`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
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`15/473,390
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`03/29/2017
`
`Tomas Schwarz
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`066964— 8046.US00
`
`4295
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`PERKINS COIE LLP - LOS General
`POST OFFICE BOX 1247
`SEATTLE, WA 98111-1247
`
`MATTHEWS, CHRISTINE HOPKINS
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`ART UNIT
`
`3735
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`PAPER NUIVIBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/23/2017
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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
`following e—mail address(es):
`
`patentprocurement @perkinscoie.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 15/473,390 SCHWARZ ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3735CHRISTINE H. MATTHEWS $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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)I:I Responsive to communication(s) filed on
`[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) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`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 20170619
`
`Disposition of Claims*
`5)|XI C|aim(s) fl? 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 M? is/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 C|aim(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.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 03/29/2017is/are: a)IXI 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
`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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`
`
`

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`Application/Control Number: 15/473,390
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`Page 2
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`Art Unit: 3735
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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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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`Specification
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`2.
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`The lengthy specification has not been checked to the extent necessary to
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`determine the presence of all possible minor errors. Applicant’s cooperation is
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`requested in correcting any errors of which applicant may become aware in the
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`specification.
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`Claim Objections
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`3.
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`Claims 47, 48, 64 and 67 are objected to because of the following informalities:
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`in claim 47, "a radiofrequency waves" should apparently read --a radiofrequency wave--
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`or --radiofrequency waves--; at line 2 of claim 48, “body;” should apparently read --body;
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`and--; at line 2 of claim 64, “includes” should apparently read --include--; and at line 1 of
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`claim 67, “claim 64 further causes” should apparently read --claim 64, wherein the
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`method further causes--. Appropriate correction is required.
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`Claim Rejections - 35 USC § 1 12
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`4.
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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.
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`

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`Application/Control Number: 15/473,390
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`Page 3
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`Art Unit: 3735
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`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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`5.
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`Claim 56 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards
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`as the invention.
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`6.
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`Claim 56 at line 2 recites the limitation "the biological structure”. There is
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`insufficient antecedent basis for this limitation in the claim.
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`Claim Rejections - 35 USC § 102
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`7.
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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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`8.
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`Claims 40-46, 48-58, 60-63, 65, 66 and 69 are rejected under 35 U.S.C.
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`102(a)(1) as being anticipated by Sokolowski (U.S. Pub. No. 2015/0157873).
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`Regarding claim 40, Sokolowski discloses a method for adipose cells reduction
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`comprising: a. applying a time-varying magnetic field to a patient's body [0009]; b.
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`causing at least partial muscle contraction ([0025] and [0050]); wherein the method
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`improves metabolism, improves blood and/or lymph circulation (Abstract and [0002])
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`wherein the reduction is in at least one of thighs, saddlebags, buttocks, abdomen, hips,
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`Application/Control Number: 15/473,390
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`Page 4
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`Art Unit: 3735
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`torso and/or arms of the patient (Abstract and [0022] and [0043]). Regarding claim 41,
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`the method further comprises applying thermal treatment to the patient’s body ([0050]
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`via the coil/voltage supply). Regarding claim 42, the adipose cells are reduced
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`in number and/or volume ([0005] and [0050]). Regarding claim 43, the adipose cells
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`reduction reduces a size of the patient’s body ([0004] and [0005]). Regarding claim 44,
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`the method causes circumferential reduction as it causes reduction in a size of the
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`patient’s body ([0004] and [0005]). Regarding claim 45, the at least partial
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`muscle contraction provides at least muscle strengthening, toning and/or shaping
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`[0003]. Regarding claim 46, the method causes body shaping and/or body contouring
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`as it causes reduction in a size of the patient’s body ([0004] and [0005]). Regarding
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`claim 48, Sokolowski discloses a method for reducing body mass index of a patient
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`comprising: a. applying a biphasic magnetic field to a patient's body ([0009] and
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`[0063]); b. causing at least partial muscle contraction in at least one of
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`thighs, saddlebags, buttocks, abdomen, hips, torso and/or arms of the patient ([0025],
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`[0043] and [0050]). Regarding claim 49, the method further comprises applying
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`thermal treatment to the patient’s body ([0050] via the coil/voltage supply). Regarding
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`claim 50, the body mass index is reduced by reducing a number and/or volume of
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`adipose cells ([0005] and [0050]). Regarding claim 51, the method further includes
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`modulating the magnetic field during a treatment [0063]. Regarding claim 52, the
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`method reduces a cellulite appearance (Abstract). Regarding claim 53, the method
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`causes circumferential reduction as it causes reduction in a size of the patient’s body
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`([0004] and [0005]). Regarding claim 54, the method causes strengthening, toning and
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`Page 5
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`Art Unit: 3735
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`or shaping of at least one muscle [0003]. Regarding claim 55, an operator’s continual
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`surveillance and/or control is not needed during a treatment [0025]. Regarding claim
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`56, the method further comprises heating ([0050] via the coil/voltage supply) and/or
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`cooling of the biological structure ([0011], [0015] and [0017]). Regarding claim 57,
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`Sokolowski discloses a method for toning, shaping and/or strengthening a muscle of
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`a patient comprising: a. applying a time-varying magnetic field to a body region of the
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`patient which includes flabby muscle, cellulite and/or adipose cells accumulation
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`(Abstract, [0008] and [0009]); wherein the method induces targeted muscle contraction
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`([0025] and [0050]). Regarding claim 58, the method causes at least cellulite
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`treatment, body shaping, body contouring and/or skin tightening effect ([0003]-[0005]).
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`Regarding claim 60, the body region is at least one of thighs, saddlebags, buttocks,
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`love handles, abdomen, hips, arms and/or breasts (Abstract and [0022] and [0043]).
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`Regarding claim 61, the method causes size and/or circumferential reduction of the
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`body region as it causes reduction in a size of the patient’s body ([0004] and [0005]).
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`Regarding claim 62, the method further comprises applying a thermal treatment ([0050]
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`via the coil/voltage supply). Regarding claim 63, Sokolowski discloses a method for
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`reducing a cellulite appearance of a patient comprising: a. applying a time-varying
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`magnetic field to a body region [0009] including thighs, buttocks, saddlebags, love
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`handles, abdomen, hips and/or arms (Abstract and [0022] and [0043]);Wherein the
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`method causes at least partial muscle contraction in the body region ([0025] and
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`[0050]). Regarding claim 65, an operator’s continual surveillance and/or control is not
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`needed during a treatment [0025]. Regarding claim 66, the method causes size
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`Art Unit: 3735
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`and/or circumferential reduction of the body region as it causes reduction in a size of
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`the patient’s body ([0004] and [0005]). Regarding claim 69, the cellulite appearance is
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`reduced by lymph and/or blood flow increase (Abstract and [0002]).
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`9.
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`Claims 40-47 and 57-69 are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Marchitto et al. (U.S. Pub. No. 2008/0249350). Regarding claim 40,
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`Marchitto et al. (hereinafter Marchitto) discloses a method for adipose cells reduction
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`([0015] and [0049]) comprising: a. applying a time-varying magnetic field to a patient's
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`body ([0015] and [0047]); b. causing at least partial muscle contraction [0015]; wherein
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`the method improves metabolism, improves blood and/or lymph circulation [0015]
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`wherein the reduction is in at least one of thighs, saddlebags, buttocks, abdomen, hips,
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`torso and/or arms of the patient ([0072] and [0073]). Regarding claim 41, the method
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`further comprises applying thermal treatment to the patient’s body [0015]. Regarding
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`claim 42, the adipose cells are reduced in number and/or volume ([0015] and [0049]).
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`Regarding claim 43, the adipose cells reduction reduces a size of the patient’s body
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`([0015] and [0049]). Regarding claim 44, the method causes circumferential reduction
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`as it causes reduction in a size of the patient’s body ([0015] and [0049]). Regarding
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`claim 45, the at least partial muscle contraction provides at least muscle strengthening,
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`toning and/or shaping [0015]. Regarding claim 46, the method causes body
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`shaping and/or body contouring as it causes reduction in a size of the patient’s body
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`([0015] and [0049]). Regarding claim 47, the method further comprises applying
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`radiofrequency waves to the patient’s body [0041].
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`

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`Application/Control Number: 15/473,390
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`Page 7
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`Art Unit: 3735
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`Regarding claim 57, Marchitto discloses a method for toning, shaping and/or
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`strengthening a muscle of a patient comprising: a. applying a time-varying magnetic
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`field to a body region of the patient which includes flabby muscle, cellulite and/or
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`adipose cells accumulation ([0015], [0047] and [0049]); wherein the method induces
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`targeted muscle contraction ([0015] and [0073]). Regarding claim 58, the method
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`causes at least cellulite treatment, body shaping, body contouring and/or skin
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`tightening effect [0049]. Regarding claim 59, the method further comprises applying
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`mechanical waves to the patient ([0041] and [0042]). Regarding claim 60, the body
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`region is at least one of thighs, saddlebags, buttocks, love handles, abdomen, hips,
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`arms and/or breasts ([0072] and [0073]). Regarding claim 61, the method causes size
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`and/or circumferential reduction of the body region as it causes reduction in a size of
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`the patient’s body ([0015] and [0049]). Regarding claim 62, the method further
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`comprises applying a thermal treatment [0015]. Regarding claim 63, Marchitto
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`discloses a method for reducing a cellulite appearance of a patient comprising: a.
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`applying a time-varying magnetic field to a body region including thighs, buttocks,
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`saddlebags, love handles, abdomen, hips and/or arms ([0015], [0047] and [0049]);
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`wherein the method causes at least partial muscle contraction in the body region
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`([0015] and [0073]). Regarding claim 64, the method further comprises applying
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`electromagnetic waves wherein the electromagnetic waves includes light, lR,
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`microwaves, short waves and/or long waves ([0041] and [0042]). Regarding claim 65,
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`an operator’s continual surveillance and/or control is not needed during a treatment
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`[0043]. Regarding claim 66, the method causes size and/or circumferential reduction of
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`Application/Control Number: 15/473,390
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`Page 8
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`Art Unit: 3735
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`the body region as it causes reduction in a size of the patient’s body ([0015] and
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`[0049]). Regarding claim 67, the method further causes at least body shaping,
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`body contouring, muscle toning, muscle shaping and/or skin tightening effect [0049].
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`Regarding claim 68, the method reduces adipose cells in number and/or volume
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`([0015] and [0049]). Regarding claim 69, the cellulite appearance is reduced by lymph
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`and/or blood flow increase ([0015] and [0049]).
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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 CHRISTINE H. MATTHEWS whose telephone number
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`is (571)272-9058. The examiner can normally be reached on Monday-Friday, 7 am.-
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`3:30 pm.
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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
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Charles Marmor, II can be reached on (571) 272-4730. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
`
`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.
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`

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`Application/Control Number: 15/473,390
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`Page 9
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`Art Unit: 3735
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`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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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272—1 000.
`
`/CHRISTINE H MATTHEWS/
`
`Primary Examiner, Art Unit 3735
`
`