CTNF 18/929,780 CTNF 87150 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority Claims 2-21 are deemed to have an effective filing date of August 4, 2017. Specification 07-29 AIA The disclosure is objected to because of the following informalities: the recitation of “when it wearing glasses” appears to have a typo as “it” does not make sense with the sentence . Appropriate correction is required. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 and 12-19 of U.S. Patent No. 12,161,877 . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claims 2-3 and 11 of the instant application are encompassed by and conflicts with claims 1 and 16 of the ‘877 patent. With respect to the winding direction of claim 3, it is submitted that it would have been obvious to have one winding clockwise and another winding counter-clockwise as there are a limited number of possibilities for the different winding directions. Claim 4 of the instant application is encompassed by and conflicts with claim 2 of the ‘877 patent. Claims 5-8 of the instant application are encompassed by and conflict with claims 12-15, respectively of the ‘877 patent. Claims 9-10 of the instant application are encompassed by and conflict with claims 17-18, respectively of the ‘877 patent. Claims 12-15 of the instant application are encompassed by and conflict with claims 3-6, respectively of the ‘877 patent. Claim 16 of the instant application is encompassed by and conflicts with claim 11 of the ‘877 patent. Claims 17 and 20 of the instant application is encompassed by and conflicts with claim 16 of the ‘877 patent. Claims 18-19 of the instant application are encompassed by and conflict with claims 17-18, respectively of the ‘877 patent. Claim 21 of the instant application is encompassed by and conflicts with claim 19 of the ‘877 patent . 08-34 AIA Claim s 2-7, 11-12, 17 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 2-4, 6, and 19 of U.S. Patent No. 11,529,528 . Although the claims at issue are not identical, they are not patentably distinct from each other because : Claims 2-3, 7, 11-12, 17 and 19-21 of the instant application are encompassed by and conflicts with claims 2 and/or 19 of the ‘528 patent where the coils of the ‘528 patent are considered to be electrodes. With respect to the winding direction of claim 3, it is submitted that it would have been obvious to have one winding clockwise and another winding counter-clockwise as there are a limited number of possibilities for the different winding directions. Claims 4 and 19 of the instant application are encompassed by and conflict with claims 3-4 of the ‘528 patent. Claims 5-6 of the instant application are encompassed by and conflict with claim 6, respectively of the ‘528 patent . 08-36 AIA Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,529,528 in view of US Patent Application Publication No. 2013/0006326 to Ackermann et al.(hereinafter referred to as “Ackermann”). Claim 2 of the ‘528 patent discloses the system of claim 2 of the instant application, but does not expressly recite that the system comprising a lens. However, Ackerman, in a related art: stimulation devices and method for stimulating an anatomical target for treating eye disorders (abstract), teaches a contact lens support structure that has electrodes/coils positioned thereon in a ring with a center of the ring aligned with the center of the lens (e.g., Fig. 6G and paragraphs [0099]-[0100] where the coils receive energy from a remote controller wirelessly). Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that a system for treating a subject's eye can be placed adjacent to the eye being treated with a contact lens as taught by Ackermann. Accordingly, one of ordinary skill in the art would have modified the support structure of claim 2 of the ‘528 patent to be positioned external to a surface of an eye of the subject as such was a well-known method of treating an eye disorder as taught by Ackermann, and because the combination would have yielded predictable results . 08-36 AIA Claim s 9-10 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 2-4 of U.S. Patent No. 11,529,528 in view of US Patent Application Publication No. 2018/0161579 to Franke et al. (hereinafter referred to as "Franke") . With respect to claim 9, claim 2 of the ‘528 patent recites the system of claim 2 of the instant application wherein the support structure comprises glasses including a cover (frame) and a securement mechanism (two arms for securing the glasses on ears of the subject) so that the glasses are held in position over the eye of the subject; but, does not expressly recite that the glasses are an eye mask. However, Franke, in a related art: a stimulation system for treating an eye condition (abstract), teaches a stimulation system employing an eyeglass variation (Figs. 3A-3B), a goggle variation 400 (Fig. 4), and an eye mask 600 (e.g., paragraph [0105] and Fig 6. of Franke). Thus, one of ordinary skill in the art would have recognized the benefits of a stimulation system having a support structure as an eye mask in view of the teachings of Franke. Consequently, one of ordinary skill in the art would have modified the eyeglass variation of the ‘528 patent by substituting an eye mask for its support structure as taught by Franke, and because the combination would have yielded predictable results As to claim 10, claim 4 of the ‘528 patent, as modified by Franke above, encompasses and conflicts with claim 10 of the instant application. With respect to claim 18, claim 19 of the ‘528 patent, as modified by Franke as above, encompasses and conflicts with claim 18 of the instant application . 08-36 AIA Claim s 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,529,528 in view of US Patent Application Publication No. 2011/0022118 to Rickard . With respect to claim 13, claim 2 of the ‘528 patent recites the system of claim 11 of the instant application, but does not expressly disclose or teach a sensor in wireless communication with the signal generator where the signal generator is configured to receive a signal from the sensor and the signal representative of a parameter is detected at the eye of the subject. However, Rickard, in a related art: application of an electrical field in the vicinity of the trabecular meshwork to treat glaucoma, teaches a controller coupled to a pressure sensor and a pair of electrodes coupled to the voltage source where the electrodes apply the electric field and the controller controls the application of the electric field based on intraocular pressure (IOP) measurements from the pressure sensor (e.g., abstract and paragraph [0013] of Application/Control Number: 18/084,070 Art Unit: 3792 Page 8 Rickard). Accordingly, one of ordinary skill in the art would have recognized the benefits of a system using feedback to control the application of the electrical field in order to treat glaucoma in view of the teachings of Rickard that measurements from a pressure sensor were known to be used to control the electric field generated by the electrodes of the system. Consequently, one of ordinary skill in the art would have modified the system of claim 2 of the ‘528 patent so that it further comprises a pressure sensor to measure IOP in the eye being treated in wireless communication with the signal generator 22 or 24 in order to ensure the electric field being applied is sufficient for the intended treatment as taught by Rickard (e.g., paragraphs [0011] and [0023] of Rickard), and because the combination would have yielded a predictable result. As to claim 14, claim 2 of the ‘528 patent as modified by Rickard recites the system of claim 13 of the instant application, but does not expressly disclose or teach that the signal generator is configured to modify the stimulation signal to produce an electromagnetic field at one or more of the plurality of electrodes of the electrode assembly based on the signal received from the sensor. However, Rickard teaches that the controller uses the intraocular pressure reading to adjust the electric field applied in the vicinity of the trabecular meshwork (e.g., e.g., paragraph [0032]: controller 305 can alter the voltage applied to the electrodes in numerous other ways based on a measured IOP and claim 14 of Rickard). measurements from the pressure sensor (e.g., abstract and paragraph [0013] of Rickard). Accordingly, one of ordinary skill in the art would have recognized the benefits of a system using feedback to control and adjust the application of the electrical field in order to treat glaucoma in view of the teachings of Rickard that measurements from a pressure sensor were known to be used to control the electric field generated by the electrodes of the system. Consequently, one of ordinary skill in the art would have modified further the system of claim 2 of the ‘528 patent in view of Rickard so that the signal received from the pressure sensor measuring IOP in the eye being treated is controlled or adjusted in order to ensure the electric field being applied is sufficient for the intended treatment as taught by Rickard (e.g., paragraphs [0011] and [0023] of Rickard), and because the combination would have yielded a predictable result. With respect to claim 15, claim 2 of the ‘528 patent, as modified by Rickard as above, encompasses and conflicts with claim 15 of the instant application . 08-36 AIA Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,529,528 in view of US Patent Application Publication No. 2017/0080207 to Perez et al (hereinafter referred to as "Perez") . Claim 2 of the ‘528 patent recites the system of claim 11, but does not expressly teach that the signal generator is configured to receive control signals from a mobile device; and the signal generator is configured to be in wireless communication with the mobile device, the control signals being configured to control parameters of the stimulation signal to produce the electromagnetic field. However, Perez, in a related art: medical control device to monitor, record, and modify stimulation parameters of stimulation protocols, teaches a wearable medical device that modulates an electrical stimulator where the signal generator is configured to receive control signals from a mobile device wirelessly where the control signals modulate at least one of the plurality of stimulation parameters (e.g., paragraphs [0029], [0051], [0188]-[0189], [0524] and [0540] and Fig. 1 of Perez). Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized the benefits of using a mobile handheld device to wirelessly monitor, record and modify stimulation parameters of a medical device in view of the teachings of Perez. Consequently, one of ordinary skill in the art would have modified the system of claim 2 of the ‘528 patent, so that its signal generator is configured to receive control signals from a mobile device, its signal generator is in wireless communication with the mobile device, and the control signals received from the mobile device control parameters of its applied electromagnetic field as such was a well-known engineering expedient as taught by Perez, and because the combination would have yielded predictable results . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application Publication No. 2015/0257931 to Sanchez et al. is directed to a remote magnetic driven flow system where the magnetic field generator is configured to act on the magnetic element to adjust the regulator in the flow system to selectively adjust flow through the flow device in response to changes in intraocular pressure (see abstract and claim 1). US Patent Application Publication No 2010/0110368 to Chaum is directed to a system and apparatus for eyeglass appliance platform where electrical/optical components 540 are spaced around the front of the two optic frames (Fig. 5A, 516). Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M VOORHEES whose telephone number is (571)270-3846. The examiner can normally be reached Monday-Friday 8:30 AM to 4:30 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CATHERINE M VOORHEES/ Primary Examiner, Art Unit 3792 Application/Control Number: 18/929,780 Page 2 Art Unit: 3792 Application/Control Number: 18/929,780 Page 3 Art Unit: 3792 Application/Control Number: 18/929,780 Page 4 Art Unit: 3792 Application/Control Number: 18/929,780 Page 5 Art Unit: 3792 Application/Control Number: 18/929,780 Page 6 Art Unit: 3792 Application/Control Number: 18/929,780 Page 7 Art Unit: 3792
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