of current and past information (e.g., [0101]-[0102]).
Regarding claim 17, West discloses the claimed invention (see [0058] and figures 3A-5 and recall the use of current and past information (e.g., [0101]-[0102]).
Regarding claim 18, West discloses the claimed invention (see 3F-3H).
Regarding claim 19, West discloses the claimed invention (see [0058][0060], [0063] and figures 3F-3H for example).
Regarding claim 20, West discloses the claimed invention (see [0032],[0045], [0053], [0111], and [0128] for example).
Pro se Application
This patent application appears to be a “Pro se” application – that is an application being prosecuted (“handled”) by the inventors himself/herself/themselves. If that is the case, then the examiner would like to extend to Applicant/Inventor the possibility of having one or more interviews in order to help Applicant and answer any questions or address any concerns Applicant may have. If the inventors are not prosecuting/handling this application himself/herself/themselves, then Applicant should file a power of attorney declaring who may legally represent them before the USPTO.
Applicant is invited to request an interview to discuss suggestions to find an acceptable conclusion of the prosecution for all parties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/AARON F ROANE/Primary Examiner, Art Unit 3792