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 Objections
Claims 1, 7 and 8 are objected to because of the following informalities: Claim 1 states: “each of the elongated placement members disposing… “, examiner suggests changing to “each of the elongated placement members are configured to dispose…’. Claim 7 states: “extend”, examiner suggests changing to “extends” due to it referring to a pair. Claim 8 states: “from the Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 4, 5, 7, 8 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 states: “a plurality of prongs”. However, Claim 1 states: “at least one prong”. It is unclear whether the claimed invention may have “at least one prong” or must comprise “a plurality of prongs”. Therefore, claim 2 is rejected under 35 U.S.C. 112 (b)
Claim 4 recites the limitation "the diameter of the placement member” in line 1, it is unclear which placement member diameter is being referred too of the plurality of placement members of dependent claim 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the prongs” in line 1, it is unclear if “the prongs” or the “pair of prongs” are being referred to. Further, the recited limitation “a signal wire” is indefinite because it is unclear if “a signal wire” in claim 6 is the same as “an signal wire” in claim 1. Claim 6 is also dependent on claim 2 and therefore inherits claim 2’s 35 U.S.C. 112(b) rejection.
The term “substantially” in claims 7 and 9 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 7 recites: ‘wherein the prongs form an inverted bend to a run substantially perpendicular to the patient sensing surface.’ The degree at which the prongs are bent is rendered indefinite. For examination purposes the degree is simply taken to be perpendicular. Claim 7 is also dependent on claim 6 and therefore inherits claim 6’s 35 U.S.C. 112(b) rejection.
Claim 8 is dependent on claim 2 and therefore inherits claim 2’s 35 U.S.C. 112(b) rejection.
Claim 9 recites: ‘wherein an aggregation of each of the articulations of the placement members extending from the base disposes the terminal end in alignment with the patient sensing surface for biasing a substantially equal force from the base towards the patient sensing surface.’ The degree at which the force applied to the patient’s sensing surface is rendered indefinite. For examination purposes the terminal end is seen as simply applying a force. Claim 9 is also dependent on claim 4 and therefore inherits claim 4’s 35 U.S.C. 112(b) rejection.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claim(s) 1-3, 5-6, 8 and 10 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Washbon et al. (US 20070225585 A1) herein referred to as “Washbon”.
Regarding claim 1, Washbon teaches: A therapeutic electrode placement device ([Abstract]; Headset in which electrodes are mounted to be placed on an users head), comprising: a base configured for interactive manual engagement ([Figure 3A] Center band 360 is seen as a base for interactive manual engagement), a plurality of elongated placement members extending from the base each of the placement members having a terminal end adapted for engaging an electrode ([Figure 3A]; Bands 352, 354, 356 and 358 are seen as placement members. [0050]; The ends of bands have terminal ends that hold electrodes.) and at least one prong at each respective terminal end ([Figure 3A]; The terminal ends have prongs as taught in Figure 3A below), the prong configured to bias a downward force onto the electrode ([Figure 3A]; The prongs are taught extending toward the patients scalp) and accommodate an electrical signal wire to the electrode ([0077]; Wires are taught connecting electrodes); each of the elongated placement members disposing the respective terminal end simultaneously biasing the corresponding electrode against a patient sensing region. ([0012]; Bands configured towards patient sensing regions)
[Washbon, Figure 3A]
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Regarding claim 2, Washbon teaches: The device of claim 1 further comprising a plurality of prongs at each terminal end ([Figure 3A]; The ends of previously taught bands have two prongs as shown in Figure 3A above), the plurality of prongs configured to flank the electrode in a biased position against the patient sensing region ([Figure 3D]; the apertures (341-344), which are seen as prongs. [0053]; Apertures mount electrodes and place them on specific sensing regions on the users head).
Regarding claim 3, Washbon teaches: The device of claim 1 wherein each of the placement members has zero or more articulations, the articulations disposing the terminal ends based on a common distance to the patient sensing region. ([0050]; The bands 352-358 configured to provide electrodes to a subject’s head, which is seen as disposing of the terminal ends on a patient sensing region. Further the bands conform to a patient’s head which is seen as articulation)
Regarding claim 5, Washbon teaches: The device of claim 1 further comprising a rigid attachment from the base to each of the respective placement members, the base configured to transfer the biasing force to the placement members. ([0009]; The bands are described as rigid)
Regarding claim 6, Washbon teaches: The device of claim 2 wherein the plurality of prongs further comprise a pair of opposed prongs at each terminal end ([Figure 3A]; The prongs are shown to be opposing each other as disclosed in the figure above), the prongs flanking a signal wire to the electrode and imposing the biasing force on the electrode on opposed sides of the signal wire.([0087]; Wires are described connecting the electrode concealed within the device which is seen as flanking)
Regarding claim 8, Washbon teaches: The device of claim 2 wherein the plurality of prongs form a bifurcated extension from the respective terminal end. ([Figure 3A]; The prongs are spit in two respective prongs and are seen as bifurcated)
Regarding claim 10, Washbon teaches: A method for administering an electrode based diagnostic process ([0010]; Receive signals from electrodes and provide output to a processor which is seen as a diagnostic process), comprising: extending a plurality of elongated placement members ([Figure 3A]; Bands 352-358) extending from a base ([Figure 3A] Bands are shown extending from the center band 360, which is seen as a base), each of the placement members having a terminal end adapted for engaging an electrode ([Figure 3D]; The bands have terminal apertures configured to receive electrodes), the base configured for interactive manual engagement ([0012]; The headset allows for placement on a patients scalp which is seen as interactive manual engagement); attaching at least one prong at each respective terminal end ([Figure 3A]; As shown in figure 3A above the bands have two prongs), the prong configured to bias a downward force ([0056]; The bands, and therefore the prongs, are configured to bias downwardly which is seen as a downward force) onto the electrode and accommodate an electrical signal wire to the electrode ([0077]; The electrodes are connected with wires ); and applying a force to the base such that each of the elongated placement members disposes the respective terminal end simultaneously biasing the corresponding electrode against a patient sensing region. ([0011]; The bands are described as pressing electrodes against the subject’s head)
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4, 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Washbon in view of Badower et al. (US 20140051961 A1) herein referred to as “Badower”.
Regarding claim 7, Washbon discloses: The device of claim 6 wherein the pair of opposed prongs extend from the terminal end ([Figure 3A]; The prongs extend from the terminal end) for extending towards the patient sensing region ([0012]; The terminal end of the bands and therefore the prongs are configured to extend toward a patient sensing region). Washbon does not explicitly disclose: wherein the prongs form an inverted bend to a run substantially perpendicular to the patient sensing surface.
However, Badower discloses: wherein the prongs form an inverted bend to a run substantially perpendicular to the patient sensing surface. ([Figure 11A]; electrode 138, which is part of a prong pair forms an inverted bend and [0130]; run downward toward the scalp perpendicular to the patient sensing surface)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the device as disclosed by Washbon with the inverted prong as disclosed by Badower. The motivation being to allow for the electrode portion to penetrate hair ([0146]).
Regarding claim 4 Washbon teaches: The device of claim 3. Washbon does not explicitly disclose: wherein the articulations include a series of segments of varying diameter at least as large as the diameter of the placement member.
However, Badower discloses: wherein the articulations include a series of segments of varying diameter at least as large as the diameter of the placement member.([Figure 11A]; The segments shown about the articulation have varying diameters as disclosed in figure 11A below.)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the device as disclosed by Washbon with varying diameter segments as disclosed by Badower. The motivation being to allow for the electrode portion to penetrate hair ([0146]).
[Badower, Figure 11A]
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Regarding claim 9, Washbon in view of Badower discloses: The device of claim 4. Badower further discloses: wherein an aggregation of each of the articulations of the placement members extending from the base disposes the terminal end in alignment with the patient sensing surface for biasing a substantially equal force from the base towards the patient sensing surface. ([0127]; The extensions, and with them the coupled electrodes 138, wherein between the articulation is located, bend toward the scalp applying a force)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the device as disclosed by Washbon with the force producing articulations as disclosed by Badower. The motivation being to tighten the device around the head of the user ([0127]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASEY GEORGE CHA whose telephone number is (571)272-0749. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 3032974276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CASEY GEORGE CHA/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
