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
The information disclosure statement (IDS) submitted on 04/04/2024 is being considered by the examiner.
Claim Objections
Claim 5 objected to because of the following informalities:
In regards to claim 5, the term “thermal structure” should read “the thermal structure”
Appropriate correction is required.
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 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10624696. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are merely broader than the ‘696 patent claims. For example, each claims a system for delivering microwave energy to a tissue, the apparatus comprising: a signal generator configured to generate microwave energy, a waveguide antenna, and a cooling source consisting of a cooling plate. Thus, the invention claimed in the current application is merely generic to the species claimed in the related application and it has been held that the generic invention is anticipated by the species.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 10624696. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are substantially similar to the ‘696 patent claim 4. For example, each claim the microwave frequency to be about 5.8 GHz.
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, 2, 7 through 13, 15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deem (US20170340384A1) herein referred to as “Deem ‘384”.
Regarding claim 1 Deem ‘384 discloses A system comprising ([Abstract] A system for): an energy generator configured to generate a signal ([Abstract] a signal generator adapted to generate a microwave signal); at least one antenna configured to receive and transmit the signal ( [Abstract]; the applicator comprising one or more microwave antennas and a tissue interface); a chiller exposed, at least in part, to a housing or cooling fluid that is exposed to a housing of the at least one antenna; (Paragraph [0215]waveguide antenna extends through coolant chamber) at least one field spreader corresponding to the at least one antenna; (Paragraph [0214] field spreader is integrated into antenna) and a cooling plate configured to cool an epidermis and a dermis (Paragraph [0356] cooling plate configured to contact and cool the skin tissue Paragraph [0347] specifies applying cooling to the epidermis and dermis).
Regarding claim 2 Deem ‘384 discloses the system of claim 1, further comprising: a thermal structure that surrounds the at least one antenna. (Paragraph [0327] a cooling system which surrounds the waveguide antenna).
Regarding claim 7 Deem ‘384 discloses the system of claim 1, further comprising at least one of: a power supply configured to power the energy generator; control circuitry for controlling the energy generator; and a display. ([0205] discusses a system for controlling the microwave energy and mentions a display for custom control circuitry)
Regarding claim 8 Deem ‘384 discloses the system of claim 1, wherein the energy generator is a microwave energy generator. ([0346] Delivering energy via microwave energy delivery)
Regarding claim 9 Deem ‘384 discloses the system of claim 8, wherein the microwave energy generator is configured to generate a microwave signal having a frequency of about 5.8 GHz. (Paragraph [0311])
Regarding claim 10 Deem ‘384 discloses the system of claim 1, wherein the at least one antenna is a waveguide antenna. ([0354] Microwave antenna comprises waveguide antenna)
Regarding claim 11 Deem ‘384 discloses the system of claim 1, wherein the at least one antenna is a phased ([0185] describes the image of two antennas being in phase also see FIG 56 below showing phased matched energy delivery applied) array of four waveguide antennas. (Paragraph [0219] four waveguide antennas)
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Regarding claim 12 Deem ‘384 discloses the system of claim 1, wherein the chiller is a thermo-electric chiller. (Paragraph [0326] discusses using a thermo-electric module in the cooling system, which acts as the chiller)
Regarding claim 13 Deem ‘384 discloses the system of claim 12, wherein a cold side of the thermo-electric chiller touches the housing or fluid that touches the thermal structure surrounding the at least one antenna. (Paragraph [0326] states the cooling system is attached to the cool plate side of a thermoelectric cooler (TEC) where the TEC is faces a cooling plate adjacent to the waveguide antenna)
Regarding claim 15 Deem ‘384 discloses the system of claim 1, wherein the at least one field spreader has a known dielectric constant. ([0315] field spreader comprised of alumina which has a known dielectric constant)
Regarding claim 17 Deem ‘384 discloses the system of claim 1, wherein a structure made of at least -two materials with different dielectric constants, causes the energy field to spread. ([0367] first and second layers with different dielectric constants)
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.
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.
Claims 3, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Deem ‘384 in view of Deem (US20100114086A1) herein referred to as “Deem ‘086.”
Regarding claim 3 Deem ‘384 discloses the system of claim 1 and the field spreader, ([0313] field spreader is defined as the dielectric element that an antenna may include; hence the field spreader is the dielectric.) However Deem ‘384 does not explicitly disclose wherein it is a ceramic or ceramic filled plastic field spreader.
Deem ‘086 discloses wherein the field spreader is a ceramic or ceramic filled plastic field spreader (Deem '086 [0110] describes a low loss dielectric like ceramic which can be incorporated into the antenna)
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 field spreader of Deem ‘384 to use ceramic or ceramic filled plastic as mentioned in Deem ‘086. The motivation being that introducing this low loss dielectric helps maintain consistent energy delivery. (Deem ‘086 [0110]).
Regarding claim 14 Deem ‘384 discloses the system of claim 1, and the at least one field spreader however Deem ‘394 does not explicitly disclose is composed of a dielectric ceramic or ceramic filled plastic.
Deem ‘086 discloses wherein the at least one field spreader is composed of a dielectric ceramic or ceramic filled plastic. (Deem '086 [0110] describes a low loss dielectric like ceramic which can be incorporated into the antenna).
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 field spreader of Deem ‘384 to include the ceramic or ceramic filled plastic of Deem ‘086. The motivation being that introducing this low loss dielectric helps maintain consistent energy delivery. (Deem ‘086 [0110]).
Regarding claim 16 Deem ‘384 discloses the system of claim 15, and the at least one field spreader however Deem ‘384 does not disclose is a ceramic filled plastic field spreader.
Deem ‘086 discloses wherein the at least one field spreader is a ceramic filled plastic field spreader. (Deem ‘086 [0110] mentions that the ceramic or plastic dielectric can also be a filler material).
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 field spreader of Deem ‘384 to include ceramic or ceramic filled plastic of Deem ‘086. The motivation being that introducing this low loss dielectric helps maintain consistent energy delivery. (Deem ‘086 [0110]).
Claims 4 through 6 are rejected under 35 U.S.C. 103 as being unpatentable over Deem ‘384 in view of Deem ‘086 in further view of Kim et al (US20160157934A1) herein referred to as “Kim.”
Regarding claim 4 Deem ‘384 in view of Deem ‘086 discloses the system of claim 1, However, Deem ‘384 in view of Deem ‘086 does not explicitly disclose further comprising: a switch configured to receive the signal and output the signal to the at least one antenna.
Kim discloses further comprising: a switch configured to receive the signal and output the signal to the at least one antenna ([0030] a switch that controls the microwave applicator which in turn controls the signals to the antenna. As stated in [0033] the microwave applicator may include one or more antennas).
It would have been obvious to one of ordinary skill in the art to modify the applicator of Deem ‘384 in view of Deem ‘086 to include a switch to control the receiving and output of the signal as seen in Kim. The motivation being it is a known technology in the art to use a switch to control the microwave applicator for input and/or output, hence using a switch for this would yield predictable results (MPEP § 2143 (E)).
Regarding claim 5 Deem ‘384 in view of Deem ‘086 discloses the system of claim 1, further comprising: an applicator, wherein the applicator is configured to house the at least one antenna, thermal structure, the at least one field spreader, and the cooling plate. (Paragraph [0354] Describes an applicator comprising the antenna, field spreader, cooling structure and cooling plate which represent the thermal structure). However, Deem ‘384 in view of Deem ‘086 does not disclose the switch.
Kim discloses the switch ([0030] a switch that controls the microwave applicator which in turn controls the signals to the antenna. As stated in [0033] the microwave applicator may include one or more antennas).
It would have been obvious to one of ordinary skill in the art to modify the applicator of Deem ‘384 in view of Deem ‘086 to include a switch to control the receiving and output of the signal as seen in Kim. The motivation being it is a known technology in the art to use a switch to control the microwave applicator, hence using a switch for this would yield predictable results (MPEP § 2143 (E)).
Regarding claim 6 Deem ‘384 in view of Deem ‘086 discloses the system of claim 1, further comprising: a console. However, Deem ‘384 in view of Deem ‘086 does not explicitly disclose, further comprising: a console that houses the energy generator.
Kim discloses a console that houses the energy generator ([0030] System console that houses microwave energy generator)
It would have been obvious to one of ordinary skill in the art to modify the system of Deem ‘384 in view of Deem ‘086 to add the energy generator to the console with all the other components as seen in Kim. The motivation being that it is a known technology in the art to place a console to house a generator, thus doing so would yield predictable results (MPEP § 2143 (E)).
Claims 18 through 20 are rejected under 35 U.S.C. 103 as being unpatentable over Deem ‘384 in view of Deem ‘086 in further view of Feldberg et al (US006026331A) herein referred to as “Feldberg.”
Regarding claim 18 Deem ‘384 in view of Deem ‘086 discloses the system of claim 14, however Deem ‘384 in view of Deem ‘086 does not disclose wherein a difference between a first dielectric constant corresponding the at least one field spreader, and a second dielectric constant corresponding to a paired field spreader comprising a dielectric ceramic, causes a power density associated with the signal to spread.
Feldberg discloses wherein a difference between a first dielectric constant corresponding the at least one field spreader, ([Summary col 3: Par 4] discusses a first waveguide with a dielectric material) and a second dielectric constant corresponding to a paired field spreader ([Summary col 3: Par 4] discusses a second waveguide the dielectric constant of which is different as well as multiple other paired dielectric material on a third waveguide) comprising a dielectric ceramic, causes a power density associated with the signal to spread. ([Summary col 3: Par 1] mentions that the dielectric material is in the form of ceramic, [Summary col 2: Par 6] different dielectric material is needed to propagate the microwaves which are the signals)
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 different dielectric constants on field spreaders of Deem ‘384 in view of Deem ‘086 to incorporate field spreaders with different dielectric constants. The motivation to do so being that this allows for the propagation of desired modes of the microwaves at predetermined frequencies. ([Summary col 2: Par 6])
Regarding claim 19 Deem ‘384 in view of Deem ‘086 discloses A system for energy-based tissue treatment and chilling, (Deem ‘086 [Abstract] Methods, apparatuses and systems are provided for non-invasive delivery of microwave therapy) the system comprising: a microwave energy generator that generates a microwave signal; (Deem ‘086 [Abstract] microwave energy from an energy generator) waveguide antennas configured to receive and transmit the microwave signal; (Deem ‘086 [Abstract] comprises one or more antennas including a waveguide antenna) a cooling mechanism exposed, at least in part, to a thermal structure that touches a cooling plate; (Deem ‘384 [0376]) a first and second field spreader positioned near an end of a waveguide antenna; (Deem ‘384 [0214]) a cooling plate configured to cool an epidermis and a dermis; (Deem ‘384 [0356]) However Deem ‘384 in view of Deem ‘086 does not disclose and wherein the first and second field spreaders are dielectric ceramics or ceramic filled plastic and a difference between a first dielectric constant corresponding to the first field spreader and a second dielectric constant corresponding to the second field spreader causes a power distribution associated with the microwave signal to spread.
Feldberg discloses wherein the first and second field spreaders are dielectric ceramics or ceramic filled plastic and a difference between a first dielectric constant corresponding to the first field spreader ([Summary col 3: Par 4] discusses a first waveguide with a dielectric material) and a second dielectric constant corresponding to the second field spreader ([Summary col 3: Par 4] discusses a second waveguide the dielectric constant of which is different as well as multiple other paired dielectric material on a third waveguide) causes a power distribution associated with the microwave signal to spread. ([Summary col 3: Par 1] mentions that the dielectric material is in the form of ceramic, [Summary col 2: Par 6] different dielectric material is needed to propagate the microwaves which are the signals)
Regarding claim 20 Deem ‘384 in view of Deem ‘086 discloses A method for energy-based tissue treatment and chilling, (Deem ‘086 [Abstract] Methods, apparatuses and systems are provided for non-invasive delivery of microwave therapy) the method comprising: generating, by a microwave energy generator, a microwave signal; (Deem ‘086 [Abstract] microwave energy from an energy generator) receiving and transmitting the microwave signal with at least one waveguide antenna; (Deem ‘086 [Abstract] comprises one or more antennas including a waveguide antenna) cooling an epidermis using a thermo-electric chiller exposed, at least in part, to a thermal structure that houses the at least one waveguide antenna and to a cooling plate; (Deem ‘086 [Abstract] microwave energy applied to the epidermal tissue, device contains a cooling element, waveguide antenna and cooling plate) outputting a microwave energy field corresponding to the microwave signal via at least one field spreader positioned near an end of the at least one waveguide antenna; and treating the tissue with the microwave energy field (Deem ‘086 [Abstract] treating the tissue with microwave energy) however Deem ‘384 in view of Deem ‘086 does not disclose spreading the microwave energy field using a difference between a first dielectric constant corresponding to the at least one field spreader and a second dielectric constant corresponding to another field spreader;
Feldberg discloses wherein the first and second field spreaders are dielectric ceramics or ceramic filled plastic and a difference between a first dielectric constant corresponding to the first field spreader ([Summary col 3: Par 4] discusses a first waveguide with a dielectric material) and a second dielectric constant corresponding to the second field spreader ([Summary col 3: Par 4] discusses a second waveguide the dielectric constant of which is different as well as multiple other paired dielectric material on a third waveguide) causes a power distribution associated with the microwave signal to spread. ([Summary col 3: Par 1] mentions that the dielectric material is in the form of ceramic, [Summary col 2: Par 6] different dielectric material is needed to propagate the microwaves which are the signals)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA M GANAN-SINGH whose telephone number is (571)272-3194. The examiner can normally be reached Monday to Friday 7:30am to 5:00pm.
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/C.G.S/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794