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
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 1-5 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,583,287. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed device of claims 1- 5 and 15-17 is obviously capable of performing the steps of using the first energy applicator and the second energy applicator having a pulsed biphasic electric current having a current density in a range of 0.1 mA/cm2 to 30 mA/cm2 for treatment as claimed in claims 1-30 of U.S. Patent No. 10,583,287.
Claims 1-6, 15, 16 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,458,307. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed device of claims 1-6, 15, 16 and 17 is obviously capable of performing the steps of using the first energy applicator having a frequency in a range of 100kHz to 3.5MHz and the second energy applicator having an electric current with a frequency range of 0.1 Hz to 200 Hz of energy to stimulate a muscle for treatment as claimed in claims 1-20 of U.S. Patent No. 11,458,307.
Claims 1-12 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,623,083. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed device of claims 1-12 and 15-20 is obviously capable of comprising the first energy applicator having a frequency in a range of 100kHz to 3.5MHz, and a temperature in a range of 30 0C to 50 0C, and the second energy applicator having an electric current with a frequency range of 0.1 Hz to 200 Hz of energy to stimulate a muscle for treatment as claimed in claims 1-30 of U.S. Patent No. 11,623,083.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,896,821. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed device of claims 1-20 is obviously capable of comprising the first energy applicator having a frequency in a range of 100kHz to 3.5MHz, and a temperature in a range of 30 0C to 50 0C, and the second energy applicator having an electric current with a frequency range of 0.1 Hz to 200 Hz of energy to stimulate a muscle for treatment as claimed in claims 1-30 of U.S. Patent No. 11,896,821.
The time duration in present claim 15 is being interpreted as an obvious intended use limitation.
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)(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 1-3, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being by Harris (US 2007/0161479).
Regarding claim 1, Harris discloses a device for a treatment of a patient, comprising:
a first applicator (heating pads) configured to be in a stationary position by strapping to the back of the knee during a treatment and to be attached to a body part of the patient by a flexible belt comprising the strapping or by an adhesive material, a heating pad strapped to the back of the knee, see paragraph [0047],
wherein the first applicator is configured to provide a first treatment energy to
heat tissue of the body part of the patient, see paragraph [0047];
a second applicator 36 configured to be in a stationary position during the
treatment and to be attached to the body part of the patient, see paragraph [0026],
wherein the second applicator is configured to provide a second treatment
energy to stimulate a muscle of the body part of the patient, see paragraph [0047]; and
a control unit 12 configured to control the first treatment energy and the second
treatment energy.
Regarding claim 2, Harris discloses the first applicator and the second applicator are configured to treat different treatment areas of the body part simultaneously, see paragraph [0047].
Regarding claim 3, Harris discloses a user interface 50 configured to allow an operator of the device 10 to change or set up parameters of the first treatment energy and the second treatment energy during the treatment, see paragraph [0035].
Regarding claim 15, Harris discloses device for a treatment of a patient, comprising:
an applicator comprising heating pads is configured to be in a stationary position during a treatment session and to be attached to a body part of the patient by a flexible belt comprising strapping or by an adhesive material, the applicator comprising:
a treatment energy source (heating pads) configured to provide:
a first treatment energy to heat tissue within the body part of the patient, and a second treatment energy 36 to stimulate a muscle of the body part of the patient, see paragraph [0047]; and
a control unit 12 configured to control the first treatment energy and the second treatment energy,
wherein the treatment session lasts for a duration in a range of 5 minutes to 40 minutes, see paragraph [0058].
Regarding claim 16, Harris discloses a user interface configured 50 to allow an operator of the device to select partially predetermined treatment protocol and to change or set up parameters of the first treatment energy and the second treatment energy during the treatment,
wherein the control unit 12 is configured to provide the treatment based on the selected partially predetermined treatment protocol, see paragraph [0035].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George Manuel whose telephone number is (571) 272-4952.
The examiner can normally be reached on regular business days.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached on (571) 270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George Manuel/
Primary Examiner
Art Unit: 3792
1/17/2026