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 .
Disposition of Claims
Claims 1-20 are pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 121 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/500451, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior filed application original disclosure as filed 10/03/2019 (specification and original claims) does not provide written description for a coupling element as specified in claim 1 (i.e., there is no written description of “a coupling element … comprising at least one acoustically coupling material; at least one holding structure… wherein said coupling element comprises at least one sensor”, examiner notes that the only disclosure of a coupling element is in page 25, first full paragraph “In some embodiments, multiple small transducers are placed in a containing structure mounted next to the skin, preferably with an acoustic coupling element facing a kidney …”.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: a coupling element as specified in the pending claims lacks proper antecedence basis in the specification..
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, a coupling element comprising at least one acoustically coupling material; at least one holding structure… wherein said coupling element comprises at least one sensor” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Note: this application is a divisional to application 16/500,451 which is a National stage entry of PCT/IL2018/050397. The original disclosure does not provide written description for a coupling element as specified in claim 1 (i.e., there is no written description of “a coupling element … comprising at least one acoustically coupling material; at least one holding structure… wherein said coupling element comprises at least one sensor”, examiner notes that the only disclosure of a coupling element is in page 25, first full paragraph “In some embodiments, multiple small transducers are placed in a containing structure mounted next to the skin, preferably with an acoustic coupling element facing a kidney …” If examiner is mistaken, Applicant is respectfully requested to cite specific sections of the original disclosure (specification, claims and drawings of PCT IL2018/050397 and or application 16/500,451 as filed) that provides adequate written description of the coupling element specified in the pending claims.
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 1-20 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 1 does not positively recite at least one transducer (“…provide acoustic coupling between at least one transducer and a skin…”) and at least one controller (“… coupling element comprises at least one sensor adapted to provide feedback to at least one controller …”), however, claim 1 provides further limitation to the controller and transducer (“… said at least one controller unit controls said transducer …”), thus rendering the claims indefinite. Claims 15-16 and 19-20 further provide limitations to the at least one transducer or controller, rendering those limitations indefinite. Claims 2-14 and 17-18 inherit the indefiniteness from claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20140074076 A1 (“Gertner”) - see Figs. 28A-28I and associated discussion in the specification.
US 20150080926 A1 (“Emery”) - see Fig. 19 and associated discussion in the specification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONIFACE N NGANGA whose telephone number is (571)270-7393. The examiner can normally be reached Mon. - Thurs. 5:30 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONIFACE N NGANGA/Primary Examiner, Art Unit 3797