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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
`
`1
`ATTORNEY DOCKZT NO.
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`CONFIRMATION NO.
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`15/178,455
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`06/09/2016
`
`Ondrej Pribula
`
`066964—8025.L s00
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`6795
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`
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`pERKINs 60113163105 General m
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`G BERT, SAMUEL G
`POST OFFICE BOX 1247
`SEATTLE, WA 98111-1247
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`ART UNIT
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`PAPER NUIVIBER
`
`3735
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/29/2017
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`patentprocurement @perkinscoie.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 15/178,455 PRIBULA ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3735SAMUEL GILBERT $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 2/8/2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20170925
`
`Disposition of Claims*
`5)|XI Claim(s) M is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s His/are rejected.
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`is/are objected to.
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`I )
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`_
`
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`I
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
`
`
`
`
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`, or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)IXI The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)|:l All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
`
`

`

`Application/Control Number: 15/178,455
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`Page 2
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`Art Unit: 3735
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Election/Restrictions
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`Applicant’s election without traverse of the embodiment of figure 5 in the reply
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`filed on 2/15/2017 is acknowledged.
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`Claims 36 and 57 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected species, there being no allowable generic or
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`linking claim. Election was made without traverse in the reply filed on 2/15/2017.
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`Claims 36 and 37 are directed to the embodiments of figures 3 and 4.
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`Specification
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`The priority information, current status of the applications, in paragraph [0001]
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`should be updated.
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`Claim Rejections - 35 USC § 1 12
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`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.
`
`

`

`Application/Control Number: 15/178,455
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`Page 3
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`Art Unit: 3735
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`Claims 29-48, 50-54 and 56 are rejected under 35 U.S.C. 112(b) or 35 U.S.C.
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`112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out
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`and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-
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`AIA the applicant regards as the invention.
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`Claim 29 - the claim does not set forth a structural relationship between all of the
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`structural elements.
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`Claim 35 - the claim does not set forth structure capable of performing the recited
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`function elements.
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`Claim 43 - the claim does not provide any structure to perform the recited
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`function of “constant or accelerated” movement.
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`Claim 44 - the claim does not provide any structure to perform the recited
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`function of “translational or rotational” movement.
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`Claim 45 - the claim does not provide any structure to perform the recited
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`function of “random” movement.
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`Claim 46 - the claim does not provide any structure to perform the recited
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`function of “following a predetermined trajectory”.
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`Claim 47 - the claim does not provide any structure to perform the recited
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`function of using the devices in “randomized locations or in a pattern”.
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`Claim 48- the claim does not provide any structure to perform the recited function
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`of using the devices in “an array or a matrix”.
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`Claim 50 - the claim does not include structure to perform the recited function of
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`recharging “simultaneously or at different times within one pulse”.
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`

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`Application/Control Number: 15/178,455
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`Page 4
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`Art Unit: 3735
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`Claim 51 - the claim does not include any structure to produce different treatment
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`parameters.
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`Claim 52 - the claim does not provide any structure to generate a plurality of
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`impulses at one time within one pulse.
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`Claim 53 - the claim does not include any structure to “arrange" the magnetic
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`fields as claimed.
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`Claim 54 - the claim does not include any structure to “generate impulses in a
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`plurality of different times within one pulse".
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`Claim 56 - the claim does not provide any structure to position the magnetic field
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`generating devices to produce the intersection as claimed.
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`The following is a quotation of 35 U.S.C. 112(d):
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`(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent
`form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to
`incorporate by reference all the limitations of the claim to which it refers.
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`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
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`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim
`in dependent form shall contain a reference to a claim previously set forth and then specify a
`further limitation of the subject matter claimed. A claim in dependent form shall be construed
`to incorporate by reference all the limitations of the claim to which it refers.
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`Claims 34 and 55 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112,
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`4th paragraph, as being of improper dependent form for failing to further limit the subject
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`matter of the claim upon which it depends, or for failing to include all the limitations of
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`the claim upon which it depends. Claim 34 covers all possible orientations of two
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`planes therefore it does not further limit the structure of claim 32. Claim 55, the effect
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`

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`Application/Control Number: 15/178,455
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`Page 5
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`Art Unit: 3735
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`caused by the magnetic stimulation does not further limit the structure of the apparatus.
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`Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper
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`dependent form, rewrite the claim(s) in independent form, or present a sufficient
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`showing that the dependent claim(s) complies with the statutory requirements.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(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.
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`Claim(s) 29-35, 39, 41-55 and 58 is/are rejected under 35 U.S.C. 102(a)(1) as
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`being anticipated by Jalinous (5,718,662).
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`Claim 29 - an energy source -2a-, an energy storage device -3-, a plurality of
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`switches -4- and a plurality of magnetic field generating devices-10a- and -10b- each of
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`which generated magnetic fields and a plurality of switching devices -14- and -16-
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`connected in parallel with the energy source as shown in figure 2.
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`Claim 30 - the magnetic field generating devices are positioned with respect to
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`each other as shown in figure 1.
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`Claims 31 and 32 - the coils of -10a- and -10b- are capable of being positioned in
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`the same plane or in different planes.
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`Claim 33 - the claim sets forth the first and second planes are either tiled or
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`parallel with respect to each other. This language covers all possible orientations of two
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`

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`Application/Control Number: 15/178,455
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`Page 6
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`Art Unit: 3735
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`planes and therefore the plans of the coils of -10a- and -10b- are either parallel or tilted
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`with respect to each other.
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`Claim 34 - elements -10a- and -10b- include coils for generating magnetic fields
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`and other structure as shown in figure 1, the examiner is taking the other structure as
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`the “applicators".
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`Claim 35 - the magnetic fields may be generated simultaneously, column 2 lines
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`52-60.
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`Claim 39 - each coil will produce a peak of magnitude of magnetic flux density,
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`the plurality of coils will then produce a plurality of peaks.
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`Claim 41 - the coils are capable of being used on a muscle group or region prone
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`to cellulite.
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`Claim 42 - elements -10a- and -10b- are movable.
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`Claim 43 - elements -10a- and -10b- are capable of constant or accelerated
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`movement by hand of the user.
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`Claim 44 - elements -10a- and -10b- are capable of translational or rotational
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`movement by hand of the user.
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`Claim 45 - elements -10a- and -10b- are capable of random movement by hand
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`of the user.
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`Claim 46 - elements -10a- and -10b- are capable of following a predetermined
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`path by hand of the user.
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`Claim 47 - elements -10a- and -10b- are capable of being used at randomized
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`locations or in a pattern.
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`

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`Application/Control Number: 15/178,455
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`Page 7
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`Art Unit: 3735
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`Claim 48 - using both -10a- and -10b- provides an array of two coils.
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`Claim 49 - an energy source -2a-, an energy storage device -3-, a plurality of
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`switches -4- and a plurality of magnetic field generating devices-10a- and -10b- each of
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`which generated independent magnetic field, as set forth in column 2 lines 52-60.
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`Claim 50 - capacitor “A” and “B” are connected to the same charger and will be
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`charged simultaneously.
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`Claim 51 - the plurality of magnetic field will have different time parameters when
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`they are generated, column 2 lines 52-60.
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`Claim 52 - the pulses are discharged simultaneously, column 2 lines 58-60.
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`Claim 53 - the coils are capable of being positioned to have the magnetic fields
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`interfere.
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`Claim 54 - the impulses may be generated at different times within one pulse,
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`column 2 lines 52-60.
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`Claim 55 - the apparatus is capable of providing the stimulation as claimed and
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`the same stimulation will inherently produce the same response from the tissue of the
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`USGL
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`Claim 58 - the claim is written as an open ended claim which is allowed to
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`contain additional elements, further, Jalinous figure 1, includes at least 2 of each of the
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`claimed elements.
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`

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`Application/Control Number: 15/178,455
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`Page 8
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`Art Unit: 3735
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`Claim 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Jalinous (5,718,662) in view of Roth et al (2010/0152522, hereinafter Roth).
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`

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`Application/Control Number: 15/178,455
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`Page 9
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`Art Unit: 3735
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`Claim 37 - Jalinous teaches a device as claimed as set forth above with respect
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`to claim 29 but does not set forth the magnetic generating devices having different
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`values for inductance.
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`Roth teaches an apparatus generating a plurality of magnetic fields with different
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`coils, -12— and -14- and further teaches that the coils may have the same or different
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`values for inductance, paragraph [0012].
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`It would have been obvious to one of ordinary skill in the medical arts at the time
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`the invention was effectively filed to select coils with the same or different inductance as
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`set forth in Roth as an ordinary design expedient.
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`One of ordinary skill in the medical arts would understand how to use coils of the
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`same or different inductance as set forth by Roth.
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`Claim 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Jalinous (5,718,662) in view of Rohwedder (2006/0152301).
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`Jalinous teaches a device as claimed as set forth above with respect to claim 29
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`but does not set forth the magnetic generating devices having adjustable values for
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`inductance.
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`Rohwedder teaches variable inductance coils are known in the medical arts,
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`paragraph [0011].
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`It would have been obvious to one of ordinary skill in the medical arts at the time
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`the invention was effectively filed to select coils having variable inductance to allow the
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`user to fine tune the magnetic field delivered to the user.
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`

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`Application/Control Number: 15/178,455
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`Page 10
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`Art Unit: 3735
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`Claims 40 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable
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`over Jalinous (5,718,662) in view of Farone(7,608,035).
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`Claims 40 and 46 - Jalinous teaches a device as claimed but does not teach
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`structure to position the coils as claimed for interference to treat a patient.
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`Farone teaches specific positioning of electromagnets for producing magnetic
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`fields in an interfering manner to provide the desired therapy at the desired location
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`within the body.
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`It would have been obvious to one of ordinary skill in the medical arts at the time
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`the invention was effectively filed to provide a plurality of stimulation coils in the aligned
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`position as taught by Farone to produce an interfering magnetic field to produce the
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`desired treatment for a specific position in the body as taught by Farone.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. US Patent 6,179,770 teaches related magnetic stimulation
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`assemblies.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to SAMUEL GILBERT whose telephone number is
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`(571)272-4725. The examiner can normally be reached on Monday-Friday 6:30-3:00.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`