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 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 3 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. Claim 3 recites the device of claim 1 “wherein the phototherapy comprises light configured to activate a photosensitizer agent toxic to tumor cell in the treatment area.” However, neither claim 3 nor its parent claim 1 discloses the phototherapy light configured to activate a photosensitizer agent toxic to tumor cell in the treatment area. The claim language is directed to intended use. Intended use claim language is generally given a limited patentable weight.
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 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, 4-7, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4,5, 7 and 8 of U.S. Patent No. 11,141,602 in view of Tedford et al. Pub. No. US 2021/0315736 (hereinafter “Tedford”). Regarding claims 1 and 6 of the current application, claim 1 of US Patent 11,141,602 teaches an implantable phototherapy device, comprising: a power receiver element/coil configured to receive power from an external power transmitter; a light delivery element powered by the power provided by the power receiver element/coil, and configured to deliver phototherapy to a target treatment area. US Patent 11,141,602 does not teach the light delivery element comprises a plurality of light sources configured to distribute light radially outward to illuminate the treatment area, the plurality of light sources configured to be adjusted to different light intensities and wavelengths. However, the use of delivery element comprising a plurality of light sources configured to distribute treatment light to treatment tissue is known is known in the art. Tedfor discloses multi-wavelength phototherapy system and methods for treatment of body tissue, see the abstract. Tedfor further teaches ([“In some embodiments, a combination of multiple types of light sources can be used. … In at least some embodiments, one or more of the fluence, power, pulse length, pulse width, wavelength, or any other light emission parameter, or any combination of these parameters, of each light source can be controlled or adjusted independently of the other light sources.”], see pars. 0172 and 0188. Thus, the time applicant’s invention was filed, it would have been obvious to one of ordinary skill in the art to modify the U.S. Patent 11,141,602 in view of Tedford’s teaching to use a plurality of light sources adapted to be adjusted to different light parameters (e.g., intensity, spot size, wavelength, pulse width, ect.) to provide treatment light to the treatment region, wherein the power output of the light sources can be adjusted depending on the suitable treatment energy for the treatment target body tissue.
Regarding claim 4 of the application, US Patent No. 11,141,602 claim 8 teaches the device of claim 1, wherein the light delivery element further comprises a temperature sensor configured to measure temperature at the target treatment area.
Regarding claim 5 of the application, US Patent No. 11,141,602 claim 5 teaches the device of claim 1, wherein the light delivery element comprises a plurality of light sources disposed on a substrate, and wherein the substrate is configured to be shaped to match the target treatment area.
Regarding claim 7 of the application, US Patent No. 11,141,602 claim 7 teaches the device of claim 1, wherein the light delivery element comprises a plurality of light sources configured to be independently controllable relative to one another.
Regarding claim 9 of the application, US Patent No. 11,141,602 claim 4 teaches the device of claim 1, where in the light delivery element comprises, a light source encapsulated in an optical material configured to protect the light source and wherein the optical material facilitates transmission of light from the light delivery element to the target treatment area.
Regarding claim 10 of the application, US Patent No. 11,141,602 claim 6 teaches the device of claim 5, wherein the substrate is a lightguide configured to direct light to the target treatment area and wherein the substrate is configured to be trimmed to a desired shape to fit the target treatment area.
Allowable Subject Matter
Claims 8, and 11-20 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
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