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 subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are: “radiation that interfere according to a first type of interference by producing or being associated with or comprising”; “wherein preferentially: in a first optional step” etc.
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 2-14 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.
With respect to claims 2-3, the claims are rejected since the limitations are negatively recited. A device should be defined by what are its components. Negative recitation indicating what is not or not included does not clarify what the device is, what components as a whole form the device for an intended purpose.
With respect to claims 4-9, and 12-14, is considered indefinite because it requires multiple groups of multiple variables or options that one of ordinary skill in the art would not reasonably be able to track proper usable combinations.
Claims 10 and 11 recites the limitation "the interference" in line 1. There is insufficient antecedent basis for this limitation in the claim.
With respect to claim 14, the limitations are not addressed since the claimed language state that the steps are optional.
With respect to claims 1-14, the claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claims 4-9, and 12-14 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claims 2-14 have not been rejected over the prior art because, in light of the 35 U.S.C. 112 rejections supra, there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claims; hence, it would not be proper to reject the claims on the basis of prior art. As stated in, In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Notten et al. (US 2024/0130708 A1)
With respect to claim 1, Notten discloses a radiation heating system for treating a body part of an individual comprising: a first part comprising different sources of radiation (see ultrasound patch #710 in Figure 8 comprising multiple sources #750 and #730), where each source emits at least one beam of radiation (see paragraph 0118), wherein each radiation source is positioned at a different location relatively to a horizontal support axis preferentially of the system, such that the radial or angular positions of the sources around or relatively to said axis are different (as seen on Figure 8 according to Abstract and paragraphs 0081, 0189-0190), wherein at least two different radiation sources have at least two different orientations defined by at least two different emission angles measured with respect to a common reference axis (as seen on Figure 8 according to Abstract and paragraphs 0081, 0189-0190), and wherein said sources of radiation are positioned and orientated so that the beams spatially intersect or overlap within a common region that is distinct from the emission (see paragraph 0127) or focal or Near-field region of at least one or each emitting or piezo element and/or is comprised in the far-field region of at least one or each individual emitting or piezo element and/or in the near- field region of the assembly of emitting or piezo elements preferentially comprised in the system, wherein the number of sources of radiation is at least 3, 4, 5, 10, 20, 50, 60, 70, or 80, and at most 1020, 103, or 100 (see Figure 8 showing 4 sources),wherein each source of radiation is configured to have at least one property selected in the group consisting of: i) an opening (see paragraph 0201 discussing aperture window #770 as seen on Figure 9; Due to the nature of alternative language, ie “or” and “at least one of”, only one limitation of the group is required to be shown. Hence, only one limitation from the list will be discussed herein. However, more alternatives can be present in the prior art.) or diffracting angle (T) preferentially of the beam emitted by the source of radiation larger than 0, 1, 2, 5, 25 or preferentially measured between two opposite directions or points of the beam perimeter at the level of the emission region; ii) a diameter or width or thickness or its largest dimension smaller than one half the diameter or width or thickness of the body part to be treated or body part into or onto which the system or at least one part of the system is positioned or inserted or than 100, 10, 1 or 0.5 cm, and iii) a frequency preferentially of the beam that it emits that is smaller than 100, 10,5, 2 or 1.5 MHz; and a second part comprising at least one magnetic or metallic nanoparticle located in said common region and/or exposed to the intersecting or overlapping beams of radiation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIXOMARA VARGAS whose telephone number is (571)272-2252. The examiner can normally be reached Monday-Friday 8am-5pm.
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/DIXOMARA VARGAS/ Primary Examiner, Art Unit 3798
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