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
Claims 11-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/07/2026. Claims being examined are group I: claims 1-10.
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.
Claims 1-4, 6-9 are rejected under 35 U.S.C 102(a)(1) as being anticipated by Davalos et al. (US 20210393312) herein referred to as Davalos.
Regarding claim 1, Davalos discloses a method of non-thermal treatment of an endometrial lesion in a subject in need thereof (Paragraph [0004]; Paragraph [0170]; wherein cancer can consist of endometrial cancer therefore includes the treatment of endometrial tissue), comprising: a. identifying the location, size and volume of the endometrial lesion in the subject (Paragraph [0241]; wherein computer can identify the size and location of the lesion; Paragraph [0142]; wherein Figure 29 shows volume of the tissue pre and post treatment); b. determining an electric field useful in the treatment of the identified endometrial lesion (Paragraph [0333]); and c. applying the electric field to the endometrial lesion for an appropriate time and voltage to treat the endometrial lesion (Paragraph [0039]-[0045]).
Regarding claim 2, Davalos discloses the method of claim 1, wherein the determining an electric field includes determining a number of voltage pulses and the width of each pulse in a predetermined time increment (Paragraph [0035])
Regarding claim 3, Davalos discloses the method of claim 2, wherein the non-thermal treatment of the endometrial lesion causes necrosis of endometrial cells without significant damage to accompanying cell matrix (Paragraph [0186]; wherein treatment causes death of cells, necrosis, while preserving the cellular matrix).
Regarding claim 4, Davalos discloses the method of claim 3, wherein the electric field is provided by a pair of electrodes inserted about 5 mm to 20 mm apart in the endometrial lesion (Paragraph [0005]; wherein a pair of electrodes apply a plurality of electrical pulses into the tissue therefore creating an electric field; Paragraph [0274]; wherein the electrodes can be 0cm to 10cm spaced apart which is 0mm to 100mm).
Regarding claim 6, Davalos discloses the method of claim 1, wherein the electric field has a sufficient time and voltage to cause necrosis to cells within the endometrial lesion (Paragraph [0186]; wherein the pulse delivery which is seen to include time and voltage are what cause necrosis).
Regarding claim 7, Davalos discloses the method of claim 6, wherein the electric field does not cause significant damage to the matrix tissue of the endometrial lesion (Paragraph [0186]; wherein treatment which includes the electrical pulses of the electrical field causes death of cells, necrosis, while preserving the cellular matrix).
Regarding claim 8, Davalos discloses the method of claim 7, wherein the voltage is from about 500 volts to about 3,000 volts (Paragraph [0273]).
Regarding claim 9, Davalos discloses the method of claim 8, wherein the voltage is applied in two or more pulses lasting 75 ps to about 125 ps (Paragraph [0277]; wherein the pulse can last from 1 ps to 1000000 ps (100 microseconds)).
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 5 is rejected under 35 U.S.C 103 as being unpatentable over Davalos in view of Sharma et al. (US 20210059749) herein referred to as Sharma.
Regarding Claim 5, Davalos discloses the method according to claim 3. However, Davalos does not explicitly disclose wherein the subject is a woman between the ages of 25 and 50.
Sharma discloses a method of treatment of an endometrial lesion in a subject ([Paragraph [0062]) wherein the subject is a woman between the ages of 25 and 50 (Paragraph [0012]; wherein endometrial ablation is used to treats woman in reproductive age, such that average reproductive age for a woman is 15-50). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have a subject of a woman within this age range as taught by Sharma. The motivation being only woman have endometrial tissue and conditions that need to be treated usually occur during reproductive age of women (Paragraph [0012]).
Claim 10 is rejected under 35 U.S.C 103 as being unpatentable over Davalos in view of Schwartz et al. (US 11045246) herein referred to as Schwartz.
Regarding Claim 10, Davalos discloses the method according to claim 9. However, Davalos does not explicitly disclose wherein the two electrodes are made of stainless steel.
Schwartz discloses a method of treatment to endometrial tissue (Column 2, lines 8-11) wherein the electrodes are made of stainless steel (Column 95, lines 54-61). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the material the electrodes taught by Davalos are made out of to be stainless steel as taught by Schwartz. The motivation being stainless steel is a electromagnetic material that allows for the production of magnetic electric fields (Column 95, lines 54-61).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA M PAPE whose telephone number is (703)756-5947. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALYSSA M. PAPE
Examiner
Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
Prosecution Insights