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 . 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 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.
Specification
The amendment filed 02/20/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the incorporation by reference of the international patent application PCT/GB2022/052154 and of the foreign patent application GB2111950.8 is ineffective as it was added on the date of entry into the national phase, which is
after the filing date of the instant application. The filing date of this national stage application is
the filing date of associated PCT, in this case 08/19/2022, see MPEP 1893.03(b). Therefore, the
specification amendment of 02/20/2024 to include the incorporation by reference is new matter,
per MPEP 608.01(p). Applicant is advised to remove the phrase “, the disclosures of which are
incorporated herein, in their entireties, by this reference”.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 2-3, 5-7, 9-11, 21 and 22 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 2, the phrase "emits a pulsed electromagnetic field" renders the claim indefinite because it is unclear whether the limitation is referring to the “oscillating electromagnetic field” recited in claim 1 or a new pulsed electromagnetic field. The inconsistent terminology renders the metes and bounds of the claim unclear.
Regarding claim 5, the phrase "the range between around 250 kHz to 350 kHz" renders the claim indefinite because it is unclear whether the term “around” is referring only to the 250 kHz or to both 250 kHz and 350 kHz. Additionally, the term of degree “around,” lacks is a term of degree that renders the scope unclear absent objective guidance as to the intended tolerance. Applicant should correct the apparent error and amend the range into clear form, for example by reciting a definite numerical range and, if desired, using “about” only if supported by objective guidance in the specification. See MPEP § 2173.
Claim 6 is indefinite because it recites “enabling selection of the suitable therapeutic treatment by a user.” The term “suitable” is subjective and does not provide an objective boundary for the scope of the claim.
Claim 7 is indefinite because it recites “facilitating selection of the optimum coil according to the specific treatment.” The term “optimum” is a relative term that lacks an objective standard in the claim.
Claim 9 is indefinite because it recites “an inner diameter of between around 20mm and 30mm and an outer diameter of between around 40mm and 60mm.” The phrase renders the claim indefinite because it is unclear whether the term “around” is referring only to the lower end of each range or to both the lower and upper end of each range. The term “around” is a term of degree that may render the scope unclear absent objective guidance as to the intended tolerance. Applicant should amend the claim to recite definite dimensions or otherwise provide clear boundaries. See MPEP § 2173.
Claim 10 is indefinite because it recites “to calculate the optimum frequency at maximum power.” The phrase “optimum frequency” is relative and does not, by itself, provide an objective boundary for the claimed subject matter. Applicant should amend the claim to recite a definite criterion, such as the frequency corresponding to a measured maximum power value.
Claim 11 is indefinite because it recites “the dimensions of the device are minimized such that the therapeutic device fits within a hand of an average adult.” The terms “minimized” and “average adult” are subjective and do not clearly define the claim scope. Applicant should amend the claim to recite specific dimensional limitations.
Claim 21 is indefinite because it recites “each coil is structured or configured differently to produce a unique electromagnetic field” and further recites “including but not limited to.” The term “unique” is relative, and the phrase “including but not limited to” leaves unclear what additional unstated parameters are encompassed by the claim. Applicant should amend the claim to recite definite structural differences and corresponding field parameters in closed or otherwise clear claim language.
Claim 22 is indefinite because it recites “produce a unique electromagnetic field” and “including but not limited to.” For the reasons set forth with respect to claim 21, these phrases render the scope of the claim unclear. Applicant should amend the claim to recite definite field characteristics and remove or clarify the open-ended language.
Claims 3 are rejected due to their dependency on a rejected claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 7, 11 and 13-18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Wong (US 2021/0008381 A1; cited by applicant on IDS dated 02/20/2024).
Referring to claim 1: Wong teaches a therapeutic device (see figures 5-6) for the alleviation of pain, inflammation or for therapeutic effect (see paragraphs [0043] and [0072]), the device comprising: an electronic circuit including a frequency generator (see figure 5, #5 wherein the frequency generator is incorporated into external device) for selectively producing electrical signals, the electronic circuit comprising a toroidal coil (see figure 5, #14) that is adapted to produce an oscillating electromagnetic field within a preselected frequency range in response to energization by the electrical signals; and wherein the electronic circuit is constructed and arranged to adjust the electrical signals produced such that the toroidal coil selectively maintains the oscillating electromagnetic field within the preselected frequency range (see paragraphs [0063]-[0067], [0069] and [0072]).
Referring to claim 4: Wong further teaches one end of the toroidal coil receives an input of the electrical signals from the frequency generator and an opposing end of the toroidal coil is connected to ground such that the toroidal coil is arranged within the therapeutic device as an antenna (see figure 5; paragraphs [0065]-[0066]; wherein it is clear that one end of the coil is grounded through the ground in the audio jack).
Referring to claim 7: Wong further teaches the toroidal coil is detachable from the electronic circuit enabling removal and replacement of the toroidal coil, and thereby facilitating selection of the optimum toroidal coil according to a specific treatment using the therapeutic device (see paragraphs [0044], [0063]-[0067], [0069] and [0072]).
Referring to claim 11: Wong further teaches the therapeutic device is portable and the dimensions of the therapeutic device are minimized such that the therapeutic device fits within a hand of an average adult (see figures 5-6).
Referring to claim 13: Wong further teaches the therapeutic device is a wearable therapeutic device comprising a removable attachment for attaching the therapeutic device to a person or animal in use (see figure 6, #15; paragraph [0070]; wherein the device is a wearable with a clip attachment, #15, that allows the device to be removable).
Referring to claim 14: Wong further teaches comprising a selectively attachable extension member (see figure 1, #10) to extend the reach of the therapeutic device and facilitate self-administered therapy (see paragraphs [0063]-[0067], [0069] and [0072]; wherein the audio jack acts as an extension member).
Referring to claim 15: Wong further teaches wireless communication means for communication with an external control to enable the external control to provide remote commands to the therapeutic device via the wireless communication means (see figure 6; paragraphs [0070]).
Referring to claim 16: Wong further teaches components of the electronic circuit are spaced by at least 4 mm from the toroidal coil to minimize interference therebetween (see figure 1; wherein the coil is spaced from the external mobile device housing the components of the electronic circuit by an audio jack and wherein it well understood that the standard length of a 3.5mm audio jack for standard consumer electronics like smartphones or laptops is around 1.5-2 inches).
Referring to claim 17: Wong further teaches a spacer (see figures 1-2, #10) located between components of the electronic circuit and the toroidal coil, wherein the spacer comprises a lightweight electrically non-conductive material to substantially restrict interference between the toroidal coil and other electronic components of the therapeutic device (see paragraph [0066]).
Referring to claim 18: Wong teaches a therapeutic apparatus for the alleviation of pain, inflammation or for therapeutic effect, the therapeutic apparatus comprising the therapeutic device as claimed in claim 1 as outlined above. Wong further teaches least two coils selectively and interchangeably connectable to the therapeutic device, wherein each coil is structured to generate different magnetic fields in response to electrical stimulation (see paragraphs [0044], [0063]-[0067], [0069] and [0072]).
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.
Claims 2-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wong, as applied to claim 1 above, in view of Simon et al. (US 2017/0151433 A1; cited by applicant on IDS dated 02/20/2024) (Simon).
Referring to claim 2: Wong further teaches the electronic circuit comprises a processor, and wherein the processor controls the output of the frequency generator within the electronic circuit such that the toroidal coil selectively emits a pulsed electromagnetic field within the preselected frequency range (see paragraphs [0063]-[0067], [0069], [0072] and [0077]). Wong is silent to the electronic circuit comprises a feedback loop, and wherein the feedback loop provides feedback to the processor regarding operational parameters of the toroidal coil such that the processor selectively controls the frequency generator to provide the electrical signals to maintain the oscillating electromagnetic field within the preselected frequency range.
Simon teaches a therapeutic device comprising a toroidal coil (see figure 2A, #341) that is adapted to produce electromagnetic field within a preselected frequency range in response to energization by electrical signals from an electronic circuit (see figure 2A, #310; paragraphs [0087]-[0089] and [0094]-[0096]), wherein the electronic circuit comprises a feedback loop through use of detectors (see paragraphs [0066], [0095], [0112], [0208] and [0228]), and wherein the feedback loop provides feedback to the processor regarding operational parameters of the toroidal coil such that the processor selectively controls the frequency generator to provide the electrical signals to maintain the oscillating electromagnetic field within the preselected frequency range (see paragraph [0095] and [0208]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device of Wong with a feedback loop through use of detectors like taught by Simon in order to improve experience and treatment of the patient (see Simon paragraphs [0066], [0095] and [0228]).
Referring to claim 3: Wong, as modified by Simon, further teaches the feedback loop within the electronic circuit further comprises detectors arranged to monitor parameters of the toroidal coil and feedback the electrical signals to the processor, wherein the processor adjusts the electrical signals produced by the electronic circuit in response to the monitored parameters (see Simon paragraphs [0066], [0095], [0112], [0208] and [0228]).
Referring to claim 6: Wong further teaches the processor is programmable to provide different therapeutic treatments having varying duration and intensity and enable selection of a suitable therapeutic treatment by a user (see paragraphs [0063]-[0067], [0069], [0072] and [0077]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of Simon, as applied to claim 2 above, in view of Yakovlev et al. (US 2017/0095667 A1) (Yakovlev).
Referring to claim 10: Wong, as modified by Simon, is silent to the processor being programmed to perform a calibration of the toroidal coil and/or the external environment by conducting a frequency sweep of the toroidal coil in the environment of use, in incremental steps to calculate an optimum frequency at maximum power.
Yakovlev teaches a therapeutic device wherein the processor is programmed to perform a calibration of a device and/or the external environment by conducting a frequency sweep of the device in the environment of use, in incremental steps to calculate an optimum frequency at maximum power (see paragraph [0281]). 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 processor of Wong, as modified by Simon, to perform a calibration by conducting a frequency sweep like taught by Yakovlev in order to maintain a good match between the coil and the transmitting circuits in order to improve power transfer characteristics to the coil (see Yakovlev paragraph [0281]).
Claims 5, 9, 12, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Wong.
Referring to claim 5: With regards to claim 1 above, Wong further teaches the toroidal coil is adapted to emit a pulsed electromagnetic field having a frequency in the range between 1Hz and 30kHz in response to energization by the electrical signals, wherein the frequency is based on the desired therapeutic effect (see paragraphs [0060], [0067] and [0072]) but is silent to a pulsed electromagnetic field having a frequency in the range between around 250 kHz to 350 kHz. There is no evidence of record that establishes that changing the frequency would result in a difference in function of the Wong device. Further, a person having ordinary skill in the art, being face with modifying the frequency based on audio selection of Wong, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended operating at the claimed frequencies. Lastly, applicant has not disclosed that the claimed range solves any stated problem, indicating that the device “may be arranged such that the coil may selectively emit” an electromagnetic field within the claimed range (see specification page 3, lines 28-34), thus, there appears to be no criticality placed on the range as claimed such that it produces an unexpected result. 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 frequency of Wong to a frequency in the range between around 250 kHz to 350 kHz as an obvious matter of design choice within the skill in the art based on the desired therapeutic effect.
Referring to claim 9: With regards to claim 1 above, Wong further teaches the toroidal coil comprises an inner diameter and an outer diameter (see figure 5). Wong is silent to the inner diameter being specifically between around 20mm and 30mm and the outer diameter being specifically between around 40mm and 60mm. 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 device of Wong to have inner diameter of between around 20mm and 30mm and the outer diameter of between around 40mm and 60mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Wong would not operate differently with the claimed inner and outer diameters. Further, it appears that applicant places no criticality on the ranges claimed, indicating simply that the diameters “may” be within the claimed ranges (see specification page 6).
Referring to claim 12: With regards to claim 1 above, Wong further teaches the therapeutic device is portable (see figures 5-6) but is silent to the longest dimension of the therapeutic device is less than 15 cm. 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 device of Wong to have the longest dimension of the device being less than 15 cm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Wong would not operate differently with the claimed dimension. Further, it appears that applicant places no criticality on the range claimed, indicating simply that the longest dimension “may” be within the claimed range (see specification page 7).
Referring to claim 20: Wong teaches a therapeutic apparatus for the alleviation of pain, inflammation or for therapeutic effect, the therapeutic apparatus comprising: a device (see figures 5-6) having an electronic circuit including a frequency generator (see figure 5, #5 wherein the frequency generator is incorporated into external device) for selectively producing electrical signals; and a plurality of coils (see paragraphs [0044], [0063]-[0067], [0069] and [0072]) wherein the electronic circuit comprises a connector (see figures 1-2, #10) complementary to a coil of the plurality of coils and that is selectively connectable to a connector of the device (see figures 1-2; paragraphs [0065]-[0066] and [0069]) and wherein each coil is configured to produce a unique oscillating electromagnetic field within a preselected frequency range in response to energization by the electrical signals, wherein the plurality of coils is interchangeable on the device via the connector such that the device is configurable and operable to produce a variety of preselected oscillating electromagnetic fields enabling an optimum treatment to be selected and generated for the alleviation of pain, inflammation or for therapeutic effect (see paragraphs [0044], [0063]-[0067], [0069] and [0072]). Wong is silent to the connector specifically being a plurality of connectors, and wherein each coil of the plurality of coils has a complementary connector from the plurality of connectors that is selectively connectable to a connector of the device, however, absent persuasive evidence that a mere duplication of parts (i.e., a plurality of designated connectors) would result in new and unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide each of the interchangeable coils of Wong with a plurality of designated complementary connectors (see MPEP 2144.04(VI)(B)) and since it is common and well known to include designated charging or electronic adaptors in packaging of electronic devices, thereby allowing interchangeable products to be sold separately.
Referring to claim 22: Wong further teaches, when in use, each coil being capable of being selectively energized to produce a unique electromagnetic field that varies according to one or more of the following parameters including but not limited to: field shape, field strength, intensity, homogeneity and direction (see paragraphs [0044], [0063]-[0067], [0069] and [0072]).
Claims 8 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of Vaiser et al. (US Patent No. 6,770,023) (Vaiser).
Referring to claim 8: With regards to claim 1 above, Wong further teaches the toroidal coil is formed of a length of wire (see figures 5-6; paragraphs [0047] and [0064]-[0065]) but is silent to the toroidal coil being formed from at least 10 meters of a pair of twisted wires wound around an annular insulator. Vaiser teaches a toroidal conductor formed of at least 20 meters of wire (see column 6, lines 46-58) of a pair of twisted wires wound around an annular insulator (see figure 8, #31; column 4, lines 13-26). 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 toroidal coil of Wong to include at least 10 meters of a pair of twisted wires wound around an insulator like taught by Vaiser in order to yield predictable results producing a desired electromagnetic field.
Referring to claim 21: With regards to claim 20 above Wong further teaches each coil comprises a conductor formed of a length of wire (see figures 5-6; paragraphs [0047] and [0064]-[0065]) and structured or configured differently to produce unique electromagnetic field when energized (see paragraphs [0044], [0063]-[0067], [0069] and [0072]). Wong is silent to the conductor being specifically wound around an annular core and where each coil includes variation of at least one of the following parameters including but not limited to: shape of the core, dimensions of the core, diameter of the core (minor and/or major radius of the core), material of the core, numbers of windings, length of windings, type and arrangement of windings. Vaiser teaches a toroidal conductor formed of at least 20 meters of wire (see column 6, lines 46-58) of a pair of twisted wires wound around an annular insulator (see figure 8, #31; column 4, lines 13-26), wherein at least the length of the wire may be varied between coils to vary the electromagnetic field when energized (see column 6, lines 46-58). 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 interchangeable coils of Wong to include at least variations in the length of wire wound around an insulator like taught by Vaiser in order to yield predictable results producing a desired electromagnetic field.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Wong, as applied to claim 18 above, in view of Sanderson et al. (US 2017/0202509 A1) (Sanderson).
Referring to claim 19: Wong is silent to the therapeutic apparatus further comprises at least one interchangeably connectable transducer configured to transmit energy at a preselected frequency. Sanderson teaches a system that transmits a treatment frequency to a person through various frequency implementers including an audio speaker of headphones and a PEMF device to modify the frequency of the environment around the person (see paragraph [0021]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the therapeutic apparatus of Wong with a connectable transducer in the form of headphones like taught by Sanderson in order to allow the user to selectively apply the treatment frequency through the coil or by listening to the audio files via the headphones.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAYLEE R WILSON whose telephone number is (571)270-7517. The examiner can normally be reached Monday thru Friday 8 AM-5:00 PM ET.
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/KAYLEE R WILSON/Primary Examiner, Art Unit 3700
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