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
Applicant's election with traverse of Group II, Claims 5-11, in the reply filed on 1 April 2026 is acknowledged. The traversal is on the ground(s) that the present application is a national stage entry under 35 USC 371, and the restriction requirement must be evaluated under the unit of invention standard. The examiner notes that the Groups I (Claims 1-4) and Group II (Claims 5-11) would still be subject to restriction requirement under the unity of invention standard. Specifically, Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature, with Group I requiring a closed equipotential surface and a collection electrode placed on the patient between the stimulation and registration electrodes, where Group II is silent with regard to the targeted placement of the collection electrode and a closed equipotential surface. Group II specifies an electrical stimulator, and a control unit – which are technical features not present in group I.
Accordingly, the requirement is still deemed proper and is therefore made FINAL. Claims 1-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/group, there being no allowable generic or linking claim.
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 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.
(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 5, 6, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (US 2017/0347908; hereinafter “Watanabe”).
Regarding claim 5, Watanabe discloses a device for electrical stimulation reducing the stimulation artifact, comprising: an electrical stimulator designed to be connected to a stimulation electrode (e.g. Fig. 9, #12), a stimulation electrode including an anode and a cathode (e.g. ¶¶ 126 – 2a/2b),recording electrodes including an active electrode and a reference electrode (e.g. ¶¶ 98 – “four myoelectric detection electrodes 3a, 3b, 3c, and 3d of the muscle condition measurement sheet 1 with a ground potential of the cathode 2b also serving as a reference electrode”), a recording part for connection with the recording electrodes (e.g. Fig. 9, #16), and a control unit made at least for controlling the electric stimulator (e.g. ¶¶ 106 – “configured to be capable of selectively outputting two types of electrical stimulation signals”, where the examiner notes that a controller or logic must be involved in selective output of the signals), wherein the electric stimulator is equipped with an electric shield of the electric stimulator to create an equipotential conductive surface surrounding this electric stimulator, wherein the shielding is provided with a connection connector for connection to the shielding of the stimulation electrode or is directly connected to this shielding (e.g. ¶¶ 103, 126-127, etc.) and wherein the shielding of the electrical stimulator and/or to the shielding of the stimulation electrode is provided for connection to the collecting electrode or is connected to the collecting electrode (e.g. Fig. 9, #11, ¶¶ 103, etc.) and wherein at least between the electrical stimulator and the remaining parts of the device, a low capacitive coupling is provided (where the examiner is of the position that the isolator in combination with the insulating sheet body meets the claimed low capacitive coupling).
Regarding claim 6, Watanabe discloses the electrical stimulator is arranged in a cover made of electrically conductive material and/or in a cover made of electrically non-conductive material provided with an overall adhesive foil of electrically conductive foil and/or in a cover made of electrically non-conductive material provided with an electrically conductive varnish coating (e.g. ¶¶ 127 – “the flexible insulating sheet body 22 made of PET or the like”).
Regarding claim 8, Watanabe discloses the collection electrode is a part of the stimulation electrode, being directly connected to the shielding of the stimulation electrode (e.g. ¶¶ 98; Fig. 9 – where the ground/cathode are shared).
Regarding claim 9, Watanabe discloses the collection electrode (6) is located between the anode (4) and the cathode (5) of the stimulation electrode (e.g. ¶¶ 133-140 – where it is noted that the electrode positioning and targets may be adjusted depending on the patient).
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 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.
In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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 of this title, 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 7, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 2017/0347908; hereinafter “Watanabe”). Watanabe fails to expressly disclose the electrically conductive film foil and/or electrically conductive varnish coating and/or metal cover have a resistance of at most 100 Ohm per square, 10 ohm per square, or 1 Ohm per square as claimed. The examiner notes that PET layer can be engineered to have a set resistance as is known in the art. It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to modify the PET layer to have a resistance of at most 100 Ohm per square, 10 ohm per square, or 1 Ohm per square as claimed, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael D’Abreu whose telephone number is (571) 270-3816. The examiner can normally be reached on 7AM-4PM.
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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/MICHAEL J D'ABREU/Primary Examiner, Art Unit 3796
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