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 .
Election/Restrictions
Applicant’s election of Group III, claims 20-24, in the reply filed on 23 July 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-19 and 25-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The disclosure is objected to because of the following informalities: Applicant is requested to amend the first paragraph of the specification to indicate that related application 18/408,523 is now U.S. Patent No. 12,507,332.
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Carstensen et al. (U.S. Pub. No. 2023/0256262 A1; hereinafter known as “Carstensen”), in view of Pillai et al. (U.S. Pub. No. 2014/0067130 A1; hereinafter known as “Pillai”).
Regarding claim 20, Carstensen discloses a gamma stimulation apparatus (Abstract; Figs. 1, 2; [0002]-[0006]), comprising a control module having a first power output port and a second power output port, wherein: the control module is configured to output, via the first power output port, a first output power having a first periodical waveform at a first operating frequency (OF1), the control module is configured to output, via the second power output port, a second output power having a second periodical waveform at a second operating frequency (OF2), the first power output port is configured to power a first external light source to produce a first light output, the second power output port is configured to power a second external light source to produce a second light output superimposing the first light output to form a superimposed light having a superimposed frequency equal to OF2 - OF1, the superimposed frequency is between 20Hz and 45Hz, and the superimposed light appears flicker-free to eyes of a subject ([0026]-[0029]; [0031]; [0038]-[0039]; [0048]; beat frequency corresponding to a difference between the two operating frequencies of the respective light sources; both operating frequencies may be above the critical flicker frequency threshold and thus appear flicker-free to the subject, or may be below this threshold but still without perceptible flicker; superimposed frequency OF2-OF1 is the same as the third brain stimulation rate taught to be the difference between the second and first brain stimulation rates and may be between 35-45 Hz). Carstensen fails to disclose a rectifier that is configured to convert an external alternating current (AC) power to an internal direct current (DC) power to power the control module. Pillai discloses a similar stimulation apparatus (Abstract) that comprising a rectifier that converts AC power to DC power in order to supply the necessary power to the light sources ([0095]). 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 invention of Carstensen with a rectifier, as taught by Pillai, in order to supply the necessary power to the first and second external light sources.
Regarding claim 21, the combination of Carstensen and Pillai discloses the invention as claimed, see rejection supra, and Carstensen further discloses that the first periodical waveform and the second periodical waveform have a same waveform style ([0041]).
Regarding claim 22, the combination of Carstensen and Pillai discloses the invention as claimed, see rejection supra, and Carstensen further discloses that the OF1 frequency is greater than 50Hz ([0038]).
Regarding claim 23, the combination of Carstensen and Pillai discloses the invention as claimed, see rejection supra, and Carstensen further discloses that the superimposed frequency is 40Hz ([0039]; [0048]).
Regarding claim 24, the combination of Carstensen and Pillai discloses the invention as claimed, see rejection supra, and Carstensen further discloses that the OF1 frequency is 80Hz and the OF2 frequency is 120Hz ([0038]-[0039]).
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.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,563,650. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the issued patent includes all of the limitations of present claim 20 (along with some additional limitations).
Claims 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,563,650 in view of Carstensen. The claim of the issued patent includes all of the limitations of the present claims, except for (i) the first periodical waveform and the second periodical waveform having a same waveform style, (ii) the OF1 frequency being greater than 50Hz, (iii) the superimposed frequency being 40Hz, and (iv) the OF1 frequency being 80Hz and the OF2 frequency being 120Hz. As detailed supra, Carstensen teaches a similar gamma stimulation apparatus that includes each of these limitations. It would have been obvious to modify the invention of the claim of the issued patent with the limitations expressed in present claims 21-24, as taught by Carstensen, as these are known effective parameters for providing gamma stimulation using such an apparatus.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS B COX whose telephone number is (571)270-5132. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason M. Sims can be reached at (571)272-7540. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THADDEUS B COX/Primary Examiner, Art Unit 3791
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