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 § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6, 9-12, 14, 16, 17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong (US 20210008381 A1) in view of Cabrerizo (US 20170252574 A1).
Regarding claim 1, Wong teaches a magnetic therapy device, comprising:
software code defining a human user interface configured to define a stimulation pattern (¶[0072] + FIG. 8: mobile application 16 on mobile device 5 with sound-file selections (NATURE / BALANCE / RELAX / CHAKRA / DEEP / MIND) that "allow users to determine which types of audio frequencies are transmitted to coil 7," plus VOL., TONE, INTENSITY sliders; ¶[0018] app setting adjusts type and amount of frequencies emitted; ¶[0073] functions include selecting the digital file and controlling intensity, volume, frequency, tone), and to generate a waveform corresponding to the stimulation pattern through an audio output signal interface (¶[0017] user plays an audio file on the mobile device, which sends the audio signal frequency to the copper coil; ¶[0066] + FIG. 2: audio jack 3 received by audio port 4 in mobile device 5, "allowing digital audio sound files to be transmitted to coil 7"; ¶[0055] electric signal comprising an audio signal);
a housing comprising circuitry configured to receive the waveform though the audio output signal interface (¶[0065] cylinder-shaped sound coupling 10 of rigid plastic containing the terminal ends of wires 7; ¶[0066] jack 3 configured to be received by audio port 4; ¶[0014] audio files "played into the amplifier where there frequencies are amplified and sent to the electromagnetic copper coil"), and
a coil configured to emit a magnetic field corresponding to the waveform (¶[0064] metal wire coil 7 of conductive metal such as copper, FIG. 1; ¶[0067] apparatus 1 in use "with its electromagnetic field 13 being emitted from the metal wire coil 7"; ¶[0044] copper winding inside the coils conducting an electromagnetic field).
Wong is silent to teaching that the waveform having a field strength of between 0.01 mTesla and 5 mTesla at a distance of 1 cm from the housing.
In the same field of endeavor, Cabrerizo teaches a device having the waveform having a field strength of between 0.01 mTesla and 5 mTesla at a distance of 1 cm from the housing (¶[0040]: each coil generated roughly 1 milliTesla (10 Gauss) at 1 mm, and glass slides of 1 mm thickness were stacked on the device surface to measure decay with distance. Table 1 reports the field at each distance out to 10 mm; at 10 mm the five trials read 2.6–2.8 Gauss (average 2.72 Gauss = 0.272 mT). ¶[0041] + FIG. 11 plot the same decay curve. Every measured value from 0 to 10 mm (13.3 Gauss down to 2.6 Gauss = 1.33 mT to 0.26 mT) falls inside the claimed 0.01–5 mT window, measured from the device surface at exactly the claimed 1 cm).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have configured the coil of Wong's portable electromagnetic energy generating apparatus to emit a magnetic field of the low intensity taught by Cabrerizo — on the order of 1 mT at 1 mm from the device surface, decaying to roughly 0.27 mT at 1 cm (Cabrerizo ¶[0040], Table 1, FIG. 11) — because Wong expressly teaches that its device is to produce a field of "low flux density" (¶[0001]) operating "at naturally occurring magnetic field strengths" (¶[0015]), and expressly warns that treatment at high flux density "may, in fact, be harmful" while permitting a wide range of field-strength adjustment "can lead to ineffective or potentially harmful treatment" (¶¶[0011]–[0012]). Wong thus identifies the need for a specific bounded low flux density without disclosing a numerical value, and one of ordinary skill seeking to implement Wong's stated design objective would have looked to art such as Cabrerizo, which discloses an actually constructed and measured handheld therapeutic coil device operating in exactly that low-intensity regime and which teaches the benefit of doing so — that operation in this low range avoids inducing heating and is therefore "safe for personal use" (Cabrerizo ¶[0021]). The combination is nothing more than the use of a known technique (constructing a therapeutic coil to emit a measured low-intensity field) to improve a similar device (Wong's portable coil emitter) in the same way, with a reasonable expectation of success, since both references drive a coil of copper wire in a handheld head to emit a time-varying magnetic field into adjacent tissue. See MPEP 2143(C), (D).
Regarding claim 2, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the audio output signal interface comprises a wired electrical connector interface (Wong, ¶[0065]–[0066], FIG. 2 (jack 3 / port 4); ¶[0051] wired communication mode).
Regarding claim 3, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the audio output signal interface comprises a wireless radio frequency communication interface (Wong, ¶[0070] wireless receiver retrieving app digital audio signals "by means of BlueTooth"; ¶[0051] wireless communication mode).
Regarding claim 4, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, further comprising an impedance modifying circuit configured to present a load impedance of at least 30 Ohms, and the coil comprises 5-200 turns, having a diameter of 2-20 mm, of 0.2 mm copper wire, with a hollow core (Wong, copper wire ¶¶[0047], [0064]; hollow core — toroid openings ¶¶[0074]–[0075], FIGS. 9b, 10; "at least three levels of windings" ¶[0065]), (Cabrerizo, 0.2 mm copper wire taught — ¶[0023] #32 (0.2032–0.254 mm) copper wire, confirmed at ¶[0038] "0.2 mm (#32) copper diameter." Coil diameter taught — 6 mm outside, 4.5 mm internal (¶[0023]), within 2–20 mm. Hollow core arguable from the 4.5 mm internal diameter and FIG. 2. Turns: the stimulation coils have 500 windings (¶[0023]), outside the claimed 5–200; note the sensory coil L5 is 20 turns of 0.22 mm wire on a 5 mm internal diameter (¶[0039]), but that coil senses rather than emits).
Regarding claim 5, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, further comprising an impedance modifying circuit having at least one resistor and at least one capacitor (Cabrerizo, ¶[0028] "different resistors and capacitors can be applied in the circuit"; FIGS. 7 and 8 show the full R/C network (R1–R25, C1–C19) driving the coils through Q1–Q4;¶[0030]).
Regarding claim 6, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the coil has an external diameter of between about 2 mm and 15 mm and comprises at least 5 turns, and the shell comprises a surface having a diameter of between 15 mm and 30 mm (Cabrerizo, Coil external diameter 6 mm (¶[0023]) → within 2–15 mm. At least 5 turns → 500 windings. "Shell" surface: stimulation head width 6–40 mm and height 5–30 mm, ¶[0026], overlaps the claimed 15–30 mm).
Regarding claim 9, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the audio output signal interface comprises a Bluetooth receiver and the software is adapted to execute on a smartphone having the audio output signal interface (Wong, ¶[0070] Bluetooth receiver in apparatus 1, FIG. 6; ¶¶[0072]–[0073] app on mobile device 5).
Regarding claim 10, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the housing comprises a mineral (Wong, ¶[0068] + FIG. 4: stone 9 — "gems, sapphires, rubies, quartz" — disposed on wheel support 11 via cross member 6; ¶¶[0037]–[0039] + FIGS. 10–12: cutout sections showing 3 crystal chambers in the toroid)
Regarding claim 11, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the software defines a human user interface configured to receive a user input for selecting between at least two different stimulation patterns, comprising a first stimulation pattern comprising a first frequency, and a second stimulation pattern comprising a second frequency, wherein the first frequency is different from the second frequency (Wong, ¶[0072] six selectable albums determining which audio frequencies reach coil 7; "1 Hz to 30,000 Hz at a multitude of incremental frequencies")
Regarding claim 12, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1, wherein the software defines a human user interface configured to receive a user input for selecting between at least two different stimulation patterns, comprising a first stimulation pattern comprising a first combination of frequencies, and a second stimulation pattern comprising a second combination of frequencies, wherein the first combination of frequencies is different from the second combination of frequencies (Wong, ¶[0072] "harmonic frequencies that play multiple frequencies at the same time," across separately selectable files)
Regarding claim 14, Wong teaches a magnetic therapy method, comprising:
presenting a software defined human user interface on a computing device, the software defined human user interface defining a stimulation pattern (¶[0072] + FIG. 8: mobile application 16 on mobile device 5 with sound-file selections (NATURE / BALANCE / RELAX / CHAKRA / DEEP / MIND) that "allow users to determine which types of audio frequencies are transmitted to coil 7," plus VOL., TONE, INTENSITY sliders; ¶[0018] app setting adjusts type and amount of frequencies emitted; ¶[0073] functions include selecting the digital file and controlling intensity, volume, frequency, tone);
generating a waveform corresponding to the stimulation pattern through an audio output signal interface of the computing device (¶[0017] user plays an audio file on the mobile device, which sends the audio signal frequency to the copper coil; ¶[0066] + FIG. 2: audio jack 3 received by audio port 4 in mobile device 5, "allowing digital audio sound files to be transmitted to coil 7"; ¶[0055] electric signal comprising an audio signal);
providing a housing comprising circuitry configured to receive the waveform though the audio output signal interface, and a coil (¶[0065] cylinder-shaped sound coupling 10 of rigid plastic containing the terminal ends of wires 7; ¶[0066] jack 3 configured to be received by audio port 4; ¶[0014] audio files "played into the amplifier where there frequencies are amplified and sent to the electromagnetic copper coil");
emitting a magnetic field corresponding to the waveform from the coil (¶[0064] metal wire coil 7 of conductive metal such as copper, FIG. 1; ¶[0067] apparatus 1 in use "with its electromagnetic field 13 being emitted from the metal wire coil 7"; ¶[0044] copper winding inside the coils conducting an electromagnetic field).
Wong is silent to teaching that the waveform having a field strength of between 0.01 mTesla and 5 mTesla at a distance of 1 cm from the housing.
In the same field of endeavor, Cabrerizo teaches a method having the waveform having a field strength of between 0.01 mTesla and 5 mTesla at a distance of 1 cm from the housing (¶[0040]: each coil generated roughly 1 milliTesla (10 Gauss) at 1 mm, and glass slides of 1 mm thickness were stacked on the device surface to measure decay with distance. Table 1 reports the field at each distance out to 10 mm; at 10 mm the five trials read 2.6–2.8 Gauss (average 2.72 Gauss = 0.272 mT). ¶[0041] + FIG. 11 plot the same decay curve. Every measured value from 0 to 10 mm (13.3 Gauss down to 2.6 Gauss = 1.33 mT to 0.26 mT) falls inside the claimed 0.01–5 mT window, measured from the device surface at exactly the claimed 1 cm).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have configured the coil of Wong's portable electromagnetic energy generating apparatus to emit a magnetic field of the low intensity taught by Cabrerizo — on the order of 1 mT at 1 mm from the device surface, decaying to roughly 0.27 mT at 1 cm (Cabrerizo ¶[0040], Table 1, FIG. 11) — because Wong expressly teaches that its device is to produce a field of "low flux density" (¶[0001]) operating "at naturally occurring magnetic field strengths" (¶[0015]), and expressly warns that treatment at high flux density "may, in fact, be harmful" while permitting a wide range of field-strength adjustment "can lead to ineffective or potentially harmful treatment" (¶¶[0011]–[0012]). Wong thus identifies the need for a specific bounded low flux density without disclosing a numerical value, and one of ordinary skill seeking to implement Wong's stated design objective would have looked to art such as Cabrerizo, which discloses an actually constructed and measured handheld therapeutic coil device operating in exactly that low-intensity regime and which teaches the benefit of doing so — that operation in this low range avoids inducing heating and is therefore "safe for personal use" (Cabrerizo ¶[0021]). The combination is nothing more than the use of a known technique (constructing a therapeutic coil to emit a measured low-intensity field) to improve a similar device (Wong's portable coil emitter) in the same way, with a reasonable expectation of success, since both references drive a coil of copper wire in a handheld head to emit a time-varying magnetic field into adjacent tissue. See MPEP 2143(C), (D).
Regarding claims 16 and 17, the dependent claims are interpreted and rejected for the same reasons as set forth above in claims 11 and 12, respectively.
Regarding claim 19, the combination of Wong and Cabrerizo teaches the magnetic therapy method according to claim 14, wherein the coil has an external diameter of between about 2 mm and 20mm and comprises at least 5 turns, and the shell comprises a surface having a diameter of between 2 cm and 3 cm (Cabrerizo , Coil OD 6 mm within about 2–20 mm; 500 turns ≥ 5 (¶[0023]); stimulation head width 6–40 mm (¶[0026]) overlapping the claimed 2–3 cm).
Regarding claim 20, Wong teaches a magnetic therapy device, comprising:
software code configured to define a human user interface configured to define a stimulation pattern (¶[0072] + FIG. 8: mobile application 16 on mobile device 5 with sound-file selections (NATURE / BALANCE / RELAX / CHAKRA / DEEP / MIND) that "allow users to determine which types of audio frequencies are transmitted to coil 7," plus VOL., TONE, INTENSITY sliders; ¶[0018] app setting adjusts type and amount of frequencies emitted; ¶[0073] functions include selecting the digital file and controlling intensity, volume, frequency, tone);
software code configured to generate a waveform corresponding to the stimulation pattern; software code to output the waveform through an audio output signal interface (¶[0017] user plays an audio file on the mobile device, which sends the audio signal frequency to the copper coil; ¶[0066] + FIG. 2: audio jack 3 received by audio port 4 in mobile device 5, "allowing digital audio sound files to be transmitted to coil 7"; ¶[0055] electric signal comprising an audio signal);
a housing comprising circuitry configured to receive the waveform though the audio output signal interface (¶[0065] cylinder-shaped sound coupling 10 of rigid plastic containing the terminal ends of wires 7; ¶[0066] jack 3 configured to be received by audio port 4; ¶[0014] audio files "played into the amplifier where there frequencies are amplified and sent to the electromagnetic copper coil"), and
a coil configured to emit a magnetic field corresponding to the waveform (¶[0064] metal wire coil 7 of conductive metal such as copper, FIG. 1; ¶[0067] apparatus 1 in use "with its electromagnetic field 13 being emitted from the metal wire coil 7"; ¶[0044] copper winding inside the coils conducting an electromagnetic field).
Wong is silent to teaching that the waveform having a field strength of between 0.01 mTesla and 5 mTesla at a distance of 1 cm from the housing.
In the same field of endeavor, Cabrerizo teaches a device having the waveform having a field strength of between 0.01 mTesla and 5 mTesla at a distance of 1 cm from the housing (¶[0040]: each coil generated roughly 1 milliTesla (10 Gauss) at 1 mm, and glass slides of 1 mm thickness were stacked on the device surface to measure decay with distance. Table 1 reports the field at each distance out to 10 mm; at 10 mm the five trials read 2.6–2.8 Gauss (average 2.72 Gauss = 0.272 mT). ¶[0041] + FIG. 11 plot the same decay curve. Every measured value from 0 to 10 mm (13.3 Gauss down to 2.6 Gauss = 1.33 mT to 0.26 mT) falls inside the claimed 0.01–5 mT window, measured from the device surface at exactly the claimed 1 cm).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have configured the coil of Wong's portable electromagnetic energy generating apparatus to emit a magnetic field of the low intensity taught by Cabrerizo — on the order of 1 mT at 1 mm from the device surface, decaying to roughly 0.27 mT at 1 cm (Cabrerizo ¶[0040], Table 1, FIG. 11) — because Wong expressly teaches that its device is to produce a field of "low flux density" (¶[0001]) operating "at naturally occurring magnetic field strengths" (¶[0015]), and expressly warns that treatment at high flux density "may, in fact, be harmful" while permitting a wide range of field-strength adjustment "can lead to ineffective or potentially harmful treatment" (¶¶[0011]–[0012]). Wong thus identifies the need for a specific bounded low flux density without disclosing a numerical value, and one of ordinary skill seeking to implement Wong's stated design objective would have looked to art such as Cabrerizo, which discloses an actually constructed and measured handheld therapeutic coil device operating in exactly that low-intensity regime and which teaches the benefit of doing so — that operation in this low range avoids inducing heating and is therefore "safe for personal use" (Cabrerizo ¶[0021]). The combination is nothing more than the use of a known technique (constructing a therapeutic coil to emit a measured low-intensity field) to improve a similar device (Wong's portable coil emitter) in the same way, with a reasonable expectation of success, since both references drive a coil of copper wire in a handheld head to emit a time-varying magnetic field into adjacent tissue. See MPEP 2143(C), (D).
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong and Cabrerizo as applied to claim 1 above, and further in view of Ishikawa (US 20010031906 A1).
Regarding claim 7, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1.
The combination of Wong and Cabrerizo is silent to teaching that wherein the circuitry in combination with the coil has a transfer function having a pole within a range of 5 Hz to 50 kHz.
In the same field of endeavor, Ishikawa teaches a device wherein the circuitry in combination with the coil has a transfer function having a pole within a range of 5 Hz to 50 kHz (Ishikawa teaches controlling the electric variable current supplied to the Litz wire coil such that the alternate frequency of the current is set to 1.0 kHz to 3.3 kHz. This operating frequency of 1.0–3.3 kHz falls directly within the claimed range of 5 Hz to 50 kHz, para. 0047,100).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teaching of Wong with the teaching of Ishikawa. Wong relies on the electrical signal outputted from a smartphone's 3.5 mm audio headphone jack or compact wireless receiver, both of which operate under strict current and power limits. High AC resistance in the coil reduces the effective current and weakens the emitted magnetic flux. By applying Ishikawa’s Litz wire coil configuration—which lowers effective high-frequency resistance—a POSITA can optimize electrical-to-magnetic energy conversion efficiency. This ensures that Wong's device achieves therapeutic magnetic field strength without drawing excessive power or draining the mobile device battery.
Regarding claim 8, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1.
The combination of Wong and Cabrerizo is silent to teaching that wherein the circuitry in combination with the coil has a transfer function having a pole at about 3 kHz.
In the same field of endeavor, Ishikawa teaches a device wherein the circuitry in combination with the coil has a transfer function having a pole at about 3 kHz (Ishikawa teaches a Litz wire coil driving circuit designed to deliver high current pulses while reducing skin effect heating and power consumption. Ishikawa teaches setting the alternate frequency of the driving current to 1.0 to 3.3 kHz (specifically reaching 3.3 kHz, which corresponds to about 3 kHz, para. 0047,100).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teaching of Wong with the teaching of Ishikawa. Wong relies on the electrical signal outputted from a smartphone's 3.5 mm audio headphone jack or compact wireless receiver, both of which operate under strict current and power limits. High AC resistance in the coil reduces the effective current and weakens the emitted magnetic flux. By applying Ishikawa’s Litz wire coil configuration—which lowers effective high-frequency resistance—a POSITA can optimize electrical-to-magnetic energy conversion efficiency. This ensures that Wong's device achieves therapeutic magnetic field strength without drawing excessive power or draining the mobile device battery.
Claim(s) 13 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong and Cabrerizo as applied to claims 1 and 14 above, and further in view of Gleich (US 20160184601 A1).
Regarding claim 13, the combination of Wong and Cabrerizo teaches the magnetic therapy device according to claim 1.
The combination of Wong and Cabrerizo is silent to teaching that wherein the software defines a human user interface configured to receive a user input for selecting between at least two different stimulation patterns, comprising a first stimulation pattern comprising a first dynamically changing frequency pattern, and a second stimulation pattern comprising a second dynamically changing frequency pattern, wherein the first dynamically changing frequency pattern is different from the second dynamically changing frequency pattern.
In the same field of endeavor, Gleich teaches a device wherein the software defines a human user interface configured to receive a user input for selecting between at least two different stimulation patterns, comprising a first stimulation pattern comprising a first dynamically changing frequency pattern, and a second stimulation pattern comprising a second dynamically changing frequency pattern (Gleich discloses software providing a Graphical User Interface (GUI) and "User-Editor" running directly on the device or an associated computer34. The UI includes interactive software assistants, para. 0147,154), wherein the first dynamically changing frequency pattern is different from the second dynamically changing frequency pattern (Gleich teaches that complex pulse sequences (PS) and protocols consist of nested hierarchies—individual pulses, double pulses, pulse packets/bursts (PP), and pulse trains, para. 0133,140).
Therefore, a Person Having Ordinary Skill in the Art (POSITA) would be motivated to combine Wong with Gleich. Implementing Gleich’s software UI features within Wong’s smartphone application yields the expected, predictable result of allowing a user to select and output custom, dynamically changing audio-frequency waveforms through the audio output interface to the magnetic coil.
Regarding claim 18, the dependent claims are interpreted and rejected for the same reasons as set forth above in claim 13, respectively.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,257,429 B2 ("the '429 patent"). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1, 14, and 20: Instant claims omit the requirement that the emitted field be "within a frequency range of 10 Hz to 1,000 Hz".
Every limitation of instant claim 1 is recited verbatim in '429 claim 1. The instant claim differs solely by the deletion of the frequency-range limitation, which broadens the claim. Under the broadest reasonable interpretation, instant claim 1 places no constraint whatsoever on the frequency content of the emitted magnetic field and therefore reads directly on the device defined by '429 claim 1, which emits a 0.01–5 mTesla field at 1 cm from the housing within a 10 Hz–1,000 Hz range. One could not practice the invention of '429 claim 1 without falling within instant claim 1. A generic or broader claim is not patentably distinct from a narrower patented claim that it fully encompasses; the omission of a limitation cannot confer patentable distinction. See In re Goodman, 11 F.3d 1046, 1053 (Fed. Cir. 1993); In re Van Ornum, 686 F.2d 937 (CCPA 1982); MPEP § 804(II)(B)(1). The same analysis applies to instant claims 14 and 20 relative to '429 claims 14 and 20.
The remaining dependent claims either recite limitations that are literally identical to the corresponding '429 dependent claims or differ only by the omission of a further narrowing recitation (coil resistance in claims 6 and 19; "frequency spectrum that changes over time" in claims 13 and 18; the Bluetooth receiver in claim 15), and are broader for the same reason. As to instant claim 9, a Bluetooth "transceiver" as claimed in '429 claim 9 necessarily comprises a Bluetooth receiver under BRI, so instant claim 9 is anticipated in scope by the patented claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20150330090; 20210339035; 20210361966; 20110301402.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WEN WU HUANG whose telephone number is (571)272-7852. The examiner can normally be reached Mon-Fri 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wesley Kim can be reached at (571) 272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WEN W HUANG/Primary Examiner, Art Unit 2648
Prosecution Insights