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 .
Election/Restrictions
1. Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/08/2026.
Applicant's election with traverse of claims 1-8 in the reply filed on 05/08/2026 is acknowledged. The traversal is on the ground(s) that there would not b. This is not found persuasive. When looking at Group I (claims 1-8) versus Group II (claims 9-14), Group II is directed to a system, rather than a method, where each of the transducers are placed on different parts of the user’s body, and wherein there is an AC voltage generator controlled by instructions used to alternate the current between these transducers. This is not required by Group I, thus requiring undue search burden. Next, Group I and Group III (claims 15-20) would also require undue search burden. While Group I using transducers on a subject, Group III teaches a method for determining where transducers should be placed on a subject and what the dosage of these transducers should be based on a processing system – none of these limitations being in Group I. Finally, Group II and Group III also comprise different subject matter. Group II being related to using a transducer system using an AC voltage generator, and Group III being related to how to determine where to place a transducer and what dose the transducer should provide.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
2. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
3. 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.
In regards to claim 1, “the transducers” lack antecedent basis. This should be amended to read “the plurality of transducers” since this is how they are originally claimed.
In regards to claims 1-5, 8, and 15, the Applicant claims a “plurality” of transducers or pairs. Plurality required two at minimum, but the scope of the claims only encompasses two transducers as the plurality. However, the claims then go on to recite that there are two different sets within this plurality, which requires at minimum 3 transducers (e.g. if there are 3 transducers A, B and C, one set would include A and B and the other could include B and C). Specifically, a set requires at least two. Therefore, it’s unclear if the claimed plurality requires at least 3 transducers or just at least 2 (as normally understood). Clarification is needed in regards to what is meant by a plurality of transducers, as well as the sets.
Claims 6-7, 9-14, and 16-20 are rejected by virtue of their dependency.
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.
4. Claim(s) 1-4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bomzon (US 20200129761 A1) in view of Avraham (US 20210060334 A1).
In regards to claim 1, Bomzon discloses a method of applying tumor treating fields to a subject (Abstract), the method comprising:
locating a plurality of transducers on the subject at positions selected, to focus electric fields around a spinal area of the subject (Par. 0022-0023 teach placing transducer arrays on the subject’s spinal area); and
alternately inducing a first electric field for a first set of the transducers and a second electric field for a second set of the transducers (Par. 0020 teaches that there is a first and second array of transducers on the subject and Par. 0022-0023 teach applying currents to the separate transducer arrays to induce electric fields).
Bomzon teaches placing the transducer arrays on the subject, however, they do not disclose wherein this is done based on a model of electrical conductivity in a portion of the subject.
However, in the same field of endeavor, Avraham teaches a method for treating tumors using transducer arrays (Abstract) wherein a model is used to determine the placement of the transducers (Par. 0044) in order to find the layout that yields optimal electric field distributions within the target volume (Par. 0044).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Bomzon and modified them by having the system use a model to determine transducer placement, as taught and suggested by Avraham, in order to find the layout that yields optimal electric field distributions within the target volume (Par. 0044 of Avraham).
In regards to claim 2-4, the combined teachings of Bomzon and Avraham as applied to claim 1 disclose the method of claim 1, wherein the plurality of transducers are located to focus electric fields on at least one of a thoracic-high lumbar region of the subject or a region around vertebrae T2-L4 of the subject, and least one of a cervical region of the subject, a cervical-high thoracic region of the subject, or a region around vertebrae C5-T2 of the subject, and at least one of a lower lumbar region of the subject, a sacral region of the subject, or a region around vertebrae L4-L5 of the subject (Fig 3 of Bomzon shows the transducers placed on these regions of the spine, see also Par. 0023-0025 of Bomzon).
In regards to claim 8, the combined teachings of Bomzon and Avraham as applied to claim 1 disclose the method of claim 1, wherein the plurality of transducers include at least two pairs of transducers (Par. 0020 of Bomzon teaches that there is a first and second array of transducers).
5. Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bomzon and Avraham, and in further view of Yeh (US 20220314008 A1).
In regards to claim 5-7, the combined teachings of Bomzon and Avraham as applied to claim 1 disclose the method of claim 1, except for wherein the subject has a non-conductive implant in the spinal area where the electric fields are focused by the plurality of transducers, wherein the non-conductive implant is comprised of polyether ether ketone (PEEK), wherein the non-conductive implant does not include titanium.
However, in the same field of endeavor, Yeh teaches an electrical stimulation device for the spinal cord (Abstract and Par. 0138) wherein there is an implantable device made of PEEK in connection with transducers (Par. 0310 and 0398), in order to help facilitate energy transfer from the transducers to a tissue target (Par. 0398).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Bomzon and Avraham and modified them by having the system comprise an implant made of PEEK in connection with the transducers, as taught and suggested by Yeh, in order to help facilitate energy transfer from the transducers to a tissue target (Par. 0398).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SKYLAR LINDSEY CHRISTIANSON whose telephone number is (571)272-0533. The examiner can normally be reached Monday-Friday, 7:30-5:30 EST.
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/S.L.C./Examiner, Art Unit 3792
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
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