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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
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`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
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`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
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`3735
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/15/2016
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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)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/178,455 PRIBULA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`SAMUEL GILBERT $2215 3735
`
`-- 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 2 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () 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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`Status
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`1)|:I Responsive to communication(s) filed on
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|:l 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)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-28 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|:| Claim(s)_ is/are rejected.
`8)|:| Claim(s)_ is/are objected to.
`
`9)IXI Claim((s_)1 -28 are subject to restriction and/or election requirement.
`* 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
`hit
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
`
`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l 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).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] 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)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20161210
`
`

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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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`Election/Restrictions
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`l. Claims 1-10, drawn to a device for magnetic stimulation, classified in A61 N
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`2/00.
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`ll. Claims 11-28, drawn to a method of using the stimulation device, classified in
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`A61 N 2/02.
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`The inventions are distinct, each from the other because of the following reasons:
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`Inventions l and II are related as product and process of use. The inventions can
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`be shown to be distinct if either or both of the following can be shown: (1) the process
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`for using the product as claimed can be practiced with another materially different
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`product or (2) the product as claimed can be used in a materially different process of
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`using that product. See MPEP § 806.05(h).
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`In the instant case the process can be used
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`with an apparatus with switches that are not in parallel to the energy source and the
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`device may be used in a materially different process such as holding the device in place
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`and moving the patient with respect to the applicator.
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`Restriction for examination purposes as indicated is proper because all the
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`inventions listed in this action are independent or distinct for the reasons given above
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`and there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`

`

`Application/Control Number: 15/178,455
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`Page 3
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`Art Unit: 3735
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`Different search strings and search strategy would be required to find a
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`stimulator with switches in parallel with the power source as required by the device
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`while the method of using the device claim 11 requires moving the applicator which is
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`not required by the device.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of an invention to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`and specifically point out supposed errors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. lf claims are added after
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`showing the inventions to be obvious variants or clearly admit on the record that this is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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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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`This application contains claims directed to the following patentably distinct
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`species Figure 3; Figure 4 and Figure 5. The species are independent or distinct
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`because the stimulation device is set forth with distinct electrical circuits. In addition,
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`these species are not obvious variants of each other based on the current record.
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`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or
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`a single grouping of patentably indistinct species, for prosecution on the merits to which
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`the claims shall be restricted if no generic claim is finally held to be allowable. Currently,
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`no claims are generic.
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`There is a search and/or examination burden for the patentably distinct species
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`as set forth above because at least the following reason(s) apply: distinct circuits
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`require extensive visual searching of the prior art wherein prior art for one circuit is not
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`likely to be prior art for additional embodiments.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a species to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected species or grouping of patentably indistinct species, including any
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`claims subsequently added. An argument that a claim is allowable or that all claims are
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`generic is considered nonresponsive unless accompanied by an election.
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`The election may be made with or without traverse. To preserve a right to
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`petition, the election must be made with traverse. If the reply does not distinctly and
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`specifically point out supposed errors in the election of species requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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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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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
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`the election, applicant must indicate which of these claims are readable on the elected
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`species or grouping of patentably indistinct species.
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`Should applicant traverse on the ground that the species, or groupings of
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`patentably indistinct species from which election is required, are not patentably distinct,
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`applicant should submit evidence or identify such evidence now of record showing them
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`to be obvious variants or clearly admit on the record that this is the case. In either
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`instance, if the examiner finds one of the species unpatentable over the prior art, the
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`evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35
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`U.S.C. 103(a) of the other species.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which depend from or otherwise require all the limitations
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`of an allowable generic claim as provided by 37 CFR 1.141.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR1.17(i).
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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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`The examiner has required restriction between product or apparatus claims and
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`process claims. Where applicant elects claims directed to the product/apparatus, and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims
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`that include all the limitations of the allowable product/apparatus claims should be
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`considered for rejoinder. All claims directed to a nonelected process invention must
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`include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the
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`product/apparatus claims and the rejoined process claims will be withdrawn, and the
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`rejoined process claims will be fully examined for patentability in accordance with 37
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`CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for
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`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all
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`claims to the elected product/apparatus are found allowable, an otherwise proper
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`restriction requirement between product/apparatus claims and process claims may be
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`maintained. Withdrawn process claims that are not commensurate in scope with an
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`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
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`Additionally, in order for rejoinder to occur, applicant is advised that the process claims
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`should be amended during prosecution to require the limitations of the
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`product/apparatus claims. Failure to do so may result in no rejoinder. Further, note
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`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
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`where the restriction requirement is withdrawn by the examiner before the patent
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`issues. See MPEP § 804.01.
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`