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 Objections
Claim 2 is objected to because of the following informalities: “external power supply” should be “external power source” to remain consistent with claim 1. Appropriate correction is required. Claims 9 and 16 are also objected for similar reasons in line 4.
Applicant is advised that should claim 5 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim 6 be found allowable, claim 12 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Applicant is advised that should claim 7 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Applicant is advised that should claim 8 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Applicant is advised that should claim 9 be found allowable, claim 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 2-16 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.
Claim 2 recites the limitation "the external wire" in line 7 and 9. There is insufficient antecedent basis for this limitation in the claim. The examiner assumes this is referring to the outer wires. Dependent claims inherit the same deficiencies.
Claim 3 requires both the core wire and the outer wire include insulating films; this is unclear because claim 2 states a base wire is formed by winding a plurality of outer wires around one core wire. Therefore it is unclear which outer wire of the plurality of wires is being referenced or if all of the outer wires include insulating films.
Claim 13 requires the supporter and the base wire are respectively detachably connected to each other by attachment members. The disclosure in Paragraph [0064] discloses attachment members are on both edges of the support member so that it can be opened or closed, but does not disclose attachment members where the supporter and base wire are respectively connected to each other by attachment members. Therefore, it is unclear if the claim is requiring the supporter and the base wire to be releasable from each other by an attachment member or if this is indicating the supporter has an attachment member so that it can be opened or closed. Based on the disclosure the examiner assumed the latter.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daibo et al (US Publication 2016/0300652).
Referring to Claim 1, Daibo et al teaches an electrical stimulation method for a living body (e.g. Paragraph [0237] discloses the vector potential col used for non-contact electric stimulus of deep locations in living body), comprising: providing an electrical stimulator wound in a cylindrical shape and placing a part or a whole of the living body in the electrical stimulator (e.g. Figure 5 illustrates the vector potential coil wrapped around the object so the vector potential (VP) flows through the internal space); flowing current from an external power source of the electrical stimulator to the electrical stimulator (e.g. Figure 5, power source 5 and Paragraph [0073]); generating an electric field along an axial direction of a cylindrical inside space of the electrical stimulator so that an induced current flows through a part or the whole of the living body (e.g. Figure 5, VP and Paragraph [0113]-[0114]).
Referring to Claim 2, Daibo et al teaches an electrical stimulation method for a living body according to claim 1, wherein the electrical stimulator includes a base wire formed by winding a plurality of outer wires around one core wire (e.g. Figure 5, core wire 6 and winding outer wire 3), and one end of the core wire is electrically connected to one end of the external wire (e.g. Figure 5 left side of drawing , including the zoomed in section with core wire 6 is referenced and shown connected to winding wire 3), another end of the core wire is connected to one end of the external power supply, and another end of the external wire is connected to another end of the external power supply (e.g. Figure 5, right side of Figure illustrates the core wire connected to the power supply 5 and the winding wire connected to power supply 5).
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.
Claim(s) 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daibo et al (US Publication 2016/0300652) in view of Farr (US Publication 2011/0043190).
Referring to Claim 3, Daibo et al teaches an electrical stimulation method for a living body according to claim 2, wherein in the electrical stimulator, both the core wire and the outer wire include insulating films (e.g. Paragraph [0078] discloses the winding conductor is covered with an insulating layer and Paragraph [0113] discloses the core wire 6 is covered by an insulating layer), and the outer wire is wound around the core wire where insulation is required to prevent short circuiting in the axial direction (e.g. Figure 5 and Paragraph [0078]). However, Daibo et al does not explicitly disclose outer wire is wound around the core wire without a gap between wire wraps.
Farr teaches that it is known to use the conductive wiring is wound shoulder to shoulder, which refers to a winding where each winding turn of a conductor (e.g., wire) is against at least another such winding turn with no or relatively very little gap as set forth in Paragraphs [0038] and [0048] to provide improved isolation from electrostatic interference. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with outer wire is wound around the core wire without a gap between wire wraps as taught by Farr, since such a modification would provide the predictable results of improved isolation from electrostatic interference.
Referring to Claim 4, Daibo et al in view of Farr teaches an electrical stimulation method for a living body according to claim 3, further comprising: winding the base wire around a part or the whole of the living body (e.g. Paragraph [0237]).
Referring to Claims 5, Daibo et al in view of Farr teaches an electrical stimulation method for a living body according to claim 4, further comprising: the outer wire is covered in an insulation layer to prevent short circuiting (e.g. Paragraph [0078] discloses the winding conductor is covered with an insulating layer to prevent shorting with a neighboring conductor) and the base wire is wound two or more turns in the axial direction (e.g. Figure 5 illustrates more than 2 turns of the base wire). However, Daibo et al does not disclose winding the base wire without a gap between adjacent base wires in the axial direction.
Farr teaches that it is known to use the conductive wiring is wound shoulder to shoulder, which refers to a winding where each winding turn of a conductor (e.g., wire) is against at least another such winding turn with no or relatively very little gap as set forth in Paragraphs [0038] and [0048] to provide improved isolation from electrostatic interference. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with winding the base wire without a gap between adjacent base wires in the axial direction as taught by Farr, since such a modification would provide the predictable results of improved isolation from electrostatic interference.
Referring to Claim 6, Daibo et al in view of Farr teaches an electrical stimulation method for a living body according to claim 5, wherein the electrical stimulator further includes a supporter, and the base wire is wound around the supporter (e.g. Figure 5, supporter 10).
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daibo et al (US Publication 2016/0300652) in view of Farr (US Publication 2011/0043190) as applied to claim 6 above, and further in view of Hassler Jr. et al (US Publication 2005/0288741).
Referring to Claim 7, Daibo et al in view of Farr teaches an electrical stimulation method for a living body according to claim 6, except wherein at least one of the core wire and the outer wire is a litz wire. Hassler Jr. et al teaches that it is known to use coil wire made of Litz as set forth in Paragraph [0028] to provide minimizing power losses in the coil due to the skin effect, or tendency of radio frequency current to be concentrated at the surface of the conductor. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with at least one of the core wire and the outer wire is a litz wire as taught by Hassler Jr. et al, since such a modification would provide the predictable results of minimizing power losses in the coil due to the skin effect, or tendency of radio frequency current to be concentrated at the surface of the conductor.
Referring to Claim 8, Daibo et al in view of Farr and Hassler Jr. et al teaches an electrical stimulation method for a living body according to claim 7, wherein the electrical stimulator includes a controller (e.g. Paragraphs [0256]-[0257] and [0260] discuss making adjustments of (controlling) the current of each power supply).
Referring to Claim 9, Daibo et al in view of Farr and Hassler Jr. et al teaches an electrical stimulation method for a living body according to claim 8, wherein an alternating current or a pulsed current is supplied from the external power supply (e.g. Paragraph [0073] discloses alternating current is supplied).
Claim(s) 10-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daibo et al (US Publication 2016/0300652) in view of Farr (US Publication 2011/0043190) and Hassler Jr. et al (US Publication 2005/0288741) as applied to claim 9 above, and further in view of LaForge et al (US Patent 4,143,661).
Referring to Claim 10, Daibo et al in view of Farr and Hassler Jr. et al teaches an electrical stimulation method for a living body according to claim 9, except further comprising: winding the base wire in advance to form a cylindrical portion; after winding the base wire in advance, putting a part or the whole of the living body into the cylindrical portion. LaForge et al teaches that it is known to use winding the base wire in advance to form a cylindrical portion; after winding the base wire in advance, putting a part or the whole of the living body into the cylindrical portion as set forth in Figures 4-5, support member (11) with attachment members (17) and conductors (13) to form the continuous annulus and Column 3 lines 4-14 to provide ease of using and placing the device. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with winding the base wire in advance to form a cylindrical portion; after winding the base wire in advance, putting a part or the whole of the living body into the cylindrical portion as taught by LaForge et al, since such a modification would provide the predictable results of ease of using and placing the device..
Referring to Claim 11, Daibo et al in view of Farr, Hassler Jr. et al, and LaForge et al teaches an electrical stimulation method for a living body according to claim 10, further comprising: the outer wire is covered in an insulation layer to prevent short circuiting (e.g. Paragraph [0078] discloses the winding conductor is covered with an insulating layer to prevent shorting with a neighboring conductor) and the base wire is wound two or more turns in the axial direction (e.g. Figure 5 illustrates more than 2 turns of the base wire). However, Daibo et al does not disclose winding the base wire without a gap between adjacent base wires in the axial direction.
Farr teaches that it is known to use the conductive wiring is wound shoulder to shoulder, which refers to a winding where each winding turn of a conductor (e.g., wire) is against at least another such winding turn with no or relatively very little gap as set forth in Paragraphs [0038] and [0048] to provide improved isolation from electrostatic interference. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with winding the base wire without a gap between adjacent base wires in the axial direction as taught by Farr, since such a modification would provide the predictable results of improved isolation from electrostatic interference.
Referring to Claim 12, Daibo et al in view of Farr, Hassler Jr. et al, and LaForge et al teaches an electrical stimulation method for a living body according to claim 11, wherein the electrical stimulator further includes a supporter, and the base wire is wound around the supporter (e.g. Figure 5, supporter 10).
Referring to Claim 13, Daibo et al in view of Farr, Hassler Jr. et al, and LaForge et al teaches an electrical stimulation method for a living body according to claim 12, except wherein the supporter and the base wire are respectively detachably connected to each other by attachment members.
LaForge et al teaches that it is known to use a support supporting the annulus and has mutually fixed attachment members on both edges; and two ends of each of the annulus are detachably connected to each other via the mutually fixed attachment members to form a continuous loop as set forth in Figures 4-5, support member (11) with attachment members (17) and conductors (13) to form the continuous annulus and Column 3 lines 4-14 to provide ease of placing the device. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with the supporter and the base wire are respectively detachably connected to each other by attachment members as taught by LaForge et al, since such a modification would provide the predictable results of ease of placing the device.
Referring to Claim 14, Daibo et al in view of Farr, Hassler Jr. et al, and LaForge et al teaches an electrical stimulation method for a living body according to claim 13, except wherein at least one of the core wire and the outer wire is a litz wire.
Hassler Jr. et al teaches that it is known to use coil wire made of Litz as set forth in Paragraph [0028] to provide minimizing power losses in the coil due to the skin effect, or tendency of radio frequency current to be concentrated at the surface of the conductor. It would have been obvious before the effective filing date of the claimed invention to one having ordinary skill in the art to modify the method as taught by Daibo et al, with at least one of the core wire and the outer wire is a litz wire as taught by Hassler Jr. et al, since such a modification would provide the predictable results of minimizing power losses in the coil due to the skin effect, or tendency of radio frequency current to be concentrated at the surface of the conductor.
Referring to Claim 15, Daibo et al in view of Farr, Hassler Jr. et al, and LaForge et al teaches an electrical stimulation method for a living body according to claim 14, wherein a controller is further included (e.g. Paragraphs [0256]-[0257] and [0260] discuss making adjustments of (controlling) the current of each power supply).
Referring to Claim 16, Daibo et al in view of Farr, Hassler Jr. et al, and LaForge et al teaches an electrical stimulation method for a living body according to claim 15, wherein an alternating current or a pulsed current is supplied from the power supply (e.g. Paragraph [0073] discloses alternating current is supplied).
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,533,510. Although the claims at issue are not identical, they are not patentably distinct from each other because following the rationale in In re Goodman, cited above, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kaneko et al (US Publication 2023/0271006) discloses treating a living body using an electrical stimulator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William J Levicky whose telephone number is (571)270-3983. The examiner can normally be reached Monday-Thursday 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571)270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/William J Levicky/Primary Examiner, Art Unit 3796
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