DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The disclosure is objected to because of the following informalities: the mechanism 400 (see fig. 6 and 7) is being referred to “movement mechanism’ (see par. [0067] of the PG Pub. version of the specification) and “motion mechanism” (see par. [0070] of the Pg. Pub. version of the specification). Throughout the specification, the mechanism 400 for directing ultrasonic treatment being referred to as “movement mechanism” and “motion mechanism”. The examiner suggests to amend the specification to recite “movement mechanism” from “motion mechanism” to be consistent with the specification and figure 6. Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim limitation “an ultrasonic treatment” in line 8 should be amended to read “the ultrasonic treatment” since ultrasonic treatment is already recited in preamble. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a movement mechanism” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,537,304. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. 10,537,304 are directed to ultrasound system with a seal housing; ultrasound element configured to focus ultrasound below a skin; and a movement mechanism. Furthermore, the claims of U.S. Patent No. 10,537,304 are narrower than claim 1 of current application.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,123,039. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. 11,123,039 are directed to ultrasound system with a seal housing; ultrasound element configured to focus ultrasound below a skin; and a movement mechanism. Furthermore, the claims of U.S. Patent No. 11,123,039 are narrower than claim 1 of current application.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,723,622. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. 11,723,622 are directed to ultrasound system with a seal housing; ultrasound element configured to focus ultrasound below a skin; and a movement mechanism. Furthermore, the claims of U.S. Patent No. 11,723,622 are narrower than claim 1 of current application.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,102,473. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. 12,102,473 are directed to ultrasound system with a seal housing; ultrasound element configured to focus ultrasound below a skin; and a movement mechanism. Furthermore, the claims of U.S. Patent No. 12,102,473 are narrower than claim 1 of current application.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/805,211 in view of Zanelli et al. (US 2005/0154332; hereinafter Zanelli). Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Application No. 18/805,211 are directed to ultrasound system with a sealed housing comprising a fluid and a window; ultrasound element configured to focus ultrasound below a skin; and a movement mechanism, but U.S. Application No. 18/805,211 fail to explicitly sate that the ultrasonic treatment element is acoustically coupled to the window. Zanelli discloses that the ultrasonic treatment element is acoustically coupled to the acoustically transparent window (see par. [0024] and fig. 5). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of that the ultrasonic treatment element is acoustically coupled to the acoustically transparent window in the invention of U.S. Application No. 18/805,211, as taught by Zanelli, to provide better focusing of the ultrasound for better treatment.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/025,251. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and copending Application No. 19/025,251 are directed to ultrasound treatment device comprising a housing, ultrasonic element, acoustically transparent window, and a movement mechanism.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/025,676. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and copending Application No. 19/025,676 are directed to ultrasound treatment device comprising a housing, ultrasonic element, acoustically transparent window, and a movement mechanism.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/025,353. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and copending Application No. 19/025,353 are both directed to an ultrasound treatment system with a housing, a window, ultrasonic treatment element, and a movement mechanism.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 1 is rejected under pre-AIA 35 U.S.C. 102 (b) as being anticipated by Zanelli et al. (US 2005/0154332; hereinafter).
Regarding claim 1, Zanelli discloses an ultrasound treatment device. Zanelli shows a module for ultrasound treatment (see fig. 2), comprising: a housing comprising an acoustically transparent window (see par. [0023]; fig. 5); an ultrasonic piezoelectric element configured to focus ultrasound at a depth below a skin surface (see par. [0023]; 106 in fig. 5), wherein the ultrasonic treatment piezoelectric element is acoustically coupled to the acoustically transparent window in the housing (see par. [0023], fig. 5), and a movement mechanism (see “drive system” in par. [0012], [0014], [0023]) configured to move the ultrasonic piezoelectric element to direct an ultrasonic treatment in thermal lesions in a tissue (see [0019], [0022], [0025]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHDEEP MOHAMMED whose telephone number is (571)270-3134. The examiner can normally be reached Monday to Friday, 9am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne M Kozak can be reached at (571)270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAHDEEP MOHAMMED/Primary Examiner, Art Unit 3797