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
The amendment filed 11/03/2025 has been entered, claims 1-8, 12, 13, 15, 17, 18, 20 remain pending.
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 (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 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.
Claim(s) 1-8, 12, 13, 15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita (US20140288473), in view of Johnstone (US20190008332).
Regarding Claim 1, Matsushita discloses a skin stimulation tool to increase penetration and efficacy of topically applied products and medications (Fig. A, annotated below; par. 0022, beauty instrument 10), the skin stimulation tool comprising: a substantially Y-shaped handle (Fig. A, annotated below; par. 0022, handle 11); a first attachment on a first branch of the Y-shaped handle (Fig. A, annotated below; par.0022 bifurcated portions 11a), and a second attachment on a second branch of the Y-shaped handle (Fig. A, annotated below; par. 0022 bifurcated portions 11a); a first head portion mounted to rotate around the first attachment of the handle, and a second head portion independently mounted from the first head portion to rotate around the second attachment of the handle (Fig. A, annotated below; par. 0024, balls 17, “Then, the balls 17 are rotated about the ball supporting shafts 15.”), both of the head portions rotating when applied to a surface of the skin under linear motion of the handle (par 0035, “when the balls 17 are moved forward… each of the balls 17 is rotate…”);
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Fig. A: Adapted from Matsushita Fig. 1
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Fig. B, Adapted from Matsushita Fig. 7
Matsushita is silent on a plurality of distinct pyramids formed on each of the first and second head portions, each of the distinct pyramids having a pointed top portion and four sides progressively widening toward a square base, and each of the distinct pyramids having a height in a range of about 0.2 mm to about 1.2 mm; wherein the square bases of adjacent distinct pyramids substantially abut one another, thereby covering substantially the entire surface of each of the first and second head portions; wherein the shape and dense arrangement of the pyramids is configured to form a number of micro-channels in the skin when the pyramids are in contact with the skin during use to open skin pores and form pathways into the skin by the pyramids rolling over the skin, thereby increasing penetration of a topical agent as the pointed top portion of each of the pyramids are pressed deeper into the skin, wherein the raised surface works at a lipid-corneocyte surface of the skin to temporarily separate stratum corneum layers to create pathways into the skin without causing long term structural damage to the skin.
However, Johnstone teaches a skin massage device (Abstract) comprising of a plurality of distinct pyramids (par. 0160, “While this embodiment… including but not limited to: cylinders, pyramids…”), each of the distinct pyramids having a pointed top portion and four sides progressively widening toward a square base (Johnstone, par. 0060, “The shape of the cleansing features is not particularly limited, except that in many configurations the peak footprint area is the same or less than the base footprint area of individual cleansing features.”; Johnstone, par, 0060, “Cleansing feature shapes useful in the devices… pentahedral (base has rectangular shape)…”) (Examiner Notes: The prior art teaches a pentahedral with rectangular base, which is a square base, four sided pyramid as claimed by the applicant), wherein the square bases of adjacent distinct pyramids substantially abut one another, thereby covering substantially the entire surface of each of the first and second head portions (Johnstone par. 0059, “the space between cleansing features, or “land area” of the first major surface of the cleansing head or cleansing head section, is about 1% to 50% of the total first major surface area of the cleansing head”; in case where the “land area” is 1%, the pyramids substantially abut one another and substantially covers the entire surface) therefore, it would have been obvious for one of ordinary skilled in the art to modify the surface of the known skin stimulation tool of Matsushita with the skin massage device of Johnstone to enhance cleaning of pores and because pyramid is a suitable configuration for massaging skin surface as exemplified by the teachings of Johnstone (Johnstone, par. 0145).
Johnstone discloses the height of each pyramid is between 0.5 mm to 5 mm (Johnstone, par. 0059), but does not specifically disclose each of the distinct pyramids having a height in a range of about 0.2 mm to about 1.2 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the height of Johnstone from between 0.5 to 5 mm to 0.5 to 1.2 mm as applicant appears to have placed no criticality on the claimed range (See Applicant’s disclosure, par. 0037, “ranges of depth or height of the wedges may be about 0.2 mm to about 1.2 mm”) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The modified Matsushita further discloses wherein the shape and dense of the pyramids is configured to form a number of micro-channels in the skin when the pyramids are in contact with the skin during use to open skin pores and form pathways into the skin by the pyramids rolling over the skin, thereby increasing penetration of a topical agent as the pointed top portion of each of the pyramids are pressed deeper into the skin (Johnstone par. 145, “This opening of skin features and pores also allows cleanser to enter”), wherein the plurality of distinct pyramids works at a lipid-corneocyte surface of the skin to temporarily separate stratum corneum layers to create pathways into the skin without causing long term structural damage to the skin (Examiner Notes: The modified Matsushita has the claimed structure, and is therefore able to perform the same function).
Regarding Claim 2, the modified Matsushita discloses the skin stimulation tool of claim 1, but is silent on the handle has a length of about 13 cm, and each branch of the Y-shaped handle having a length of about 3 cm.
Matsushita does not teach specifically the length of the handle and of each branch. However, the length of the handle is an obvious measurement for comfort of holding or being long enough for a user to roll. Matsushita does teach the diameter of the head portions, which are mounted on each branch of the Y-shaped handle. The diameter of the head portions are 20 mm (Matsushita, Example 16, Table 3) and 25 mm (Matsushita, Example 17, Table 3). The length of each branch of the Y-shaped handle is an obvious measurement, as each branch needs to be slightly longer than the diameter of the head portion for the head portion to mount and rotate. The diameter from the prior art (20 mm, 25 mm) and the claimed length of the branch (3 mm), are well within the anticipation range. There is also a lack of criticality as the applicant did not state the length of the handle and of each branch serve any particular purpose or solve any problem beyond what is commonly known in the arts (The applicant, par. 0030). The measurements in the claim are well within the purview of design choice, and is therefore prima facie obvious.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to give specific measurements to the handle and each branch of Matsushita for reasons noted above.
Regarding Claim 3, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein the head portions are each about 25 mm wide and about 23 mm tall (Matsushita, Table 3, Diameter of ball; Example 17, 25 mm) (Examiner Notes: Because a portion of the ball is flat as shown in Fig. A and B, the height is shorter than the diameter; 25 mm is within 10% of 23 mm, therefore, the prior art overlaps with sufficient specificity and substantially identical to the claimed range; the claimed range is anticipated by the prior art. Note: examiner is construing the limitation “about” to be within plus and minus 10% of a recited dimension for all claims).
Regarding Claim 4, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein the head portions are each about 10 mm to 25 mm wide and about 10 mm to 23 mm tall (Matsushita, Table 5: Diameter of ball; Example 30, 17 mm) (Examiner Notes: The prior art examples are within the claimed range; therefore, the claimed range is anticipated by the prior art).
Regarding Claim 5, the modified Matsushita teaches the skin stimulation tool of claim 1, but is silent on a distance between a top-most portion of each of the head portions and an end portion of the handle is about 169 mm.
Matsushita does not specifically teach the distance between a top-most portion of each of the head portions and an end portion of the handle. However, the distance is simply a measurement of the total length of the invention, the distance itself is not inventive and can be easily estimated by adding the length of the handle, the diameter of the head portion, and the thickness of the surface of the head portion. By adding a dimension, it would not affect the performance of the invention and would not be patently distinct from the prior art. There is also a lack of criticality as the applicant did not state the distance between a top-most portion of each of the head portions and an end portion of the handle serves any particular purpose or solve any problem beyond what is commonly known in the arts (The applicant, par. 0030). The measurements in the claim are well within the purview of design choice, and is therefore prima facie obvious.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure and dimension the device of Matsushita for reasons noted above.
Regarding Claim 6, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein a distance between an outermost surface of each of the first head portion and the second head portion is about 68 mm (Matsushita, Table 3: Diameter of the ball; Example 18, 27.5 mm; par. 0059, distance between balls, 11 mm) (Examiner Notes: The claimed distance can be estimated by adding two of the diameters of the ball, and the distance between balls, which comes out to be 66 mm. The distance of 66 mm is within 10% of 68 mm, therefore, the distance has sufficient specificity and the claimed distance is anticipated by the prior art).
Regarding Claim 7, the modified Matsushita teaches the skin stimulation tool of claim 1, but is silent on a distance between an inner most surface of each of the head portions and a back of the handle is about 33 mm.
Matsushita does not specifically teach the distance between an inner most surface of each of the head portions and a back of the handle. However, the distance is simply a measurement of the thickness of the invention, the distance itself is not inventive and can be easily estimated by the diameter of the head portion and the thickness of the handle. By adding a dimension, it would not affect the performance of the invention and would not be patently distinct from the prior art. There is also a lack of criticality as the applicant did not state the distance between an inner most surface of each of the head portions and a back of the handle serves any particular purpose or solve any problem beyond what is commonly known in the arts (The applicant, par. 0030). The measurements in the claim are well within the purview of design choice, and is therefore prima facie obvious.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure and dimension the device of Matsushita for reasons noted above.
Regarding Claim 8, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein the head portion is substantially spherical shaped (par. 0010, “…a spherical-shaped ball, the balls are partially in contact with the skin”).
Regarding Claim 12, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein a base of adjacent pyramids of the head portions are in contact with one another (Johnstone, par. 0038, “As used herein, the term “cleansing feature” means a protrusion attached to and extending away from the first major surface of a cleansing head in a direction generally perpendicular thereto.”; par. 0177, “Depending on the angle of the segment, one or more of the links may overlap or otherwise intersect”) (Examiner Notes: As the prior art stated, the cleansing feature consists of different types of protrusions; therefore, the intersect feature can be applied to a pyramid configuration).
Regarding Claim 13, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein a base of adjacent pyramids of the head portions are spaced about 2 mm apart (Johnstone, par. 0059, “In some embodiments, there are about 2 to 100 cleansing features per square centimeter on at least one area of the cleansing head… the space between cleansing features, or “land area” of the first major surface of the cleansing head or cleansing head section, is about 1% to 50% of the total first major surface area of the cleansing head…”; par. 0181, “A distance d.sub.2 between first and second peaks of the embodiment may have various sizes… or about 1 mm to 3 mm, or about 1 mm to 2.5 mm…”) (Examiner Notes: The prior art discloses the number of cleansing features per unit area, the percentage of space between cleansing features of total area, or “land space”, and distance between peaks, it provides sufficient information for a person skilled in the art to determine the space between each pyramids. For example, first, land area can be calculated by multiplying the land area percentage with the unit area. Then, total area covered by the bases can be determined by subtracting the land area from the unit area. Area per base can then be determined by dividing the total area covered by the bases, by the number of cleansing features per unit area. The width of each base (base is a square), can be determined by taking square root of area per base. The base to base spacing can then be calculated by subtracting the base width from the peak to peak spacing. Such a calculation would be a straightforward application of basic spatial reasoning, and is within the capabilities of a person of ordinary skill. There is also a lack of criticality of the claimed distance, See Applicant par. 0036, “approximately”. The measurements in the claim are well within the purview of design choice, and is therefore prima facie obvious. Therefore, it would have been obvious to one of ordinary skill in the art to modify those values to achieve specific spacing between the bases of the pyramids).
Regarding Claim 15, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein a height of each of the pyramids of the head portions is about 0.5 mm to 0.7 mm to create a depth that only passes through a stratum corneum of the skin, and limits impact on more sensitive skin layers (Johnstone, par. 0117, “This action removes loose skin cells but does not “dig in” to the stratum corneum to lift, but not remove, other stratum corneum cells.”; par. 0059, “In some embodiments, the peak, or height, of the cleansing features extends about 0.5 mm to 5 mm from the base…”) (Examiner Notes: The range from the prior art overlaps with the claimed range with sufficient specificity. Therefore, it would have been to one of ordinary skill in the art to dimension the height of the pyramid to be 0.5-0.7 mm).
Regarding Claim 17, the modified Matsushita discloses the skin stimulation tool of claim 9, wherein each of the plurality of pyramids formed on a surface of both head portions is substantially the same size (Johnstone, Fig. 2; par. 0038, “As used herein, the term “cleansing feature” means a protrusion attached to and extending away from the first major surface of a cleansing head in a direction generally perpendicular thereto.”; par. 0059, “In some such embodiments, the cleansing features are spaced so as to be substantially equally distributed on the first major surface in one or more directions”) (Examiner Notes: In the prior art, the pyramid is disclosed as one of the cleansing feature; in Johnstone, Fig. 2, it is shown that the cleansing features are substantially the same size).
Claim(s) 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsushita, in view of Johnstone, further in view of Matsushita (US D668771), hereafter Mat’771.
Regarding Claim 18, the modified Matsushita discloses the skin stimulation tool of claim 1, wherein the plurality of pyramids formed on both head portions increases in size from a middle surface toward an upper surface and toward a lower surface of both head portions (Johnstone, par. 0059, “In some embodiments, the cleansing features are spaced in a pattern on the first major surface.”)
The modified Matsushita does not disclose a specific pattern used for the plurality of pyramids on the head portions. Mat’771 discloses a skin massaging roller (title) including two spherical head portions, with a plurality of polygons formed on the surface. The polygons are formed in such pattern that the polygons increase in size towards the middle of the sphere, and decrease in size toward the ends of the sphere (See Fig. C). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to form the pyramids in a specific pattern as claimed on both head portions as such is an art recognized suitable pattern for massaging or stimulating a user skin as exemplified in the disclosure of Mat’771.
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Fig. C, Adapted from Mat’771 Fig. 7
Regarding Claim 20, Matsushita discloses a skin stimulation tool to increase penetration and efficacy of topically applied products and medications (Fig. A; par. 0022, beauty instrument 10), the skin stimulation tool comprising: a substantially Y-shaped handle (Fig. A; par. 0022, handle 11); a first attachment on a first branch of the Y-shaped handle (Fig. A; par.0022 bifurcated portions 11a), and a second attachment on a second branch of the Y-shaped handle (Fig. A; par. 0022 bifurcated portions 11a); a first head portion mounted to rotate around the first attachment of the handle, and a second head portion independently mounted from the first head portion to rotate around the second attachment of the handle (Fig. A, ; par. 0024, balls 17, “Then, the balls 17 are rotated about the ball supporting shafts 15.”), both of the head portions rotating when applied to a surface of the skin under linear motion of the handle (par 0035, “when the balls 17 are moved forward… each of the balls 17 is rotate…”); and a raised surface on each of the first and second head portions (See Fig B, a cross-sectional view of the ball; par. 0025, “The outer surface of the shell material 28 is…”).
Matsushita is silent on a raised surface formed by a plurality of distinct pyramids, the raised surface opening skin pores to form pathways into the skin, thereby increasing penetration of a topical agent as the head portions are pressed deeper into the skin without causing long term structural damage to the skin; wherein the bases of adjacent distinct pyramids substantially abut one another, thereby covering substantially the entire surface of each of the first and second head portions; wherein the plurality of distinct pyramids vary in shape, increasing in size from a middle surface of each head portion, and toward an upper surface and a lower surface of both head portions: and wherein the raised surface works at a lipid-corneocyte surface of the skin to temporarily separate stratum corneum layers to create pathways into the skin without causing long term structural damage to the skin.
However, Johnstone teaches a skin massage device (Abstract), comprising of a plurality of distinct pyramids, (par. 0160, “While this embodiment… including but not limited to: cylinders, pyramids…”), wherein the bases of adjacent distinct pyramids substantially abut one another, thereby covering substantially the entire surface of each of the first and second head portions (Johnstone par. 0059, “the space between cleansing features, or “land area” of the first major surface of the cleansing head or cleansing head section, is about 1% to 50% of the total first major surface area of the cleansing head”; in case where the “land area” is 1%, the pyramids substantially abut one another and substantially covers the entire surface). Therefore, it would have been obvious for one of ordinary skilled in the art to modify the surface of the known skin stimulation tool of Matsushita with the skin massage device of Johnstone to enhance cleaning of pores and because pyramid is a suitable configuration for massaging skin surface as exemplified by the teachings of Johnstone (Johnstone, par. 0145).
The modified Matsushita further discloses the raised surface opening skin pores to form pathways into the skin, thereby increasing penetration of a topical agent as the head portions are pressed deeper into the skin without causing long term structural damage to the skin (Johnstone par. 145, “This opening of skin features and pores also allows cleanser to enter”).
The modified Matsushita is still silent on wherein the plurality of distinct pyramids vary in shape, increasing in size from a middle surface of each head portion, and toward an upper surface and a lower surface of both head portions.
However, Mat’771 discloses a skin massaging roller (title) including two spherical head portions, with a plurality of polygons formed on the surface. The polygons are formed in such pattern that the polygons increase in size towards the middle of the sphere, and decrease in size toward the ends of the sphere (See Fig. C). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to form the pyramids in a specific pattern as claimed on both head portions as such is an art recognized suitable pattern for massaging or stimulating a user skin as exemplified in the disclosure of Mat’771.
The modified Matsushita then discloses wherein the plurality of distinct pyramids works at a lipid-corneocyte surface of the skin to temporarily separate stratum corneum layers to create pathways into the skin without causing long term structural damage to the skin (Examiner Notes: The modified Matsushita has the claimed structure, and is therefore able to perform the same function).
Response to Arguments
Applicant's arguments filed 11/03/2025 have been fully considered but they are not persuasive. Regarding Claim 1, applicant argues that Johnstone teaches away from the amended limitation, as Johnstone discloses a sparsely populated surface. As noted by Applicant, Johnstone par. [0059] discloses only "about 1% to 50% of the total first major surface area of the cleansing head, or about 5% to 30% of the first major surface area of the cleansing head" comprises surface structures. However, this is not true. Johnstone par. 0059 discloses “the space between cleansing features, or “land area” of the first major surface of the cleansing head or cleansing head section, is about 1% to 50% of the total first major surface area of the cleansing head”. The area Johnstone is referring to in par. 0059, “1% to 50% of the total surface area”, is the space between the surface structures. Therefore, Johnstone is teaching the surface structure occupies 50% to 99% of the total surface. And in an exampled case where the surface area is 99% of the total surface area, the surface structures substantially abut one another, therefore, the prior art meets the limitation of the amended claim 1.
The applicant further argues that Johnstone has different goal from the applicant’s invention. The applicant repeatedly treats the phrase “not to dig into the stratum corneum” as disclosed by Johnstone as if it excludes any possibility of opening or forming pathways into the stratum corneum. By “not to dig in”, Johnstone is plainly teaching cautions against causing abrasive penetration or undesirable roughness. This statement does not teach that the device does not open pores, nor does it exclude separation of stratum corneum layers. In pg. 10 of applicant’s remark, the applicant further states Johnstone avoids forming pathways for product penetration. However, Johnstone specifically discloses that it opens skin pores and allows cleanser to enter in par. 0145, which is the same goal of the applicant invention. In addition, separation of the stratum corneum is an inherent result of using textured surface structures in contact with the skin. The modified prior art would reasonably be expected to produce the same effect as the applicant do not demonstrate a structural difference. Recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The applicant further argues there would have no reason to modify the device of Matsushita’s tool with Johnstone’s surface structure because the functions are incompatible. However, both references disclose textured surface patterns designed to be in contact with a user’s face. Matsushita par. 0039 recites “pores are opened, and when the skin 20 is squeezed between the balls 17, the pores are contracted to remove dirt inside the pores”, while Johnstone par. 0145 also teaches opening skin pores for cleaning, making the references analogous, see MPEP 2141. The fact that the references emphasize different benefits (blood circulation/removing loose skin cells) does not preclude their combination. Furthermore, Matsushita par. 0088 discloses various textured surface patterns can be used. The surface structure of Johnstone is simply one such pattern that a skilled artisan would consider for predictable results.
Conclusion
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/KRIS HANYU GONG/Examiner, Art Unit 3785
/VICTORIA MURPHY/Primary Patent Examiner, Art Unit 3785