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 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 4, 6-7, 13, 16 and 17 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.
Claims 6-7, 13 and 17 recite a list of what appear to be alternative options, but lists them in such a way that it is unclear whether only one is required. All of these claims use the phrase “includes but is not limited to …” which never specifies that only one is required. For example, claim 17 recites that “the shape of the patch includes but is not limited to a star shape, a moon shape, a hexagon shape, a heptagon shape, an octagon shape, and a heart shape.” There is no language stating that only one of those shapes must be present. Thus, as currently written, the limitation requires all of those shapes to be simultaneously present, which is clearly not intended by Applicant as evidenced by a quick review of the figures showing individually-shaped devices.
Furthermore, the phrase “but is not limited to …” renders the claims indefinite because it appears to be reciting that some other unclaimed option could be used instead. For instance, looking again at claim 17, even if the limitation were corrected to recite only one of those shapes, the inclusion of the phrase “but is not limited to …” would seem to suggest that any other shape could also meet the claim.
As such, the scope of these claims cannot be determined.
Furthermore, concerning claims 4 and 16, these claims each recite “the at least one pair of through holes.” There is insufficient antecedent basis for this limitation in the claims. This limitation was only previously recited in claims 2 and 15, respectively. However, claims 4 and 16 do not depend from these claims. It appears that claim 4 should be corrected to depend from claim 2, and claim 16 should be corrected to depend from claim 15.
Furthermore, claims 5 and 11 each recite “the at least one pair of primary electrodes” and “the primary electrodes” respectively. There is insufficient antecedent basis for this limitation in these claims. This was only recited previously in claim 4. However, neither claim 5 nor claim 11 depend from claim 4. It appears that claims 5 and 11 should be corrected to depend from claim 4.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 9 and 19 depend from earlier claims 8 and 18, respectively, that are each directed to a “light therapy device,” but claims 9 and 19 begin with “the irradiation sources of …” which is only a subset of the limitations of the earlier claims 8 and 18 (note how all other dependent claims other than 9 and 19 begin with “The light therapy device claimed in …”) As such, as currently written, it appears that claim 9 and 19 are attempting to include only some of the limitations of claims 8 and 18, respectively, which is not permitted under 35 USC 112(d). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. The Examiner recommends amending these claims to have the same introduction as all the other claims, i.e. “The light therapy device claimed in …”
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 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, 3 and 8-13 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 2022/0226668 A1 to Lee et al. (hereinafter “Lee”).
Regarding Claim 1, Lee teaches a light therapy device comprising a patch (100,100’,200) and a detachable controller (1400), the patch comprising:
a flexible casing (generally 120 as a whole, and more specifically 122), the flexible casing comprises a front portion, a back portion, and a peripheral wall (see e.g. FIG. 6), the peripheral wall crafted over the periphery of the front portion (see e.g. Para. 116: either the adhesive layer or region of thermal fusion is effectively a wall that connects 122 to 121);
a Flexible Printed Circuit Board (FPCB) (111; see e.g. Para. 61 which states that it is flexible, and e.g. Para. 65 stating that it serves as a circuit board) installed over the front portion (see e.g. FIG. 6), the Flexible Printed Circuit Board comprising a plurality of stimulation elements (LEDs 112); and
a flexible diaphanous sheet (121) arranged over the Flexible Printed Circuit Board (FPCB) (see e.g. FIG. 6),
wherein the detachable controller (1400) is attached to the back portion of the flexible casing (see e.g. FIG. 16; the controller 1400 is attached to the entire device, including the casing), and
wherein at least one deformable element is inbuilt within the flexible casing (the entire material of casing 122 is deformable; alternatively, see element 150).
Regarding Claim 3, Lee teaches wherein the flexible casing is constructed from opaque material to obstruct the passage of light through the flexible casing (see e.g. Para. 119: “the second cover member 122 may have a translucent or opaque property to block the passage of light”).
Regarding Claims 8-9, as noted above, Lee teaches that the stimulation elements are LEDs, and further teaches that they may emit light in a wavelength range falling within Applicant’s claimed range here (see e.g. Para. 13: 405-970 nm).
Regarding Claim 10, Lee teaches wherein the at least one deformable element is made with a metallic material (see Para. 138; element 150 made with metal material).
Regarding Claim 11, wherein an insulation separates the Flexible Printed Circuit Board (FPCB) and the primary electrodes from the deformable element (see sheet 140).
Regarding Claims 12-13, Lee’s device is fully capable of being used with an adhesive in this manner.
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.
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.
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lee.
Regarding Claim 7, Lee teaches that the shape of the patch may be a variety of shapes, including various polygonal shapes (see Para. 200). Lee fails to explicitly teach one of the shapes listed in the claim here. However, the choice of a particular shape for the device, such as a heart shape, is considered to merely be an unpatentable aesthetic design change/choice. See MPEP § 2144.04(I). It would have been obvious to one of ordinary skill in the art as of Applicant's effective filing date to modify Lee to utilize any desired patch shape for aesthetic reasons since any of them would function predictably.
Claims 2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of US 2021/0379374 A1 to Hamner et al. (hereinafter “Hamner”).
Regarding Claims 2, 4-5, Lee teaches the device of claim 1 as discussed above but fails to teach holes on the back portion of the flexible casing; wherein the Flexible Printed Circuit Board (FPCB) comprises at least one pair of primary electrodes passing through the at least one pair of through-holes; wherein the detachable controller comprises: a hollow housing includes at least one pair of secondary electrodes, the at least one pair of secondary electrodes magnetically attached with the at least one pair of primary electrodes; a rechargeable battery is installed within the controller to power the light therapy device; and a user interface, the user interface is crafted over the hollow housing, the user interface is electrically connected to the rechargeable battery to operate the light therapy device.
Another reference, Hamner, teaches a similar therapy device including these features (see e.g. the embodiment of FIG. 5A-I; electrode contact points 507 pass through holes in the case side, whereas detachable controller 502 is shown as a housing having corresponding electrode contact points 509; Para. 129 discusses the magnetic attachment; Para. 130 recites that “the therapy unit 502 can include a battery, which may be rechargeable” and recites various details of the user interface 503 on detachable controller 502). It would have been obvious to one of ordinary skill in the art as of Applicant's effective filing date to modify Lee to incorporate a detachable controller having its own dedicated battery, user interface, and corresponding mating pairs of electrical contacts, as seen in Hamner, because this was demonstrated to be an known effective solution for allowing a controller to be detachably incorporated into the therapeutic device without an external wired/cable connection (as seen in Lee alone).
Regarding Claim 6, Hamner further teaches that the user interface 503 can be “one or more buttons” (see end of Para. 130). It would have been obvious to one of ordinary skill in the art as of Applicant's effective filing date to further modify Lee to use a button as part of the user interface since this is an extraordinarily well known input device for a user interface.
Claim 14 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of US 2020/0101312 A1 to Pai et al. (hereinafter “Pai”).
Regarding Claim 14, Lee teaches a light therapy device comprising a patch (100,100’,200) and a detachable controller (1400), the patch comprising:
a flexible casing (generally 120 as a whole, and more specifically 122), the flexible casing comprises a front portion, a back portion, and a peripheral wall (see e.g. FIG. 6), the peripheral wall crafted over the periphery of the front portion (see e.g. Para. 116: either the adhesive layer or region of thermal fusion is effectively a wall that connects 122 to 121);
a Flexible Printed Circuit Board (FPCB) (111; see e.g. Para. 61 which states that it is flexible, and e.g. Para. 65 stating that it serves as a circuit board) installed over the front portion (see e.g. FIG. 6), the Flexible Printed Circuit Board comprising a plurality of stimulation elements (LEDs 112); and
a flexible diaphanous sheet (121) arranged over the Flexible Printed Circuit Board (FPCB) (see e.g. FIG. 6),
wherein the detachable controller (1400) is attached to the back portion of the flexible casing (see e.g. FIG. 16; the controller 1400 is attached to the entire device, including the casing), and
wherein at least one deformable element is inbuilt within the flexible casing (the entire material of casing 122 is deformable; alternatively, see element 150).
Lee fails to teach “a plurality of protrusions of a predetermined length formulated inside the flexible casing … a plurality of cuts crafted over the periphery of the Flexible Printed Circuit Board (FPCB) at a predetermined distance between each of the cuts, wherein the number of said cuts are equivalent to the number of said protrusions.” However, this was a well-known method of aligning a PCB within a housing/casing. As one example of this, attention is directed to Pai who teaches an analogous therapeutic device including a PCB having a plurality of cuts along its periphery with correspondingly sized and spaced protrusions in the casing (see FIG. 2 of Pai). It would have been obvious to one of ordinary skill in the art as of Applicant's effective filing date to modify Lee to include these protrusions and cuts because it would predictably help ensure the proper placement of the PCB.
Regarding Claim 17, Lee teaches that the shape of the patch may be a variety of shapes, including various polygonal shapes (see Para. 200). Lee fails to explicitly teach one of the shapes listed in the claim here. However, the choice of a particular shape for the device, such as a heart shape, is considered to merely be an unpatentable aesthetic design change/choice. See MPEP § 2144.04(I). It would have been obvious to one of ordinary skill in the art as of Applicant's effective filing date to modify Lee to utilize any desired patch shape for aesthetic reasons since any of them would function predictably.
Regarding Claims 18-19, as noted above, Lee teaches that the stimulation elements are LEDs, and further teaches that they may emit light in a wavelength range falling within Applicant’s claimed range here (see e.g. Para. 13: 405-970 nm).
Regarding Claim 20, Lee teaches wherein the at least one deformable element is made with a metallic material (see Para. 138; element 150 made with metal material).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Pai as applied to claim 14 above, further in view of Hamner.
Regarding Claims 15-16, Lee as modified teaches the device of claim 14 as discussed above but fails to teach holes on the back portion of the flexible casing; wherein the Flexible Printed Circuit Board (FPCB) comprises at least one pair of primary electrodes passing through the at least one pair of through-holes.
Another reference, Hamner, teaches a similar therapy device including these features (see e.g. the embodiment of FIG. 5A-I; electrode contact points 507 pass through holes in the case side, whereas detachable controller 502 is shown as a housing having corresponding electrode contact points 509; Para. 129 discusses the magnetic attachment; Para. 130 recites that “the therapy unit 502 can include a battery, which may be rechargeable” and recites various details of the user interface 503 on detachable controller 502). It would have been obvious to one of ordinary skill in the art as of Applicant's effective filing date to modify Lee to incorporate a detachable controller having its own dedicated battery, user interface, and corresponding mating pairs of electrical contacts, as seen in Hamner, because this was demonstrated to be an known effective solution for allowing a controller to be detachably incorporated into the therapeutic device without an external wired/cable connection (as seen in Lee alone).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R DOWNEY whose telephone number is (571)270-7247. The examiner can normally be reached Monday-Friday 8:30am-5:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NIKETA PATEL can be reached at (571)-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN R DOWNEY/Primary Examiner, Art Unit 3792