DETAILED ACTION
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 12 and 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,251,571 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach a device for applying electromagnetic energy to a body organ utilizing a biasing assembly for a plurality of illumination assemblies as further detailed below.
Claims 12 and 14 18/931,032
Claim 1 of US 12,251,571 B2
Claim 12: An apparatus for positioning over and applying electromagnetic energy to a body organ, the apparatus comprising:
A device for positioning over and applying electromagnetic energy to a body organ, the device comprising:
a substructure including two or more biasing assembly supports;
a dome forming a contoured shape, said dome including a plurality of dome openings, where an interior space of the contoured shape is adapted for placement over the body organ;
two or more biasing assemblies; two or more panel assemblies, each being coupled to a corresponding biasing assembly;
wherein the device further comprises a biasing element for each illumination assembly of said plurality of illumination assemblies, said biasing element being coupled between said optical assembly and a carriage of said illumination assembly, said biasing element configured to move said plurality of optical assemblies back to said first position,
and a plurality of illumination assemblies, at least one illumination assembly being coupled to each panel assembly, each illumination assembly including a light source,
a plurality of illumination assemblies each including an optical assembly having a proximal end optically coupled to a light source, a distal end configured to direct electromagnetic energy to the body organ, and a group of light guides therebetween, each of said illumination assemblies being coupled to said dome to allow said optical assembly to move freely through one of said dome openings;
wherein, in an assembled configuration and upon application of an external force, each of the two or more panel assemblies is adapted to move between a first position and a second position, each panel assembly moving in an independent direction with respect to each other panel assembly.
Claim 14: further comprising an actuator to apply the external force causing movement from the first position to the second position and/or to return from the second position to the first position.
and an actuator configured to move each optical assembly of said plurality of optical assemblies, upon activation, from a first position to a respective second position corresponding to a conformal arrangement around a body organ, and upon deactivation, to move said plurality of optical assemblies back to said first position;
and wherein the device further comprises a shell surrounding said dome and spaced apart from the same to form an interstitial space, and an interstitial reservoir disposed within said interstitial space, said interstitial reservoir configured to actuate said plurality of illumination assemblies by inflating the same, wherein upon deactivation, said interstitial reservoir deflates to allow said biasing element to move said plurality of optical assemblies back to said first position.
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) 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jay (US 2005/0143792 A1).
Regarding claim 12, Jay discloses an apparatus for positioning over and applying electromagnetic energy to a body organ (e.g. Fig 3), the apparatus comprising: a substructure including two or more biasing assembly supports (e.g. [0057] interface element 52); two or more biasing assemblies (e.g. [0057] Pressure of topographical dermal features against the independently movable pins or plates during use of the light-pulse generating device causes the pins or plates to move in opposition to the respective spring bias, to thereby conform the tissue engaging surface of the light-pulse generating device to the skin surface under treatment. The independently movable pins or plates may be disposed in a holder or bracket attached to the housing or casing 30 and retained there by friction forces.); two or more panel assemblies, each being coupled to a corresponding biasing assembly (e.g. [0067]-[0070] 64/68); and a plurality of illumination assemblies, at least one illumination assembly being coupled to each panel assembly, each illumination assembly including a light source, wherein, in an assembled configuration and upon application of an external force, each of the two or more panel assemblies is adapted to move between a first position and a second position, each panel assembly moving in an independent direction with respect to each other panel assembly (e.g. [0057] Pressure of topographical dermal features against the independently movable pins or plates during use of the light-pulse generating device causes the pins or plates to move in opposition to the respective spring bias, to thereby conform the tissue engaging surface of the light-pulse generating device to the skin surface under treatment. The independently movable pins or plates may be disposed in a holder or bracket attached to the housing or casing 30 and retained there by friction forces).
Regarding claim 13, Jay discloses wherein each illumination assembly further comprises an optical assembly comprising a base including a lens formed therein (e.g. [0046]), and one or more light guides configured to direct light from the lens to the body organ (e.g. [0046]; [0052]).
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) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Jay in view of Kumpan-Bahrami (US 2020/0221994 A1).
Regarding claim 14, Jay is silent regarding further comprising an actuator to apply the external force causing movement from the first position to the second position and/or to return from the second position to the first position.
However, Kumpan-Bahrami discloses a system and method improving a cosmetic hair condition further comprising an actuator to apply the external force causing movement from the first position to the second position and/or to return from the second position to the first position (e.g. [0056]; [0162]-[0165] Fig 1F:110).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the system of Jay to incorporate the teachings of Kumpan-Bahrami of further comprising an actuator to apply the external force causing movement from the first position to the second position and/or to return from the second position to the first position for the purpose of utilizing a known system for controlling or regulating a hair treatment functionality (e.g. [0056]).
Allowable Subject Matter
Claims 1-11 are allowed.
The prior art neither teaches nor suggest when taken as a whole an apparatus/helmet for positioning over and applying electromagnetic energy to a body organ/to the scalp including a substructure including two or more biasing assembly supports each including an upper and lower biasing arms, a slider body having a slider body upper and lower slot and slider body upper and lower pin, two or more panel assemblies couples to the biasing assemblies, and a plurality of illumination assemblies coupled to the panel assemblies wherein in the assembled configuration the panel assemblies are adapted to move between a first position and a second position upon application of an external force/actuator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSANDRA F HOUGH whose telephone number is (571)270-7902. The examiner can normally be reached Monday-Thursday 7 am - 4 pm.
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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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Jessandra Hough September 23, 2026
/J.F.H./Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796
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