ELECTRONICALLY FILED
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re:
`
`Patent application of
`Tomas Schwarzetal.
`
`: Group Art Unit:
`>
`3791
`
`Serial No.:—16/034,793 : Confirmation Number:
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`:
`7136
`
`Filed:
`
`July 13, 2018
`
`> Examiner:
`Samuel Gilbert
`
`For:
`
`Aesthetic Method of Biological
`Structure Treatment by Magnetic Field
`
`: Attorney Docket No.:
`: 206265-0006-01-US.607727
`
`AMENDMENT UNDER37 C.F.R. 1.114
`
`The present Amendmentis filed in response to the Non-Final Office Action dated
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`October 1, 2018, received in connection with the above-referenced application. This response is
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`timely filed.
`
`Nofee is believed due for the filing of this response. Please charge any fee that is due,
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`and credit any overpayment, to deposit account no. 50-5366.
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`

`

`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`Amendments to the Claims
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`This listing of claims will replace all prior versions, andlistings, of claims in the application:
`
`1-30.
`
`(Canceled)
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`31.
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`(New) A methodfor increasing apoptotic index, reducing adipose cells in number and/or
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`volume, cellulite treatment, and/or circumferential reduction in a patient using a time-varying
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`magnetic field, comprising:
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`placing a magnetic field generating device proximate to a body region ofthe patient;
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`charging an energy storage device;
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`switching a switching device in order to discharge the energy storage device having a
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`capacitance in a range of 5 nF to 100 mFto the magnetic field generating device having a total
`
`surface in a range of 5 to 8000 cm”in order to generate the time-varying magneticfield and
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`generating the time-varying magnetic field with a winding magnetic fluence in a range of 40 to
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`40000 T-cm?; and
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`applying the time-varying magnetic field to the body region of abdomen between costae
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`and iliac crest superior or pubic bone; or
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`applying the time-varying magnetic field to the body region of a buttock between gluteal
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`sulcus andiliac crest of the patient; or
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`applying the time-varying magnetic field to the body region of thigh between gluteal
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`sulcus and popliteal fossa of the patient;
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`Page 2 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
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`wherein the time-varying magnetic field is applied to a muscle and/or a nerve innervating
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`the muscle in the body region with a treatment duty cycle of at least 1:50 and with a magnetic
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`flux density sufficient to cause a muscle contraction of the muscle.
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`32.
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`(New) The method of claim 31 further comprising assembling subsequent magnetic
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`pulses into a train lasting at least 25 ms.
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`33.
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`(New) The methodof claim 31 further comprising applying the time-varying magnetic
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`field to the muscle and/or the nerve innervating the muscle in bursts, wherein each burst consists
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`of first and second time periods; wherein thefirst time period consists of a plurality of
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`subsequent magnetic pulses causing the muscle contraction of the muscle and wherein the
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`muscle relaxes during the second time period.
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`34.
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`(New) The method of claim 31 further comprising applying at least 5000 pulses of the
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`time-varying magnetic field to the body region.
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`35.
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`(New) The method of claim 34 further comprising generating the time-varying magnetic
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`field with a maximal value of a magnetic flux density derivative in a range of 2 to 200 kT/s.
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`36.
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`(New) The method of claim 31 wherein the magnetic field generating device has a
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`conductor diameter greater than 0 mm andless than 10 mm.
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`Page 3 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`37.
`
`(New) The method of claim 36 wherein the magnetic field generating device has an
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`inductance in a range of 1 nH to 1 H.
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`38.
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`(New) The method of claim 37 further comprising providing a current pulse ofat least
`
`250 A to the magnetic field generating device.
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`39.
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`(New) A methodfor increasing apoptotic index, reducing adipose cells in number and/or
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`volume, cellulite treatment and/or a muscle toning, shaping or strengthening effect, a muscle
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`volumeincrease using a time-varying magnetic field applied to a patient’s muscle comprising:
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`placing a first applicator including a magnetic field generating device on a body region
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`including a first muscle;
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`placing a second applicator including a magnetic field generating device on a body region
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`including a second muscle wherein the second muscle is a pair or cooperating muscle ofthe first
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`muscle, and wherein the first magnetic field generating device is different from the second
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`magnetic field generating device;
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`providing energy to the magnetic field generating device having an inductance in a range
`
`of 1 nH to 1 Hin orderto generate the time-varying magnetic field with an impulse duration in a
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`range of 3 to 3000 us; and
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`applying the time-varying magnetic field to the patient’s muscle in the body region
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`including at least one of thighs, saddlebags, buttocks, abdomen,hips, love handles, torso and/or
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`armsof the patient in at least two bursts in order to cause a contraction of the patient’s muscle,
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`wherein each said burst includesa train of a plurality subsequent pulses and wherein each said
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`Page 4 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
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`burst lasts at least 10 ms and wherein the train causes the at least one contraction of the patient’s
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`muscle and a relaxation follows after the contraction of the patient’s muscle.
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`AO.
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`(New) The method of claim 39 wherein a repetition rate of magnetic pulsesoffirst train
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`differs from a repetition rate of magnetic pulses of secondtrain.
`
`Al.
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`(New) The method of claim 39 further comprising applying the bursts to the patient with
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`a burst duty cycle of at least 10 %.
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`42.
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`(New) The method of claim 39 further comprising relaxing the patient’s muscle after the
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`contraction for a period lasting in a range of 1 to 15 seconds.
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`43.
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`(New) The method of claim 39 further comprising applying at least 25 bursts to the
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`patient.
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`44.
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`(New) The methodof claim 39 further comprising generating the time-varying magnetic
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`field with a winding magnetic fluencein a range of 40 to 40000 T-cm?.
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`45.
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`(New) The method of claim 39 wherein the magnetic field generating device include a
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`core area and wherein the core area is in a range of 0.01 to 99 % ofa total surface of the
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`magnetic field generating device.
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`Page 5 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
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`46.
`
`(New) A method for providing a treatment increasing apoptotic index, reducing adipose
`
`cells, cellulite treatment and/or circumferential reduction using a time-varying magnetic field
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`applied to a patient’s muscle comprising:
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`placing an applicator including a magnetic field generating device in actual contact with a
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`body region between rib-cage and popliteal fossa of a patient;
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`attaching the applicator by a length adjustable positioning member;
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`charging an energy storage device;
`
`switching a switching device;
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`discharging the energy storage device to the magnetic field generating device in order to
`
`generate the time-varying magnetic field;
`
`applying the time-varying magnetic field with a magnetic flux density in a range of 0.1 to
`
`7 Tesla to the patient’s muscle within the body region and with a magnetic flux density at least
`
`sufficient to cause a muscle contraction of the patient’s muscle and/or a nerve innervating the
`
`patient’s muscle in order to cause a repetitive contraction of the patient’s muscle,
`
`assembling a plurality of magnetic pulses into a train lasting at least 10 ms wherein the
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`train causes at least one contraction of the patient’s muscle and wherein the train is followed by a
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`second time period when no contraction of the patient’s muscle is caused and wherein the second
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`time period is longer than a duration of one magnetic pulsein the train.
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`47.
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`(New) The method of claim 46 further comprising applying the time-varying magnetic
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`field to the patient with a treatment duty cycle of at least 10 %.
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`Page 6 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`48.
`
`(New) The method of claim 47 further comprising applying 15 to 25000trains to the
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`patient during one treatment.
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`49.
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`(New) The method of claim 46 further comprising applying to the patientat least first and
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`secondtrain each having different repetition rate of the magnetic pulses.
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`50.
`
`(New) The methodof claim 49 further comprising generating the time-varying magnetic
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`field with a maximal value of a magnetic flux density derivative in a range of 300 T/s to 800
`
`kT/s.
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`51.
`
`(New) The method of claim 46 further comprising applying a conventional treatment.
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`52.
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`(New) The method of claim 46 further comprising applying a conventional method to the
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`patient no longer than 1 month before or after the treatment by time-varying magnetic field.
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`53.|(New) A methodfor tissue treatment via a contraction of a muscle using a plurality of
`
`time-varying magnetic fields applied to a patient, comprising:
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`placing a first applicator including a first magnetic field generating device to the patient;
`
`placing a second applicator including a second magnetic field generating device to the
`
`patient;
`
`mF;
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`charging at least one energy storage device having a capacitance in a range of 5 nF to 100
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`Page 7 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`switching at least one switching device in order to enable discharging the at least one
`
`energy storage deviceto the first and the second magnetic field generating devices wherein each
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`magnetic field generating device has an inductance in a range of | nH to 1 H;
`
`generating a first time-varying magnetic field by the first magnetic field generating
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`device and generating a second time-varying magnetic field by the second magnetic field
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`generating device;
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`assembling a plurality of impulses of the time-varying magnetic fields generated by the
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`first and the second magnetic field generating devices into a plurality of magnetic pulses,
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`wherein each impulse has a magnetic flux density in a range of 0.1 to 7 Tesla, a maximal
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`value of a magnetic flux density derivative in a range of 300 T/s to 800 kT/s, a winding magnetic
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`fluence in a range of 40 to 40000 T-cm?, and
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`wherein each magnetic pulse consists of one impulse of the time-varying magnetic field
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`lasting for an impulse duration and no magnetic field lasting fora first time period;
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`establishing a burst consisting of a second time period and a third time period, wherein
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`the plurality of magnetic pulses is generated during the second time period and wherein the third
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`time period follows after the second time period;
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`applying the bursts to a body region ofthe patient including at least one of thigh,
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`saddlebags, buttock, abdomen,hips, love handle, flanks, bra fat region, torso and/or arm of the
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`patient with a repetition rate in a range of 1 to 700 Hz and with the impulse duration in a range of
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`10 to 3000 us;
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`applying at least 5000 magnetic pulses to the body region;
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`causing the contraction of the muscle during the second time period; and
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`causing no contraction of the muscle during the third time period.
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`Page 8 of 21
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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`54.
`
`(New) The method of claim 53 wherein the third time period lasts up to 20 seconds.
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`55,
`
`(New) The method of claim 54 further comprising generating the first and/or the second
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`time-varying magnetic field with a treatment duty cycle ofat least 10 %.
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`56.
`
`(New) The method of claim 55 further comprising applying to the muscle of the patient
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`40 to 10000 bursts within one treatment.
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`57.
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`(New) The method of claim 53 wherein the second time period lasts up to 15 seconds.
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`58.
`
`(New) The method of claim 53 further comprising generating at least ten magnetic
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`impulses during the second time period.
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`59,
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`(New) The method of claim 53 further comprising generating at least two bursts each
`
`having different repetition rate of the magnetic pulses.
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`60.
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`(New) The method of claim 53 further comprising attaching the first and the second
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`applicators to the patient by at least one length adjustable positioning member.
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`Page 9 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`REMARKS
`
`Claims 1-30 are pending in this application. Claims 1-30 have been canceled in the
`
`present response, and new claims 31-60 have been added.
`
`Examiner Interview
`
`Applicants thank the Examiner for the Examiner Interview conducted on December12,
`
`2018. Applicants discussed proposed amendments to overcomethe 35 USC §103 rejections of
`
`claims 1, 8, 17, and 24.
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`Claim Amendments
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`Applicants have canceled claims 1-30 and have added new claims 31-60. The subject
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`matter of the new independent claims 31, 39, and 46 is substantially drawn from original claims
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`1, 8, and 17, respectively, with some added limitations. New claim 53 is drawn from original
`claim 24, but with additional limitations discussed with the Examiner during the December 12"
`
`interview.
`
`Support for each of the new claims may be foundin the application as originally filed at
`
`least as follows:
`
`e Claim 31 —-claim 1 as originally filed and paragraphs [0128] and [0278-0279]
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`e Claim 32 — paragraph [0226]
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`e Claim 33 — paragraphs [0247-0252]
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`e Claim 34 — paragraph [0209]
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`e Claim 35 — paragraph [0188]
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`e Claim 36 — paragraph [0015]
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`e Claim 37 — paragraph [0112]
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`e Claim 38 — paragraph [0110]
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`e Claim 39 — claim 8 as originally filed and paragraphs [0202], [0247-0252], and
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`[0270]
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`e Claim 40 — paragraphs [0247-0252]
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`e Claim 41 — paragraph [0137]
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`Page 10 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`e Claim 42 — paragraph [0226]
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`e Claim 43 — paragraph [0226]
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`e Claim 44 — paragraph [0128]
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`e Claim 45 — paragraph [0121]
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`e Claim 46 — claim 17 as originally filed and paragraphs [0094], [0157-0158], [0226],
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`[0247-0252], and [0270]
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`e Claim 47 — paragraph [0137]
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`e Claim 48 — paragraph [0226]
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`e Claim 49 — paragraph [0247-0252]
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`e Claim 50 — paragraph [0188]
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`e Claim 51—paragraph [0645]
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`e Claim 52 — paragraph [0645]
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`e Claim 53 — claim 24 as originally filed, paragraph [0038], [0039], [0108], [0112],
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`[0128], [0138], [0140], [0183], [0184], [0209], [0247-0252], [0270], and [0650]
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`e Claim 54 — paragraph [0226]
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`e Claim 55 — paragraph [0137]
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`e Claim 56 — paragraph [0226]
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`e Claim 57 — paragraph [0226]
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`e Claim 58 — paragraph [0650]
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`e Claim 59 — paragraph [0247-0252]
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`e Claim 60 — paragraph [0270]
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`No new matter is added by wayof this amendment.
`
`Rejections Under 35 USC §112
`
`The Examinerrejected claims 1-23 under 35 USC §112 as beingindefinite for failing to
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`particularly point out and distinctly claim the subject matter which the inventor regards as the
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`invention.
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`Page 11 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`Although claims 1-23 are all now canceled, Applicants have addressed the Examiner’s
`
`rejections in the corresponding new claimsas follows:
`
`Regarding claim 1, the Examinerasserts that “between costae andiliac crest superior
`
`and/or pubic bone”is unclear.
`
`New claim 31 recites the limitation as “between costae andiliac crest superior or pubic
`
`bone.
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`Regarding claim 8, the Examinerasserts that “each burst” should be “each said burst.”
`
`New claim 39 recites the limitation as “each said burst.”
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`Regarding claim 9, the Examinerasserts that it is unclear whetherthe “at least two
`
`bursts” are the same asor different than the at least two bursts of claim 8.
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`Applicants respectfully submit that the new claims do not includethis limitation, and that
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`the Examiner’s rejection is therefore moot.
`
`Regarding claim 11, the Examinerasserts that the range of “up to 8000 cm””is unclear
`
`becauseit includes zero, which is impossible for a device surface.
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`Newly added claim 31 includes a similar limitation on the surface area of a magnetic
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`field generating device, but recites the range as between 5 cm? and 8000 cm’.
`
`Regarding claim 14, the Examinerasserts that the range of “less than 10 mm”is unclear
`
`because the range includes zero, which is not possible for a conductor diameter.
`
`Newclaim 36 is similar, but the limitation is instead recited as a conductor diameter
`
`“greater than 0 mm andless than 10 mm.”
`
`Regarding claim 15, the Examinerasserts that “the patient” lacks antecedentbasis.
`
`Applicants respectfully submit that the new claims do not includethis limitation, and that
`
`the Examiner’s rejection is therefore moot.
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`Page 12 of 21
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`

`

`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`Regarding claim 17, the Examinerasserts that the limitation “less than 10 mm”is an
`
`unclear range becauseit includes 0, which is not possible for a conductor diameter, and that
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`“density of at least sufficient to” in lines 14 and 15 is unclear.
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`New claim 46 includesthe latter limitation, but instead recites a “density at least
`
`sufficient to.”
`
`Applicants respectfully submit that the Examiner’s rejections of claims 1-30 under 35
`
`USC §112 are moot, first because claims 1-30 have been canceled, and respectfully request
`
`reconsideration and withdrawal of the Examiner’s rejection. Additionally, Applicants
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`respectfully submit that the newly added claims do not include any ofthe rejected limitations
`
`from the original claims.
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`Rejections Under 35 USC §102
`
`The Examinerrejected claims 8, 9, 11, and 12 under 35 USC §102 as anticipated by
`
`Sokolowski (US 2015/0157873, hereinafter “Sokolowski”).
`
`Regarding claim 8, the Examinerasserts that Sokolowski teaches all the limitations of the
`claim, particularly that Sokolowski teaches a winding magnetic fluence of 60 Tcm’, because
`
`paragraph [0058] of Sokolowskirecites a treatment area of 20 cm x 30 cm, and a magnetic flow
`
`density of 0.1 T. Applicants have canceled claims 8, 9, 11, and 12, but note that new claims 31,
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`44, and 53 include a similar limitation.
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`“A claim is anticipated only if each and every elementas set forth in the claim is found,
`
`either expressly or inherently described, in a single prior art reference.” MPEP § 2131 (quoting
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`Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628, 631 (Fed. Cir. 1987)). “The identical
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`invention must be shownin as complete detail as is contained in the... claim.” Id. (quoting
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`Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (emphasis added)).
`
`Applicants respectfully submit that the Examiner has mistakenly misinterpreted the
`
`teachings of Sokolowski. Applicants, in their capacity as lexicographers, have defined “winding
`
`magnetic fluence” in paragraphs [0126-0127], Equation 5, and in Fig. 6 as the peak magnetic
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`Page 13 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`flux density multiplied by the winding area of a magnetic field generating device. This differs
`
`from the “magnetic fluence,” which is defined as the maximal peak magnetic flux density
`
`multiplied by the total area of the magnetic fluence generating device (paragraphs [0124-0125],
`
`Equation 4). Applicants respectfully submit that Sokolowski only recites a winding conductor
`having a length of 200 cm and a diameter of 1.6 cm (derived from a 2 cm?cross-sectionalarea,
`
`see Sokolowski paragraph [0013]). Therefore, the maximum winding area recited by
`Sokolowski is 320 cm’, which translates to a winding magnetic fluence of 32 Tcm’, outside the
`
`claimed range.
`
`Applicants therefore respectfully submit that Sokolowskifails to recite each and every
`
`limitation of new claims 31, 44, and 53, and that therefore Sokolowskifails to anticipate new
`
`claims 31, 44, and 53 at least for the reasons set forth above. Applicants respectfully request
`
`reconsideration and withdrawal of the Examiner’s rejection.
`
`Rejections Under 35 USC §103
`
`Claims 13-15
`
`The Examinerrejected claims 13-15 under 35 USC §103 as being unpatentable over
`
`Sokolowski in view of Ishikawa (US 5,984,854, hereinafter “Ishikawa).
`
`The Examinerasserts that Sokolowski teaches most of the limitations of claims 13-15,
`
`but admits that Sokolowskifails to teach a litz wire (claim 13), a conductor having a diameter
`
`less than 10 mm (claim 14), or a magnetic field generating device in direct contact with the skin
`
`of a patient (claim 15). Applicants respectfully submit that claims 13-15 have been canceled and
`
`that the Examiner’s rejection is moot, but note that new claim 36 is similar to original claim 14.
`
`Establishing a primafacie case of obviousness of a claimed invention “requires a
`
`suggestion ofall limitations in a claim”in the prior art. 35 U.S.C. § 103(a); CFMT, Inc. v.
`
`Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing Jn re Royka, 490 F.2d 981,
`
`985 (CCPA 1974); see also Jn re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Therefore, in
`
`order to render the instant claims obvious under 35 U.S.C. §103(a), the cited prior art must teach
`
`or suggest each and every elementofthe claims.
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`Page 14 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`Applicants respectfully submit that new claim 36 depends directly from new claim 31,
`
`whichis patentable over Sokolowski at least for the reasons set forth above. Applicants further
`
`submit that Ishikawafails to cure the deficiencies of Sokolowski with regard to new claim 31.
`
`Applicants therefore respectfully submit that the Examiner’s rejection of claims 13-15 is
`
`now moot, and that new claim 36 is patentable over Sokolowski and Ishikawaat least for the
`
`reasonsset forth above. Applicants therefore respectfully request reconsideration and
`
`withdrawal of the Examiner’s rejection.
`
`
`
`Claims 1-3, 6, and 7
`
`The Examinerrejected claims 1-3, 6, and 7 under 35 USC §103 as being unpatentable
`
`over Sokolowski in view of Coulson (US 2010/0309689, hereinafter “Coulson”.
`
`With regard to claim 1, the Examinerasserts that Sokolowski teachesall the limitations
`
`of the claim, but admits that Sokolowski fails to teach the capacitance or duty cycle as claimed.
`
`The Examinerasserts that Coulson teaches a signal generator using capacitors having a
`
`capacitance of 1 uF, 3.2 uF, and 470 nF. The Examinerasserts that Sokolowski sets forth the
`
`capacitance as a results-effective variable in paragraph [0062], that it would be obvious to a
`
`person having ordinary skill in the medical arts to optimize the capacitance, and that the range
`
`claimed is known and expected in the medical arts as shown by Coulson. The Examinerfurther
`
`asserts that the duty cycle is also a results-effective variable, and that optimizing the duty cycle
`
`would be obviousto one of ordinary skill in the art at the time the invention waseffectively filed.
`
`Applicants have canceled claims 1-3, 6, and 7, but note that claim 31 includes similar
`
`limitations to original claim 1.
`
`Sokolowski and Coulson Fail to Teach All the Limitations of Claim 31
`
`Establishing a primafacie case of obviousness of a claimed invention “requires a
`
`suggestion ofall limitations in a claim”in the prior art. 35 U.S.C. § 103(a); CFMT, Inc. v.
`
`Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing Jn re Royka, 490 F.2d 981,
`
`985 (CCPA 1974); see also Jn re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Therefore, in
`
`order to render the instant claims obvious under 35 U.S.C. §103(a), the cited prior art must teach
`
`or suggest each and every elementofthe claims.
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`Page 15 of 21
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`

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`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`Asdiscussed above, Applicants respectfully submit that Sokolowskifails to teach a
`winding magnetic fluence in the range of 40-40000 Tcm?. Furthermore, Applicants submitthat
`
`Coulson fails to cure the deficiencies of Sokolowski with regard to new claim 31. Therefore,
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`Sokolowski and Coulson fail to teach all the limitations of new claim 31, and claim 31 is
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`patentable over Sokolowski and Coulson.
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`There is no Motivation to Combine Sokolowski and Coulson
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`MPEP§ 2143.01(V)states that “[i]f proposed modification would renderthe priorart
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`invention being modified unsatisfactory for its intended purpose, then there is no suggestion or
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`motivation to make the proposed modification. /n re Gordon, 733 F.2d 900, 221 USPQ 1125
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`(Fed. Cir. 1984)” (emphasis added). “If the proposed modification or combination ofthe prior art
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`would changethe principle of operation of the prior art invention being modified, then the
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`teachings of the references are not sufficient to render the claims prima facie obvious.” /n re
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`Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959).
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`The Examiner admits that Sokolowskifails to teach the capacitance ranges claimed in
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`original claim 1 (also included in new claim 31), but that Coulson recites a signal generator using
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`capacitors having capacitance in the claimed ranges. The Examinerasserts that the capacitance
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`in question is a results-effective variable, and that it would be obviousto one skilled in the
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`medical arts to optimize the capacitance, into the ranges shown in Coulson.
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`Applicants respectfully submit that it would not be obviousto one skilled in the art to use
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`capacitors having the capacitances recited in Coulson to the resonantcircuit in Sokolowski
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`because the capacitors referenced in Coulson (Cdd, Csw, and Caux, paragraph [0078]) are used
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`in a completely different way than the capacitors C1 and C2 in Sokolowski.
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`First, the voltage and current characteristics of Coulson’s capacitors (3.3 V, 10 WA, see
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`Coulson paragraphs [0113-0116]) are each several orders of magnitudeless than the voltage and
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`current ranges of Sokolowski (500-6000A, 500-1000V, see Sokolowski paragraphs[0010],
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`[0062]). As would be recognized by one having skill in electronics, capacitors used in low
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`voltage/current applications will not work in high voltage/current circuits. One would not be
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`motivated to apply capacitance values from capacitors designed to store and discharge
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`microwatts of powerto a circuit designed to store and discharge megawatts.
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`Page 16 of 21
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`

`

`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`Second, the capacitors C1 and C2 of Sokolowski are configured in a resonantcircuit with
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`the output coil L (See Sokolowski Fig. 7) — the capacitors are positioned to discharge current into
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`the coil, generating a sinusoidal waveform whose shape dependsonthe values of the various
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`circuit elements (see Sokolowski Fig. 8). By contrast, the circuit of Coulson is a bootstrapping
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`circuit for a switching-mode power supply. Capacitors Caux, Cdd, and Csw of Coulson
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`discharge into the primary winding of transformer T1 (see Coulson Fig. 3, Fig. 5), restricted by
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`switches Q1 and $1. Switching-mode powersupplies are designed to generate a DC voltage, not
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`a sinusoidal waveform as in Sokolowski. In fact, the output diode Dout will prevent the voltage
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`at the positive output terminal from falling negative.
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`In short, Applicants respectfully submit that the Examiner’s combination of Sokolowski
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`and Coulson is improper, because even if we assumethat the capacitance valuesare result-
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`effective variables, one skilled in the art would not be motivated to base any design or
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`optimization decisions for Sokolowski’s capacitance values on the capacitors shown in Coulson.
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`Applicants therefore respectfully request reconsideration and withdrawal of the Examiner’s
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`rejection.
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`Claims 17 and 19-23
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`The Examinerrejected claims 17 and 19-23 under 35 USC §103 as being unpatentable
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`over Sokolowski in view of Ishikawaand Phillips et al. (US 2013/0137918, hereinafter
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`“Phillips”).
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`With regard to claim 17, the Examinerasserts that Sokolowski teaches a method as
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`claimed, wherein the time-varying magnetic field is generated by a treatment device including a
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`connection to an energy source, a switching device, an energy storage device, and a magnetic
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`field generating device, comprising placing the magnetic field generating device proximate to a
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`body region in the abdomen, charging the energy storage device, switching the switching device,
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`discharging the energy storage device to the magnetic field generating device, wherein the device
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`has an inductance in a range of 1 nH to 15 uwH, applying the time-varying magnetic field to the
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`patient’s muscle within the body region and with a magnetic flux density sufficient to cause a
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`muscle contraction of the patient’s muscle or a nerve innervating the patient’s muscle.
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`Page 17 of 21
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`

`

`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`The Examiner admits that Sokolowski fails to teach a conductor diameter less than
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`10mm,or a magnetic flux density of 0.1 to 7 T. However, the Examinerasserts that Ishikawa
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`teaches a magnetic therapy device using a coil with a conductor diameter of less than 10mm, and
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`that Phillips teaches a magnetic flux of about 1 T. The Examinerfurtherasserts that it would be
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`obvious to one having skill in the art to modify Sokolowski to use a conductor having the
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`dimensionsrecited in Ishikawa, and to generate a field of about 1 T as taught in Phillips.
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`Applicants have canceled claims 17 and 19-23, rendering the Examiner’s rejection moot,
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`but note that new claim 46 contains similar limitations to original claim 17.
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`Sokolowski, Ishikawa, and Phillips Fail to Teach or Suggest all the Limitations ofNew Claim 46
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`Establishing a primafacie case of obviousness of a claimed invention “requires a
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`suggestion ofall limitations in a claim”in the prior art. 35 U.S.C. § 103(a); CFMT, Inc. v.
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`Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing Jn re Royka, 490 F.2d 981,
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`985 (CCPA 1974); see also Jn re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Therefore, in
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`order to render the instant claims obvious under 35 U.S.C. §103(a), the cited prior art must teach
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`or suggest each and every elementofthe claims.
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`Applicants respectfully submit that new claim 46 includes additionallimitations,
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`including applyinga train lasting at least 10 ms of magnetic pulses to a patient’s muscle,
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`followed by a second time period longer than the magnetic pulse train during which no
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`contraction of the patient’s muscle is caused. Applicants submit that Sokolowski, Ishikawa, and
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`Phillips do not teach or suggestall the limitations of new claim 46, and that therefore new claim
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`46 is patentable over Sokolowski, Ishikawa, and Phillips at least for the reasons set forth above.
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`Phillips is not Analogous Prior Art
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`In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C.
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`§103, the reference must be analogousart to the claimed invention. /n re Bigio, 381 F.3d 1320,
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`1325, (Fed. Cir. 2004). The examiner must determine what is “analogousprior art” for the
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`purpose of analyzing the obviousness of the subject matter at issue. A reference is analogousart
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`to the claimed invention if: (1) the reference is from the same field of endeavoras the claimed
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`invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to
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`Page 18 of 21
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`

`

`Response to Non-Final Office Action dated October 1, 2018
`Attorney Docket No. 206265-0006-01-US.607727
`Application No. 16/034,793
`
`the problem faced by the inventor (evenif it is not in the samefield of endeavoras the claimed
`
`invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. In order for a reference to be
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`“reasonably pertinent” to the problem, it must “logically [] have commendeditself to an
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`inventor’s attention in considering his problem.” /n re Jcon Health and Fitness, Inc., 496 F.3d
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`1374, 1379-80 (Fed. Cir. 2007).
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`Applicants respectfully submit that Phillips is not analogousprior art, and that therefore
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`the Examiner’s combination of Sokolowski with Ishikawa and Phillips is improper. Applicants
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`note that new claim 46 is drawn to a method ofdirect muscle stimulation with