`“x
`‘\\f
`
`
`
`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
`
`APPLICATION NO.
`
`15/396,073
`
`
`
`
`
` F ING DATE
`
`12/30/2016
`
`FIRST NAMED INVENTOR
`
`1
`ATTORNEY DOCKZT NO.
`
`CONFIRMATION NO.
`
`Tomas Schwarz
`
`066964—8034.L $00
`
`4558
`
`
`
`pERKINscmELLp-LosGeneral m
`
`G BERT, SAMUEL G
`POST OFFICE BOX 1247
`SEATTLE, WA 98111-1247
`
`ART UNIT
`
`PAPER NUIVIBER
`
`3735
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/02/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentprocurement @perkinscoie.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/396,073 SCHWARZ 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(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
`
`Status
`
`1)IZI Responsive to communication(s) filed on 6/22/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| 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
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI C|aim(s) M is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`.
`4) I:I Other:
`.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170923
`
`is/are allowed.
`6 El Claim s)
`s M is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)I:I C|aim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`
`hit
`:i/wwwusnto. ov/ atentS/init events/
`iindex.‘s orsend 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).
`
`Priority under 35 U.S.C. § 119
`
`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`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
`
`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.
`
`Attachment(s)
`
`
`
`

`

`Application/Control Number: 15/396,073
`
`Page 2
`
`Art Unit: 3735
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`DETAILED ACTION
`
`Specification
`
`Page one of the specification includes a listing of patent applications under the
`
`heading “Priority Claim”, update the status of each application as appropriate.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GEN ERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`Claims 31-46 and 60 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-
`
`AIA), first paragraph, as failing to comply with the written description requirement. The
`
`claim(s) contains subject matter which was not described in the specification in such a
`
`way as to reasonably convey to one skilled in the relevant art that the inventor or a joint
`
`inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
`
`possession of the claimed invention.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 3
`
`Art Unit: 3735
`
`Claim 31 - sets forth a range of 10-900 us while the specification only sets forth a
`
`range of 10-600us as set forth in paragraph [0079].
`
`Claim 40 - the specification sets forth a range of .1 -100 W/cm2 while the claim
`
`calls for an open ended range of “at least 0.1 W/cm2".
`
`Claim 41 - sets forth a range of 10-900 us while the specification only sets forth a
`
`range of 10-600us as set forth in paragraph [0079].
`
`Claim 60 - sets forth a range of 10-900 us while the specification only sets forth a
`
`range of 10-600us as set forth in paragraph [0079].
`
`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 41-46 and 48-60 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 pre-AIA
`
`the applicant regards as the invention.
`
`Claim 41 - “reducing cellulite appearance” line 1
`
`is a subjective phrase which
`
`renders the claim indefinite. The subjective phrase "reducing cellulite appearance" is
`
`not defined by the claim, the specification does not provide a standard for ascertaining
`
`

`

`Application/Control Number: 15/396,073
`
`Page 4
`
`Art Unit: 3735
`
`the requisite degree, and one of ordinary skill in the art would not be reasonably
`
`apprised of the scope of the invention. The scope of what is considered to be an
`
`“reducing cellulite appearance" cannot be determined from the specification because it
`
`is a subjective term.
`
`Claim 48 - in line 2, “and/or" is inconsistent with the body of the claim because
`
`the body requires application of both magnetic and optical treatment.
`
`Claim 55 - in line 2, “and/or" is inconsistent with the body of the claim because
`
`the body requires application of both magnetic and optical treatment.
`
`Claim 60 - In line 2, “the range” lacks antecedent basis and should be
`
`--a
`
`range--.
`
`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.
`
`Claim(s) 48 and 49 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Mathes (2010/0121131).
`
`Claim 48 - Mathes teaches a method of applying at least two different treatments
`
`to a target biological structure that will inherently produce circumferential reduction,
`
`wherein at least one treatment is optical treatment, LED unit -110-, and wherein at least
`
`one treatment is magnetic treatment, electromagnet -30-. Mathes further sets forth
`
`

`

`Application/Control Number: 15/396,073
`
`Page 5
`
`Art Unit: 3735
`
`pules, see paragraph [0045] as an example, but does not set forth any range for the
`
`pulse duration.
`
`Claim 49 - the method inherently heats adipose cells because the same
`
`stimulation is applied to tissue.
`
`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 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.
`
`Claims 31-34, 36-39, 41, 42, 45 and 46 is/are rejected under 35 U.S.C. 103 as
`
`being unpatentable over Mathes(2010/O121131) in view of Simon et al (2011/0046432,
`
`hereinafter Simon).
`
`Claim 31 - Mathes teaches a method of applying at least two different treatments
`
`to a target biological structure that will inherently reduce adipose cells, wherein at least
`
`one treatment is optical treatment, LED unit -110-, and wherein at least one treatment is
`
`

`

`Application/Control Number: 15/396,073
`
`Page 6
`
`Art Unit: 3735
`
`magnetic treatment, electromagnet -30-. Mathes further sets forth pules, see paragraph
`
`[0045] as an example, but does not set forth any range for the pulse duration.
`
`Simon teaches a magnetic treatment device generation pulses and sets forth a
`
`range of pulse durations as between 10 -1000 us.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to us the known range of pulse durations set forth in
`
`Simon for the duration of the pulses which are not set forth in Mathes as a substitution
`
`of a known range for a range not set forth. Such a combination would produce
`
`predictable results of a method using a known range of pulse duration and have a high
`
`expectancy of success because the range of pulse durations are known and used in the
`
`medical arts as set forth in Simon.
`
`Claim 32 - Mathes teaches a repetition rate of 1-146 Hz, paragraph [0042] and a
`
`magnetic flux density is at least 0.1 T, magnetic fields strengths of up to 5 T are set forth
`
`as being used, paragraph [0023].
`
`Claim 33 - the method inherently heats adipose cells because the same
`
`stimulation is applied to tissue.
`
`Claim 34 - Mathes teaches a range of 630-1000nm for the light therapy,
`
`paragraph [0018].
`
`Claim 36 - the treatment is applied to tissue of the body as set forth in paragraph
`
`[0052] which includes the claimed portions of the body.
`
`Claim 37 - switching devices are set forth in paragraph [0042] of Mathes.
`
`Claim 38 - battery -66- is an energy storage device.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 7
`
`Art Unit: 3735
`
`Claim 39 - the battery -66- is in serial connection with the magnetic generating
`
`device -30-.
`
`Claim 41 - Mathes teaches a method of applying at least two different treatments
`
`to a target biological structure that will inherently reduce adipose cells, wherein at least
`
`one treatment is optical treatment, LED unit -110-, and wherein at least one treatment is
`
`magnetic treatment, electromagnet -30-, a repetition rate of 1-146 Hz, paragraph [0042]
`
`and a magnetic flux density is at least 0.1 T, magnetic fields strengths of up to 5 T are
`
`set forth as being used, paragraph [0023]. Mathes further sets forth pules, see
`
`paragraph [0045] as an example, but does not set forth any range for the pulse
`
`duration.
`
`Simon teaches a magnetic treatment device generation pulses and sets forth a
`
`range of pulse durations as between 10 -1000 us.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to us the known range of pulse durations set forth in
`
`Simon for the duration of the pulses which are not set forth in Mathes as a substitution
`
`of a known range for a range not set forth. Such a combination would produce
`
`predictable results of a method using a known range of pulse duration and have a high
`
`expectancy of success because the range of pulse durations are known and used in the
`
`medical arts as set forth in Simon.
`
`Claim 42 - the method inherently heats adipose cells because the same
`
`stimulation is applied to tissue.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 8
`
`Art Unit: 3735
`
`Claim 45 - the treatment is applied to tissue of the body as set forth in paragraph
`
`[0052] which includes the claimed portions of the body.
`
`Claim 46 - switching devices are set forth in paragraph [0042] of Mathes.
`
`Claims 40 and 44 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over the combination of Mathes and Simon as applied to claim31 and 38 above, and
`
`further in view of Salansky et al (6,063,108, hereinafter Salansky).
`
`Claim 40 - the combination teaches a method as claimed including applying light
`
`to provide therapy to a patient however the total power flux density applied by the light
`
`is not set forth.
`
`Salansky teaches a method of light therapy and sets forth the range of
`
`acceptable applied power flux density to be in the range of .0001 to 5 W/cm2.
`
`In the absence of Mathes setting forth any specific range for total power flux one
`
`would look to the prior art and select from the known ranges such as those set forth by
`
`Salansky as an obvious design choice to one of ordinary skill in the medical at.
`
`Therefore it would have been obvious to one of ordinary skill in the medical art at
`
`the time the application was effectively filed to use a total power flux density of at least
`
`0.1 W/cm2 as set forth by Salansky for the method of Mathes because Mathes is silent
`
`with respect to total flux density.
`
`Claim 44 - Mathes of the combination teaches a range of 630-1000nm for the
`
`light therapy, paragraph [0018] but does not set forth total power flux density applied.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 9
`
`Art Unit: 3735
`
`Salansky teaches a method of light therapy and sets forth the range of
`
`acceptable applied power flux density to be in the range of .0001 to 5 W/cm2.
`
`In the absence of Mathes setting forth any specific range for total power flux one
`
`would look to the prior art and select from the known ranges such as those set forth by
`
`Salansky as an obvious design choice to one of ordinary skill in the medical at.
`
`Therefore it would have been obvious to one of ordinary skill in the medical art at
`
`the time the application was effectively filed to use a total power flux density of at least
`
`0.1 W/cm2 as set forth by Salansky for the method of Mathes because Mathes is silent
`
`with respect to total flux density.
`
`Claims 55-57 and 59 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over the Mathes (2010/0121131) in view of Oded (WO 20100007614) and Mould
`
`(6,179,770).
`
`Claims 55 and 57 - Mathes teaches a method for treating a patient including
`
`treating a target structure of the patient by optical waves and magnetic field; wherein the
`
`optical waves are in the range from 190 to 13000 nm, paragraph [0018]; and wherein
`
`the magnetic field is time varying with magnetic flux density at least 0.1 T [0023] and
`
`repetition rate at least 0.1 Hz [0032]; but does not teach heating the tissue to a
`
`temperature in the range of 37.5 to 60 °C.
`
`Oded teaches a method for increasing skin rejuvenation including heating the
`
`tissue to a temperature range of 30-80 degrees, page 23/34 lines 23
`
`

`

`Application/Control Number: 15/396,073
`
`Page 10
`
`Art Unit: 3735
`
`It would have been obvious to one of ordinary skill in the medical art at the time
`
`the invention was made to heat the tissue to between 30 and 80 degrees to provide the
`
`enhanced rejuvenation properties as set forth in Oded.
`
`Further the combination of Mathes and Oded does not teach cooling the device.
`
`Mould teaches cooling fluid working with temperature sensors to maintain a
`
`magnetic stimulation device at a desired temperature, Mould column 3 lines 20-35.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to provide a cooling means and fluid as set forth in
`
`Mould with the device of the combination to provide a system to maintain the stimulation
`
`device at a desired temperature.
`
`Claim 56 - the combination of Mathis and Oded set forth a method as claimed but
`
`does not set forth cooling and a casing containing the magnetic device.
`
`As set forth with respect to claim 55 Mould teaches a cooling fluid passed
`
`between a housing -13- and -16- and the coil -11- to maintain the applicator at a desired
`
`temperature.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to provide a cooling means, fluid as set forth in Mould
`
`with the device of the combination to provide a system to maintain the stimulation
`
`device at a desired temperature.
`
`Claim 59 - Mathes teaches a repetition rate of 1-146 Hz, paragraph [0042] and a
`
`magnetic flux density is at least 0.1 T, magnetic fields strengths of up to 5 T are set forth
`
`as being used, paragraph [0023].
`
`

`

`Application/Control Number: 15/396,073
`
`Page 11
`
`Art Unit: 3735
`
`Claim 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over the
`
`combination of Mathes, Oded and Mould as applied to claims 55-57 above, and further
`
`in view of Salansky et al (6,063,108, hereinafter Salansky).
`
`Mathes of the combination teaches a range of 630-1000nm for the light therapy,
`
`paragraph [0018] but does not set forth total power flux density applied.
`
`Salansky teaches a method of light therapy and sets forth the range of
`
`acceptable applied power flux density to be in the range of .0001 to 5 W/cm2.
`
`In the absence of Mathes setting forth any specific range for total power flux one
`
`would look to the prior art and select from the known ranges such as those set forth by
`
`Salansky as an obvious design choice to one of ordinary skill in the medical at.
`
`Therefore it would have been obvious to one of ordinary skill in the medical art at
`
`the time the application was effectively filed to use a total power flux density of at least
`
`0.1 W/cm2 as set forth by Salansky for the method of Mathes because Mathes is silent
`
`with respect to total flux density.
`
`Claim 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over the
`
`combination of Mathes, Oded, and Mould as applied to 55, 56 and 59 and further in
`
`view of Simon et al (2011/0046432, hereinafter Simon).
`
`Claim 60 - the combination teach a method as claimed but does not teach using
`
`a pulse duration of 10-900 us.
`
`Simon teaches a magnetic treatment device generation pulses and sets forth a
`
`range of pulse durations as between 10 -1000 us.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 12
`
`Art Unit: 3735
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to us the known range of pulse durations set forth in
`
`Simon for the duration of the pulses which are not set forth in Mathes as a substitution
`
`of a known range for a range not set forth. Such a combination would produce
`
`predictable results of a method using a known range of pulse duration and have a high
`
`expectancy of success because the range of pulse durations are known and used in the
`
`medical arts as set forth in Simon.
`
`Claims 52 and 53 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Mathes(2010/0121131) in view of Mould(6,179,770)
`
`Claim 52 - Mathes teaches a method as claimed, see claim 48 above, but does
`
`not teach cooling the device with fluid passing between the casing and the generating
`
`device.
`
`Mould teaches cooling fluid working with temperature sensors to maintain a
`
`magnetic stimulation device at a desired temperature, Mould column 3 lines 20-35.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to provide a cooling means and fluid as set forth in
`
`Mould with the device of the combination to provide a system to maintain the stimulation
`
`device at a desired temperature.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 13
`
`Art Unit: 3735
`
`Claim 53 - Mathes teaches a method as claimed, see claim 48 above, but does
`
`not teach cooling the device with fluid passing between the casing and the generating
`
`device.
`
`Mould teaches a cooling fluid passed between a housing -13- and -16- and the
`
`coil -11- to maintain the applicator at a desired temperature.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to provide a cooling means, fluid and housing as set
`
`forth in Mould with the device of the combination to provide a system to maintain the
`
`stimulation device at a desired temperature.
`
`Claims 43 and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over the combination of Mathes(2010/0121131) and Simon et al (2011/0046432,
`
`hereinafter Simon) further in view of Rohwedder (2006/0152301)
`
`Claim 43 - the combination teaches a method as claimed but does not teach
`
`charging an energy storage device connected to the magnetic field generating device.
`
`Rohwedder teaches charging a storage device, capacitor “”,C in order to provide
`
`energy to the generating device.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to use the energy delivery of Rohwedder in place of
`
`the delivery device of the combination as a substitution of functionally equivalent power
`
`delivery systems.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 14
`
`Art Unit: 3735
`
`Claim 47 - as set forth above with respect to claim 43 the switching device is in
`
`parallel to the energy source as set forth in figure 1.
`
`Claims 50 and 51 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Mathes(2010/0121131) in view of Rohwedder (2006/0152301).
`
`Claim 50 - Mathes teaches a method as claimed but does not teach charging an
`
`energy storage device in order to provide energy to the field generating device.
`
`Rohwedder teaches charging a storage device, capacitor “”,C in order to provide
`
`energy to the generating device.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to use the energy delivery of Rohwedder in place of
`
`the delivery device of the combination as a substitution of functionally equivalent power
`
`delivery systems.
`
`Claim 51 - using the charging system of Rohwedder provides shorting the energy
`
`source -1- with switch -2- as shown in figure 1 of Rohwedder.
`
`Claim 54 is/are rejected under 35 U.S.C. 103 as being unpatentable over the
`
`combination of Mathes(2010/0121131) and Mould(6,179,770) further in view of Talish et
`
`al (4,550,714, hereinafter Talish).
`
`Claim 54 - the combination teaches a method as claimed but does not set forth
`
`using insulated wires in the coil.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 15
`
`Art Unit: 3735
`
`Talish teaches using insulated wires in a coil for magnetic stimulation, column 2
`
`lines 45-48.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to use insulated wire as set forth in Talish for the wire
`
`of the magnetic stimulator set forth in the combination as a substitution of known
`
`insulated wire as a substitution of a specific type of wire for the coil when no specific
`
`wire is set forth.
`
`Claim 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over the
`
`combination of Mathes(2010/0121131) Simon et al (2011/0046432, hereinafter Simon)
`
`and further in view of Talish et al (4,550,714, hereinafter Talish).
`
`Claim 35 - the combination teaches a method as claimed but does not set forth
`
`using insulated wires in the coil.
`
`Talish teaches using insulated wires in a coil for magnetic stimulation, column 2
`
`lines 45-48.
`
`It would have been obvious to one of ordinary skill in the medical arts at the time
`
`the invention was effectively filed to use insulated wire as set forth in Talish for the wire
`
`of the magnetic stimulator set forth in the combination as a substitution of known
`
`insulated wire as a substitution of a specific type of wire for the coil when no specific
`
`wire is set forth.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 16
`
`Art Unit: 3735
`
`Response to Arguments
`
`Applicant's arguments filed 63/22/2017 have been fully considered but they are
`
`not persuasive.
`
`With respect to Mathes the applicant argues the claims do not require acoustic
`
`signals, this is not persuasive because the claims use the open ended transitional
`
`phrase “comprising”. The applicant further argues that Mathes does not indicate muscle
`
`contraction is caused, This is not persuasive because the claim the same light and
`
`magnetic therapy as claimed is applied to the tissue as claimed therefore, muscle
`
`contractions are inherently induced.
`
`On page 21, the applicant argues one of ordinary skill would “not expect this
`
`effect”, this is not persuasive because an inherent reaction to the therapy applied need
`
`not be "expected" to happen.
`
`With respect to claim 31, applicant argues the references are silent with respect
`
`to muscle contraction. While the references talk about different therapies and
`
`treatments when the same therapeutic fields and waves are applied to the body the
`
`reaction of the body is inherently the same as claimed.
`
`With respect to claim 41, the method does not include any method steps that
`
`changes the applied therapy to be different than provided by the combination of the
`
`prior art, again the method described in the office action inherently treats the
`
`appearance of cellulite as claimed.
`
`With respect to claim 48, the application of the same therapeutic method
`
`inherently produces the same effect on the body.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 17
`
`Art Unit: 3735
`
`With respect to claim 55 and the above arguments, the applicant is arguing the
`
`references individually.
`
`In response to applicant's arguments against the references
`
`individually, one cannot show nonobviousness by attacking references individually
`
`where the rejections are based on combinations of references. See In re Keller, 642
`
`F.2d 413, 208 USPO 871 (CCPA 1981); In re Merck& Co., 800 F.2d 1091, 231
`
`USPC)375(Fed.CW.1986)
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFniJsomy
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`

`

`Application/Control Number: 15/396,073
`
`Page 18
`
`Art Unit: 3735
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SAMUEL GILBERT whose telephone number is
`
`(571 )272—4725. The examiner can normally be reached on Monday-Friday 6:30-3:00.
`
`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, Charles Marmor II can be reached on 571-272-4730. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/SAMUEL GILBERT/
`
`Primary Examiner, Art Unit 3735
`
`

`

`Application/Control Number: 15/396,073
`
`Page 19
`
`Art Unit: 3735
`
`