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 .
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 1-8 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,857,212 hereinafter Capelli ‘212. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant invention would be an obvious modification of the reference patent.
Regarding claim 1, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
An apparatus for generating therapeutic shock waves (Capelli ‘212, claim 1), comprising:
a housing defining a chamber and a shockwave outlet (Capelli ‘212, claim 1);
a liquid disposed in the chamber (Capelli ‘212, claim 1);
a plurality of electrodes configured to be disposed in the chamber to define one or more spark gaps (Capelli ‘212, claim 1);
a plurality of capacitors carried by the housing and in electrical communication with the plurality of electrodes (Capelli ‘212, claim 1); and
a pulse-generation system configured to be coupled to the plurality of electrodes such that: (i) the housing is movable relative to the pulse-generation system, and (ii) the pulse- generation system is in electrical communication with the plurality of electrodes and the plurality of capacitors (Capelli ‘212, claim 1);
where the pulse-generation system is configured to apply voltage pulses simultaneously (Capelli ‘212, claim 1) to:
the plurality of electrodes to begin to vaporize and ionize portions of the liquid to provide at least one inter-electrode conductive path between the plurality of electrodes (Capelli ‘212, claim 1), and
the plurality of capacitors to charge the plurality of capacitors (Capelli ‘212, claim 1);
where the plurality of capacitors are configured to, upon reaching a threshold charge, discharge to the plurality of electrodes to generate one or more arcs along the one or more inter-electrode conductive paths to vaporize additional portions of the liquid and generate one or more acoustic shock waves (Capelli ‘212, claim 1).
Regarding claim 2, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
An apparatus for generating therapeutic shock waves (Capelli ‘212, claim 1), comprising:
a housing defining a chamber and a shockwave outlet, the chamber being configured to be filled with a liquid (Capelli ‘212, claim 1);
a plurality of electrodes configured to be disposed in the chamber to define one or more spark gaps (Capelli ‘212, claim 1);
a plurality of capacitors carried by the housing and in electrical communication with the plurality of electrodes (Capelli ‘212, claim 1); and
a pulse-generation system configured to be coupled to the plurality of electrodes (Capelli ‘212, claim 1) such that:
(i) the housing is movable relative to the pulse-generation system, and (ii) the pulse- generation system is in electrical communication with the plurality of electrodes and the plurality of capacitors (Capelli ‘212, claim 1);
where the pulse-generation system is configured to apply voltage pulses simultaneously (Capelli ‘212, claim 1) to:
the plurality of electrodes to begin to vaporize and ionize portions of the liquid to provide at least one inter-electrode conductive path between the plurality of electrodes (Capelli ‘212, claim 1), and
the plurality of capacitors to charge the plurality of capacitors (Capelli ‘212, claim 1);
where the plurality of capacitors are configured to, upon reaching a threshold charge, discharge to the plurality of electrodes to generate one or more arcs along the one or more inter-electrode conductive paths to vaporize additional portions of the liquid and generate one or more acoustic shock waves (Capelli ‘212, claim 1).
Regarding claim 3, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
An apparatus for generating therapeutic shock waves (Capelli ‘212, claim 1), comprising:
a housing defining a chamber and a shockwave outlet, the chamber being configured to be filled with a liquid (Capelli ‘212, claim 1);
a plurality of electrodes configured to be disposed in the chamber to define one or more spark gaps (Capelli ‘212, claim 1);
a plurality of capacitors carried by the housing and in electrical communication with the plurality of electrodes (Capelli ‘212, claim 1); and
where the plurality of electrodes is configured to be coupled to a pulse-generation system such that: (i) the housing is movable relative to the pulse-generation system, and (ii) the pulse-generation system is in electrical communication with the plurality of electrodes and the plurality of capacitors such that the plurality of electrodes and the plurality of capacitors can simultaneously receive voltage pulses from the pulse-generation system (Capelli ‘212, claim 1); and
where the plurality of capacitors are configured to, upon reaching a threshold charge, discharge to the plurality of electrodes (Capelli ‘212, claim 1).
Regarding claim 4, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where each of the plurality of capacitors is planar (Capelli ‘212, claim 2).
Regarding claim 5, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the plurality of capacitors are arranged in a circuit having an overall inductance of between 2 nH and 200 nH (Capelli ‘212, claim 3).
Regarding claim 6, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the plurality of capacitors comprises between 2 and 20 sets of capacitors with the sets of capacitors connected in parallel (Capelli ‘212, claim 3).
Regarding claim 7, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where each set of capacitors comprises fewer than 50 capacitors (Capelli ‘212, claim 3).
Regarding claim 8, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where each set of capacitors comprises 10 or more capacitors in series (Capelli ‘212, claim 3).
Regarding claim 10, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the plurality of capacitors is coupled to a plurality of stackable circuit boards (Capelli ‘212, claim 4).
Regarding claim 11, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the plurality of capacitors are arranged in a plurality of circular patterns (Capelli ‘212, claim 5-7).
Regarding claim 12, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the plurality of stackable circuit boards comprises a first stackable circuit board, and a second stackable circuit board coupled to the first stackable circuit board (Capelli ‘212, claim 5-7).
Regarding claim 13, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where a first portion of the plurality of capacitors is coupled to the first stackable circuit board, and a second portion of the plurality of capacitors is coupled to the second stackable circuit board (Capelli ‘212, claim 5-7).
Regarding claim 14, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the first portion of the plurality of capacitors is disposed on a first side of a first stackable circuit board, and the second portion of the plurality of capacitors is disposed on a second side of a second stackable circuit board, and the second side of the second circuit board is opposite the first side of the first stackable circuit board (Capelli ‘212, claim 5-7).
Regarding claim 15, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the first stackable circuit board and the second stackable circuit board are circular (Capelli ‘212, claim 7).
Regarding claim 16, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where a first portion of the plurality of capacitors is coupled to the first stackable circuit board and a second portion of the plurality of capacitors is coupled to the second stackable circuit board (Capelli ‘212, claim 5-7).
Regarding claim 17, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where: the first portion of the plurality of capacitors is coupled to the first stackable circuit board in a circular pattern; and the second portion of the plurality of capacitors is coupled to the second stackable circuit board in a circular pattern (Capelli ‘212, claim 5-7).
Regarding claim 18, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where each set of capacitors comprises 10 or more capacitors in series (Capelli ‘212, claim 3).
Regarding claim 19, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the first stackable circuit board further comprises an outer edge and a center, the second stackable circuit board further comprises an outer edge and a center; and the first portion of the plurality of capacitors is configured to cause current to flow from the outer edge of the first stackable circuit board towards the center of the first stackable circuit board, and the second portion of the plurality of capacitors is configured to cause current to flow from the outer edge of the second stackable circuit board towards the center of the second stackable circuit board (Capelli ‘212, claim 8).
Regarding claim 20, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) teaches:
where the first stackable circuit board is electrically coupled to the second stackable circuit board by connectors disposed along the outer edges of the stackable circuit boards (Capelli ‘212, claim 7).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,857,212 hereinafter Capelli ‘212 in view of Mestas et al. (U.S. Pat. No. 5233980) hereinafter Mestas. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant invention would be an obvious modification of the reference patent.
Regarding claim 9, reference patent Capelli ‘212 (U.S. Pat. No. 11,857,212) fails to teach:
where each capacitor has a capacitance of no greater than 100 nanofarad.
However, the analogous art of Mestas of a shockwave device for treatment of patients (abstract) teaches:
where each capacitor has a capacitance of no greater than 100 nanofarad (claim 4, range overlaps the claimed range).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the therapeutic shockwave generation apparatus of Capelli to incorporate the capacitor capacitance under 100 nanofarad as taught by Mestas because it enables a reduction of energy density of the shockwaves by supplying intermittent electric current through the associated capacitors (Mestas, col 2, lines 58-68).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN A FRITH whose telephone number is (571)272-1292. The examiner can normally be reached M-Th 8:00-5:30 Second Fri 8:00-4:30.
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, Keith Raymond can be reached at 571-270-1790. 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.
/SEAN A FRITH/Primary Examiner, Art Unit 3798