www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/294,034
`
`03/06/2019
`
`Tomas Schwarz
`
`206326-0006-09US
`
`4567
`
`7590
`10872
`Riverside Law LLP
`
`04/19/2019
`
`Glenhardie Corporate Center, Glenhardie Two
`1285 Drummers Lane, Suite 202
`Wayne, PA 19087
`
`EXAMINER
`
`GILBERT, SAMUEL G
`
`ART UNIT
`3791
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`04/19/2019
`
`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)
`
`

`

`Application No.
`Applicant(s)
`16/294 034
`Schwarzetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`SAMUEL G GILBERT
`3791
`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)l¥)This 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.
`
`
`
`Disposition of Claims*
`1-30 is/are pendingin the application.
`5)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`Claim(s) 17-30 is/are allowed.
`Claim(s) 1-16 is/are rejected.
`[) Claim(s)___is/are objected to.
`(3 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).) acceptedor b)(_) 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)C) None of the:
`b)() Some**
`a)Z 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)
`
`2) (Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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 20190415
`
`

`

`Application/Control Number: 16/294,034
`Art Unit: 3791
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`Page 2
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`Notice of Pre-AlA 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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`Specification
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`The lengthy specification has not been checkedto the extent necessary to
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`determine the presenceof 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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`The abstract of the disclosure is objected to because the combined methods
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`include both time-varying magnetic field and optical waves which are not described in
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`the abstract. Correction is required. See MPEP § 608.01 (b).
`
`Claim Rejections - 35 USC § 112
`
`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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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-AlA the
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`applicant regards asthe invention.
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`

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`Application/Control Number: 16/294,034
`Art Unit: 3791
`
`Page 3
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`Claim 1 — in line 7, “(innervating the muscle)’ is unclear becauseit is unclearif
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`the phrasein the parenthesis is included in the claim or not, for purposes of examination
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`on the merits the examiner has considered the language to be included with the claim.
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`Claim 9 —in lines 10 and 11, it is unclearif “heating” and “contracting” are the
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`same or different than the heating set forth in line 9 or the contracting set forth in line 6.
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`Allowable Subject Matter
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`Claims 16-30 are allowed.
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`Claims 1-16 would be allowable if rewritten or amended to overcome the
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`rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 2nd paragraph, set forth
`
`in this Office action.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`the prior art does not teach or fairly suggest methods as claimed
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`including charging a storage device, discharging the storage device to generate a
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`time varying magnetic field, having a repetition rate, magnetic flux density anda
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`magnetic flux density derivative as claimed contracting a muscle in combination
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`with applying optical waves having a power flux density in the range claimed as
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`set forth in claim 1.
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`Providing an energy storage device, generating a time varying magnetic
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`field, having a repetition rate, magnetic flux density and a magnetic flux density
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`

`

`Application/Control Number: 16/294,034
`Art Unit: 3791
`
`Page 4
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`derivative as claimed contracting a muscle in combination with applying optical
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`waveshaving to heat the skin as set forth in claim 9.
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`Providing an energy storage device, generating a time varying magnetic field,
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`having a magnetic flux density derivative and an impulse duration as claimed
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`contracting a muscle, cooling the device in combination with applying optical waves
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`having an energy density remodeling the skin as set forth in claim 17.
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`Charging a storage device to at least 100 volts, discharging the storage device to
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`generate a current pulse of at least 100 A, cooling the device, the magnetic field having
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`a repetition rate, impulse duration contracting a muscle in combination with applying
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`optical waves having a power flux density in the range claimed and heating the skin to
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`the temperature range setforth in claim 24.
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`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to
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`applicant's disclosure. US Patent Documents, 6,520,903, 2010/0179372, 2003/0236487
`
`and 2011/0130618 teach related apparatus treating the body with electromagnetic fields
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`and optical waves.
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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 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
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`

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`Application/Control Number: 16/294,034
`Art Unit: 3791
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`Page 5
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`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
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`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
`
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`
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`
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`
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`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
`
`