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`V i$ T {a
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`A
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/404,384
`
`01/12/2017
`
`Ondra Prouza
`
`4387.0020008
`
`7674
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE, NW.
`WASHINGTON, DC 20005
`
`GILBERT~ SAMUEL G
`
`ART UNIT
`
`3791
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`10/07/2019
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`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`e-offiee @ sternekessler. com
`
`PTOL-90A (Rev. 04/07)
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`

`

`0/7709 A0170” Summary
`
`Application No.
`15/404,384
`Examiner
`SAMUEL G GILBERT
`
`Applicant(s)
`Prouza, Ondra
`Art Unit
`3791
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). In no event, however, may a reply be timely filed 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).
`
`Status
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`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] 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.
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`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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—27 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`[:1 Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[j Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[:I Claim(s)
`9
`* If any claims have been determined aflowabte. 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
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`httpfiwww.”smogovmatentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`is/are: a)D accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`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)[:] 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:I All
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`b)D Some”
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`c)D None of the:
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`1E] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.0 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)).
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`** 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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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) D Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20191001
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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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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`Information Disclosure Statement
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`The following references have not been considered because a proper date have
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`not been provided for each reference, 4, 10, 15, 28, 31, 53-59, 61, 67 and 68. They
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`have been lined through on the considered IDS pages.
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`Claim Rejections - 35 USC § 1 12
`
`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.
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`Claims 20 and 23-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`Claim 20 — in line 1, “the magnetic flux density” lacks antecedent basis.
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`Claim 23 — in line 7, “the range” lacks antecedent basis.
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`Claim 25 — in line 2, “the range” lacks antecedent basis.
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
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`Page 3
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`The following is a quotation of 35 U.S.C. 112(d):
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`(of) 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-AlA 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 2, 19 and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C.
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`112, 4th paragraph, as being of improper dependent form for failing to further limit the
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`subject matter of the claim upon which it depends, or for failing to include all the
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`limitations of the claim upon which it depends. Setting forth an effect, “causes pain
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`relief”, of the method does not further limit the recited method steps as set forth in claim
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`2. Regarding claims 19 and 20, reciting what the triangular envelope, magnetic flux
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`density and repetition rate is used for does not set forth an active method step.
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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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`In the event the determination of the status of the application as subject to NA 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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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
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`Page 4
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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 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) 1-3, 6-15, 23-26 is/are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Lin(6,213,933).
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`Claim 1 — Lin teaches a method for stimulating muscle of a patient's body
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`including: placing a magnetic applicator proximate to the muscle- -100-, with the
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`patient's body not restrained;
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`transferring a magnetic stimulation signal to the muscle, column 6 lines 40-46;
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`generating an active response in the muscle; wherein the active response is at
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`least a partial contraction of the muscle contraction column 7 lines 30-35; and wherein
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`the stimulation causes myorelaxation of the muscle during the stimulation, because the
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`method steps are identical the effect of myorelaxation is inherently produced. Further,
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`where a reference discloses the terms of the recited method steps, and such steps
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`necessarily result in the desired and recited effect, that the reference does not describe
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`the recited effect, in haec verba, is of no significance as the reference meets the claim
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`under the doctrine of inherency. Ex Parte Novitski USPQ 1389.
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`Claim 2 - wherein the method causes pain relief, the effect is inherent because
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`the method steps are identical.
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
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`Page 5
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`Claim 3 - the magnetic stimulation signal has a repetition rate of at least 100 Hz.
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`Claim 6 - the magnetic stimulation signal has a constant magnetic flux density or
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`a constant repetition rate between 1 and 150 HZ, column 6 lines 40-44.
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`Claim 7 - the magnetic stimulation signal has a repetition rate which causes an
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`adaptation of the muscle because the method steps are identical the effect of
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`adaptation is inherently produced. Further, where a reference discloses the terms of
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`the recited method steps, and such steps necessarily result in the desired and recited
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`effect, that the reference does not describe the recited effect, in haec verba, is of no
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`significance as the reference meets the claim under the doctrine of inherency. Ex Parte
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`Novitski USPQ 1389.
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`Claim 8 - the at least partial muscle contraction is anisometric muscle
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`contraction, the muscle contraction set forth with respect to figure 2, the stimulation
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`device is placed directly on the patient, column 6 line 53.
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`If the muscle contraction was
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`more than isometric the leg would move and cause the applicator to be misplaced.
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`Claim 9 - including transferring a magnetic stimulation signal to the muscle at a
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`repetition rate of at least 100 Hz after the isometric muscle contraction, each interval
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`would produce muscle contraction and the second repeated induction would be after the
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`first muscle contraction, see column 6 line 40-46.
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`Claim 10 - the transferring step lasts at least 5 seconds, 0.25 to 30 seconds, set
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`forth in column 6 lines 43-45.
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`Claim 11 — Lin teaches a method for stimulating a target biological structure of a
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`patient's body including: placing a magnetic applicator proximate to at least a part of the
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`patient's body -100-; transferring a magnetic stimulation signal to the target biological
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
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`Page 6
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`structure, without actively moving any part of the patient's body, column 6 lines 40-45;
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`generating an active response of the target biological structure, muscle contraction,
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`column 7 lines 33-35; wherein a repetition rate of the magnetic stimulation signal
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`exceeds a repetition rate resolution of the target biological structure, up to 150 Hz,
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`column 6 lines 40-46 which is in the claimed range see claim 14.
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`Claim 12 - the magnetic stimulation signal has a repetition rate sufficiently high
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`so that a plurality of discrete pulses of the magnetic stimulation signal is perceived by
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`the target biological structure as continuous stimulation. Lin sets forth a repetition rate
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`as claimed therefore the effect, perception of the target biological structure, is inherent.
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`Claim 13 - the magnetic stimulation signal is modulated in a magnetic flux density
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`domain, a repetition rate domain and/or impulse duration domain. The magnetic flux
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`density is modulated, see column 7 lines 30-35.
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`Claim 14 - the repetition rate is at least 100 Hz, up to 150 Hz, column 6 lines 40-
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`43.
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`Claim 15 - the repetition rate is at least 150 Hz, column 6 lines 40-43..
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`Claim 23-27 — Lin teaches a method for stimulating a target biological structure of
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`a patient's body, including: placing a magnetic applicator proximate to at least a part of
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`the patient's body -100-; transferring a magnetic stimulation signal to the target
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`biological structure, column 6 lines 40-46; generating an active response of the target
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`biological structure, muscle contraction column 7 lines 30-35; wherein a duty cycle of
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`the magnetic stimulation cycle is in the range of 1:50 to 1:4 as set forth column 6 lines
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
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`Page 7
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`43-51 wherein Lin sets forth a pulse duration of 0.25 to 30 seconds and 2-100 pulses
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`per minute, set forth a duty cycle of 1 to 1/120.
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`Claim(s) 21 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Burnett et al (2009/0227831, hereinafter Burnett)
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`Claim 21 — Burnett teaches a method for stimulating a target biological structure
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`of a patient's body, including: placing a magnetic applicator -26- proximate to at least a
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`part of the patient's body, see figure 1; transferring a magnetic stimulation signal to the
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`target biological structure [0061]; generating an active response of the target biological
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`structure, muscle relaxation, increased blood flow, or ion shifting.
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`Regarding the wherein clause, “wherein a stimulation improves movement of a
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`joint by causing a myorelaxation effect to at least a spastic muscle in a vicinity of a
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`functional joint blockade to treat the functional joint blockade and/or changing at least
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`one rheological property of synovial fluid, and wherein the patient is not restrained or
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`restricted from movement during the treatment”.
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`It is the position of the office that
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`because the method steps are identical the effects are inherently present.
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`Claim 22 - the rheological property of synovial fluid is dynamic property of
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`synovial fluid.
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`It is the position of the office that because the method steps are identical
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`the effects are inherently present.
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
`
`Page 8
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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
`
`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
`
`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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`Claims 4, 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable
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`over Lin(6,213,933), as applied to claims 1 and 3 above.
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`Claim 4 — Lin teaches a method as claimed but does not set forth a repetition
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`rate of at least 180 Hz.
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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 optimize the repetition rate of at least 180 Hz.
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`It has been held that discovering an optimum value of a result effective variable
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`involves only routine skill in the art.
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`In re Boesch 617 F.2d 272.
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`Claim 5 - the muscle, calf muscle, is healthy muscle and the magnetic stimulation
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`signal is transferred only into healthy muscle.
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`Claim 16 — As applied to claim 15 above, Lin teaches a method including a
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`repetition rate including 150 Hz but does not teach the repetition rate is at least 200 Hz.
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
`
`Page 9
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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 optimize the repetition rate of at least 200 Hz.
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`It has been held that discovering an optimum value of a result effective variable
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`involves only routine skill in the art.
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`In re Boesch 617 F.2d 272.
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`Claims 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable
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`over Lin(6,213,933), as applied to claims 11.
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`Claims 17 and 18 — Lin teaches a method as claimed but does not teach
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`generating a triangular envelope.
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`Peterchev teaches a magnetic stimulation method including using a triangular
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`envelope for the current pulse see paragraph [0057] and figurer 4A.
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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 use the triangular current pulse envelope taught by
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`Peterchev to produce the pulses taught by Lin as a substitution of functionally
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`equivalent elements for generating current pulses required to be delivered to the
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`stimulation coils.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to SAMUEL G GILBERT whose telephone number is
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`(571 )272—4725. The examiner can normally be reached on MaxiFlex; M-F 8-5.
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`

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`Application/Control Number: 15/404,384
`Art Unit: 3791
`
`Page 10
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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
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Charles Marmor can be reached on 571-272—4730. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`
`/SAMUEL G GILBERT/
`
`Primary Examiner, Art Unit 3791
`
`