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
Applicant is advised that should claim 11 or 12 be found allowable, claim 19 or 20 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.
Claim 21 is 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.
Regarding claim 21, the limitation “a controller comprising a compliance monitoring module, where the compliance monitoring module is configured to track the application of energy to the user's skin over a compliance period and to output compliance data based.” appears to be missing a portion of the limitation; it is not clear what the outputting of compliance data is based upon because there is no continuing information. For the purposes of examination, any outputting of compliance data based on any compliance data will be considered to teach the limitation.
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 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/730,299 in view of Tran (U.S. Patent Application Publication No. 2019/0247650) hereinafter referred to as Tran.
The claims of copending Application No. 18/730,299 anticipate the instant claims excepting for the following elements taught by Tran: a plurality of electrode assemblies on an inner face of the garment, the electrode assemblies each configured to sit flush against the user's skin (¶[0021], ¶[0056]), wherein the electrode assemblies each include an electrically conductive base formed of one or more of: carbon nanotubes, graphene and/or conductive silicone (¶[0126], ¶[0225]);
a plurality of electrical connectors electrically coupling the electrically conductive base of each of the electrode assemblies to a coupler region (¶[0121]) configured to be electrically coupled to a controller for applying EMS, wherein the plurality of electrical connectors are formed of one or more of: carbon nanotubes, graphene and/or conductive silicone (¶[0126], ¶[0225]);
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the invention claimed in copending Application No. 18/730,299, to comprise the electrode assemblies and connectors taught by Tran, to achieve material benefits such as extremely large surface-to-volume ratio with useful electrical properties (Tran ¶[0126]).
This is a provisional nonstatutory double patenting rejection.
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.
(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.
Claim(s) 1-3 and 5-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tran (U.S. Patent Application Publication No. 2019/0247650) hereinafter referred to as Tran.
Regarding claim 1, Tran teaches an electrical muscle stimulation (EMS) suit apparatus (Abstract, Fig. 1), the apparatus comprising:
a garment comprising an elastic material that is configured to conform to a user's body (¶[0139] flexible substrate);
a plurality of electrode assemblies on an inner face of the garment, the electrode assemblies each configured to sit flush against the user's skin (¶[0021], ¶[0056]), wherein the electrode assemblies each include an electrically conductive base formed of one or more of: carbon nanotubes, graphene and/or conductive silicone (¶[0126], ¶[0225]);
a plurality of electrical connectors electrically coupling the electrically conductive base of each of the electrode assemblies to a coupler region (¶[0121]) configured to be electrically coupled to a controller for applying EMS, wherein the plurality of electrical connectors are formed of one or more of: carbon nanotubes, graphene and/or conductive silicone (¶[0126], ¶[0225]);
a plurality of sensors distributed on, in, or over the garment (Fig. 1A, Fig. 5, ¶[0064]); and
a controller (¶[0057]) configured to control the application of energy to individual electrodes assemblies of the plurality of electrode assemblies (¶[0083]), wherein the controller is configured to receive sensor data from the plurality of sensors and to identify a type of exercise being performed by the user (¶¶[0065-0066]), and to set a subset of the plurality of electrode assemblies to activate based on the identified type of exercise (¶[0083], ¶[0096]).
Regarding claim 2, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the garment comprises one or more of: an upper region configured to be worn on the user's torso, and a lower region that is configured to confirm the user's legs and buttocks (Fig. 1A, full body).
Regarding claim 3, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the controller is configured to be secured to the EMS suit apparatus (Fig. 1A, element 10 “processor”).
Regarding claim 5, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the controller is configured to wirelessly communicate with one or more remote processors to receive EMS treatment parameters (¶[0055]).
Regarding claim 6, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the controller comprises a trained machine learning agent configured to identify the type of exercise being performed by the user (¶¶[0065-0066]).
Regarding claim 7, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the controller is further configured to recommend or adjust the energy applied by the subset of the plurality of electrode assemblies based on the type of exercise identified (¶[0083], ¶[0096]).
Regarding claim 8, Tran teaches the apparatus of claim 7.
Tran further teaches wherein the controller comprises a trained machine learning agent (¶¶[0065-0066]) configured to recommend or adjust the energy applied by the subset of the plurality of electrode assemblies and based on sensor data from the plurality of sensors (¶¶[0083-0085], ¶[0096]).
Regarding claim 9, Tran teaches the apparatus of claim 7.
Tran further teaches wherein the controller comprises a trained machine learning agent configured to recommend or adjust the energy applied by the subset of the plurality of electrode assemblies and based on user-specific data (¶[0060] includes limb kinematics and this comprises a history of performance data for this user).
Regarding claim 10, Tran teaches the apparatus of claim 9.
Tran further teaches wherein the user-specific data (¶[0305] patient specific demographic data) comprises one or more of: user past performance (¶[0060] maps limb kinematics to desired limb kinematics), user height (¶[0305]), user weight (¶[0305]), user BMI, user physical condition, user age (¶[0305]), user biometric data from the plurality of sensors (¶[0143]).
Regarding claim 11, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the garment comprises one or more of: a shirt, vest, pants, or shorts (Fig. 1A, ¶[0299]).
Regarding claim 12, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the plurality of sensors comprises one or more of: motion sensors, bioimpedance sensors, and position sensors (¶[0021], ¶¶[0064-0065], ¶[0332]).
Regarding claims 13-15 and 17-20, the claims are directed to an EMS suit apparatus comprising substantially the same subject matter as claims 1, 6, 8-9, and 11-12 and are rejected under substantially the same sections of Tran.
Regarding claim 16, Tran teaches the apparatus of claim 1.
Tran further teaches wherein the controller is configured to automatically or semi-automatically adjust the energy applied by the plurality of electrode assemblies based on the recommendation of the trained machine learning agent (¶¶[0060-0061], ¶¶[0083-0096]).
Regarding claim 21, the claim is directed to substantially the same subject matter as claim 1, and is rejected under substantially the same sections of Tran.
Tran further teaches a controller comprising a compliance monitoring module, where the compliance monitoring module is configured to track the application of energy to the user's skin over a compliance period and to output compliance data based (¶[0242]).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tran (U.S. Patent Application Publication No. 2019/0247650) hereinafter referred to as Tran; in view of Dernebo et al. (U.S. Patent Application Publication No. 2020/0188653) hereinafter referred to as Dernebo.
Regarding claim 4, Tran teaches the apparatus of claim 1.
Tran does not teach the controller configured to dynamically adjust a user-specific maximum EMS power applied during a treatment session.
Attention is drawn to the Dernebo reference, which teaches a controller configured to dynamically adjust a user-specific maximum EMS power applied during a treatment session (¶[0151]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the controller of Tran to include dynamic adjustment of maximum EMS power, as taught by Dernebo, because adjusting the power of stimulation pulses can compensate for any changes in muscle internal resistance (Dernebo ¶[0151]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent No. 11,986,652 to Ritzen et al. teaches an EMS device and a review of the state of the art in EMS apparatus.
U.S. Patent Application Publication No. 2021/0084999 to Matsuura et al. teaches a wearable EMS garment including feedback to the wearer and adjustment to provided stimulus.
U.S. Patent Application Publication No. 2018/0036531 to Schwarz et al. teaches an EMS garment including specific guidance on power management and pulse parameters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L STEINBERG whose telephone number is (303)297-4783. The examiner can normally be reached Mon-Fri 8-4.
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/AMANDA L STEINBERG/Examiner, Art Unit 3792
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