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 .
Election/Restrictions
Applicant’s election without traverse of Species A1 (Fig. 1), Species B1 (Fig. 4A), Species C1c (Fig. 9c) in the reply filed on 7/2/2026 is acknowledged. Claims 4 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected election, there being no allowable generic or linking claim. Therefore, claims 1-3, 5-12, 14 and 15 are pending examination.
Information Disclosure Statement
It is noted that the IDS submitted 2/12/26 has no references listed on it. It has been annotated, signed and included in the file wrapper for record-keeping purposes, but no reference have been considered by the examiner.
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 1-3, 5-12, 14 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/707896 in view of WO 2021/026218 to Van de Ven (or US 2022/0280807; which is the 371 of the WIPO). The only difference between the claims of the current app and the ‘896 app is that the ‘896 app requires that the electro-optical device is a computer or display screen (claim 1 of the ‘896 app) and the current app requires that the electro-optical device is a handheld device (claim 3). Van de Ven makes it clear that either form/configuration, i.e. a screen or a hand-held device, are obvious substitutes (see Pars 0023, 0176, 0238, Figs. 11-12). Therefore, it would be obvious to design/configure the electro-optical device in either a computer/display screen or a hand-held device, e.g. cell phone, wearable device, panel, probe, eyeglasses, etc., as these are obvious designs/configurations for similar electro-optical devices.
This is a provisional nonstatutory double patenting rejection.
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, 5-7 and 9-12 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.
[Claims 2, 5, 11 and 12] These claims recite the limitations “a full-width-at-half-power angle of less than 2x60 degrees”, “a full-width-at-half-power angle of less than 2x25 degrees”, “a full-width-at-half-power angle of less than 2x60 degrees” and “a full-width-at-half-power angle of 2x10 degrees or less”. It is unclear/unknown what is meant by these limitations. First, it is emphasized that “a full-width-at-half-power angle” is not a term of the art. It’s unclear if full width at half power is the same thing as full width half maximum, but for examination purposes this is being interpreted as a beam angle using full width half maximum (FWHM). Second, it’s unclear what is meant by “2x” in relation to the recited degrees. For example, is 2x60 degrees equivalent to 120 degrees? Similarly, is 2x25 degrees equivalent to 50 degrees? The examiner is unaware of beam angles being expressed as 2x a specific number of degrees, and therefore it is unclear what is meant by this “2x” format. For examination purposes, the examiner is interpreting this 2x to be multiplication, therefore an angle less than 2x60 degrees is the same as an angle less than 120 degrees.
[Claims 2, 5-7, 9, 11 and 12] The limitation "the first electro-optical element" lacks antecedent basis. Additionally, the limitation “the electro-optical element” lacks antecedent basis. It is noted that the independent claim recites “at least one electro-optical element”, but never recites a first electro-optical element or even an electro-optical element. Furthermore, when claims introduce a “second electro-optical element”, confusion arises as to what “the electro-optical element” is referring to.
[Claim 10] The limitation “the first light source” lacks antecedent basis.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5-7, 9-12, 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/026218* to Van de Ven.
*It is noted that US 2022/0280807, which is a 371 of the WO 2021/026218 reference, is being used for citation purposes, as it contains paragraphs.
[Claims 1 and 7] An electro-optical device
at least one electro-optical element arranged to emit electromagnetic radiation having a peak emission wavelength between 700-1400 nm (any of the disclosed light therapy devices, e.g. Pars 0023, 0176 and 0 238 and Figs. 1-5 and 8-12, having a plurality of emitters (30 or 40) that emit infrared and near-infrared (IR/NIR) light, i.e. 700-1400 nm; at least Pars 0027, 0213, 0215 and 0225. In terms of claim interpretation, any single emitter/LED or combination of plural emitters/LEDs is interpreted as the at least one electro-optical element);
a control circuit (controller CPU 140; Fig. 7) configured to adjust emission characteristics of the electro-optical element (at least Pars 0031, 0231 and 0241-243)
a driver circuit (“Driver” shown in Figs. 6-7; Par 0022) configured to receive an input from the control circuit and drive the electro-optical element based on the input received from the control circuit, using a driving current that is pulsed (pulse width modulation, Pars 0042, 0215, 0255, 0264, 0292-293 and 0330-335),
wherein the control circuit comprises a timer configured to determine an on-period for the electromagnetic radiation emitted by the electro-optical element, and/or comprises a dose calculation unit configured to determine an accumulated dose of the electromagnetic radiation at the user (Timer is disclosed in at least Pars 0032-33, 0177-179 and 0231);
wherein the control circuit is configured to instruct the driver circuit to shut off the electro-optical element, if a predetermined maximum on-period is exceeded, and/or if the accumulated dose determined by the dose calculation unit indicates that a predetermined dose of the electromagnetic radiation at the user is exceeded (At least Pars 0032-33 and 0179 discuss turning off the light when a predetermine maximum on-period is exceeded, as determined by the timer)
[Claim 2] Van de Ven discloses proximity sensors (human sensor 10, identity sensor 20, Fig. 1 and/or proximity sensor 180, Fig. 8) that determines a distance between the user and the device and controlling the timer based on this distance detection (at least Pars 0030-32, 0179, 0232, e.g. “The light source can include an actuator or a timer to control how long the light is emitted, and the light source can be turned on or off, for example, based on when the door is first opened and then closed, based on when the patient/user sits in a chair inside the enclosure, and the like”)
[Claims 3, 5 and 12] Van de Ven discloses multiple handheld devices, e.g. cell phone, wearable device, panel, probe, eyeglasses, etc. (Pars 0023, 0176, 0238, Figs. 11-12), any of which can be interpreted as “illumination devices”, as they provide illumination/light. Van de Ven also discloses that the driver circuit is configured to drive the light source with a pulse-width, frequency and radiation level (Pars 0042, 0215, 0241-243, 0264 and 0398 all discuss the different parameters of light that can be controlled/adjusted, including pulse width/duration, frequency and radiation/energy level), such that the light achieves a peak irradiation intensity above 0.1 mW/cm2 on the user (at least Pars 0129 and 0133), as well as an angle of less than 120 degrees (at least Pars 0165-175 all describe beam angles of less than 120 degrees), specifically an angle of less than 50 degrees (at least Pars 0175 and 0212, specifically “not greater than 20 degrees”)
[Claim 6] Van de Ven is silent to the claimed function. However, the examiner takes the position that Van de Ven discloses all of the necessary structure, i.e. light sources, to be capable of such an intended use; see MPEP 2114. It is emphasized that this function is not tied to the control circuit or drive circuit, therefore any light source capable of functioning in the claimed manner reads on the claim language. If applicant disagrees, see alternative 103 below.
[Claim 9] Van de Ven discloses various values of intensity (including greater than 50 mW/cm2; Par 0129) at a distance of 5meters or less (e.g. Fig. 3-5 and 10). Furthermore, the distance at which the device is held/maintained from the patient is intended use, and it’s clear from the disclosed intensity values that the device taught by Van de Ven includes all of the necessary structural elements and configurations to be capable of providing the claimed intensity values at the claimed distances; see MPEP 2114 "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
[Claim 10] Van de Ven discloses various values of intensity, including values of 1 mW/cm2 to 12 mW/cm2 (Par 0129). When these intensities are delivered for an hour or longer, i.e. 3600 seconds or longer, the resulting dose is within the claimed range of 1 to 50 J/cm2, e.g. an intensity of 10 mW/cm2 delivered for 3600 seconds (1 hour) results in a dose of 36 J/cm2. Therefore, the claimed device is capable of performing the claimed function; see MPEP 2114
[Claim 11] Van de Ven explicitly discloses the light is directed by optics (“a translucent optical lens” Par 0123; see also Par 0249). Additionally, see explanation of claims 3, 5 and 12 above.
[Claims 14 and 15] Van de Ven discloses a pulse frequency of greater than 100 Hz (up to 10 Khz) and a pulse frequency of 30 Hz (Par 0042)
Claim Rejections - 35 USC § 103
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.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Van de Ven, as applied to claim 1 above.
[Claim 8] Van de Ven explicitly discloses “the illumination is turned off and remains off until a new user is detected and/or an appropriate ‘off time’ has elapsed so that a user does not overuse the therapy” (Par 0032), but is silent to the specific length of this “off time”. However, by specifically referring to it as an “appropriate” off time and relating this time to preventing overuse, Van de Ven recognizes this length of time as a result effective variable. Therefore, it would have been obvious to one of ordinary skill in the art to try/choose a specific off time of at least 8 hours, as optimization of a result effective variable, specifically a POSITA would choose/try an appropriate amount of time that prevents overuse, including at least 8 hours. Additionally, Par 0030 teaches “the devices are configured to be activated automatically when a user is present (or likely to be present) and for a preset period of time so that user receives only the prescribed amount of modulated illumination per day”, making it obvious to only apply therapy once per day, such that at least 8 hours passes between the next therapy session.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Van de Ven as applied to claim 1 above, and further in view of WO 2020/097575* to Petluri
*It is noted that US 2021/0402210, which is a 371 of the WO 2020/097575 reference, is being used for citation purposes, as it contains paragraphs.
Van de Ven is silent to only emitting light from one electro-optical element when another electro-optical element is above a certain brightness/luminance. However, in the same field of endeavor, Petluri teaches a similar light therapy device that compensates/balances light of different colors (Pars 0082 and 0170-171). Specifically, Petluri teaches “However, an overload of artificial blue light such as CSE by itself may be determinantal. This damage can be mitigated through LRNE exposure. Balancing and/or controlling a exposure of both artificial blue light and LRNE support wellness benefits similar to those that flow from natural, sunlight exposure” (Par 0082). The examiner interprets this as a first electro-optical element (long red near infrared energy, i.e. LRNE light) that only emits when a second electro-optical element (blue light) is emitting with a luminance above 10 cd/m2, i.e. “an overload of artificial blue light”. Therefore, it would have been obvious to modify the device taught by Van de Ven to program/control the NIR light, i.e. first electro-optical device, such that it compensates for and balances out an excess/overload of a second electro-optical device, e.g. blue light, in order to provide the disclosed wellness benefits taught by Petluri.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2007/0208395 to Leclerc discloses a light therapy system that calculates the total/cumulative dose of the treatment and a controller that automatically stops the treatment when this total dosage has been met (Pars 0085-86).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
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, David Hamaoui can be reached at 571-270-5625. 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.
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
Prosecution Insights