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 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 1-6, 9, 11, 12, 14, 16-20 and 27-31 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.
In regards to claims 1 and 20, the examiner was unable to find support in the originally-filed disclosure for possession of the concept of a bulk electron transport agent that is “a material consisting of an inorganic ionic compound, a metal, or a non-metal.” The original disclosure does set forth language setting forth a Markush group of “the group consisting of an ionic compound, a metal, a non-metal, and combinations thereof.” However, the use of the term “consisting of” in the original disclosure is drawn to an open-ended list of ingredients or “combinations thereof,” and the examiner was unable to locate support for the concept of excluding all other elements or ingredients (as required by the “consisting of language” in the instant claims -- see MPEP 2111.03). It appears that claim limitations now being relied upon to avoid the prior art (i.e., an electron transport agent that is a pure (excluding all other ingredients) inorganic ionic compound, metal, or non-metal) are not conceptually shown to be “possessed” in the original disclosure. Likewise, the new language drawn to an “inorganic ionic compound” does not appear to draw support from the original disclosure. The examiner was unable to find mention of this particular language in the original disclosure, nor does the original disclosure appear to make any discernment between the concept of utilizing inorganic and organic compounds in the description.
The remaining claims are rejected by virtue of their dependency.
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 1-6, 9, 11, 12, 14, 16-20 and 27-31 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.
In regards to claims 1 and 20, the scope of “at least one bulk electron transport agent…wherein the bulk electron transport agent is a material consisting of an inorganic ionic compound, a metal, or a non-metal” is vague. It is unclear what is being included and excluded with this claim language. For instance, it is unclear whether this requires a single pure substance as the bulk electron transport agent (as required by the “a material consisting of” language), or whether multiple substances can be present (as implied by the “at least one” language).
The remaining claims are rejected by virtue of their dependency.
Response to Arguments
Applicant’s arguments, see “remarks,” filed 8/11/2026, with respect to the prior art rejections have been fully considered and are persuasive. As argued, Palti does not disclose a bulk electron transport agent in suspension, and the Hong teaching is drawn to triboelectrification and not utilizing insulated electrodes to apply a high-frequency field therapy.
Allowable Subject Matter
Claims 1-6, 9, 11, 12, 14, 16-20 and 27-31 avoid the prior art, but remain rejected under section 112 above. The following is a statement of reasons for the indication of allowable subject matter: the closest prior art is to Hobble et al. (US 2020/0147245). Although Hobble does disclose a medical electrode having a conductive gel for application to the skin and at least one bulk electron transport agent consisting of a non-metal (graphite powder) disposed in suspension within the gel (Fig. 4; par. 0056), Hobble’s electrode is drawn to cathodic voltage controlled electrical stimulation to disrupt bacteria from growing on a metal implant (par. 0004). Neither Hobble nor the remaining prior art, alone or in combination, disclose or fairly render unpatentable the combination of elements in claims 1 and 20, including using the gel composition of Hobble with an insulated electrode for high-frequency field therapy (as opposed to Hobble’s use for direct current therapy).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL W KAHELIN whose telephone number is (571)272-8688. The examiner can normally be reached M-F, 8-5.
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, Benjamin Klein can be reached at (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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/MICHAEL W KAHELIN/Primary Examiner, Art Unit 3792
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