DETAILED ACTION
Applicant’s amendments and remarks, fled January 16, 2026, are fully acknowledged by the Examiner. Currently, claims 1-4 and 7-16 are pending with claims 5 and 6 cancelled, and claims 1, 7, 11 and 13 amended. Applicant’s amendments to claim 11 have obviated the previously-file Drawing and Claim objections, as well as the rejection of claims 11-16 under each of 35 U.S.C. 112(a) and 112(b). The following is a complete response to the January 16, 2026 communication.
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 .
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.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bosniak et al. (US Pat. No. 5,169,384) a further in view of Rigaux (US Pat. Pub. 2007/0276451 A1).
Regarding claims 1 and 6, Bosniak provides for a conductive eye mask for treating the skin and muscles surrounding the eyes (see figure 1 with the mask 22) comprising: an eye mask for being applied around the eyes (22), one or more electrode pads coupled with the eye mask (one or more of 38A/B and 40A/B), and an electric connector coupled with each of the one or more electrode pads (28).
The Examiner notes that the requirements in claim 1 of “the eye mask to be utilized in conjunction with a handheld electrostimulation skin treatment device” and “the electrical connector are configured to be plugged into an accessory connector comprising the electrostimulation skin treatment device for sending a microcurrent to the one or more electrode pads to tone and firm the skin and muscles around the eyes wherein the microcurrent treatment increases the amount of adenosine triphosphate (ATP) within the cells of a muscle and wherein the microcurrent treatment further increases cellular ATP levels to re-educate the skin and muscle around the eyes thereby producing muscle toning effects” are taken by the Examiner as functional recitations of the respective intended use of the eye mask and the electrical connector. It is well established that a functional recitation of the intended use must result in a structural difference between that in the prior art and the that of the instant claim in order to distinguish the claimed structure from that of the prior art.
The Examiner is of the position that the above-noted recitations, whether taken individually or in view of one another, fail to structurally define the claimed mask from the mask of Bosniak. The electrical connector (28) of the eye mask of Bosniak is readily capable of being plugged into an accessory connector of an electrostimulation skin treatment device for sending a microcurrent to the electrode pads to tone and firm the skin and muscles around the eyes given that the connector 28 is an electrical connector capable of being plugging into a matching connector on a suitable source of energy (e.g., device 24 per Bosniak or some other suitable device). The type of device that the connector is capable of connecting to does not structurally limit the mask itself to structurally define the claimed mask over that of Bosniak.
The additional limitation of “the eye mask to be utilized in conjunction with a handheld electrostimulation skin treatment device” does not structurally distinguish the structure of the claimed mask from that of Bosniak. At most, the connector of Bosniak is still capable of structurally connecting to a suitable treatment device for providing the requisite energy to the mask. The “to be utilized in conjunction with” claim language does not require structurally more than the mask to be capable, in some manner, of being used with the claimed treatment device.
Bosniak fails to provide that the conductive mask includes an adhesive for attaching the eye mask to skin around the eyes. Rigaux provides for a manner of aiding in the adhering of electrodes to the tissue of the face. Therein, Rigaux provides that the electrodes 2 include a self-adhesive gel 22. Therefore, it is the Examiners’ position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the self-adhesive gel of Rigaux on each of the electrodes of Bosniak to provide for an exemplary manner of conductively and adhesively coupling each electrode to the skin of the face
Regarding claim 2, Bosniak provides that the eye mask includes round strips configured to encircle the eyes and joined at a nose bridge (see figure 1 with the rounded piece to encircle the eyes and the center nose bridge) .
Regarding claim 3, Bosniak provides that an eye opening is disposed within each round strip to allow a practitioner receiving treatment to see (with the opening in each strip as exhibited in figure 1 to expose each respective eye).
Regarding claim 4, Bosniak provides that the one or more electrode pads are attached to an underside of the eye mask such that each of the one or more electrode pads at least partially surrounds an eye opening (via the placement of each of electrodes 38A/B and 40A/B as exhibited in figure 1).
Regarding claim 7, Bosniak provides for a method for a conductive eye mask for treating the skin and muscles surrounding the eyes, comprising: forming an eye mask for being applied around the eyes (via the formation to generate the mask 22), attaching one or more electrode pads with the eye mask (via the attachment of one or more of 38A/B and 40A/B), and coupling an electric connector with each of the one or more electrode pads (via the coupling of 28 with one or more of 38A/B and 40A/B).
Bosniak fails to provide the step of applying an adhesive to the eye mask for attaching the eye mask to skin around the eyes. Rigaux provides for a manner of aiding in the adhering of electrodes to the tissue of the face. Therein, Rigaux provides that the electrodes 2 include a self-adhesive gel 22. Therefore, it is the Examiners’ position that it would have been obvious to one of ordinary skill in the art at the time of filing to have provided an additional step of applying the self-adhesive gel of Rigaux on each of the electrodes of Bosniak to provide for an exemplary manner of conductively and adhesively coupling each electrode to the skin of the face
Regarding claim 8 Bosniak provides that the forming includes configuring round strips to encircles the eye and joining the round strip at a nose bridge (via the forming of the mask as in figure 1 with the rounded piece to encircle the eyes and the center nose bridge).
Regarding claim 9, Bosniak provides that the attaching includes affixing the one or more electrode pads to an underside of the eye mask such that each of the one or more electrode pads at least partially surrounds an eye opening (via the forming of the mask with the opening in each strip as exhibited in figure 1 to expose each respective eye).
Regarding claim 10, Bosniak provides that the coupling includes configuring the electric connector to be plugged into an accessory connector comprising an electrostimulation skin treatment device for sending a microcurrent to the one or more electrode pads (28 would be functionally capable of such an connection).
Claims 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shambayati et al. (US Pat. No. 8,731,657 B1) further in view of Bosniak et al. (US Pat. No. 5,169,384) and Rigaux (US Pat. Pub. 2007/0276451 A1).
Regarding claims 11 and 13, Shambayati provides for a method for treating skin and muscles surrounding the eyes of a practitioner, comprising applying a facial mask to the face (See col. 9; 52-57 providing for the use of a facial mask), attaching one or more electrode pads of the facial mass to the skin of the face (via the disclosed electrodes in col. 9 to be “build into a facial mask”), coupling the one or more electrode pads with an electrostimulation skin treatment device (via the attachment to the source of energy as shown in figure 2; see also col. 5; 50-51), wherein the one or more electrode pads are configured for manipulating the skin and muscles of the user during a desired skin treatment (see col. 5; 16-58 providing for the manipulation of the skin and muscle fibers), and applying a microcurrent to the one or more electrode pads wherein the microcurrent treatment increases the amount of ATP within the cells of a muscle and wherein the microcurrent treatment further increase cellular ATP levels to re-educate the skin and muscles of the face to thereby produce muscle toning effects ( see col. 5; 16-58 providing for the claimed 0-5000 microamps; see further for the increase in ATP in the muscle and for re-education as claimed).
While Shambayati contemplates a plurality of locations of treatment with microcurrent as in figure 12, Shambayati fails to specifically provide that the facial mask is specifically an eye mask as claimed.
Bosniak provides for a similar manner of applying electrical currents to similar locations of the face as that of Shambayati. Therein, Bosniak provides for an eye mask for being applied around the eyes (22) and one or more electrode pads coupled with the eye mask (one or more of 38A/B and 40A/B). Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the eye mask of Bosniak as the facial mask of Shambayati to provide for an exemplary type of facial mask to provide for treatment in a number of the facial zones surrounding the eyes in Shambayati. Bosniak already provides that such an eye mask in a known modality of applying current to tissue surrounding the eye in a number of ways thereby providing such to be an obvious consideration to one of ordinary skill in the art when applying the disclosed microcurrents to the facial tissue as in Shambayati.
Neither Shambayati nor Bosniak provide for the step of using a suitable adhesive to apply the mask around the eyes. Rigaux provides for a manner of aiding in the adhering of electrodes to the tissue of the face. Therein, Rigaux provides that the electrodes 2 include a self-adhesive gel 22. Therefore, it is the Examiners’ position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the self-adhesive gel of Rigaux in the combined method/mask of Shambayati in view of Bosniak to provide for an exemplary manner of conductively and adhesively coupling each electrode to the skin of the face. Such would ensure a fixed and secure attachment of the electrodes during treatment. Further the combination would ensure that the electrodes are attached to the one or more the skin prior to treatment via the adhesive on the eye mask as required by claim 13.
Regarding claim 12, in view of the combination with Bosniak above, Bosniak further provides that applying includes encircling the eyes with round strips comprising the eye mask such that the practitioner can see through eye openings disposed in the eye mask (see figure 1 of Bosniak with the rounded piece to encircle the eyes and the center nose bridge).
Regarding claim 14, the Examiner is of the position that the combined methodology above in view of Shambayati and Bosniak would include plugging the one or more electrode pads into the electrostimulation skin treatment device. Such would be in order to provide for the requisite connection between the source of power and the electrodes of the eye mask.
Regarding claims 15 and 16, in view of the combination above, the plugging includes coupling an electric connector comprising the eye mask into an accessory connector comprising an electrostimulation skin treatment device (via the teaching in Bosniak with the connector 26 coupling to the connector to the energy source). Such would further provide for an electric connector is coupled with each of the one or more electrode pads (via 26 to have an individual connection to each electrode of the mask per the disclosure/combination of Bosniak).
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive.
Applicant’s argues on pages 5-7 of the Remarks with respect to the prior rejections under each of 35 U.S.C. 102 and 103 based on the Bosniak reference. Applicant specifically contends on page 6 that, in view of the amendments to independent claim 1, that the prior combination of Bosniak in view of Rigaux fails to provide for each and every feature set forth therein including “an adhesive for attaching the eye mask to skin around the eyes”. Applicant alleges that the self-adhesive gel 22 of Rigaux is “to ensure electrical conductivity between the electrodes 2 and the tissue of the face” and thereby fails to provide that the adhesive tis for holding “the eye mask on a user’s face in absence of a headband, strap, or temple portions that rest on the ears”.
This is not persuasive.
Claim 1 presently recites “an adhesive for attaching the eye mask to skin around the eyes”. There is nothing in the language of claim 1 that requires the adhesive to be the sole manner of attachment between the face mask as alleged in Applicant’s argument that the adhesive of neither Bosniak nor Rigaux is for attachment “in absence of a headband, strap, or temple portions that rest on the ears”. It is well established that while 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). Accordingly, the Examiner is of the position that the self-adhesive conductive gel 22 of Rigaux per the combination with Bosniak in the rejection of claim 1 above does indeed provide for the eye mask to be attached to the skin around the eyes in that the gel functions to provide for a connection, link and/or attachment between the eye mask and the skin of the patient. Nothing in the claim, again, precludes the inclusion of other unrecited structural features for aiding in the holding the eye mask to the face/head.
Thus, it is for at least the reasoning set forth above that the Examiner maintains that the combination of Bosniak and Rigaux to provide for the claimed adhesive in claim 1 remains tenable. Substantially similar rationale is equally applicable to independent claim 7 and the adhesive requirements set forth therein.
For the sake of completeness, the Examiner notes that the amendments set forth in the instant response have necessitated a new grounds of rejection of claims 11-16. The Examiner has set forth the rejection of claims 11-16 under 35 U.S.C. 103 as being unpatentable over Shambayati et al. (US Pat. No. 8,731,657 B1) further in view of Bosniak et al. (US Pat. No. 5,169,384) and Rigaux (US Pat. Pub. 2007/0276451 A1) in the action above.
The Examiner is of the position that substantially the same rationale as noted with respect to claims 1 and 7 above regarding the “adhesive” requirement is equally applicable to this new grounds of 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ronald Hupczey, Jr./ Primary Examiner, Art Unit 3794