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 .
Information Disclosure Statement
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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 8-12 and 14 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 8 recites “a first wireless earpiece comprising: a wireless earpiece housing configured as an earbud; a processor disposed within the earpiece housing, the processor configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain; a transceiver operatively connected to the processor; and wherein the transceiver…to stimulate the user’s brain”. As formatted, it is unclear what elements following “a first wireless earpiece comprising:” are intended to be part of the first earpiece. To clarify this rejection, the examiner recommends applicant indent components intended to comprise the first wireless earpiece under the limitation “a first wireless earpiece comprising:”.
Claim 9 recites “to sense electrical signals from the user’s brain” while parent claim 8 recites “to sense electrical signals from the user’s brain”. It is unclear whether applicant intends to reference the same electrical signals.
Claim 11 recites “the transceiver” while parent claim 8 recites two instances of “a transceiver”. It is unclear which transceiver applicant intends to reference.
Claim 14 recites “a party” while parent claim 13 recites “a third party”. It is unclear whether the part of claim 14 is intended to reference the “third party” of claim 13.
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2016/0279435 (Hyde et al.).
Regarding claim 1, Hyde et al. teaches a wireless earpiece for stimulating a user’s brain (abstract; [0077]), comprising:
a wireless earpiece housing (728) configured as an earbud ([0072]-[0075]; [0078]; wireless, [0098]);
a processor (846) disposed within the earpiece housing (728), the processor (846) configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain ([0086]; [0092]);
a transceiver (848) operatively connected to the processor (846); and
wherein the transceiver (848) is configured to produce electromagnetic pulses capable of reaching the user’s brain according to the characteristics determined by the processor (846) to stimulate the user’s brain (treatment programming transferred to earpiece via communication circuitry 848, which is used via control/processing circuitry 848 to control stimulator 706 to produce stimulus, [0080], [0086]-[0087], [0091]-[0092], [0099]; neural stimulator 706 includes transcutaneous magnetic stimulator 736 for stimulating nerves that carry stimulation signals to brain, [0079]-[0080]);
a plurality of electroencephalography (EEG) sensors (712 and 754) configured to sense electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor (846) for sensing ([0077]; [0081]; Figure 7).
Regarding claims 4-6, Hyde teaches a memory (880) operatively connected to the earpiece housing (728) and processor (846) (see Figures 7 and 8; [0091]); wherein a neurological program is stored on the memory, which comprises a set of instructions for diagnosing a user’s memory ([0077]; [0099]-[0101]; Figure 8).
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2016/0279435 (Hyde et al.) in view of U.S. Patent No. 2009/0247894 (Causevic).
Regarding claim 5, Hyde teaches all the limitations of claim 1. Hyde does not specify a differential amplifier is operatively connected to the processor and each of the EEG sensors.
However, Causevic teaches a device and method for measuring EEG signals, comprising: a plurality of EEG sensors (Figure 5, electrodes, 191-1…n), and a differential amplifier (Figure 5, differential amplifiers, 512) operatively connected to the processor (Figure 5, processor, 400) and each of the EEG sensors; wherein each differential amplifier (513) is configured to remove common mode gains from the electrical signals from the brain of the use, and is configured to filter noise from one or more electronic devices from the electrical signals from the user’s brain ([0056]; [0060]- [0061]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpieces and method of Hyde to further include a differential amplifier operatively connected to each processor and each EEG sensor as taught by Causevic, because Causevic teaches providing such differential amplifiers reduces noise to improve the signal-to-noise ratio to improve EEG measurement ([0061]).
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9-12, and 14-18 of U.S. Patent No. 11,013,445 in view of U.S. Patent Application Publication No. 2016/0279435 (Hyde et al.).
Regarding instant claim 1, claim 1 of the ‘445 patent recites all the limitations of instant claim 1, except the wireless earpiece housing is “configured as an earbud” and “a plurality of electroencephalography (EEG) sensors configured to sense electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor”.
However, Hyde teaches a wireless earpiece for stimulating a user’s brain (abstract; [0077]), comprising: a wireless earpiece housing (728) configured as an earbud ([0072]-[0075]; [0078]; wireless, [0098]); a processor (846) disposed within the earpiece housing (728), the processor (846) configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain ([0086]; [0092]); a transceiver (848) operatively connected to the processor (846); and wherein the transceiver (848) is configured to produce electromagnetic pulses capable of reaching the user’s brain according to the characteristics determined by the processor (846) (treatment programming transferred to earpiece via communication circuitry 848, which is used via control/processing circuitry 848 to control stimulator 706 to produce stimulus, [0080], [0086]-[0087], [0091]-[0092], [0099]; neural stimulator 706 includes transcutaneous magnetic stimulator 736 for stimulating nerves that carry stimulation signals to brain, [0079]-[0080]; Figure 7); and a plurality of electroencephalography (EEG) sensors (712, 754) configured to sense electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor (846) for sensing ([0077]; [0081]; Figure 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpiece housing of claim 1 of the ‘445 patent to be configured as an earbud as taught by Hyde in order to place the stimulator and sensors in proximity to the target area of the body ([0069]). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpiece of claim 1 of the ‘445 patent to include a plurality of EEG sensors for sensing electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor as taught by Hyde in order to detect the physiological status of the patient to determine treatment response (Hyde: [0077]).
Regarding instant claim 2, claim 1 of the ‘445 patent in view of Hyde recites all the limitations of claim 1. Claim 5 of the ‘445 patent recites all the limitations of instant claim 2.
Regarding instant claim 3, claim 1 of the ‘445 patent in view of Hyde recites all the limitations of claim 1. Claim 7 of the ‘445 patent recites all the limitations of instant claim 3.
Regarding instant claims 4-6, claim 1 of the ‘445 patent in view of Hyde recites all the limitations of claim 1. Claims 2-4 of the ‘445 patent recites all the limitations of instant claims 4-6.
Regarding instant claim 7, claim 1 of the ‘445 patent in view of Hyde recites all the limitations of claim 7.
Regarding instant claim 8, claim 9 of the ‘445 patent recites all the limitations of instant claim 8, except that the first wireless earpiece housing is “configured as an ear bud” and the electromagnetic pulses are to “stimulate the user’s brain”.
However, Hyde teaches a wireless earpiece for stimulating a user’s brain (abstract; [0077]), comprising: a wireless earpiece housing (728) configured as an earbud ([0072]-[0075]; [0078]; wireless, [0098]); a processor (846) disposed within the earpiece housing (728), the processor (846) configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain ([0086]; [0092]); a transceiver (848) operatively connected to the processor (846); and wherein the transceiver (848) is configured to produce electromagnetic pulses capable of reaching the user’s brain according to the characteristics determined by the processor (846) (treatment programming transferred to earpiece via communication circuitry 848, which is used via control/processing circuitry 848 to control stimulator 706 to produce stimulus, [0080], [0086]-[0087], [0091]-[0092], [0099]; neural stimulator 706 includes transcutaneous magnetic stimulator 736 for stimulating nerves that carry stimulation signals to brain, [0079]-[0080]; Figure 7); and a plurality of electroencephalography (EEG) sensors (712, 754) configured to sense electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor (846) for sensing ([0077]; [0081]; Figure 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpiece housing of claim 8 of the ‘445 patent to be configured as an earbud as taught by Hyde in order to place the stimulator and sensors in proximity to the target area of the body ([0069]). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpiece of claim 8 of the ‘445 patent wherein the electromagnetic pulses are to stimulate the user’s brain in order to therapeutically stimulate neural treatment to mitigate symptoms of a neural disorder (Hyde: [0067]; [0101]).
Regarding instant claims 9 and 11, claim 9 of the ‘445 patent in view of Hyde recites all the limitations of instant claims 9 and 11.
Regarding instant claim 10, claim 8 of the ‘445 patent in view of Hyde recites all the limitations of instant claim 10 except “the second wireless earpiece further comprises a motion sensor for sensing body movement”.
However, Hyde further discloses the wireless earpieces include a motion sensor for sensing body movement ([0081]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the set of wireless earpieces such that the second wireless earpiece includes a motion sensor for sensing body movement as taught by Hyde in order to provide “information regarding the state of the subject and his or her environment” (Hyde: [0081]).
Regarding instant claim 12, claim 9 of the ‘445 patent in view of Hyde recites all the limitations of instant claim 8. Claim 10 of the ‘445 patent recites all the limitations of instant claim 12.
Regarding instant claim 13, claim 14 of the ‘445 patent recites all the limitations of instant claim 13, except “analyzing the electrical signal from the user’s brain to generate results related to the electrical signal from the user’s brain by the processor disposed within the wireless earpiece”.
However, Hyde teaches a wireless earpiece for stimulating a user’s brain (abstract; [0077]), comprising: a wireless earpiece housing (728) configured as an earbud ([0072]-[0075]; [0078]; wireless, [0098]); a processor (846) disposed within the earpiece housing (728), the processor (846) configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain ([0086]; [0092]); a transceiver (848) operatively connected to the processor (846); and wherein the transceiver (848) is configured to produce electromagnetic pulses capable of reaching the user’s brain according to the characteristics determined by the processor (846) (treatment programming transferred to earpiece via communication circuitry 848, which is used via control/processing circuitry 848 to control stimulator 706 to produce stimulus, [0080], [0086]-[0087], [0091]-[0092], [0099]; neural stimulator 706 includes transcutaneous magnetic stimulator 736 for stimulating nerves that carry stimulation signals to brain, [0079]-[0080]; Figure 7); and analyzing the electrical signal from the user's brain to generate results related to the electrical signal from the user's brain by the processor (846) disposed of within the wireless earpiece ([0084]; [0086]; [0101]-[0102]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 9 of the ‘445 patent to include analyzing the electrical signal from the user's brain to generate results related to the electrical signal from the user's brain by the processor disposed of within the wireless earpiece as taught by Hyde in order to determine treatment progress (Hyde: [0084]).
Regarding instant claim 14, claim 14 of the ‘445 patent in view of Hyde recites all the limitations of instant claim 13. Claim 15 of the ‘445 patent recites all the limitations of instant claim 14.
Regarding instant claims 15 and 16, claim 14 of the ‘445 patent in view of Hyde recites all the limitations of instant claim 13. Claims 17 and 18 of the ‘445 patent recite all the limitations of instant claims 15 and 16.
Claims 13, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17 and 18 of U.S. Patent No. 11,013,445. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the instant application is merely broader in scope than all that is recited in claim 17 of the ‘445 patent. That is, claim 13 is anticipated by claim 17 of the ‘445 patent. Once applicant has received a patent for a species or a more specific embodiment, applicant is not entitled to a patent for the generic or broader invention (see In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)). Claims 15 and 16 of the instant application are anticipated by claims 17 and 18 of the ‘445 patent, by the same reasoning.
Claims 1-7 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7, and 9-12 of U.S. Patent No. 11,911,163 in view of U.S. Patent Application Publication No. 2016/0279435 (Hyde et al.).
Regarding instant claim 1, claim 1 of the ‘163 patent recites all the limitations of instant claim 1, except the wireless earpiece housing is “configured as an earbud” and “a plurality of electroencephalography (EEG) sensors configured to sense electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor”.
However, Hyde teaches a wireless earpiece for stimulating a user’s brain (abstract; [0077]), comprising: a wireless earpiece housing (728) configured as an earbud ([0072]-[0075]; [0078]; wireless, [0098]); a processor (846) disposed within the earpiece housing (728), the processor (846) configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain ([0086]; [0092]); a transceiver (848) operatively connected to the processor (846); and wherein the transceiver (848) is configured to produce electromagnetic pulses capable of reaching the user’s brain according to the characteristics determined by the processor (846) (treatment programming transferred to earpiece via communication circuitry 848, which is used via control/processing circuitry 848 to control stimulator 706 to produce stimulus, [0080], [0086]-[0087], [0091]-[0092], [0099]; neural stimulator 706 includes transcutaneous magnetic stimulator 736 for stimulating nerves that carry stimulation signals to brain, [0079]-[0080]; Figure 7); and a plurality of electroencephalography (EEG) sensors (712, 754) configured to sense electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor (846) for sensing ([0077]; [0081]; Figure 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpiece housing of claim 1 of the ‘163 patent to be configured as an earbud as taught by Hyde in order to place the stimulator and sensors in proximity to the target area of the body ([0069]). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wireless earpiece of claim 1 of the ‘163 patent to include a plurality of EEG sensors for sensing electrical signals from the user’s brain in response to the electromagnetic pulses operatively connected to the processor as taught by Hyde in order to detect the physiological status of the patient to determine treatment response (Hyde: [0077]).
Regarding instant claim 2, claim 1 of the ‘163 patent in view of Hyde recites all the limitations of instant claim 1. Claim 5 of the ‘163 patent recites all the limitations of instant claim 2.
Regarding instant claim 3, claim 1 of the ‘163 patent in view of Hyde recites all the limitations of instant claim 1. Claim 7 of the ‘163 patent recites all the limitations of instant claim 3.
Regarding instant claims 4-6, claim 1 of the ‘163 patent in view of Hyde recites all the limitations of instant claim 1. Claims 3 and 4 of the ‘163 patent recites all the limitations of instant claims 4-6.
Regarding instant claim 7, claim 1 of the ‘163 patent in view of Hyde recites all the limitations of instant claim 7.
Regarding instant claim 13, claim 9 of the ‘163 patent recites all the limitations of instant claim 13, except “analyzing the electrical signal from the user’s brain to generate results related to the electrical signal from the user’s brain by the processor disposed within the wireless earpiece”.
However, Hyde teaches a wireless earpiece for stimulating a user’s brain (abstract; [0077]), comprising: a wireless earpiece housing (728) configured as an earbud ([0072]-[0075]; [0078]; wireless, [0098]); a processor (846) disposed within the earpiece housing (728), the processor (846) configured to determine characteristics of electromagnetic pulses to stimulate the user’s brain ([0086]; [0092]); a transceiver (848) operatively connected to the processor (846); and wherein the transceiver (848) is configured to produce electromagnetic pulses capable of reaching the user’s brain according to the characteristics determined by the processor (846) (treatment programming transferred to earpiece via communication circuitry 848, which is used via control/processing circuitry 848 to control stimulator 706 to produce stimulus, [0080], [0086]-[0087], [0091]-[0092], [0099]; neural stimulator 706 includes transcutaneous magnetic stimulator 736 for stimulating nerves that carry stimulation signals to brain, [0079]-[0080]; Figure 7); and analyzing the electrical signal from the user's brain to generate results related to the electrical signal from the user's brain by the processor (846) disposed of within the wireless earpiece ([0084]; [0086]; [0101]-[0102]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 9 of the ‘163 patent to include analyzing the electrical signal from the user's brain to generate results related to the electrical signal from the user's brain by the processor disposed of within the wireless earpiece as taught by Hyde in order to determine treatment progress (Hyde: [0084]).
Regarding instant claim 14, claim 9 of the ‘163 patent in view of Hyde recites all the limitations of claim 13. Claim 10 of the ‘163 patent recites all the limitations of instant claim 14.
Regarding instant claim 15, claim 9 of the ‘163 patent in view of Hyde recites all the limitations of claim 13. Claim 11 of the ‘163 patent recites all the limitations of instant claim 15.
Regarding instant claim 16, claim 9 of the ‘163 patent in view of Hyde recites all the limitations of claim 13. Claim 12 of the ‘163 patent recites all the limitations of instant claim 16.
Claims 13, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 12 of U.S. Patent No. 11,911,163. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the instant application is merely broader in scope than all that is recited in claim 11 of the ‘163 patent. That is, claim 13 is anticipated by claim 11 of the ‘163 patent. Once applicant has received a patent for a species or a more specific embodiment, applicant is not entitled to a patent for the generic or broader invention (see In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)). Claims 15 and 16 of the instant application are anticipated by claims 11 and 12 of the ‘163 patent, by the same reasoning.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carrie R Dorna whose telephone number is (571)270-7483. The examiner can normally be reached 8am-5pm.
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/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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