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 .
This office action is in response to the preliminary amendment filed 2/7/24. No claims were amended, added, nor cancelled. Claims 1-20 are pending in the instant application.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 150. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “110” has been used to designate both the power supply, the separate unit/box, and signal processor. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 9, and 10 are objected to because of the following informalities:
Regarding claim 1, the language “signal processor” (line 8) is objected to for matters of form/grammar; Examiner suggests amending to read –a signal processor--.
Regarding claim 9, the language “wherein an vibration sensor” (line 1) is objected to as the vibration sensor has already been set forth in claim 1 line 6; Examiner suggests amending to read –wherein the vibration sensor--.
Regarding claim 9, the language “along an axes” (line 3) is objected to for a typographical/grammatical error; Examiner suggests amending to read –along an axis--.
Regarding claim 10, the language “wherein a vibratory oscillator” (line 1) is objected to as the vibratory oscillator has already been set forth in claim 1 line 4; Examiner suggests amending to read –wherein the vibratory oscillator--.
Appropriate correction is required.
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 1-18 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.
Regarding claim 1, the language “the housing segments” (line 4, 6, and 11) is unclear as Applicant has only positively set forth one housing segment with the language “one or more housing segments” in line 2 (thus only one segment is necessarily claimed), and it is unclear if Applicant is intending to claim plural housing segments or merely refer back to the previously set forth one or more housing segment(s). If Applicant is intending to refer back, Examiner suggests amending to read –the one or more housing segments--.
Regarding claim 1, the language “the housing segments pretensions the tissue …” (line 11-13) appears to claim a method step; however, the claim sets forth a device type claim and thus the metes and bounds of the claim are unclear, i.e. whether the device is being claimed or its use. Examiner suggests amending to use intended use type language such as –the one or more housing segments are configured to pretension the tissue …--.
Claim 1 recites the limitation "the vibration signals" in line 11-12. There is insufficient antecedent basis for this limitation in the claim. Note that only “a vibration signal”, singular, has been set forth in line 5.
Regarding claim 3, the language “the housing segments” (line 1-2 and 2, two instances) is unclear as Applicant has only positively set forth one housing segment with the language “one or more housing segments” in claim 1 line 2 (thus only one segment is necessarily claimed), and it is unclear if Applicant is intending to claim plural housing segments or merely refer back to the previously set forth one or more housing segment(s). If Applicant is intending to refer back, Examiner suggests amending to read –the one or more housing segments--.
Regarding claim 5, the language “the housing segments” (line 1 and 2, two instances) is unclear as Applicant has only positively set forth one housing segment with the language “one or more housing segments” in claim 1 line 2 (thus only one segment is necessarily claimed), and it is unclear if Applicant is intending to claim plural housing segments or merely refer back to the previously set forth one or more housing segment(s). If Applicant is intending to refer back, Examiner suggests amending to read –the one or more housing segments--.
Regarding claim 11, the language “the expandable housing pretensions the tissue …” (line 12-13) appears to claim a method step; however, the claim sets forth a device type claim and thus the metes and bounds of the claim are unclear, i.e. whether the device is being claimed or its use. Examiner suggests amending to use intended use type language such as –the expandable housing is configured to pretension the tissue …--.
Claims 2, 4, 6-10, and 12-18 are rejected based on dependency on a rejected claim.
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 1-18 are rejected under 35 U.S.C. 101 because Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1- are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 1, the language “the housing segments pretensions the tissue …” (line 11-13) appears to claim the human body, which is non-statutory subject matter. In order for the housing segment to pretension the tissue, the tissue, and thus the human body/organism, must be part of the claimed invention. Examiner suggests amending using intended use type language such as –the one or more housing segments are configured to pretension the tissue …--.
Regarding claim 11, the language “the expandable housing pretensions the tissue …” (line 12-13) appears to claim the human body, which is non-statutory subject matter. In order for the expandable housing to pretension the tissue, the tissue, and thus the human body/organism, must be part of the claimed invention. Examiner suggests amending using intended use type language such as –the expandable housing is configured to pretension the tissue …--.
Claims 2-10 and 12-18 are rejected based on dependency on a rejected claim.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 8, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord (2012/0215280) in view of Omata (2005/0256387) (hereinafter Omata ‘387) and Omata (5,766,137) (hereinafter Omata ‘137).
Regarding claim 1, Peddicord discloses an apparatus for regenerating tissue (see Fig. 1-6, 12, and abstract for example) which includes an expandable housing including one or more housing segments configured to move between a resting state and an expanded state (see Fig. 1 and 6A-6B, expandable housing 124 with segments as shown in Fig. 6A-B which show the resting and expanded states, respectively); a vibratory oscillator operatively positioned in an interior of the housing segment(s) and configured to generate a vibration signal (see Fig. 5 and para. 0057 which discloses a vibration motor may be located in cavity 502); a sensor positioned in the interior of the housing and in operative communication with a signal processor to determine a property (see para. 0046, 0053, 0057, 0063, sensor 520 and 802; processing electronics 800, see para. 0034, 0046, 0053). Peddicord is silent as to the sensor explicitly being a vibration sensor and measuring/determining a property of the tissue by comparing a change in an amplitude signal detected; however, Omata ‘387 discloses a vibration sensor which measures a property of tissue (see Omata ‘387 para. 0007-0008, 0014, 0024, 0028) and Omata ‘137 discloses a similar sensor which measures change in amplitude of the detected signals (see Omata ‘137 col. 1 ln. 27-49, col. 9 ln. 35-53, col. 12 ln. 54-62, col. 14 ln. 37-53). Thus 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 Peddicord device’s sensor to be of the type taught by Omata ‘387 and compare change in amplitudes of detected signals, as taught by Omata ‘137, as this would have been obvious substitution of one known element (sensor) for another and one would expect the modified Peddicord device to perform equally as well. The modified Peddicord device’s housing/segments are configured to pretension the tissue prior to application of vibration and which would increase effectiveness of vibratory oscillations propagated through tissue (see Peddicord Fig. 12 and Fig. 6A-B; through inflation of housing 124 would create pretension/contraction forces from the tissue, see para. 0026, 0046).
Regarding claim 8, the modified Peddicord device further includes an electrical stimulator disposed on a surface of the housing to electrically stimulate the tissue and which pretensions tissue prior to pretensioning by the housing (see Fig. 5, 6A-B and 12, para. 0020, 0026, 0030, 0057; electrical stimulators 128a and 128b).
Regarding claim 11, Peddicord discloses an apparatus for regenerating tissue (see Fig. 1-6, 12, and abstract for example) which includes an expandable housing having an interior and positionable proximate tissue to be regenerated (see Fig. 12, Fig. 1 and 6A-6B, expandable housing 124 with segments as shown in Fig. 6A-B which show the resting and expanded states, respectively); an oscillator operatively positioned in an interior of the housing and configured to generate and impart a vibration signal (see Fig. 5 and para. 0057 which discloses a vibration motor may be located in cavity 502); a sensor positioned in the interior of the housing and in operative communication with a signal processor to determine a property (see para. 0046, 0053, 0057, 0063, sensor 520 and 802; processing electronics 800, see para. 0034, 0046, 0053). Peddicord is silent as to the sensor explicitly being a vibration sensor and measuring/determining a property of the tissue by comparing a change in an amplitude signal detected; however, Omata ‘387 discloses a vibration sensor which measures a property of tissue (see Omata ‘387 para. 0007-0008, 0014, 0024, 0028) and Omata ‘137 discloses a similar sensor which measures change in amplitude of the detected signals (see Omata ‘137 col. 1 ln. 27-49, col. 9 ln. 35-53, col. 12 ln. 54-62, col. 14 ln. 37-53). Thus 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 Peddicord device’s sensor to be of the type taught by Omata ‘387 and compare change in amplitudes of detected signals, as taught by Omata ‘137, as this would have been obvious substitution of one known element (sensor) for another and one would expect the modified Peddicord device to perform equally as well. The modified Peddicord device’s housing/segments are configured to pretension the tissue prior to application of vibration and which would increase effectiveness of vibratory oscillations propagated through tissue (see Peddicord Fig. 12 and Fig. 6A-B; through inflation of housing 124 would create pretension/contraction forces from the tissue, see para. 0026, 0046).
Regarding claim 13, the modified Peddicord device further includes one or more electrical stimulators operatively disposed on a surface of the housing to electrically stimulate the tissue and which pretensions tissue prior to pretensioning by the housing (see Fig. 5, 6A-B and 12, para. 0020, 0026, 0030, 0057; electrical stimulators 128a and 128b).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord, Omata ‘387, and Omata ‘137 as applied to claim 1 above, and further in view of Leivseth et al. (2014/0088471).
Regarding claim 2, the modified Peddicord device is silent as to including a gyro sensor coupled to a portion of the housing to detect an orientation of the housing; however, Leivseth teaches a similar device which includes a gyro sensor to detect orientation of the device (see Leivseth para. 0064). Thus 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 modified Peddicord device to include a gyro sensor, as taught by Leivseth, in order to provide the ability to calculate the 3D orientation of the device (see Leivseth para. 0064).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord, Omata ‘387, and Omata ‘137 as applied to claim 1 above, and further in view of Alilovich (2009/0177029).
Regarding claim 3, the modified Peddicord device is silent as to including a motor operatively coupled to each of the housing segments to move the segments between resting and expanded states; however, Alilovich teaches a similar device which includes housing segments moved between resting and expanded states via a motor (see Alilovich Fig. 2-3 showing resting and expanded states of housing segments 26 and 28, Fig. 4-7, motor 34, see para. 0026-0027). Thus 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 modified Peddicord device to include a motor to control movement of housing segments between resting and expanded states, as taught by Alilovich, as this would have been obvious substitution of one known element for another (mechanical vs pneumatic expansion) and one would expect the modified Peddicord device to perform equally as well.
Claim(s) 4-7, 12, and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord, Omata ‘387, and Omata ‘137 as applied to claims 1 and 11 above, and further in view of Shim (2010/0174218).
Regarding claim 4, the modified Peddicord device is silent as to including a casing covering at least a portion of the housing and which expands from a resting state to an expanded state; however, Shim teaches a similar device which includes this feature (see Shim Fig. 3C-D, para. 0193-0198; expandable covering 21C which covers expandable housing element 21S). Thus 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 modified Peddicord device to include an expandable covering, as taught by Shim, in order to provide a protective covering made of inert material which does not cause undesirable reactions by pelvic wall (see Shim para. 0193).
Regarding claim 5, the modified Peddicord device is silent as to including a casing covering the housing segments and which expands from a resting state to an expanded state; however, Shim teaches a similar device which includes this feature (see Shim Fig. 3C-D, para. 0193-0198; expandable covering 21C which covers expandable housing element 21S). Thus 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 modified Peddicord device to include an expandable covering, as taught by Shim, in order to provide a protective covering made of inert material which does not cause undesirable reactions by pelvic wall (see Shim para. 0193).
Regarding claim 6, the modified Peddicord device is silent as to including a casing covering the housing segments and which expands from a resting state to an expanded state (pretensioning taught by Peddicord as discussed above); however, Shim teaches a similar device which includes this feature (see Shim Fig. 3C-D, para. 0193-0198; expandable covering 21C which covers expandable housing element 21S). Thus 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 modified Peddicord device to include an expandable covering, as taught by Shim, in order to provide a protective covering made of inert material which does not cause undesirable reactions by pelvic wall (see Shim para. 0193).
Regarding claim 7, the modified Peddicord device teaches an inflator to inflate the housing (see Peddicord para. 0044-0045, pump 510), but is silent as to including casing covering the housing segments and which expands from a resting state to an expanded state; however, Shim teaches a similar device which includes this feature (see Shim Fig. 3C-D, para. 0193-0198; expandable covering 21C which covers expandable housing element 21S; para. 0049, 0210, 0244 teaching inflation type expansion). Thus 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 modified Peddicord device to include an expandable covering, as taught by Shim, in order to provide a protective covering made of inert material which does not cause undesirable reactions by pelvic wall (see Shim para. 0193).
Regarding claim 12, the modified Peddicord device teaches an inflator to inflate the housing (see Peddicord para. 0044-0045, pump 510), but is silent as to including casing covering the housing segments and which expands from a resting state to an expanded state; however, Shim teaches a similar device which includes this feature (see Shim Fig. 3C-D, para. 0193-0198; expandable covering 21C which covers expandable housing element 21S; para. 0049, 0210, 0244 teaching inflation type expansion). Thus 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 modified Peddicord device to include an expandable covering, as taught by Shim, in order to provide a protective covering made of inert material which does not cause undesirable reactions by pelvic wall (see Shim para. 0193).
Regarding claim 14, the modified Peddicord device further includes one or more electrical stimulators operatively disposed on a surface of the housing to electrically stimulate the tissue and which pretensions tissue prior to pretensioning by the housing (see Fig. 5, 6A-B and 12, para. 0020, 0026, 0030, 0057; electrical stimulators 128a and 128b).
Regarding claim 15, the modified Peddicord device discloses expandable casing with uniform thickness (see Shim Fig. 3A-B showing uniform thickness; pretensioning limitation taught by Peddicord as discussed above).
Regarding claim 16, the modified Peddicord device discloses an expandable casing with non-uniform thickness (see Shim Fig. 3H showing non-uniform thickness; pretensioning limitation taught by Peddicord as discussed above).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord, Omata ‘387, and Omata ‘137 as applied to claim 1 above, and further in view of Tremblay-Munger et al. (2015/0057111).
Regarding claim 9, the modified Peddicord device is silent as to the vibration sensor including plural vibration sensors oriented in the housing along x, y, and z-axes respectively to measure vibration signals along an axis; however, Tremblay-Munger teaches a motion/vibration sensor system which include three accelerometers for measuring in each of three axes (see Tremblay-Munger para. 0032). Thus 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 modified Peddicord device to include the three accelerometer type sensor setup, as taught by Tremblay-Munger, as this would have been obvious substitution of one known sensor setup for another and in order to provide detection of motion in all three axes of a Cartesian coordinate system.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord, Omata ‘387, and Omata ‘137 as applied to claim 11 above, and further in view of Hoffman et al. (2007/0112284).
Regarding claim 17, the modified Peddicord device is silent as to including a control module including an application and a display in operative communication with the device to control and display one or more parameters thereof; however, Hoffman teaches a similar device which includes this feature (see Hoffman Fig. 13-14 and para. 0015, 0086-0088). Thus 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 modified Peddicord device to include a control module with application and display, as taught by Hoffman, in order to provide audio and visual feedback to a user (see Hoffman para. 0086-0088).
Regarding claim 18, the modified Peddicord device’s display is at least one selected from the group of a visual display, an audio display, or a combination thereof (see Hoffman para. 0086-0088).
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peddicord in view of Omata ‘387 and Hoffman.
Regarding claim 19, the use of the Peddicord device includes a method for regenerating tissue (see Fig. 1-6, 12, and abstract for example) which includes providing an expandable housing having an interior and configured to move between a resting state and an expanded state (see Fig. 1 and 6A-6B, expandable housing 124 with segments as shown in Fig. 6A-B which show the resting and expanded states, respectively); a vibration generator operatively positioned in an interior of the housing segment(s) and configured to generate a vibration signal (see Fig. 5 and para. 0057 which discloses a vibration motor may be located in cavity 502); a sensor positioned in the interior of the housing and in operative communication with a signal processor to determine a property (see para. 0046, 0053, 0057, 0063, sensor 520 and 802; processing electronics 800, see para. 0034, 0046, 0053); actuating the housing to expand from the resting state to the expanded state (see Fig. 12); activating vibration generator to apply vibrations to tissue (see para. 0057) and characterizing a parameter with a signal processor (see para. 0046, 0053, 0057, 0063, sensor 520 and 802; processing electronics 800, see para. 0034, 0046, 0053). Peddicord is silent as to the sensor explicitly being a vibration sensor; however, Omata ‘387 discloses a vibration sensor which measures a property of tissue (see Omata ‘387 para. 0007-0008, 0014, 0024, 0028). Thus 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 Peddicord device’s sensor to be of the type taught by Omata ‘387, as this would have been obvious substitution of one known element (sensor) for another and one would expect the modified Peddicord device to perform equally as well. The modified Peddicord is silent as to pretensioning the tissue first and adjusting over time; however, Hoffman teaches this feature (see Hoffman para. 0083, abstract, para. 0101-0103, 0106, 0109). Thus 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 modified Peddicord method to pretension the tissue before vibration and to adjust based thereon, as taught by Hoffman, in order to provide pelvic muscle strengthening and condition mode of operation in proportion to sensed contraction pressure (see Hoffman para. 0109).
Regarding claim 20, the modified Peddicord method’s expandable housing includes one or more housing segments configured to move between a resting state and an expanded state (see Peddicord Fig. 1 and 6A-6B, expandable housing 124 with segments as shown in Fig. 6A-B which show the resting and expanded states, respectively).
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.
Claim1, 3-8, 11-16, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 4, 7, 8, 10, 11, 12, 15, and 17 of U.S. Patent No. 11,844,736.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim include each structural and functional limitation as claimed (expandable casing defining an expandable housing/housing segment; oscillator being equivalent to a vibratory oscillator as mechanical oscillation, i.e. vibration, is imparted to the tissue, an accelerometer being a vibration sensor) but also includes additional limitations (such as the tissue property being a visco-elastic property of tissue being sensed) such that the patent claims are narrower version of the instant claims. As such, any infringement on the patent claims would result in infringement on the instant claims.
Instant claims 1, 4-5 corresponds to patent claim 1. Instant claims 3, 6, corresponds to patent claim 6. Instant claim 7 corresponds to patent claim 4. Instant claim 8 corresponds to patent claim 7. Instant claims 11-12 corresponds to patent claim 8. Instant claims 13-14 corresponds to patent claim 10. Instant claim 15 corresponds to patent claim 11. Instant claim 16 corresponds to patent claim 12. Instant claim 19 corresponds to patent claim 15. Instant claim 20 corresponds to patent claim 17.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,844,736 in view of Leivseth.
Regarding instant claim 2, the patent claim 1 is silent as to including a gyro sensor coupled to a portion of the housing to detect an orientation of the housing; however, Leivseth teaches a similar device which includes a gyro sensor to detect orientation of the device (see Leivseth para. 0064). Thus 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 patent claim 1 device to include a gyro sensor, as taught by Leivseth, in order to provide the ability to calculate the 3D orientation of the device (see Leivseth para. 0064).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,844,736 in view of Tremblay-Munger.
Regarding instant claim 9, the patent claim 1 device is silent as to the vibration sensor including plural vibration sensors oriented in the housing along x, y, and z-axes respectively to measure vibration signals along an axis; however, Tremblay-Munger teaches a motion/vibration sensor system which include three accelerometers for measuring in each of three axes (see Tremblay-Munger para. 0032). Thus 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 patent claim 1 device to include the three accelerometer type sensor setup, as taught by Tremblay-Munger, as this would have been obvious substitution of one known sensor setup for another and in order to provide detection of motion in all three axes of a Cartesian coordinate system.
Claims 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,844,736 in view of Hoffman.
Regarding instant claim 17, the patent claim 8 device is silent as to including a control module including an application and a display in operative communication with the device to control and display one or more parameters thereof; however, Hoffman teaches a similar device which includes this feature (see Hoffman Fig. 13-14 and para. 0015, 0086-0088). Thus 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 patent claim 8 device to include a control module with application and display, as taught by Hoffman, in order to provide audio and visual feedback to a user (see Hoffman para. 0086-0088).
Regarding instant claim 18, the modified patent claim 8 device’s display is at least one selected from the group of a visual display, an audio display, or a combination thereof (see Hoffman para. 0086-0088).
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Benderev (6,110,099), Levy (2003/0073881), Kim (2008/0139876), and Lindermann et al. (4,013,079).
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/COLIN W STUART/Primary Examiner, Art Unit 3785
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