Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-11 are pending and currently under consideration for patentability under 37 CFR 1.104.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“air displacer assembly that provides positive air displacement, air pressure, and air flow to the thoracic garment” in claim 2. The corresponding structure(s) in the specification appear to be at least one member that angularly moves to move air in a pumping chamber (see the first three sentences of para. [0036]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1-2, 4, and 6-11 are objected to because of the following informalities:
Claim 1, line 5 recites “to pressure and high frequency pressure pulses” and Examiner suggests --to the pressure and high frequency pressure pulses-- because this phrase has already been recited in line 1.
Claim 1, the last two lines recite “air pressure and pressure pulses” and this appears to be referring to the previously recited “pressure and high frequency pressure pulses.” Thus, Examiner suggests --the pressure and high frequency pressure pulses-- to use consistent terminology when referring to the pressure and pressure pulses.
Claim 2, line 1 recites “comprise an air displacer” and the Examiner suggests --comprises an air displacer--.
Claim 4, line 1 recites “wherein user programmable controls” and the Examiner suggests --wherein the user programmable controls-- to clarify the antecedent basis.
Claim 4, the last line recites “the therapy garment” and the Examiner suggests --the thoracic garment-- to use consistent language when referring to the garment (claim 1 refers to the garment as “the thoracic garment” in the last two lines).
Claim 6, line 1 recites “the garment” and the Examiner suggests --the thoracic garment-- to use consistent language when referring to the garment (claim 1 refers to the garment as “the thoracic garment” in the last two lines).
Claim 7, line 2 recites “the garment” and the Examiner suggests --the thoracic garment-- to use consistent language when referring to the garment (claim 1 refers to the garment as “the thoracic garment” in the last two lines).
Claim 8, line 1 recites “the garment” and the Examiner suggests --the thoracic garment-- to use consistent language when referring to the garment (claim 1 refers to the garment as “the thoracic garment” in the last two lines).
Claim 9, line 1 recites “the garment” and the Examiner suggests --the thoracic garment-- to use consistent language when referring to the garment (claim 1 refers to the garment as “the thoracic garment” in the last two lines).
Claim 10, line 5 recites “to pressure and high frequency pressure pulses” and Examiner suggests --to the pressure and high frequency pressure pulses-- because this phrase has already been recited in line 1.
Claim 10, the last line recites “air pressure and pressure pulses” and this appears to be referring to the previously recited “pressure and high frequency pressure pulses.” Thus, Examiner suggests --the pressure and high frequency pressure pulses-- to use consistent terminology when referring to the pressure and pressure pulses.
Claim 11, line 5 recites “to pressure and high frequency pressure pulses” and Examiner suggests --to the pressure and high frequency pressure pulses-- because this phrase has already been recited in line 1.
Claim 11, the last line recites “air pressure and pressure pulses” and this appears to be referring to the previously recited “pressure and high frequency pressure pulses.” Thus, Examiner suggests --the pressure and high frequency pressure pulses-- to use consistent terminology when referring to the pressure and pressure pulses.
Appropriate correction is required.
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 pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1-11 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Helgeson et al. (2013/0331747).
Regarding claim 1, Helgeson discloses an apparatus for applying pressure and high frequency pressure pulses to the thorax of a person (Fig. 1), comprising:
an air pulse generator (air pulse generator 211, Fig. 6) having user programmable controls (control panel 23, Fig. 1, and see controls 109, 110, 111, Fig. 4. This is a “user programmable control system” see the second sentence of [0015] summarizing the invention, and the first sentence of [0021]);
a garment (garment 30, Fig. 1; see lines 14-16 of [0037]) adapted to be located on the thorax of the person (see Figs. 1-2) for subjecting the thorax of the person to pressure and high frequency pressure pulses (see the first two sentences of [0015]); and
only one hose (there is only one hose 61, Fig. 1, Fig. 4; corresponding to hose 261, Fig. 6) coupling the air pulse generator (211) to the thoracic garment (30, Fig. 1; see lines 14-16 of [0037]) for transmitting air pressure and pressure pulses from the air pulse generator (211) to the thoracic garment (30; see lines 14-16 of [0037]).
Regarding claim 2, Helgeson discloses wherein the air pulse generator (211, Fig. 6) comprises an air displacer assembly (air displacers 252, 253, with power transmission mechanisms 289, 312, Figs. 6-8) that provides consistent and positive air displacement, air pressure, and air flow (see lines 9-11 of [0015]; see lines 14-22 of [0037]) to the thoracic garment (30).
Regarding claim 3, Helgeson discloses wherein the user programmable controls (control panel 23, Fig. 1, and see controls 109, 110, 111, Fig. 4. This is a “user programmable control system” see the second sentence of [0015] summarizing the invention, and the first sentence of [0021]) comprise time, frequency, and pressure controls (the time, frequency, and pressure controls are user programmable, see the second sentence of [0015] and see controls 109, 110, 111, Fig. 4. Additionally, see the first sentence of [0039], see lines 15-16 of [0040], and see lines 1-9 of [0039]).
Regarding claim 4, Helgeson discloses wherein user programmable controls (control panel 23, Fig. 1, and see controls 109, 110, 111, Fig. 4. This is a “user programmable control system” see the second sentence of [0015], and the first sentence of [0021]) are provided on a control panel (control panel 23, Fig. 1, Fig. 4), and wherein the user programmable controls may be used to activate an electronic memory program to regulate time or duration of operation of the air pulse generator, frequency of the air pulses, and pressure of the air pulses directed to the therapy garment (see the penultimate sentence of [0015]).
Regarding claim 5, Helgeson discloses wherein the pressure of the air pulses is coordinated with the frequency of the air pulses such that the air pressure is substantially maintained at a selected pressure when the frequency of the air pulses is changed (see the last sentence of [0015], and the last two sentences of [0040]).
Regarding claim 6, Helgeson discloses wherein the garment (30) includes an air core (air core 35 with one or more enclosed chambers 40, Figs. 2-3).
Regarding claim 7, Helgeson discloses wherein the air pulse generator (211, Fig. 6) includes an air outlet passage (passage 242, Fig. 6) and the garment (30) includes an air inlet passage (see lines 21-26 of [0015], lines 14-16 of [0037], and see Fig. 1, the hose leads to an inlet at the garment 30) and where the only hose (61, Fig. 1; corresponding to 261, Fig. 6) couples the air outlet passage (242, Fig. 6) of the pulse generator (211, Fig. 6) with the air inlet passage of the thoracic garment (30, see Fig. 1 and see lines 14-16 of [0037]).
Regarding claim 8, Helgeson discloses wherein the garment (30) includes a single air inlet connector (see lines 21-26 of [0015] “the garment may be reversible with a single air inlet connector”).
Regarding claim 9, Helgeson discloses wherein the garment (30) is reversible (see lines 21-26 of [0015] “the garment may be reversible with a single air inlet connector”).
Regarding claim 10, Helgeson discloses an apparatus for applying pressure and high frequency pressure pulses to the thorax of a person (Fig. 1), comprising:
an air pulse generator (air pulse generator 211, Fig. 6) having user programmable controls (control panel 23, Fig. 1, and see controls 109, 110, 111, Fig. 4. This is a “user programmable control system” see the second sentence of [0015] summarizing the invention, and the first sentence of [0021]);
a garment (garment 30, Fig. 1; see lines 14-16 of [0037]) adapted to be located on the thorax of the person (see Figs. 1-2) for subjecting the thorax of the person to pressure and high frequency pressure pulses (see the first two sentences of [0015]); and
fewer than two hoses (there is one hose 61, Fig. 1, Fig. 4; corresponding to hose 261, Fig. 6) coupling the air pulse generator (211) to the thoracic garment (30, Fig. 1; see lines 14-16 of [0037]) for transmitting air pressure and pressure pulses from the air pulse generator (211) to the thoracic garment (30; see lines 14-16 of [0037]).
Regarding claim 11, Helgeson discloses an apparatus for applying pressure and high frequency pressure pulses to the thorax of a person (Fig. 1), comprising:
an air pulse generator (air pulse generator 211, Fig. 6) having user programmable controls (control panel 23, Fig. 1, and see controls 109, 110, 111, Fig. 4. This is a “user programmable control system” see the second sentence of [0015] summarizing the invention, and the first sentence of [0021]);
a garment (garment 30, Fig. 1; see lines 14-16 of [0037]) adapted to be located on the thorax of the person (see Figs. 1-2) for subjecting the thorax of the person to pressure and high frequency pressure pulses (see the first two sentences of [0015]); and
no more than one hose (there is only one hose 61, Fig. 1, Fig. 4; corresponding to hose 261, Fig. 6) coupling the air pulse generator (211) to the thoracic garment (30, Fig. 1; see lines 14-16 of [0037]) for transmitting air pressure and pressure pulses from the air pulse generator (211) to the thoracic garment (30; see lines 14-16 of [0037]).
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-11 of U.S. Patent No. 12,029,703.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-11 are merely broader versions of the Patented claim(s). For example, independent claims 1, 10, and 11, lack many of the additional limitations of claim 1 of U.S. Patent No. 12,029,703, such as “the first and second displacers are mounted on opposite sides of the air pulsing chamber and are configured to be angularly moved between first and second positions to move air through and pulse air from the air pulse generator; a check valve operable to allow air to flow from the air pumping chamber into the air pulsing chamber … a first anti-backlash device associated with the first displacer…” etc.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hansen (2002/0016560) discloses a related air pressure thoracic vest with a single hose. Warwick et al. (2006/0036199) discloses a related air pressure thoracic vest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER E MILLER whose telephone number is (571)270-1473. The examiner can normally be reached Mon-Fri 9:00-5:30 (Eastern).
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, Timothy Stanis can be reached at 571-272-5139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER E MILLER/ Examiner, Art Unit 3785
Prosecution Insights