UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`16/218,735
`
`12/13/2018
`
`Tomas Schwarz
`
`7590
`10872
`Riverside Law LLP
`
`01/24/2019
`
`Glenhardie Corporate Center, Glenhardie Two
`1285 Drummers Lane, Suite 202
`Wayne, PA 19087
`
`206265-0006-06-
`US.608368
`
`2767
`
`EXAMINER
`
`GILBERT, SAMUEL G
`
`ART UNIT
`3791
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/24/2019
`
`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):
`dcoccia @riversidelaw.com
`dockets @riversidelaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Office Action Summary
`
`Application No.
`16/218,735
`Examiner
`SAMUEL G GILBERT
`
`Applicant(s)
`Schwarzetal.
`Art Unit
`3791
`
`AIA Status
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)JThis action is non-final.
`3)C) An election was made by the applicant in responseto 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 Exparfe Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`6 7
`
`Disposition of Claims*
`1-2 is/are pending in the application.
`5)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`[) Claim(s)__is/are allowed.
`Claim(s) 1-2 is/are rejected.
`() Claim(s) _ is/are objectedto.
`8)
`9) ( Claim(s)
`are subject to restriction and/or election requirement
`“ If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11)() The drawing(s)filed on
`is/are: a) accepted or b)(_j 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). Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`—_c)LJ None ofthe:
`b)L) Some**
`a)() All
`1.) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.1) Copies of the certified copies of the priority documents have been receivedin 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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(7) Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20190118
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 2
`
`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Specification
`
`The lengthy specification has not been checkedto the extent necessary to
`
`determine the presenceof all possible minor errors. Applicant’s cooperation is
`
`requested in correcting any errors of which applicant may become aware in the
`
`specification.
`
`Claim Rejections - 35 USC § 102
`
`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 the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
`
`A personshall 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 otherwiseavailable to the public before the effectivefiling date of the claimed
`invention.
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 3
`
`Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Burnett(2003/0158585).
`
`Claim 1
`
`- Burnett teaches a methodfor treating a patient using a time-varying
`
`magnetic field, comprising: placing a magnetic field generating device-coil -1- proximate
`
`to a body region of the patient; generating the time-varying magnetic field by the
`
`magnetic field generating device with a magnetic flux density in a range of 0.5 to 7
`
`Tesla, 2 tesla as set forth in paragraph [0087]; applying the time-varying magnetic field
`
`to the body region of the patient in order to cause a contraction of a muscle within the
`
`body region the magnetic field applied to the body having the same strengthwill
`
`inherently cause muscle contraction.
`
`Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin
`
`(6,213,933).
`
`Claim 1 — Lin teaches a methodfor treating a patient using a time-varying
`
`magnetic field, comprising: placing a magnetic field generating device proximate to a
`
`body region of the patient, coils -102- and -104-; generating the time-varying magnetic
`
`field by the magnetic field generating device with a magnetic flux density in a range of
`
`0.5 to 7 Tesla, column 6 line 66 through column 7 line 10; applying the time-varying
`
`magnetic field to the body region of the patient in order to cause a contraction of a
`
`muscle within the body region, application of the magnetic causes muscle contraction
`
`as set forth in column 7 lines 30-35.
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 4
`
`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.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth 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.
`
`Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Burnett(2003/0158585) in view of Vetanze(2009/0234423).
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 5
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`Claim 2 — Burnette teaches a method as claimed asset forth above with respect
`
`to claim 1 but does not teach providing a second therapy including providing a second
`
`therapy by applying one or moreof optical waves, radio frequency waves, mechanical
`
`waves, negative or positive pressure or heat to the bodyregion of the patient.
`
`Vetanze teaches applying both electromagnetic therapy as claimed but in
`
`addition a second form of stimulation such aslight heat vibration through a single device
`
`as set forth in paragraph [0033].
`
`It would have been obvious to one of ordinary skill in the medical art at the time
`
`the invention was effectively filed to provide a second form of stimulation, such as heat
`
`light electrical or vibration, in a single device as taught by Burnett to gain the advantage
`
`of the synergistic benefits taught by Vetanze, paragraph [0033]. Such a combination
`
`would havepredictable results of a method including at least two forms of stimulation
`
`and have a high expectation of success because similar therapy is provided in Vetanze.
`
`Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin
`
`(6,213,933) in view of Vetanze(2009/0234423).
`
`Claim 2 — Lin teaches a methodas claimed as set forth above with respect to
`
`claim 1 but does not teach providing a second therapyincluding providing a second
`
`therapy by applying one or moreof optical waves, radio frequency waves, mechanical
`
`waves, negative or positive pressure or heat to the bodyregion of the patient.
`
`Vetanze teaches applying both electromagnetic therapy as claimed but in
`
`addition a second form of stimulation such aslight heat vibration through a single device
`
`as set forth in paragraph [0033].
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 6
`
`It would have been obvious to one of ordinary skill in the medical art at the time
`
`the invention was effectively filed to provide a second form of stimulation, such as heat
`
`light electrical or vibration, in a single device as taught by Lin to gain the advantage of
`
`the synergistic benefits taught by Vetanze, paragraph [0033]. Such a combination
`
`would havepredictable results of a method including at least two forms of stimulation
`
`and have a high expectation of success because similar therapy is provided in Vetanze.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
`
`may be used to overcome an actual or provisional rejection based on nonstatutory
`
`double patenting provided the reference application or patent either is shown to be
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 7
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`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
`
`706.02(l)(3) for applications not subject to examination under the first inventor tofile
`
`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`befilled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`
`
`Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claim 19 of U.S. Patent No 10124187. Although the claims at
`
`issue are not identical, they are not patentably distinct from each other because the
`
`differences are an obvious broadening of scope of the claim. Claim 19 sets forth a
`
`magnetic flux density of 0.15-7 T and applying radiofrequency waves.
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 8
`
`Claims 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 3 of U.S. Patent No 9,937,358. Although the claims at issue are
`
`not identical, they are not patentably distinct from each other because the differences
`
`are an obvious broadening of scopeof the claim. Claim 3 sets forth a magnetic field of
`
`at least 0.2 T.
`
`Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claims 4 and 15 of U.S. Patent No 9,919,161. Although the
`
`claims at issue are notidentical, they are not patentably distinct from each other
`
`because the differences are an obvious broadening of scope of the claim. Claim 4 sets
`
`forth a magnetic flux density of 0.1-7 T and Claim 15 sets forth cooling the coil which
`
`inherently sets forth applying heat to the body region.
`
`Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 9 and 39 of copending Application No.
`
`15/954,783 (reference application). Although the claims at issue are not identical, they
`
`are not patentably distinct from each other becausethe differences are an obvious
`
`broadening of scope of the claim. Claim 9 sets forth a magnetic flux density of 0.15-7 T
`
`and applying radiofrequency waves. Claim 39 sets forth additionally applying optical
`
`waves.
`
`This is a provisional nonstatutory double patenting rejection because the
`
`patentably indistinct claims have not in fact been patented.
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 9
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`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to
`
`applicant's disclosure. US patent documents 2010/0331603, 20120330090,
`
`2010/0121131 and 7,783,348 teach related electromagnetic therapy devices with
`
`adjunctive therapy.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SAMUEL G GILBERT whosetelephone number is
`
`(571)272-4725. The examiner can normally be reached on MaxiFlex; M-F 8-5.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Charles Marmor 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.
`
`

`

`Application/Control Number: 16/218,735
`Art Unit: 3791
`
`Page 10
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`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 accessto 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 automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/SAMUEL G GILBERT/
`Primary Examiner, Art Unit 3791
`
`