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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3, 6, 10-12, 16-17, 23, 51-53, 55, 57 and 59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, and 10 of U.S. Patent No. 12,201,448. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the examined claims 1, 3, 6, 10-12, 16-17, 23, 51-53, 55, 57 and 59 would have been obvious over the reference claims 1, 3-8, and 10.
Regarding claim 1, Patent ‘448 claims a headset comprising: an elongate, unitary body member sufficiently long to encircle a head of a user, said unitary body member having a closed state and a rest state, said unitary body member comprising: at least one posterior member; and an at least semi-rigid anterior member; a closure mechanism formed by ends of said unitary body member, said closure mechanism having an open state and a closed state, wherein said unitary body member is in said rest state when said closure mechanism is in said open state and said unitary body member is in said closed state and forms a circumferential headset when said closure mechanism is in said closed state; and at least one side electrode mounted on an inner surface of said unitary body member, between said at least one posterior member and said anterior member, said at least one side electrode configured, when said circumferential headset is donned on said head, to be positioned against skin of said head, and further configured to electrically communicate with a processing unit, wherein longitudinal axes of said at least one posterior member and said anterior member are parallel or coaxial, wherein said at least one posterior member terminates in a tapered end to which is connected said closure mechanism, said tapered end tapering from a first portion having a first width to a second portion having a second width, smaller than said first width, and wherein, a longitudinal axis of said tapered end is continuous to a longitudinal axis of said unitary body member (see reference claim 1).
Regarding claim 3, Patent ‘448 claims wherein said at least one posterior member has at least one posterior electrode fixed thereto and is at least semi-rigid, and wherein said tapered end and said closure mechanism are configured, to plow between hair to access the scalp of said user during donning of said headset, such that when said headset is donned, said at least one posterior electrode is in direct physical contact and direct electrical contact with said scalp of said user (see reference claim 1).
Regarding claim 6, Patent ‘448 claims said posterior electrode being configured, when said headset is donned, to be disposed above at least one occipital nerve branch of said user (see reference claim 3).
Regarding claim 10, Patent ‘448 claims said unitary body member also comprising an interim member disposed between said anterior member and said at least one posterior member, wherein said at least one side electrode is mounted onto said interim member (see reference claim 4).
Regarding claim 11, Patent ‘448 claims wherein in said closed state of said headset, said anterior member and said at least one posterior member are vertically movable relative to one another (see reference claim 5).
Regarding claim 12, Patent ‘448 claims wherein said interim member comprises a semi-rigid portion and a stretchable portion, wherein in said rest state said semi-rigid portion defines the structure of said interim member, such that said interim member contributes to said monolithic unit, and in said closed state of said unitary body member said stretchable portion is stretched to extend beyond the length of said semi-rigid portion thereby defining a flexible portion at which said anterior member and said at least one posterior member are vertically movable relative to one another, while remaining in parallel planes to one another (see reference claim 6).
Regarding claim 16, Patent ‘448 claims at least one anterior electrode mounted on an inner surface of said anterior member (see reference claim 7).
Regarding claim 17, Patent ‘448 claims wherein said at least one anterior electrode is configured, when said headset is donned, to be disposed above at least one of the supratrochlear nerves and the supraorbital nerves of said user (see reference claim 8).
Regarding claim 23, Patent ‘448 claims wherein said processing unit is mounted on said unitary body member and communicates with said at least one side electrode via at least one electrical conductor, and wherein at least part of said at least one electrical conductor passes through a stretchable portion of said body member (see reference claim 10).
Regarding claim 51, Patent ‘448 claims a headset comprising: an elongate, unitary body member sufficiently long to encircle a head of a user, said unitary elongate body member having a closed state and a rest state, said unitary body member comprising: at least one posterior member; and an at least semi-rigid anterior member; a closure mechanism formed by ends of said unitary body member, said closure mechanism having an open state and a closed state, wherein said unitary body member is in said rest state when said closure mechanism is in said open state and said unitary body member is in said closed state and forms a circumferential headset when said closure mechanism is in said closed state; and at least one bifurcated posterior electrode, mounted on said at least one posterior member, said at least one bifurcated posterior electrode configured, when said circumferential headset is donned on said head, to be positioned against skin of said head and to be disposed above two vertically aligned points on at least one occipital nerve branch of said user. and further configured to electrically communicate with a processing unit (see reference claim 1).
Regarding claim 52, Patent ‘448 claims wherein said at least one posterior member is at least semi-rigid and terminates in a tapered end to which is connected said closure mechanism, said tapered end tapering from a first portion having a first width to a second portion having a second width, smaller than said first width, and said tapered end and said closure mechanism are configured, during donning of said headset, to plow between hair to access the scalp of said user, such that when said headset is donned said at least one bifurcated posterior electrode is in direct physical contact with said scalp of said user (see reference claim 1).
Regarding claim 53, Patent ‘448 claims wherein said at least one bifurcated posterior electrode is configured, when said headset is donned, to be disposed above at least one occipital nerve branch of said user (see reference claim 1).
Regarding claim 55, Patent ‘448 claims wherein each of said first portion and said second portion of said pair of bifurcated posterior members terminates in a tapered end to which is connected said respective one of said first and second closure mechanisms, said tapered ends tapering from a first portion having a first width to a second portion having a second width, smaller than said first width, and said tapered ends and said first and second closure mechanisms being configured, during donning of said headset, to plow between hair to access the scalp of said user, such that when said headset is donned said at least one bifurcated posterior electrode is in direct physical contact with said scalp of said user (see reference claim 1).
Regarding claim 57, Patent ‘448 claims an anterior electrode mounted on an inner surface of said anterior member, said anterior electrode being configured, when said headset is donned, to be disposed above at least one of the supratrochlear nerves and the supraorbital nerves of said user (see reference claims 7-8).
Regarding claim 59, Patent ‘448 claims a method of donning a headset on the head of a user, the method comprising: providing a headset according to claim 51, said headset being in said rest state; positioning said headset adjacent the head of said user, such that said tapered end of said at least one posterior member is positioned against the skin of the head of said user adjacent temples of the user; pushing said headset rearwardly, such that during said pushing said tapered end of said at least one posterior member passes above ears of the user toward the back of the head of the user; during said pushing of said headset rearwardly, plowing through said hair and clearing an area of said scalp of said user for physical contact of said at least one bifurcated posterior electrode therewith; and using said closure mechanism, closing said unitary body member into said closed state, thereby encircling said head of said user and securing said headset on said head of said user (see reference claims 17-18).
Therefore, examined claims 1, 3, 6, 10-12, 16-17, 23, 51-53, 55, 57 and 59 are not patentably distinct from reference claims 1, 3-8, and 10.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1,3,6,10-12,16-17,23,36 and 51-59 are found to be allowable.
The following is a statement of reasons for the indication of allowable subject matter:
This application contains the same allowable subject matter as application no. 15/510,067 (‘067 application), of which this application is a continuation. As such, the reasons for allowance are the same as those for the ‘067 application, as explained below.
During the search of the prior arts, Mignolet et al., (US 20130282095; hereinafter Mignolet) was found to be pertinent to the claimed invention. However, it is the Examiner’s position that Mignolet fails to disclose, teach, or suggest the claimed invention.
Regarding independent claim 1, Mignolet (Figures 1-8) discloses a headset comprising: an elongate body member (headband) sufficiently long to encircle the head of a user ([0055]-[0058]), said elongate body member having a closed (fastened) state and a rest (unfastened) state; a closure mechanism (3, 9) associated with ends of said body member, said closure mechanism (3, 9) having an open (unfastened) state and a closed (fastened) state, wherein said body member is in said rest state when said closure mechanism (3, 9) is in said open state and said body member is in said closed state and forms said circumferential headset when said closure mechanism (3, 9) is in said closed state ([0059]-[0063]); and at least one posterior electrode (1), fixedly attached to said body member inwardly of said closure mechanism (3, 9) when said body member is in said rest state prior to initiating donning of said headset, said at least one posterior electrode (1) configured, when said headset is donned on a user's head, to be positioned against the skin of the head of said user, said at least one posterior electrode (1) electrically communicating with a processing unit (6), wherein said body member comprises at least one posterior member (rear part), said at least one posterior electrode (1) being fixedly attached to said at least one posterior member, said at least one posterior member being at least semi-rigid ([0065]: the front part is made of Lycra.RTM. and the rear part is made of thermoformed foam covered with Lycra.RTM.) and terminating in a tapered end (as seen in Figure 6) to which is connected said closure mechanism, said tapered end tapering from a first portion having a first width to a second portion having a second width, smaller than said first width (as seen in Figure 6), said tapered end of said at least one posterior member and said closure mechanism (3, 9) being configured to plow between hair to access the scalp of said user during donning of said headset, such that when said headset is donned, said tapered end of said at least one posterior member and said closure mechanism are configured to plow between hair to access the scalp of said user during donning of said headset, such that when said headset is donned, said at least one posterior electrode is in direct physical contact with said scalp of said user; 2wherein, a longitudinal axis of said tapered end is continuous to a longitudinal axis of said elongate body member ([0049]-[0066]: since the at least one posterior member and the closure mechanism are at least semi-rigid, they would be configured to plow between hair to access the scalp and provide direct physical contact between the at least one posterior electrode and the scalp).
However, Mignolet fails to disclose, teach, or suggest that the body member of the headset is a unitary body member, wherein the closure mechanism is formed by ends of said unitary body, wherein said unitary body member comprises the at least one posterior member and an at least semi-rigid anterior member, wherein said at least one posterior member and said anterior member are formed as portions of the unitary body member such that longitudinal axes of said at least one posterior member and said anterior member are parallel or coaxial, as required by independent claim 1. Therefore, independent claim 1 is found to be allowable. Claims 3, 6, 10-12, 16-17, 23, and 36 are also found to be allowable as being dependent upon an allowed base claim.
Independent claim 51 recites the same allowable language directed to the body member of the headset being a unitary body member, wherein the closure mechanism is formed by ends of said unitary body, and said unitary body member comprises the at least one posterior member and an at least semi-rigid anterior member, as well as additional limitations “at least one bifurcated posterior electrode, mounted on said at least one posterior member, said at least one bifurcated posterior electrode configured, when said circumferential headset is donned on said head, to be positioned against skin of said head and to be disposed above two vertically aligned points on at least one occipital nerve branch of said user” which are not disclosed, taught, or suggested by Mignolet. Therefore, independent claim 51 is found to be allowable. Claims 52-59 are also found to be allowable as being dependent upon an allowed base claim.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
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