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 .
Drawings
The drawings were received on 4/18/2025. These drawings are accepted for examination.
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.
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Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,303,452 and/or claims 1-10 of U.S. Patent No. 12,569,397. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the claims of the ‘452 and ‘397 patents cover substantially the same subject matter as shown in the table below:
Instant Claims of 19/182,956
‘452 and/or ’397 patents
1. A cellulite treatment system, comprising:
a laser generating device including a scanner to provide 50 Hz Q-Switched laser energy, and
a hydrogel patch to be in contact with a person's skin, including:
a first layer comprising a clear evape film material,
a second layer comprising a hydrogel material,
a third layer comprising a resin enhanced wax Thermal Transfer Ribbon (“TTR”) with a carbon black adsorbing medium that, when receiving a laser beam from the laser generating device, results in Extracorporeal Shock Wave Therapy (“ESWT”) being applied to the person's skin to treat cellulite,
a fourth layer comprising a hydrogel material,
a fifth layer comprising a clear polyester (“PET”) release liner material, and
at least one marking on the hydrogel patch to help guide a doctor or other professional to multiple areas where the laser beam should be focused.
Claim 1 of ‘452
Claim 1 of ‘397
2. The system of claim 1, wherein the laser beam has a pulse width from 0.2 to 80 nanoseconds (“ns”).
Claim 2 of ‘452
Claim 2 of ‘397
3. The system of claim 1, wherein the laser beam has a pulse energy from 100 to 2500 millijoules (“mj”).
Claim 3 of ‘452
4. The system of claim 1, wherein the laser beam has a spot size of from 1 to 15 millimeters.
Claim 4 of ‘452
5. The system of claim 1, wherein the laser beam has a fluence of 0.1 to 5 j/cm2.
Claim 5 of ‘452
6. The system of claim 1, wherein the hydrogel patch is approximately 8 inches by 4 inches.
Claim 6 of ‘452
7. A method to treat cellulite, comprising:
placing a first side of a hydrogel patch on a person's skin, wherein the patch includes:
a first layer comprising a clear evape film material,
a second layer comprising a hydrogel material,
a third layer comprising a resin enhanced wax Thermal Transfer Ribbon (“TTR”) with a carbon black adsorbing medium that, when receiving a laser beam from the laser generating device, results in Extracorporeal Shock Wave Therapy (“ESWT”) being applied to the person's skin to treat cellulite,
a fourth layer comprising a hydrogel material,
a fifth layer comprising a clear polyester (“PET”) release liner material, and
at least one marking on the hydrogel patch to help guide a doctor or other professional to at least one area where a laser beam should be focused;
generating the laser beam by a laser generating device; and
directing the laser beam to apply ESWT to the person's skin to treat cellulite.
Claim 1 of ‘452
Claim 1 of ‘397
8. The method of claim 7, wherein the laser beam has a pulse width from 0.2 to 80 nanoseconds (“ns”).
Claim 2 of ‘452
Claim 2 of ‘397
9. The method of claim 7, wherein the laser beam has a pulse energy from 100 to 2500 millijoules (“mj”).
Claim 3 of ‘452
Claim 4 of ‘397
10. The method of claim 7, wherein the laser beam has a spot size of from 1 to 15 millimeters.
Claim 4 of ‘452
Claim 5 of ‘397
11. The method of claim 7, wherein the laser beam has a fluence of 0.1 to 5 j/cm2.
Claim 5 of ‘452
12. The method of claim 7, wherein the hydrogel patch is approximately 8 inches by 4 inches.
Claim 6 of ‘452
Claim 10 of ‘397
13. A hydrogel patch to be in contact with a person's skin, comprising:
a first layer comprising a clear evape film material,
a second layer comprising a hydrogel material,
a third layer comprising a resin enhanced wax Thermal Transfer Ribbon (“TTR”) with a carbon black adsorbing medium that, when receiving a laser beam from the laser generating device, results in Extracorporeal Shock Wave Therapy (“ESWT”) being applied to the person's skin to treat cellulite,
a fourth layer comprising a hydrogel material,
a fifth layer comprising a clear polyester (“PET”) release liner material, and
at least one marking on the hydrogel patch to help guide a doctor or other professional to multiple areas where the laser beam should be focused.
Claim 1 of ‘452
Claim 1 of ‘397
14. The hydrogel patch of claim 13, further comprising:
at least one marking on the hydrogel patch to help guide a doctor or other professional to where the laser beam should be focused
Claim 1 of ‘452
Claim 1 of ‘397
15. The hydrogel patch of claim 13, further comprising:
a plurality of markings on the hydrogel patch to help guide a doctor or other professional to multiple areas where the laser beam should be focused.
Claim 1 of ‘452
Claim 1 of ‘397
16. The hydrogel patch of claim 13, wherein the hydrogel patch is approximately 8 inches by 4 inches.
Claim 6 of ‘452
Claim 10 of ‘397
Allowable Subject Matter
Claims 1-16 would be allowable over prior art found and considered should the rejection under double patenting be obviated.
The closest reasonable prior art to the instant application, see cited Tankovich et al (US 6,050,990), Cioanta et al (US 2014/0243715), Waldman et al (US 6,306,128), and Kami (2021/0052292) fail to disclose and teach the instantly recited cellulite treatment system, method, and patch wherein the hydrogel patch includes a 1st layer with a clear evape (EVA-pe) film material, second layer with a hydrogel, 3rd layer with a resin enhanced wax thermal transfer ribbon (TTR) including carbon black adsorbing media which is configured to act as ESWT treatment during laser bean excitation, a 4th layer with a hydrogel, and 5th layer with a clear polyester release liner material, as well as at least one placement/guidance marking for the guidance of a doctor to multiple areas where the laser excitation should be focused.
While Tankovich in view of Cioanta (0327, cellulite treatment) discloses a hydrogel material with multiple layers which acts as a contact element and guides ESWT treatment (col 21-col 22) and the incorporation of carbon black as a chromophore, but fails to disclose and teach the instantly described layering of materials for the patch of the instant claims. None of the other teaching references cited remedy the deficiencies of the primary reference(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL M. LAMPRECHT whose telephone number is (571)272-3250. The examiner can normally be reached Mon - Fri 9:00-5:30.
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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.
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/JOEL LAMPRECHT/Primary Examiner, Art Unit 3798
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