DETAILED ACTION
Notice of Pre-AIA 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 .
Response to Amendment
This office action is responsive to an amendments filed on 2/27/2026. As directed by the amendments, claims 39-40, 44-45 and 53 were amended, claims 1-38 were cancelled and no new claims were added. Thus, claims 39-53 are presently pending in this application.
Drawings
The drawings are objected to because all of the lead lines, reference numerals and outlines of the figures in figs. 5A-5D filed on 2/27/2026 are faded and dotted. Every line must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined. Additionally, the weight of all lines must be heavy enough to permit adequate reproduction. See 37 C.F.R. 1.84(l).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 39, 44, and 53 are objected to because of the following informalities:
In claim 39, line 27, the term “a subject” is suggested to be changed to --the subject-- in order to provide proper antecedent basis.
In claim 39, line 31, the term “a user’s” is suggested to be changed to --the user’s-- in order to provide proper antecedent basis.
In claim 44, line 17, the term “a user” is suggested to be changed to --the user-- in order to provide proper antecedent basis.
In claim 44, line 17, the term “a subject’s” is suggested to be changed to --the subject’s-- in order to provide proper antecedent basis.
In claim 44, line 21, the term “a user’s” is suggested to be changed to --the user’s-- in order to provide proper antecedent basis.
In claim 53, line 3, the term “a subject” is suggested to be changed to --the subject-- in order to provide proper antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 53 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “wherein at least one of the head portion and the handle portion is configured for direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject” (claim 53, lines 2-5) is not supported by the original disclosure and is therefore, new matter. The original disclosure fails to disclose the limitation of “wherein at least one of the head portion and the handle portion is configured for direct therapeutic contact with soft tissue of a subject without requiring” in combination with “any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject”. The limitation “any intermediate resistance medium” could cover the subject’s bodily fluid being secreted, therefore, there is no support that at least one of the head portion and the handle portion is configured for direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 53 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 53, the limitation “any intermediate resistance medium interposed between handheld soft tissue treatment tool and the soft tissue of the subject” (lines 4-5) is unclear as to how to determine the metes and bounds of the limitation “any intermediate resistance medium”, specifically, what is included and excluded from the term “any”, does the term “any intermediate resistance medium” includes oil/bodily fluid secreted by the user’s skin. The limitation is not being supported by the original disclosure, therefore, it is unclear to determine the metes and bounds of the limitation.
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 (i.e., changing from AIA to pre-AIA ) 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 made in this Office action:
A person shall 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 otherwise available to the public before the effective filing date of the claimed invention.
Claims 44, 46-47 and 49-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chubinsky (5,843,005).
Regarding claim 44, Chubinsky discloses a handheld soft tissue treatment tool (10 in fig. 1, see figs. 2-4 for reference, col 4, lines 1-9) comprising: a first portion (22, fig. 1, col 4, lines 1-59) configured to be gripped by a user and to contact a subject’s body for therapeutic treatment (see figs. 5-10, the first portion 22 comprises a physical structure, therefore, can be gripped by a user to contact a subject’s body for therapeutic treatment); a second portion (30, fig. 1, see col 4, lines 1-40) configured to be gripped by a user and to contact a subject’s body for therapeutic treatment (see figs. 5-10, the second portion 30 comprises a physical structure, therefore, can be gripped by a user and to contact a subject’s body for therapeutic treatment); a shaft (23, figs. 1-4) rigidly connecting the first portion and the second portion (see figs. 1-10), the shaft having a length between approximately 2 inches and 6 inches and having a cross-sectional dimension sufficiently narrow to permit positioning between two adjacent fingers of a user’s closed hand during use (see figs. 1-10 and col 5, lines 28-32, Chubinsky discloses that the length of the intermediate shaft 23 can be about 50 mm, which is approximately 2 inches); and wherein, with the shaft positioned between the two adjacent fingers of the user’s closed hand, the tool is configured such that the user is able to grip the first portion while applying the second portion for soft tissue treatment, and is also able to grip the second portion while applying the first portion for soft tissue treatment (see figs. 1-10 and cols 4-6, the device comprises all of the claimed structured and as shown, is capable of having the user grip the first portion while applying the second portion for soft tissue treatment, and is also able to grip the second portion while applying the first portion for soft tissue treatment, it is noted that the limitation of how the portions are held and what portions are being applied to the soft tissue is considered as intended use).
Regarding 46, Chubinsky discloses that the second portion (30, fig. 1, see col 4, lines 1-40) comprises a generally rounded or disc-shaped body having a diameter between approximately 2 inches and 6 inches (see col 5, lines 34-43, Chubinsky discloses that the diameter is 45-85 mm which includes a diameter of approximately 2 inches).
Regarding claim 47, Chubinsky discloses that the first portion and the second portion are made from materials including plastic or metal or wood (see col 4, lines 41-52, Chubinsky discloses that the device can be made of a variety of material including plastic, wood or metal).
Regarding claim 49, Chubinsky discloses that at least a portion of the second portion (30) includes a surface geometry or contour configured to apply pressure or friction to soft tissue during use (see figs. 1-10).
Regarding claim 50, Chubinsky discloses that the tool is made from plastics (see col 4, lines 41-52, Chubinsky discloses that the device can be made of a variety of material including plastics).
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth 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.
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 owned as of the effective filing date of the claimed invention(s) absent any evidence to 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 owned as of the effective filing 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.
Claims 39, 40, 43, 44-50 and 53 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Mittelsteadt (2008/0312564) or, in the alternative, under 35 U.S.C. 103 as obvious over Mittelsteadt (2008/0312564).
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Regarding claim 39, Mittelsteadt discloses a handheld soft tissue treatment tool (entire device shown in figs. 57-59, the device is made of strong plastic, and is designed to be held and manipulated to exercise the hand and fingers, therefore, is capable of being used as a soft tissue treatment tool, see figs. 4-6 and 51-56 and paragraph 0053 for reference) comprising: a handle portion comprising a generally planar body having a length approximately 4 and 8 inches and a width less than the length, the handle portion configured to be held by a user and to contact a subject’s body for therapeutic treatment, the handle portion including at least one beveled edge configured to apply scraping or pressure to the subject’s tissue, the handle portion comprising opposing generally flat surfaces and a perimeter defined by a plurality of edges (see the annotated-Mittelsteadt figs. 57-59, the planar portion can be a handle portion since the planar portion has all the structure as claimed, and as shown, the handle portion comprising a generally planar body having a length of 3.5 inches which is approximately 4 inch, furthermore, the length is 3.5 inches while the width is ¾ inches, furthermore, the beveled edge of Mittelsteadt would be able to apply scraping force or shearing force to soft tissue and as shown, the perimeter is defined by a plurality of edges and there are opposing generally flat surfaces), a head portion (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference) comprising a generally disc-shaped body having a top surface and a bottom surface opposite the top surface, the head portion having a diameter between approximately 2 to 6 inches (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, as shown, the diameter of the head portion is approximately 2” and is larger than the diameter of the shaft) and defining at least one treatment surface for application to soft tissue of a subject (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, the head portion is a physical structure, therefore, can be used as a treatment surface for application to soft tissue of a subject); a shaft (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference) extending between and rigidly connecting the head portion and the handle portion, the shaft having a length between approximately 2 and 6 inches and having a cross-sectional dimension sufficiently narrow that the shaft is dimensioned to be positioned between two adjacent fingers of a user’s closed hand during use (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, the width or diameter is ¾” while the length is measured in the height direction relative to fig. 59, due to the size of the tool as disclosed, the shaft would permit positioning between two adjacent fingers of a user’s closed hand during use, furthermore, relative to the drawings in figs. 57-59 and the other dimensions shown, the length of the shaft would be approximately 2-6 inch, it is noted that the term “approximately” is not defined in the specification, therefore, relatively, the length of the shaft is approximately 2-6 inches, furthermore, see figs. 51-56 and paragraph 0053, Mittelsteadt discloses that the tool is made out of strong plastics); wherein, with the shaft positioned between the two adjacent fingers of the closed hand, the tool is configured such that the user is able to selectively grip the head portion while applying force through the handle portion to the subject’s soft tissue, and is also able to selectively grip the handle portion while applying force through the head portion to the subject’s tissue (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, the shaft has a diameter of 3/4”, therefore, would allow the shaft to be positioned between the two adjacent fingers of the closed hand, the tool is configured such that the user is able to selectively grip the head portion while applying force through the handle portion to the subject’s soft tissue, and is also able to selectively grip the handle portion while applying force through the head portion to the subject’s tissue, it is noted that the limitation of how the portions are held and what portions are being applied to the soft tissue is considered as intended use).
However, if there is any doubt that Mittelsteadt discloses that the length of the handle portion is approximately 4 inches and the shaft having a length of approximately 2 inches.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the length of the handle portion to be approximately 4 inches and the shaft to have a length of approximately 2 inches, for the purpose of providing a dimension that can accommodate different users having different hand and finger sizes that would allow the device to be used for its intended purpose which is to exercise the user’s hand and fingers, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(II)
Regarding claim 40, Mittelsteadt or the modified Mittelsteadt discloses that the handle portion is made from a rigid material comprising plastics (see figs. 51-56 and paragraph 0053, Mittelsteadt discloses that the tool is made out of strong plastics).
Regarding claim 43, Mittelsteadt or the modified Mittelsteadt discloses that the head portion includes a texture or treatment to improve grip when held by the user (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, Mittelsteadt discloses that there is a soft grip surface added to increase ease with grip, a soft grip surface can be interpreted as a treatment or texture, since any soft layer added to the handle can be a treatment because the soft grip material is added to enhance grip, furthermore, it can be considered as a texture because a soft grip structure/surface would have a texture).
Regarding claim 44, Mittelsteadt discloses a handheld soft tissue treatment tool (entire device shown in figs. 57-59, the device is made of strong plastic, and is designed to be held and manipulated to exercise the hand and fingers, therefore, is capable of being used as a soft tissue treatment tool, see figs. 4-6 and 51-56 and paragraph 0053 for reference) comprising: a first portion configured to be gripped by a user and to contact a subject’s body for therapeutic treatment (see the handle portion (first portion) in the annotated-Mittelsteadt figs. 57-59 with reference to figs. 51-56, the first portion comprising a generally planar body having a length of 3.5 inches which is approximately 4 inch, furthermore, the length is 3.5 inches while the width is ¾ inches, therefore, the first portion can be gripped by a user and to contact a subject’s body for therapeutic treatment); a second portion configured to be gripped by a user and to contact a subject’s body for therapeutic treatment (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, as shown, the diameter of the head portion (second portion) comprises a generally rounded or disc-shaped body and is approximately 2”, therefore, can be gripped by a user and to contact a subject’s body for therapeutic treatment); a shaft (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference) rigidly connecting the first portion and the second portion, the shaft having a length between approximately 2 inches and 6 inches and having a cross-sectional dimension sufficiently narrow to permit positioning between two adjacent fingers of a user’s closed hand during use (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, the width or diameter is ¾” while the length is measured in the height direction relative to fig. 59, due to the size of the tool as disclosed, the shaft would permit positioning between two adjacent fingers of a user’s closed hand during use, furthermore, relative to the drawings in figs. 57-59 and the other dimensions shown, the length of the shaft would be approximately 2-6 inch, it is noted that the term “approximately” is not defined in the specification, therefore, relatively, the length of the shaft is approximately 2-6 inches, furthermore, see figs. 51-56 and paragraph 0053, Mittelsteadt discloses that the tool is made out of strong plastics), wherein with the shaft positioned between the two adjacent fingers of the user’s closed hand, the tool is configured such that the user is able to grip the first portion while applying the second portion for soft tissue treatment, and is also able to grip the second portion while applying the first portion for soft tissue treatment (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, with the disclosed dimension and shape by Mittelsteadt, the shaft can be positioned between the two adjacent fingers of the user’s closed hand, and the user is able to grip the first portion while applying the second portion for soft tissue treatment, and is also able to grip the second portion while applying the first portion for soft tissue treatment, it is noted that the limitation of how the portions are held and what portions are being applied to the soft tissue is considered as intended use).
However, if there is any doubt that Mittelsteadt discloses that the length of the shaft is between approximately 2 inches and 6 inches.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the length of the shaft to have a length of approximately 2-6 inches, for the purpose of providing a dimension that can accommodate different users having different hand and finger sizes that would allow the device to be used for its intended purpose which is to exercise the user’s hand and fingers, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(II)
Regarding claim 45, Mittelsteadt or the modified Mittelsteadt discloses that the first portion comprises a generally planar body having a length between approximately 4 inches and 8 inches and a width less than the length, and wherein the generally planar body includes at least one beveled edge configured to apply scraping or pressure to soft tissue (see the handle portion (first portion) in the annotated-Mittelsteadt figs. 57-59 with reference to figs. 51-56, the first portion comprising a generally planar body having a length of 3.5 inches which is approximately 4 inch, furthermore, the length is 3.5 inches while the width is ¾ inches, the beveled edge of Mittelsteadt would be able to apply scraping force or shearing force to soft tissue and as shown).
However, if there is any doubt that Mittelsteadt discloses that the first portion comprises a generally planar body having a length between approximately 4. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the length of the first portion to be approximately 4 inches, for the purpose of providing a dimension that can accommodate different users having different hand and finger sizes that would allow the device to be used for its intended purpose which is to exercise the user’s hand and fingers, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(II)
Regarding claim 46, Mittelsteadt or the modified Mittelsteadt discloses that the second portion comprises a generally rounded or disc-shaped body having a diameter between approximately 2 and 6 inches (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, as shown, the diameter of the head portion (second portion) comprises a generally rounded or disc-shaped body and is approximately 2”).
Regarding claim 47, Mittelsteadt or the modified Mittelsteadt discloses that the first portion and the second portion are made from a plastic material (see figs. 51-56 and paragraph 0053, Mittelsteadt discloses that the tool including the first portion and the second portion is made out of strong plastics).
Regarding claim 48, Mittelsteadt or the modified Mittelsteadt discloses that the first portion includes at least one beveled edged configured to apply scraping or shearing force to soft tissue (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, the beveled edge would be capable of applying scraping or shearing force to the subject’s tissue).
Regarding claim 49, Mittelsteadt or the modified Mittelsteadt discloses that at least a portion of the second portion includes a surface geometry or contour configured to apply pressure or friction to soft tissue during use (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, the second portion comprises surfaces and edges, therefore, there would be a portion formed by the surface or edge that can be used to apply pressure or friction to soft tissue during use).
Regarding claim 50, Mittelsteadt or the modified Mittelsteadt discloses that the tool is made from plastics (see figs. 51-56 and paragraph 0053, Mittelsteadt discloses that the tool is made out of strong plastics).
Regarding claim 53, Mittelsteadt or the modified Mittelsteadt discloses that at least one of the head portion and the handle portion is configured for direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject (see the annotated-Mittelsteadt figs. 57-59 above, the device is a physical structure that can be made of plastic therefore, can be used for direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject, see figs. 51-56 and paragraph 0053, Mittelsteadt discloses that the tool is made out of strong plastics).
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Mittelsteadt (2008/0312564) in view of Merrill (2019/0015288).
Regarding claim 41, Mittelsteadt or the modified Mittelsteadt fails to disclose that the head portion is detachably connected to the shaft.
However, Merrill teaches a shaft (21, figs. 1-4, paragraphs 0037-0038) that is detachably connected to a head portion (head 12, figs. 1-2, paragraphs 0034-0038, Merrill discloses a threaded connection between 21 and 12).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the head portion of Mittelsteadt or the modified Mittelsteadt to be detachable from the shaft of Mittelsteadt or the modified Mittelsteadt as taught by Merrill for the purpose of providing ease of replacement and repairs of parts.
Claim 42 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Mittelsteadt (2008/0312564) or, in the alternative, under 35 U.S.C. 103 as obvious over Mittelsteadt (2008/0312564) in view of Wise (2017/0273850).
Regarding claim 42, Mittelsteadt or the modified Mittelsteadt discloses that the shaft, head portion and handle portion are integrally formed as a single piece (see the annotated-Mittelsteadt figs. 57-59 and see figs. 4-6 and 51-56 and paragraph 0053 for reference, as shown, the shaft, head portion and handle portion are integrally formed as a single piece).
However, if there is any doubt that the shaft, the head portion and the handle portion are integrally formed as a single piece.
Wise teaches a first treatment member (220, fig. 6) and a second treatment member (210, fig. 6) can be integrally formed to form single piece of can be formed separately (see paragraph 0045).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the handle portion, head portion and the shaft of Mittelsteadt or the modified Mittelsteadt to be integrally formed as a single piece as taught by Wise for the purpose of providing an alternative simple construction that would reduce the assembly cost and assembly time.
Claim 51 is rejected under 35 U.S.C. 103 as being unpatentable over Mittelsteadt (2008/0312564) in view of Merrill (2019/0015288).
Regarding claim 51, Mittelsteadt or the modified Mittelsteadt fails to disclose that the head portion and the handle portion are detachably connected to the shaft.
However, Merrill teaches a shaft (21, figs. 1-4, paragraphs 0037-0038) that is detachably connected to a head portion (head 12, figs. 1-2, paragraphs 0034-0038, Merrill discloses a threaded connection between 21 and 12) and a handle portion (24 and 25, figs. 1-2).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the head portion and the handle portion of Mittelsteadt or the modified Mittelsteadt to be detachable from the shaft of Mittelsteadt or the modified Mittelsteadt as taught by Merrill for the purpose of providing ease of replacement and repairs of parts.
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Mittelsteadt (2008/0312564) in view of Merrill (2019/0015288).
Regarding claim 52, Mittelsteadt or the modified Mittelsteadt fails to disclose that the first portion and the second portion is detachably connected to the shaft.
However, Merrill teaches a shaft (21, figs. 1-4, paragraphs 0037-0038) that is detachably connected to a second portion (head 12, figs. 1-2, paragraphs 0034-0038, Merrill discloses a threaded connection between 21 and 12) and a first portion (24 and 25, figs. 1-2).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the second portion and the first portion of Mittelsteadt or the modified Mittelsteadt to be detachable from the shaft of Mittelsteadt or the modified Mittelsteadt as taught by Merrill for the purpose of providing ease of replacement and repairs of parts.
Claims 39-40 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) in view of Chubinsky (5,843,005).
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Regarding claim 39, Wu discloses a handheld soft tissue treatment tool (tool having plate (handle portion, see plates 1-3 for the handle portion in the annotated-Wu fig. 1 above) in fig. 1 and a handle (second treatment member in the annotated-Wu fig. 2 above), see paragraphs 0010-011 of the English translation, furthermore, Wu discloses in paragraphs 0009-0011 that the device is a multifunctional massage scraper, therefore, would be capable of treating soft tissue) comprising: a handle portion comprising a generally planar body having a length and a width less than the length, the handle portion configured to be held by a user and to contact a subject’s body for therapeutic treatment, the handle portion including at least one beveled edge configured to applying scraping or pressure to the subject’s tissue, the handle portion comprising opposing generally flat surfaces and a perimeter defined by a plurality of edges (see the annotated-Wu fig. 1 above, the handle portion comprises a generally planar body and having a length larger than a width, and the handle portion comprising scraping edges/beveled edges therefore, is capable of being held by a user to contact a subject’s body for therapeutic treatment, furthermore, as shown, the handle portion comprising opposing generally flat surfaces and a perimeter defined by a plurality of edges); a head portion (see fig. 2 and TV gimbal in the middle) of the handheld soft tissue treatment tool, the head portion comprising a diameter and defining at least one treatment surface for application to soft tissue of a subject (see the annotated-Wu figs. 1 and 2 above and paragraph 0011, see fig. 3); a shaft extending between and rigidly connecting the head portion and the handle portion, the shaft having a length and having a cross-sectional dimension sufficiently narrow that the shaft is dimensioned to be positioned between two adjacent fingers of a user’s closed hand during use (see the annotated-Wu fig. 1 above with reference to fig. 3, as shown, the shaft comprises a diameter that would permit positioning between two adjacent fingers of a user’s closed hand during use, since Wu discloses that the diameter of the head portion (the head portion is the TV gimbal portion) has a diameter of 6 mm, the shaft diameter is about the same size as the TV gimbal antenna handle, see paragraph 0011 of Wu); wherein, with the shaft positioned between the two adjacent fingers of the closed hand, the tool is configured such that the user is able to selectively grip the head portion while applying force through the handle portion to the subject’s soft tissue, and is also able to selectively grip the handle portion while applying force through the head portion to the subject’s soft tissue (see the annotated-Wu figs. 1-2 above with reference to fig. 3 and paragraph 0011 of Wu, Wu discloses that the handle portion having edges and surfaces, therefore, a portion of the head portion would be able to contact and apply therapeutic treatment to a subject’s body, the shaft comprises a size that has a diameter of about 6 mm therefore, would enable allow the user to selectively grip the head portion while applying force through the handle portion to the subject’s soft tissue, and is also able to selectively grip the handle portion while applying force through the head portion to the subject’s soft tissue, it is noted that the limitation of how the portions are held and what portions are being applied to the soft tissue is considered as intended use), Wu further discloses that the head portion can take other forms (see fig. 2 and paragraph 0011), but fails to disclose that the generally planar body having a length between approximately 4 and 8 inches, the shaft having a length between approximately 2 and 6 inches and the diameter of the head portion being approximately 2 to 6 inches, and that the head portion being generally disc-shaped and the head portion having a diameter that is greater than the diameter of the shaft.
However, Chubinsky teaches a shaft (23, figs. 1-4) and a head portion (30, fig. 1, see col 4, lines 1-40) comprising a diameter of approximately 2 inches, wherein the diameter of the head portion is greater than the shaft (see col 5, lines 34-43, Chubinsky discloses that the diameter is 45-85 mm which includes a diameter of approximately 2 inches).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the head portion of Wu to have the head portion by Chubinsky for the purpose of providing an alternative head portion shape that is ergonomic and can be used as a handle to manipulate the tool to massage the user/subject (see col 4, lines 11-19 of Chubinsky).
The modified Wu discloses a head portion (head portion 30 of Chubinsky) comprising a disc-shaped and having a diameter greater than the diameter of the shaft and comprising a diameter of approximately 2 to 6 inches, but fails to disclose that the elongated body having a length between approximately 4 and 8 inches, the shaft having a length between approximately 2 and 6 inches.
However, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device of Wu, such that the elongate body having a length between approximately 4 and 8 inches and the shaft having a length between approximately 2 and 6 inches, for the purpose of providing suitable dimensions that would allow the handheld treatment tool to be comfortably handled and effectively operated by the user during use and to accommodate different user having different hand and finger sizes, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 40, the modified Wu discloses that the tool is made from a material selected from stainless steel, therefore, the handle portion is made from a rigid material including metal (see paragraphs 0007 and 0011 of Wu, scraping plate (handle portion) can be made from copper-zinc alloy or stainless steel).
Regarding claim 53, the modified Wu discloses that at least one of the head portion and the handle portion is configured for direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject (see paragraphs 0007-0011 of Wu, head portion and/or the handle portion can be in direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium interposed between the handheld soft tissue treatment tool and the soft tissue of the subject).
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) in view of Chubinsky (5,843,005) as applied to claim 39 above, and alternatively in view of Chubinsky (5,843,005).
Regarding claim 41, the modified Wu discloses that the head portion is detachably connected to the shaft (see the annotated-Wu figs. 1-2 with reference to fig. 3 and paragraphs 0010-0011 of Wu, when head portion screw into the female thread of the shaft portion, screw connection would be a detachable connection, furthermore, Wu discloses three different handles comprising male thread, see the different shapes of 1-3 in fig. 1, the different first treatment would provide different therapeutic needs, furthermore, Wu discloses in paragraph 0005 that the different handles are connected to the massager scraper plates via screws, therefore, would be interchangeable therefore, after the modification with Chubinsky, the head portion would still be detachably connected to the shaft), however, if there is any doubt that the head portion is detachably connected to the shaft.
However, Chubinsky teaches a shaft (123, figs. 15-16, col 5, line 44 to col 6, line 22) that is detachably connected to a head portion (130, col 5, line 44 to col 6, line 22).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the head portion of the modified Wu to be detachable from the shaft of the modified Wu as taught by Chubinsky for the purpose of providing ease of replacement and repairs of parts.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) in view of Chubinsky (5,843,005) as applied to claim 39 above, and alternatively in view of Wise (2017/0273850).
Regarding claim 42, the modified Wu discloses that the shaft, the head portion and the handle portion are integrally formed as a single piece (see paragraphs 0009-0011, and fig. 3 of Wu, once the head portion is connected to the shaft, the head portion would be integrally formed, being that the treatment members and the shaft are all part of a unit, furthermore, the unit is single piece, the single-piece is referring to the assembled unit, it is noted that the term “single piece” does not necessarily mean that the massager cannot be formed by multiple pieces, therefore, multiple pieces that are connected to one another, would form a single piece). However, if there is any doubt that the shaft, the head portion and the handle portion are integrally formed as a single piece.
Wise teaches a first treatment member (220, fig. 6) and a second treatment member (210, fig. 6) can be integrally formed to form single piece of can be formed separately (see paragraph 0045).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the handle portion, the shaft, and the head portion of the modified Wu to be integrally formed as a single piece as taught by Wise for the purpose of providing an alternative simple construction that would reduce the assembly cost and assembly time.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) in view of Chubinsky (5,843,005) as applied to claim 39 above, and further in view of Sullivan (2009/0240177).
Regarding claim 43, the modified Wu fails to disclose that the head portion includes a texture or treatment to improve grip when held by the user.
However, Sullivan teaches a handle portion that can be held comprising a texture to improve grip when held by the user (see paragraphs 0010 and 0068-0069, Sullivan discloses that the enhanced grip may be provided by adding texture to the surface).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the head portion of the modified Wu to have the texture to improve grip as taught Sullivan for the purpose of providing enhanced grip thereby allowing the user to securely hold onto the handle in order to manipulate the tool (see paragraphs 0010 and 0068-0069 of Sullivan).
Claims 44-45 and 47-50 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099).
Regarding claim 44, Wu discloses a handheld soft tissue treatment tool (tool having plate (handle portion, see plates 1-3 for the handle portion in the annotated-Wu fig. 1 above) in fig. 1 and a handle (second treatment member in the annotated-Wu fig. 2 above), see paragraphs 0010-011 of the English translation, furthermore, Wu discloses in paragraphs 0009-0011 that the device is a multifunctional massage scraper, therefore, would be capable of treating soft tissue) comprising: a first portion having a first length and is configured to be gripped by a user and to contact a subject’s body for therapeutic treatment (see the annotated-Wu fig. 1 above, the handle portion (first portion) comprises a generally planar body and having a length larger than a width, and the handle portion comprising scraping edges/beveled edges therefore, is capable of being held by a user to contact a subject’s body for therapeutic treatment, the first portion is capable of being gripped by a user to contact a subject’s body for therapeutic treatment); a second portion (see fig. 2 and TV gimbal in the middle of the figure), the second portion having a second length, configured to be gripped by a user and to contact a subject’s body for therapeutic treatment (see the annotated-Wu figs. 1 and 2 above and paragraph 0011, see fig. 3, the second portion comprises a physical structure and is therefore, capable of being gripped by a user and to contact a subject’s body for therapeutic treatment); a shaft rigidly connecting the first portion and the second portion, the shaft having a length and having a cross-sectional dimension sufficiently narrow to permit positioning between two adjacent fingers of a user’s closed hand during use (see the annotated-Wu fig. 1 above with reference to fig. 3, as shown, the shaft comprises a diameter that would permit positioning between two adjacent fingers of a user’s closed hand during use, since Wu discloses that the diameter of the head portion (the head portion is the TV gimbal portion) has a diameter of 6 mm, the shaft diameter is about the same size as the TV gimbal antenna handle, see paragraph 0011 of Wu); wherein, with the shaft positioned between the two adjacent fingers of the user’s closed hand, the tool is configured such that the user is able to grip the first portion while applying the second portion for soft tissue treatment, and is also able to grip the second portion while applying the first portion for soft tissue treatment (see the annotated-Wu figs. 1-2 above with reference to fig. 3 and paragraph 0011 of Wu, Wu discloses that the first portion having edges and surfaces and the second portion comprises edges and surfaces, therefore, the first portion and the second portion are each configured to function both as a gripping surface and as a treatment surface capable of applying therapeutic force to soft tissue, and further discloses that the shaft is 6 mm in diameter, therefore, the shaft can be positioned between the two adjacent fingers of the user’s closed hand, and the user is able to grip the first portion while applying the second portion for soft tissue treatment, and is also able to grip the second portion while applying the first portion for soft tissue treatment, it is noted that the limitation of how the portions are held and what portions are being applied to the soft tissue is considered as intended use), but fails to disclose that the shaft having a length between approximately 2 and 6 inches.
However, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device of Wu, the shaft having a length between approximately 2 and 6 inches, for the purpose of providing suitable dimensions that would allow the handheld treatment tool to be comfortably handled and effectively operated by the user during use and to accommodate different user having different hand and finger sizes, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 45, the modified Wu discloses that the first portion comprises a generally planar body having a length and a width less than the length and the generally planar body includes at least one beveled edge configured to applying scraping or pressure to soft tissue (see the annotated-Wu fig. 1 above), but fails to disclose that the generally planar body having a length between approximately 4 inches and 8 inches.
However, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the device of Wu, such that the first portion having a length between approximately 4 and 8 inches, for the purpose of providing suitable dimensions that would allow the handheld treatment tool to be comfortably handled and be operated by the user to provide treatment to the patient or user, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 47, the modified Wu discloses that the first portion and the second portion is made from metal material (see paragraphs 0007 and 0011 of Wu, scraping plate (first portion) can be made from copper-zinc alloy or stainless steel, furthermore, Wu discloses in paragraph 0008 that the handle (second portion) can be made of metal).
Regarding claim 48, the modified Wu discloses that the first portion includes at least one beveled edge configured to apply a scraping or shearing force to soft tissue (see the annotated-Wu fig. 1 above, as shown, the first portion (handle portion) comprises at least a beveled edge that would be capable of applying a scraping or shearing force to soft tissue).
Regarding claim 49, the modified Wu discloses that at least a portion of the second portion includes a surface geometry or contour configured to apply pressure or friction to soft tissue during use (see the annotated-Wu fig. 2 above and paragraph 0011, each head portion (second portion) comprises surfaces and edges that has a surface geometry or contour that can be used to apply pressure or friction to soft tissue during use).
Regarding claim 50, the modified Wu discloses that the tool is made from a material selected from stainless steel (see paragraphs 0007 and 0011 of Wu, scraping plate (first portion) can be made from copper-zinc alloy or stainless steel).
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) in view of Chubinsky (5,843,005).
Regarding claim 46, the modified Wu discloses that the second portion (head portion) can take other forms (see fig. 2 and paragraph 0011), but fails to disclose that the second portion comprises a generally rounded or disc-shaped body having a diameter between approximately 2 inches and 6 inches.
However, Chubinsky teaches a shaft (23, figs. 1-4), a first portion (20, fig. 1) and a second portion (30, fig. 1, see col 4, lines 1-40) comprising a diameter of approximately 2 inches, wherein the diameter of the head portion is greater than the shaft (see col 5, lines 34-43, Chubinsky discloses that the diameter is 45-85 mm which includes a diameter of approximately 2 inches).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the second portion of the modified Wu to have the second portion by Chubinsky for the purpose of providing an alternative head portion shape that is ergonomic and can be used as a handle to manipulate the tool to massage the user/subject (see col 4, lines 11-19 of Chubinsky).
Claim 51 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) in view of Chubinsky (5,843,005) as applied to claim 39 above, and further in view of Chubinsky (5,843,005).
Regarding claim 51, the modified Wu discloses that the head portion is detachably connected to the shaft (see the annotated-Wu figs. 1-2 with reference to fig. 3 and paragraphs 0010-0011, when second portion screw into the female thread of the shaft portion, screw connection would be a detachable connection, furthermore, Wu discloses three different handles comprising male thread, see the different shapes of 1-3 in fig. 1, the different first treatment would provide different therapeutic needs, furthermore, Wu discloses in paragraph 0005 that the different handles are connected to the massager scraper plates via screws), but fails to disclose that the first and the second portions are detachably connected to the shaft.
However, Chubinsky teaches a shaft (123, figs. 15-16, col 5, line 44 to col 6, line 22) that is detachably connected to a handle portion (131 in fig. 16) and a head portion (130, col 5, line 44 to col 6, line 22).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the head portion and the handle portion of the modified Wu to be detachable from the shaft of the modified Wu as taught by Chubinsky for the purpose of providing ease of replacement and repairs of parts.
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (CN 2400099) as applied to claim 44 above, and further in view of Chubinsky (5,843,005).
Regarding claim 52, the modified Wu discloses that the second portion is detachably connected to the shaft (see the annotated-Wu figs. 1-2 with reference to fig. 3 and paragraphs 0010-0011, when second portion screw into the female thread of the shaft portion, screw connection would be a detachable connection, furthermore, Wu discloses three different handles comprising male thread, see the different shapes of 1-3 in fig. 1, the different first treatment would provide different therapeutic needs, furthermore, Wu discloses in paragraph 0005 that the different handles are connected to the massager scraper plates via screws), but fails to disclose that both the first portion and the second portion are detachably connected to the shaft.
However, Chubinsky teaches a shaft (123, figs. 15-16, col 5, line 44 to col 6, line 22) that is detachably connected to a first portion (131 in fig. 16) and a second portion (130, col 5, line 44 to col 6, line 22).
Therefore, it would have been obvious before the effective date of the claimed invention to one of ordinary skill in the art to modify the first portion and the second portion of the modified Wu to be detachable from the shaft of the modified Wu as taught by Chubinsky for the purpose of providing ease of replacement and repairs of parts.
Response to Arguments
Applicant's arguments filed on 2/27/2026 have been fully considered but they are not persuasive.
The applicant on pages 2-3, section III part 1 of the remarks argues that the reference Mittelsteadt is non-analogous art and further cited legal standard for analogous art. The applicant further argues that the distinction is fundamental: Mittelsteadt discloses a hand tool designed to treat the hand – a patient operated device for self-directed exercise of the hand and fingers in putty. The present invention is a tool held by the hand and used all over the body – a practitioner-operated instrument for direct soft-tissue treatment of a patient’s entire musculature. These are different devices, for different user’s solving different problems, in different fields. Under Bigio, the “field of endeavor” is determined not by superficial category but by the specific problem being solved and the intended user. See also In re Klein. Mittelsteadt’s device is expressly designed as a putty-based hand exercise system in which a patient embeds the device in resistive putty and repeatedly deforms the putty to strengthen the hand and fingers. The end-user is the patient performing self-direct rehabilitation. The entire disclosure is confined to hand and finger rehabilitation- Mittelsteadt does not teach or suggest use of the device on any other part of the body. The present application, by contrast, addresses a practitioner-applied manual soft-tissue therapy tool designed for extended treatment sessions across the patient’s entire musculature, focused on practitioner ergonomics, continuous tissue contact, and reduction of practitioner strain. The end-user is a clinician treating a patient directly, without any intermediate resistive medium. The action characterizes the shared “field of endeavor” as “hand-held therapy tools…for providing a physical form of therapy to the user”. The applicant respectfully submits that this characterization is overbroad. At that level of abstraction, virtually any handheld object used in a therapeutic context- a crutch, a resistance band, a dental scaler- would be “analogous” to a practitioner-held soft-tissue mobilization instrument. The analogous art inquiry requires a more particularized analysis. However, the argument is not persuasive because Mittelsteadt is analogous art. In response to applicant's argument that the reference Mittelsteadt is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Mittelsteadt and the instant invention are in the same field of endeavor which is hand-held therapy tools that are for providing a physical form of therapy to the user. Alternatively, the reference Mittelsteadt is reasonably pertinent to the applicant’s problem, which is a hand held physical therapy device having a handle that allows a tool to be held and manipulated, it appears that the applicant is picking minor functional differences between the instant invention and Mittelsteadt to make the argument that Mittelsteadt is non-analogous prior art while ignoring the more general field of endeavor of both the instant invention and Mittelsteadt, which are hand-held therapeutic tools that are used to provide a physical form of therapy to the user. Throughout the applicant’s arguments, the applicant stated that the present application, by contrast, addresses a practitioner-applied soft-tissue therapy tool designed for extended treatment session across the patient’s entire musculature, focused on practitioner ergonomics, and that the end-user is a clinician treating a patient directly. However, the instant specification on page 1, paragraph 0002, under “FIELD OF INVENTION” stated that “This invention relates generally to chiropractic care, physical therapy, massage therapy, and self-massage”, which clearly shows that the field of endeavor includes self therapy or physical therapy in general. The applicant appears to be picking a narrow intended use of the device/tool and stated that the field of endeavor is specific to a tool that is ergonomic for the clinician to use on the patient, which is not taught by Mittelsteadt. The applicant’s argument is therefore, contradicting with the field of invention and appears to be cherry picking a very narrow use of the device to state that the invention of Mittelsteadt is of a different field of endeavor. Therefore, the rejection still stands.
The applicant on page 3, section III part 2 of the remarks argues that under the second prong of the analogous art test, a reference is analogous only if it is “reasonably pertinent to the particular problem the inventor was trying to solve”. Mittelsteadt’s “particular problem” is how to structure tools that can be repeatedly embedded in putty while providing varied resistance patterns for the patient’s hand muscles. The claimed invention’s particular problem is how to enable a practitioner to maintain continuous direct soft-tissue contact while alternating between multiple treatment surfaces, with the shaft remaining between adjacent fingers to reduce strain and eliminate re-gripping. A person designing a clinician-held, bidirectional manual therapy instrument would have no reason to consult a putty-exercise system whose operation depends on a surrounding volume of putty and to completely different user relationship. The references are therefore not reasonably pertinent to the inventor’s problem. However, the argument is not persuasive because the reference Mittelsteadt is reasonably pertinent to the applicant’s problem, which is a hand held physical therapy device having a handle that allows a tool to be held and manipulated, which is related to the problem of manipulating a tool with a single hand as stated by the applicant’s disclosure, see paragraph 0011 of the instant specification. Therefore, the rejection still stands.
The applicant on pages 3-4, section III part 3 of the remarks argues that internal contradiction in the examiner’s framework. For the examiner’s consideration, and for the benefit of the record, Applicant respectfully notes an internal tension in the Office Action’s analytical framework. The analysis posits a person of ordinary skill in the field of hand-held therapy tools for providing physical therapy. Yet the primary reference- Mittelsteadt—operates in a different field entirely: putty-based patient self-exercise for hand rehabilitation. If the person of ordinary skill is working in the applicant’s field of practitioner-applied manual therapy, that person would have no occasion to look to Mittelsteadt for solutions. And if the field is defined so broadly as to encompass any device touched by a human hand in a therapeutic context, the “person of ordinary skill” construct loses its analytical utility as contemplated by the Federal Circuit in Bigio and Klein. However, the argument is not persuasive because as stated by the above response to argument, the applicant is picking a narrow intended use as the field of endeavor while ignoring the field of invention in paragraph 0002 of the instant specification, which stated that “This invention relates generally to chiropractic care, physical therapy, massage therapy, and self-massage”, which clearly shows that the field of endeavor includes self therapy or physical therapy in general. The applicant appears to be picking a narrow intended use of the device/tool and stated that the field of endeavor is specific to a tool that is ergonomic for the clinician to use on the patient, which is not taught by Mittelsteadt. The applicant’s argument is therefore, contradicting with the field of invention and appears to be cherry picking a very narrow use of the device to state that the invention of Mittelsteadt is of a different field of endeavor. Therefore, the rejection still stands.
The applicant on page 4, section III part 4 of the remarks argues that Mittelsteadt’s core operating principle is putty dependence. Mittelsteadt is not merely a generic “hand-held therapy tool” and removing the putty from Mittelsteadt’s system does not merely alter an incidental aspect of the device, it destroys the reference’s stated purpose and fundamental mode of operation. However, the argument is not persuasive because the rejection never modify Mittelsteadt’s system to take away the medium, therefore, it is unclear how the applicant arrived at such conclusion. The examiner stated that the device is capable of operating without the medium/putty, as Mittelsteadt discloses that the device is separate from the putty/medium throughout the disclosure. The applicant has not shown that once a user has the device and putty of Mittelsteadt, the user cannot use the device without the putty, the rejection never stated that the reference Mittelsteadt is being modified to remove the putty, therefore, it is unclear how the mode of operation of Mittelsteadt would be destroyed. Therefore, the rejection still stands.
The applicant on pages 4-5, section IV, part A of the remarks argues that the Office Action repeatedly asserts that the Mittelsteadt device “would be capable” of being positioned between adjacent fingers and “can” be used for soft-tissue treatment and that because the structure is “capable”. For the Examiner’s consideration, and for the benefit of the record, the Federal Circuit has clearly stated the applicable legal standard for inherency: “Inherency…may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient”. However, the argument is not persuasive because the Office action made it clear due to the dimensions of the tool of Mittelsteadt and the tool having the claimed structure, the tool is capable of performing the function. The Office Action never states that it “may” or has “probabilities” or “possibilities”, instead the office action states that the tool/device is capable of. The applicant has not provided any support or explanation as to how the tool of Mittelsteadt having the dimensions and structures as claimed is not capable of performing the claimed function. Therefore, the rejection still stands.
The applicant on pages 6, section IV, part B of the remarks argues that the amended claims make explicit the coordinated dimensional regime and bidirectional treatment configuration and Mittelsteadt does not teach or suggest this overall arrangement or nor does it address continuous bidirectional manual therapy without re-gripping. However, the argument is not persuasive because the Office Action clearly stated how Mittelsteadt teaches the claimed dimension, furthermore, the applicant has not explained how Mittelsteadt fails to disclose the claimed dimensions. Furthermore, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “continuous bidirectional manual therapy without re-gripping”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). However, even if the claim was to claim the limitation “continuous bidirectional manual therapy without re-gripping”, the tool of Mittelsteadt would be capable of meeting such function/intended use. Therefore, the rejection still stands.
The applicant on pages 6, section IV, part D of the remarks argues that claim 53 recites that at least one of the head portion and the handle portion is “configured for direct therapeutic contact with soft tissue of a subject without requiring any intermediate resistance medium”. The Examiner asserts that Mittelsteadt is “capable of” such use. Claim 53 does not merely require that the tool could be used without putty, it requires that the tool is configured for such use. “Configured for” is structural language denoting that the device’s geometry, surfaces, and dimensional relationships are designed to facilitate direct tissue contact as a primary mode of operation. Mittelsteadt is expressly configured for putty-mediated exercises. The fact that a prior-art could, in theory, be pressed directly against tissue does not make it “configured for” the claimed direct-contact therapeutic use, particularly in light of PAR Pharm.’s requirement that inherency cannot be based merely on what “may” occur. However, the argument is not persuasive because the Office Action is not stating that Mittelsteadt “may” perform such function, rather, the Office Action is stating that the tool of Mittelsteadt has all of the claimed dimensions and structures and is therefore, capable of performing the claimed function. If the applicant disagreed, the applicant needs to explain or provide support how the dimensions and structures of the tool of Mittelsteadt is incapable of performing the claimed function. Therefore, the rejection still stands.
The applicant on pages 7-8, section V of the remarks argues that neither Wu nor Chubinsky addresses the particular ergonomic problem solved by the present invention, maintaining a narrow shaft between two adjacent fingers while alternating which end of the tool contacts the patient, to preserve continuous treatment flow and reduce practitioner strain. The action relies on generalized “capable of” reasoning, that because Wu and Chubinsky have some form of handle and head, they are “capable” of the claimed bidirectional, inter-finger use, the cited reference (a) do not recognize the problem of continuous bidirectional treatment with the shaft between adjacent fingers; (b) do not disclose the specific dimensional regime tailored to that use; and (c) would require hindsight reconstruction and re-orientation of each reference’s purpose to arrive at the claimed invention. However, the argument is not persuasive because the combination would be capable of performing the claimed function. The applicant fails to provide any explanation or support as to how the modified Wu would not be capable of performing the claimed function. The Office Action did not say the tool may perform the function or has probabilities or possibilities of performing the claimed function, instead, the Office Action stated that the modified Wu discloses the claimed dimensions and structures, therefore, is capable of performing the claimed function. Furthermore, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Therefore, the rejection still stands.
The applicant further argues in page 8, section V of the remarks that the reference Chubinsky teaches away because Chubinsky discloses that the handle should be thick enough (~2 inches, col 5, lines 34-43) for the user to wrap the palm around-a design direction that diverges fundamentally from a shaft narrow enough to sit between two adjacent fingers. However, the argument is not persuasive because it is unclear how a handle having 2 inches in thickness would teach away from a shaft, it appears that the applicant is incorrectly comparing a handle 30 to a shaft of the instant invention. Even if the applicant intends to cite col 5, lines 29-33 and shaft 23, Chubinsky discloses a shaft 23 having a diameter of 1 mm to about 50 mm, which are all capable of being placed between two adjacent fingers. Therefore, the rejection still stands.
The applicant on pages 8-10, section VI of the remarks argues secondary considerations- failure of others to arrive at the claimed configuration, specifically, an inter-finger bidirectional shaft configuration of the present invention. However, the argument is not persuasive because the reference Wu (CN 2400099) would have satisfied the “inter-finger bidirectional shaft configuration of the present invention” since Wu discloses a structure that has a head portion, a handle portion and a shaft small enough positioned between the head portion and the handle portion as stated in the rejection above, alternatively, Chubinsky (5,843,005) reference would also satisfied the “inter-finger bidirectional shaft configuration of the present invention”, see figs. 5-6 and 8-10 of Chubinsky. Furthermore, it is unclear if the applicant is trying to argued that there is a long felt need, if so, the applicant has not provided any objective evidence to show such need exist. The applicant is merely making a statement that others failed to arrive at the claimed configuration. See MPEP section 716.04. Therefore, because the applicant has not provided objective evidence that an art recognized problem existed in the art for a long period of time without a solution, and has not successfully showed that the claimed invention satisfy the long felt need while the prior art failed to satisfy the long felt need, the rejection still stands.
The arguments to the newly added claim limitations in claims 39-53 has been addressed in the above rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TU A VO/Primary Examiner, Art Unit 3785
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